IP: Scientific Evidence in Patent Litigation
Week 5
Open Seating
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
1
Today’s Agenda
• Catch-up
• Read+preposition;
• Your Week 4 Questions (selected)
• Basics validity v. infringement
• KSR – obviousness
• Infringement – literal and under the Doctrine of Equivalents
• Next Week: A real live expert tells all (well, tells some)
• More team meetings with me.
Break
~5:20
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Catch-Up – verb phrase with READ -1. ON
Last week we discussed READ ON. Review:
If a claim READS ON the prior art, it is INVALID.
If a claim READS ON the accused device, it is INFRINGED.
Think of a two-column chart.
On the left, the claim
(reformatted).
On the right, quotations
- from the prior art (or
expert testimony about it) or
- from manuals, fact or
expert testimony, etc.
describing the accused
device.
“READING ON” means you read the left and compare it to
the right – you read the claim ON the other thing. If there is a
1:1 correspondence, the claim READS ON the other thing.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Verb phrase with READ -2. IN
NEVER read in a limitation from the specification.
On the other hand, ALWAYS construe the meaning of claim
terms by interpreting them ‘in light of the specification.’
One way to understand this might be to say:
When I argue it, it is proper claim construction, but
When you argue it, it is the sin of READING IN.
Would that it were so easy.
What constitutes [evil] READING IN will make more sense
after you have begun to struggle with your simulation patents.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Verb phrase with READ -3. OUT
NEVER read out a limitation that is in the claim.
On the other hand, if the limitation in question, properly
construed, adds nothing to the claim, it adds nothing.
One way to understand this might be to say:
When I argue it, it is proper claim construction, but
When you argue it, it is the sin of READING OUT.
Again, it’s not that simple.
What constitutes [evil] READING OUT will make more sense
after you have begun to struggle with your simulation patents.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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WARE v MORRIS
Judge Ware said that the claims should be construed as the
examiner understood them when ne allowed them.
(And if the claim was reexamined/reissued? asked Tim. Kevin,
maybe others. More on that later.)
Ware says: in particular, the Federal Circuit says to
IGNORE the accused device because the accused device did
not exist at the time the patent issued.
Morris says: neither did the lawsuit. And neither did any
dispute about what the claim language meant.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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WARE v MORRIS
How does a claim term come to be disputed? Put another
way, how do you -- the lawyers and the experts -decide what language in the claim(s) would need a judge’s
CONSTRUCTION?
Answer: Because you have considered
1. Validity 2. Infringement
My preference is for HONESTY. I see no merit in not
sweeping the truth under the rug.
By the time the Claim Construction papers are filed, counsel
for both sides and the judge know:
about the accused device – at least to the extent it has motivated a claim
construction question. Why pretend not to know?
about any uncited prior art that has motivated a claim construction question.
Why pretend not to know?
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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WARE v MORRIS
In this, as in many a discussion about patent law,
- abandon abstract words (objective, e.g.) and
- come up with a concrete example.
Corollary: distrust people (yes, even a Big Kid)
who cannot give a concrete example. Chances
are they have not thought the matter through very
well.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Prosecution History Estoppel (PHE) v.
Interpreting aka Construing the Claims
in light of the Prosecution History
When you interpret a claim in order to determine
literal infringement (or validity),
you use the PROSECUTION HISTORY.
That is *NOT* the same as PHE.
PHE refers to something specific:
PHE limits the PO’s right to win on infringement
when the claim does not LITERALLY cover the
accused device,
but the wider scope is within the doctrine of
equivalents (DOE).
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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I WONDER - DAVE
I wonder what the doctrine of claim differentiation actually dictates. The
defendants mention in a footnote, "The doctrine of claim differentiation
Or BISS. Or a
dictates that different claims with different language have different
misguided notion
meaning, and should not be inferred to have the same construction because
that what they say is
of some misguided notion of 'parallel terms'." I'd like to unpack this
FAIR and LOGICAL
statement a little bit.
and WISE…
Claim differentiation simply dictates that different claims should be
interpreted to cover different things. In a few minutes of searching, I
can't find anything to support the second part of the sentence, in
particularly how it relates to parallel terms. I'm guessing that the
defendants don't have any case work to support this sentence (since it's
not cited) and instead are relying on Big Kid syndrome.
Good instincts! Claim
differentiation only
kicks in if
EVERYTHING would
be the same. If the two
I'm also guessing that the defendants are trying to pull a fast one by
claims have differences
obfuscating "claims" and "elements". The doctrine of claim differentiationin addition to the
dictates that claims should be construed differently rather than elements.
parallel terms, then CD
The elements in Row 23, 19, 28 largely DO contain parallel language.
There's no reason why truly parallel elements shouldn't be treated as does
such not apply. And
even if separate claims are given the benefit of the doubt
those parallel terms
CAN mean the same
thing. Really, Trust me,
but not BISS.
10
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
I WONDER - AMY
I wonder how long this case has been in process? We know
that at some point the three plaintiffs had separate cases. How long
was each involved before it became a joint case?
Looking at the link provided to the docket, I can see that Acer first
filed a complaint for declaratory judgement in Feb 2008. I tried to
register with PACER to get access to other dockets but it seems I
ThereI am
wasa acourt
previous
caseCriminal
that resulted
cannot register unless
appointed
Justicein all those settlements
Attorney or a USin
Government
Agency
(I am
probablyas
notwe
looking
the the field
EDTex before
Judge
War*D*,
knowinfrom
right place) therefore
not sure
when
Barco
and HTC
first filed
trip. I'm
There
is only
one
reported
decision
in that case, the claim
complaints. Looking
at the linkorder.
provided
for the Acer
case,
I
construction
It for
wasusentered
in June
2007.
From the case
can see that Dec number,
2008 thereCIVIL
is a motion
to relate
the2:05-CV-494
Barco case. (TJW)
ACTION
NO.
Finally, it is in January 2012 we see that the Claim Construction
we know the case was filed in 2005.
hearing will be held. According to this timeline, both Acer and Barco
The first reexam
on thejointly.
‘336 Surprisingly,
was filed – per
LEXIS – in 2006.
have been involved forthat least
two
years
I
The 5 of 6th requests listed by Lexis was filed by Heidi Keefe, then at
didn't see any mention of HTC in the docket but HTC is listed as a
White & Case. The ‘148 has lists only 2 reex requests, the first I
plaintiff in the brief for the joint construction hearing. I found the
2006, the second Heidi’s. The ‘584 has four requests, none from
docket to be very helpful to get a idea of the timeline for claim
Heidi. The ‘890 was not in suit in Texas.
construction and to see all the motions and stipulations that are
filed over time.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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I WONDER - PATRICK
Question: Where and when were these cases all filed? How did they get
consolidated?
Answer: After playing around with Lexis Courtlink (gotta love the
student subscription - "Normal Cost $200, Your Cost $0"), it looks
like there were 3 DJ actions filed against Technology Properties et al
in ND Cal on the same date, Feb. 8, 2008. The three cases were filed
by Acer & Gateway
JF), HTC (08-00882 JL) and Asus (08-00884
On the (08-00877
docket I posted,
EMC). After Acer
and Gateway were assigned to Judge Fogel, they
http://www.stanford.edu/~rjmorris/sciev.12/DOCS/ACER_DKT.HTM88
motioned to consolidate
(orcase
'relate')
the JF
three
cases,
which
was that if we looked
4 is a related
but with
as the
initials.
I suspect
granted on Apr.
another
Barco
N.V.
at 22,
that 2008.
docket,Then
we would
findcompany,
that it settled
before
the filed
consolidation. A
of in
thatND
docket
up empty for filed
“asus.”
another DJ on word
Dec. search
1, 2008
Cal comes
and subsequently
a motion
to relate its case to the existing three, which was granted on Dec.
17, 2008. Interestingly enough though, the Asus case does not appear
on the joint claim construction brief, which leads me to believe that
they might have settled. But in my quick research I could not find out
when or why they dropped out.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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We stopped here on 2/2 and discussed KSR
Subsequent slides we covered on 2/2 are marked
begun 2/2
usually in the top right.
Some of those slides we did not finish.
Others we did finished but may revisit.
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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I WONDER - WAQAS
I wondered about the background of Judge Ware. I had already spent a bit of time
on it before reading this question so here goes:
Here Judge Ware lays out some of his thoughts on how patent language
needs to be understood as how it would have been understood at
the time by someone of ordinary skill and that he says weighs
even above the testimony of the actual inventor. That’s something I
find against the spirit of patent protection from an inventors perspective.
http://www.stanfordlawreview.org/2011keynote.pdf
In this article
Judgeblame
Ware discusses
some rules that can be used in dealing with
Don’t
Judge Ware.
patent evidence and also some difficulties in developing more rules due to the
1. The statute (that is, Congress) supports this.
differing standards of Circuit and District courts.
2. The Supreme Court and the Fed Cir (his
On his withdrawn
theleast
federal
circuit: this.
Bosses)nomination
have saidfrom
or at
implied
http://www.paloaltoonline.com/weekly/morgue/news/1997_Nov_19.WARE.html
3. The ordinary artisan, being a legal fiction,
http://rs9.loc.gov/cgi-bin/query/D?r105:3:./temp/~r105PFiUd3::
can’t lie, die, forget, misremember, have an ax to
A fairly harsh
response
to the
scandal:by opposing counsel.
grind,
or be
confused
http://heinonline.org/HOL/Page?handle=hein.journals/sccj23&div=31&g_sent=1&collection=journals
http://www.rangemagazine.com/archives/stories/spring98/stories_the_infamous_ninth.htm
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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I WONDER - SAM
I wondered where the term "Markman brief" came from. After
some quick searching, I learned that it refers to the claims
construction hearings in general, named after Markman v.
Westview Instruments Inc., which set a precedent that terms of art
and in particular claims would be construed by the judge, not the
jury. Useful websites include:
http://www.casebriefs.com/blog/law/civil-procedure/civilprocedure-keyed-to-cound/trial/markman-v-westviewinstruments-inc/
http://heinonline.org/HOL/LandingPage?collection=journals&han
dle=hein.journals/jlawp5&div=31&id=&page=
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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I WONDER - SAM
I wondered where the term "Markman brief" came from. After
some quick searching, I learned that it refers to the claims
construction hearings in general, named after Markman v.
Westview Instruments Inc., which set a precedent that terms of art
and in particular claims would be construed by the judge, not the
jury. Useful websites include:
http://www.casebriefs.com/blog/law/civil-procedure/civilprocedure-keyed-to-cound/trial/markman-v-westviewinstruments-inc/
http://heinonline.org/HOL/LandingPage?collection=journals&han
dle=hein.journals/jlawp5&div=31&id=&page=
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Catch-Up – Law and Fact (and Equity)
begun 2/2
FACT
101 Patentable Subj. Matter 101 Lack of Utility
102a Anticipation
102b Experimental/Public Use
102g Diligence
102b On Sale
102g Corroboration
102g Priority of Inv.
103 Analogous Art
102g Conception
112P2 Best Mode
102g Reduc. to Prac.
112 P1Written Descrip.
103 Obviousness
R56 Intent (Ineq. Cond.)
112P1 Enablement
R56 Materiality (Ineq. Cond.)
112P2 Indefiniteness
271 Infringe. – literal
[101, 102, 103,112,271]
Claim Construction
271 Infringe. – DOE
285 Exceptional Case
EQUITY
LAW
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
R56 Ineq. Conduct
283 Injunction
284 Multiple Damages
285 Award of atty fees
-
Patent Misuse
NB: All statute numbers are
pre-AIA . Some have
changed, with various
effective dates.
Compiled first in the 1990s, then made into a
slide for Adv Pat Seminar 11/15/05, updated
for Sci Ev Seminar 9/5/07 and updated again
for Sci Ev 2012. See also pdf pages 31-33 of
my amicus brief in Microsoft v. i4i. -rjm
17
Tim – shaping expert testimony; attacking the other
expert; hiring experts
A. My own experience has informed me that I should
never allow myself as a litigator to be mired in
trivial details and theoretical debates. What's
important is constructing a coherent, convincing,
and compelling narrative, for the specific case in
hand. Is that true?
B. If the above is true, then allowing a patent dispute to
degenerate into a "battle of the experts" over
scientific details incomprehensible and
uninteresting to the fact finder would not be the
winning move. How does one maintain narrative
when talking to a Ph.D. whose duty is to talk
science?
C. An experienced litigator has once told me that the
best way to attack an opposing expert witness is
to bypass the scientific details and destroy his
credibility. Is that true? After all, as Sun Tzu wrote,
"If you lay siege to a town, you will exhaust your
strength.“ An expert witness's greatest weapon is his
knowledge, and challenging him about scientific
details is little different from laying siege to a town.
02/09/2012
D. If the above is true, then how should one go about
cleanly and respectfully, but brutally and
efficiently, tearing down an opposing expert
witness's credibility in the eyes of the fact finder?
E. What are typical chinks in an expert witness's
armor that can be exploited?
F. (“Individual concern”) I would like to learn more
about the practicalities of expert witness battles. It
is, of course, difficult to talk about this subject
matter in class. But I have known of cases where,
for instance, race and "funny names" are
successfully used by litigators to undermine
opposing scientific testimony. And this is an issue,
especially when many scientific experts are
foreigners and immigrants (e.g., 40% of all graduate
students at MIT). U.S. society is simply not as
enlightened as we would hope it to be; and many
patent battles take place in areas of the country that
are still very backward in thinking. Should that play
into my calculations? How and why?
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Attacking the other side’s Expert
Treating an expert like any old witness in a he-said-she-said
contest: making ner sweat and stutter and get angry and…
GOOD IDEA?
What makes one expert more CREDIBLE than another?
How do juries view all the things that make killer litigators
excited?
02/09/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Catch-up: Your Questions - Nicolaj
A. I was a bit puzzled by the discussion raised by
Plaintiff's counsel in the Acer case re interpretation
of the prosecution history (and the patentee's later
amendments during prosecution). This led to a short
discussion between Plaintiff's counsel and Judge
Ware about what point in time the claim
construction should take its outset. No clear
conclusion came out of that.
I know that for validity purposes we construe the
claims as the PHOSITA would understand as per
date of filing. But what about infringement, I think
Lemley taught us that for infringement purposes we
construe the claims as the PHOSITA would
understand them as per date of the infringement. I
just got a bit confused, if you have a claim
construction hearing like in the Acer case and both
validity and infringement is argued (which I guess is
the normal - and we also heard Plaintiff's counsel
(the one with "the skirt" say that Judge Ware's
construction would have great impact on the
infringement issues)), would you not in a way have
to have two claim construction hearings - one for
validity purposes and one for infringement?
02/09/2012
B: Judge Ware talked a bit about the hypothetical
"PHOSITA", but during the tutorial we did not hear
any of the counsels address the issue of who might
be the relevant PHOSITA for this case (maybe for a
good reason as this issue might be more relevant to
address at the actual claim construction hearing the
following day), but I was just wondering (and
thought we could discuss) who the PHOSITA might
be for this case?
C: Will it be possible to appeal Judge Ware's claim
construction - or will the parties have to wait until a
final decision on the merits has been rendered?
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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begun 2/2?
Catch-up: Your Questions - Corinne
a. Overall, motions for reconsideration, like that in
_BCS_ _v.__Cordis_, are rare. Are they any more
common in the claim construction context? On that
note, what kind of review is available for claim
constructions, in general? They likely can't be appealed
before a final judgment, but it seems courts would be
reluctant to grant interlocutory appeals on the issue,
despite it's importance. Does this play into the
calculation for making a motion for reconsideration?
b. Regarding the field trip: What does the class think
about the plaintiff's argument that the ring oscillator
should be defined as "non-controllable"? Were they
convinced? Would knowing about the
allegedly infringing product help/hurt their analysis in
any way? It‘s already obvious why each party wants
the term defined in their respective ways. What more
could knowing about the product add? If it would add
something, is that something appropriate to consider
during claim construction?
02/09/2012
c. Regarding claim construction: does the Judge _have_
to pick one of the parties' suggested interpretations, or
can he make up his own? At the hearing, Judge Ware
appeared ready to invent his own construction
for some of the terms. Is this common?
2. Questions about individual concerns
They’re not reluctant. The Fed Cir
a. It seems
will have very
limited
time to
madelikeitwe
a policy,
right
after
prepare the simulations—the quarter is already half
Markman, of NEVER granting
over. Is our workload suddenly about to mushroom?
petitions for interlocutory appeal
b. In our simulations, how will we argue infringement
without the benefit of claim construction?
See above re TRUTH.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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DONE on 2/2
Catch-up: Your Questions - Corinne
a. Overall, motions for reconsideration, like that in
_BCS_ _v.__Cordis_, are rare. Are they any more
common in the claim construction context? On that
note, what kind of review is available for claim
constructions, in general? They likely can't be appealed
You
*can*
make
before
a final
judgment,
but ityour
seemssimulation
courts would be
reluctant
to grant
appealsOr
on the issue,
JUST
claiminterlocutory
construction.
despite it's importance. Does this play into the
argueforit making
alonga with
calculation
motioninfringement.
for reconsideration?
Things to remember:
b. Regarding the field trip: What does the class think
1. From the time that patents had
about the plaintiff's argument that the ring oscillator
claims
until
1994, claim Were they
should
be defined
as "non-controllable"?
convinced?
Would knowing
the
construction
was about
not dealt
with
allegedly infringing product help/hurt their analysis in
notobvious
even why
in bench
trials
any separately,
way? It‘s already
each party
wants
the term
defined =
in NO
their respective
(“bench”
jury). ways. What more
could knowing about the product add? If it would add
2. Some judges STILL don’t
something, is that something appropriate to consider
decide
claim construction until
during
claim construction?
after trial.
3. Most districts do not have
patent Local Rules.
02/09/2012
c. Regarding claim construction: does the Judge _have_
to pick one of the parties' suggested interpretations, or
can he make up his own? At the hearing, Judge Ware
appeared ready to invent his own construction
for some of the terms. Is this common?
2. Questions about individual concerns
a. It seems like we will have very limited time to
prepare the simulations—the quarter is already half
over. Is our workload suddenly about to mushroom?
b. In our simulations, how will we argue infringement
without the benefit of claim construction?
Judge Ware can come up with his
own construction. On appeal, the
Federal Circuit can come up with
yet a different one.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
22
Catch-up: Your Questions - Amanda
a. 1. Class Discussion
a. Is the tutorial a useful and
truly neutral process? It was easy to
hear arguments from the attorneys
sneak in, so what do we think about
that?
b. Who has the burden of proof
in a DJ dealing with infringement? We
know the burden is on the filthy rotten
patent owner in a normal infringement
action, but it seems the procedural
posture requires it be on the plaintiffs
(greedy slimy accused infringers) here.
BOP is determined by the issue,
not who is plaintiff and who is
defendant.
02/09/2012
begun 2/2
c. If it's true that it's the claims
that truly matter, why does adjusting
the specification make you lose the
filing date? Doesn't this seem like an
entirely artificial requirement if it
doesn't technically "matter." But then
again it has to support the claims for
the claims to be valid. So what's the
deal?
Define “matter”!
Patents must “TEACH.” That is
the quid pro quo for the
MONOPOLY.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
23
Catch-up: Your Questions - Kevin
*Q1:* During the claim construction
You’re
right. RDE
is the last
hearing
it appeared
as though
the 336
refuge
of scoundrels
(well,
not thea
patent
covered
the concept
of putting
original
Or so
I learned from
second
(ringone).
oscillator
variable
a very
bigonBig
who, to the best
speed)
clock
theKid
microprocessor
mynot
knowledge,
never told
and of
was
as fully developed
asme
the
I later
to be to
latersomething
products that
arefound
now alleged
untrue.
infringe.
Is it likely the plaintiffs will
claim the reverse doctrine of
equivalents[1]<file:///C:/Users/Kevin/
Documents/Scientific%20Evidence%2
0in%20Patent%20Litigation/2.2/Catch
up.docx#_ftn1>(RDOE)
at a potential trial as a defense to
infringement(?) and, if so, how
likely is it that such a strategy will be
successful? (My guess is very
unlikely and less than 5%)
02/09/2012
begun 2/2
*Q2: *Are there strategic benefits to
raising the RDOE even if it is
unlikely to be successful on its own?
Does it help to color the case?
RJM - IP: Sci Ev in Pat Lit - Winter 2012
24
Kevin’s Questions - 2
begun 2/2
*Q3:* The defendant in the case
claimed that the 336 patent stood up to
16 ex parte reexams and ~900 prior art
references. Is this an atypically large
number of reexam proceedings and
references cited?
Yes
*Q4:* What are the origins of Agility
IP Law? Where did the firm’s
attorneys previously work, when did
they jump ship, and why?
Should much credence be given to
these statistics?
*Q5:* What were people’s thoughts on
the use of the various metaphors and
presentation styles we observed in
court? Which attorney was most
effective and why? Was there anything
that surprised you by the proceedings
or the way the attorneys handled
themselves?
What
‘credence’?
What might the
statistics prove?
Do they?
02/09/2012
Wilson, Sonsini.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
25
Catch-up: Your Questions -Chris
1. The cases we have to discussed so
far were quite complex. I would like
discuss an example claim and a
possible design-around to better
understand what it takes not to infringe
a patent.
2. Person of ordinary skill in the art.
Would an inventor be a person of
extraordinary skill in the art? You
also mentioned the 'POSITA' is a
myth. What exactly did you mean by
that?
3. Whenever a patent gets declared
invalid, are the prosecutors of the
patent in trouble? Could you sue them
for writing you a bad patent?
02/09/2012
That’s what you’ll do in preparing for the
simulation. You’ll have your teammates
and me to help you.
Yup. If you got a patent, you’re not
ordinary (until the patent is invalidated
for obviousness…)
The ordinary artisan is a legal
fiction, a way of thinking that
should lead to justice. The
OAATTOI (my newest acronym:
oh-AAH-toy; AAH like the a in
map) is like the Reasonably
Prudent Person in Tort Law.
Invalid, not likely. WHY?
Unenforceable (violation of the duty of candor),
possibly. I occasionally taught such a case... Not
sure it’s in the Winter 2004 materials, though.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
26
Catch-up: Your Questions -Chris
1. The cases we have to discussed so
far were quite complex. I would like
discuss an example claim and a
possible design-around to better
understand what it takes not to infringe
a patent.
2. Person of ordinary skill in the art.
Would an inventor be a person of
extraordinary skill in the art? You
also mentioned the 'POSITA' is a
myth. What exactly did you mean by
that?
3. Whenever a patent gets declared
invalid, are the prosecutors of the
patent in trouble? Could you sue them
for writing you a bad patent?
02/09/2012
That’s what you’ll do in preparing for the
simulation. You’ll have your teammates
and me to help you.
Yup. If you got a patent, you’re not
ordinary (until the patent is invalidated
for obviousness…)
The ordinary artisan is a legal
fiction, a way of thinking that
should lead to justice. The
OAATTOI (my newest acronym:
oh-AAH-toy; AAH like the a in
map) is like the Reasonably
Prudent Person in Tort Law.
Invalid, not likely. WHY?
Unenforceable (violation of the duty of candor),
possibly. I occasionally taught such a case... Not
sure it’s in the Winter 2004 materials, though.
RJM - IP: Sci Ev in Pat Lit - Winter 2012
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Catch-up: Your Questions - Waqas
Q1) We have on multiple occasions
said that most parties settle after the
claim construction. Are their ever
any reasons not to settle? and what
do the court proceedings look like
after claim construction?
Q2) What are things to consider when
preparing a person for scientific
testimony?
Q3) How to approach a
scientist/engineer for cross
examinations?
02/09/2012
See Tim’s Questions and our answers in class.
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Catch-up: Your Questions - Ram
What are the different kinds of
patents that can be applied for (is
there anything apart from utility,
design and plant)? I am interested
in knowing if there is a specific kind of
patent that is required for
inventions in pharmaceutical industry.
That’s the universe in the US. There
are no other kinds of patents?
Drug patents are ‘utility patents.’
A “discovery” cannot be patented unless it is
disclosed as something an ordinary artisan
would be ENABLED to make and use.
For an inventor and a good claims drafter, that
Can discoveries also be patented or
‘unless’ is not a serious barrier.
does it necessarily have to be an
A more serious barrier is that the “discovery”
invention. For example, if it is
is already in “the prior art” *inherently*.
discovered that root or leaf extract
Inherent anticipation is still anticipation. You
of a plant A has anti-cancer properties, can’t claim the extract because it already
exists in the plant, the plant is known to have
can it be patented?
the properties, and the extraction process may
also be known. If not, youu can claim the
way to extract it, or the use of it to cure a
disease that it wasn’t used to cure before.
02/09/2012
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Catch-up: Your Questions -Jamie
1.
Do the engineers in the class think that judges
are really qualified to interpret the claims of
highly-specialized technologies during
MARKMAN hearings? If ACER is any
indication, how often do you think they get it
right?
2. At the Patent Pilot Program presentation two weeks ago, Chief Judge
the favor a party gains when
they “concede” certain points during
Ware emphasized
proceedings. Chief Judge Ware explained, “Often counsel for each
party will try to take the most extreme positions possible, as opposed to
taking a reasonable position to help us get closer to the true meaning of
the claims during the claim construction process.” Did either counsel
for the litigants in the ACER last week exhibit this “reasonable”
approach in their presentation?
4. Should the patent system allow monetization of patent
rights by companies that don’t actually bring a product to
market (e.g. non-practicing entities (“NPEs”))?
By threatening product-based companies with lawsuits and
compelling them to license the patent rights to an invention the
NPE neither invented nor plans to make, are non-practicing
entities extracting unearned revenues from mid-sized and large
companies that could have instead funded more R&D? Or, by
providing cash for inventor’s whose product might not otherwise
make it to market, are non-practicing entities helping to
encourage innovation? Might your answer depend on (i) the
amount of money an NPE invests in small inventors (i.e. the
amount it expends to purchase patents from small inventors) vs.
(ii) the amount of money an NPE spends trolling for royalties
(i.e. the amount of money it extracts from bigger companies like
Apple, Lenovo, or Samsung through its lawsuits and license
agreements)?
3. Do you feel that NDCA Local Rule 4-3, which requires parties to
submit joint claim construction briefs, helps foster cooperation between
opposing parties (i.e. encouraging them to agree on claim term
meanings) or merely encourages them to pick the ten most disputed and
case-dispositive claim terms, confining the battlefield and creating a
highly contentious environment?
02/09/2012
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Jamie’s Questions -2
QUESTIONS ABOUT INDIVIDUAL CONCERNS
1. Based on Chief Judge Ware’s comment that file wrappers
should be better organized to facilitate claim construction, is the
patent office undertaking any efforts to improve the organization
of existing or newly filed documents to assist judges in
understanding and accessing the information concerning a
patent’s prosecution history?
3. Why do most judges not elect to take on a technical advisor as Chief
Judge Ware has done in ACER? Depending on the complexity of the
technology, it seems incredibly inefficient not to bring on someone to
at least assist the judge. Why would a judge expend the kind of
resources a district court does and then risk misinterpreting the science
behind the invention? Moreover, in a jurisdiction like NDCA where the
court requires the parties to identify the most case-dispositive claim
how can a judge ensure
the parties have really honed in on the
has undergone reexamination. He asked, “does the
pressure points of a claim without
judge at a MARKMAN hearing read understanding the technology objectively
the clams as a PHOSITA would have with the assistance of a technical
advisor?
read them at the time of
2. I was hoping to get further clarification on one of Chief Judge
Ware’s questions regarding claim construction for a patent that
reexamination or when the patent
application was originally filed?”
terms in the case (Rule 4-3),
Also about Acer: q 1, previously slide
Plaintiff’s counsel seemed unsure whereas his co-counsel from
Cooley (Heidi Keefe) seemed to be nodding her head in the
affirmative.
02/09/2012
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Sam’s Questions
1) Questions.
a) What does "substantially" mean in patents? I've come across
phrases like "substantially the same material" and "with time between
excitation and detection being substantially equal to the fluorescence
lifetime." Is this quantifiable or is it similar to the 99.9%
certainty of "beyond reasonable doubt"? The two examples I gave seem
like different uses, as at first glance I would say "substantially the
same material" would mean the same except for color or some cosmetic
difference, whereas for a time interval, it must involve some
precision.
of the dream suit you
mentioned in which the PO would be caught both ways on
either winning infringement but losing validity or winning
validity but losing infringement. It seems that looking at the court
d) Will we talk much about the AIA and its predicted effects,
either now or later in the class?
We can have a reunion in the spring
or summer quarter, though, and talk
about it.
b) I'd be curious to know an example
2) Individual questions:
decisions and history of a suit like this would be a great exercise, at least for
non-law students.
a) Can you recommend any primer of legal terms, such as a short
book or maybe a website that could serve as a crash course in all
law and legal procedures (not just patent law). I'd like a better
broad knowledge, and the vocabulary/jargon seems like a barrier
to "joining the club" that I'd like to get through.
c) I'm intrigued (and maybe a bit concerned) that in the claims
construction hearing, the complexity seems to be simply in the word
games. The word "asynchronous" is not difficult to define clearly for
someone skilled in the art, but for a judge and lawyers (and probably
jury) it proved elusive. On the other hand, a scientist or engineer
would likely be biased based on his/her experience in ways that a
judge would not. This seems like an unfortunate situation: a
specialist-arbiter may be biased whereas a lay person is supposedly
less biased, even though a specialist would immediately understand the
crucial concepts and definitions (and be honest about them, or at
least they should be in scientific fields) while the lay person might
get them wrong or distort them deliberately (resulting in appeals and
more uncertainty). Am I right in thinking of the PHOSITA idea as some
inexact way to bridge this gap?.
02/09/2012
Ask a law student about
books and websites!
Yes! Exactly right!
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KSR – page 2.1
The analysis is objective:
"Under § 103,
[1] the scope and content of the prior art
are to be determined;
[2] differences between the prior art and
the claims at issue are to be ascertained;
and
[3] the level of ordinary skill
in the pertinent art resolved.
[bracketed numbers mine - RJM]
Against this background the obviousness or nonobviousness of the subject
matter is determined.
Such secondary considerations as
- commercial success,
- long felt but unsolved needs,
- failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented."
([Graham] at 17-18)
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35 USC 103 (a) (as amended in the AIA, but quite
similar to the 1952 version [103 first 2 sentences.)
"A patent for a claimed invention 2. Differences between the
CLAIMED INVENTION and the P.A.
may not be obtained,
notwithstanding that the claimed invention
is not identically disclosed as set forth in section 102,
if the differences
between
the claimed invention and
1. Scope and content of the P.A.
the prior art
are such that
the claimed invention as a whole
would have been obvious
before the effective filing date of the claimed invention
to a person having
3. Level of skill in the art
ordinary skill in the art to which the claimed
invention pertains.
Purple phrases are changed from
the 1952 version, but not in ways
Patentability shall not be negated
that matter for us.
by the manner in which the invention was made."
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Law and Fact
The THREE Graham Factors are question so FACT
1. Scope and content
of the P.A.
2. Differences between the
CLAIMED INVENTION and
the P.A.
The secondary considerations are also
questions of FACT.
3. Level of skill
in the art
Despite might/may, the Fed
Cir has ruled that the
secondary considerations
must ALWAYS be considered
and the Supreme Court did
not change that.
“Such secondary considerations as
- commercial success,
BUT,
- long
felt butadding
unsolvedtogether
needs,
all of
those
FACTS,
the
- failure
others,
etc.,
might be utilized
to give
light to the circumstances surrounding the origin of the
court
decides
subject matter sought to be patented. As indicia of obviousness or nonobviousness,
a
these inquiriesOBVIOUSNESS,
may have relevancy.” Graham
v. Deere.
question of LAW.
The secondary considerations, post KSR, are now called the FOURTH Graham
factor. To make it harder to stay in the club for the old people?
02/09/2012
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Your Shared Likes and Dislikes in KSR
“Obvious to try” – Dave (L), Nick (D)
Automaton – Chris, Patrick, Amy, Kevin (all L)
…Asano… (what the prior art teaches/doesn’t)
- Amanda, Waqas, Sam, Jamie (all D)
- Corinne (L)
[Mealy mouthed phrases] – Tim, Dave, Corinne
Role of Experts (!) – Patrick (D)
Q. Why do I ask you to start with a quote?
02/02/2012
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Similarities between Infringement and Validity
Anticipation : Literal Infringement :: Obviousness : DOE
Both Infringement and Validity ask you to see if the claim READS
ON something. If it does, then there is{infringement/invalidity}.
ANTICIPATION is invalidity when only ONE piece of prior art is
needed for the right hand column.
OBVIOUSNESS is invalidity when only ONE piece of art does not
suffice.
02/02/2012
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Similarities between Infringement and Validity
Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir.
1987) (Nies, J.) (Fish & Neave for defendants/successful appellants):
“The district court acknowledged that basic principle, but went on
to make the following observations:
As the defendants put it, "that which infringes if later in time will anticipate
if earlier than the patent. . . . The inquiry as to anticipation is symmetrical
with the inquiry as to infringement of a patent." The classic test of
anticipation provides: "That which will infringe, if later, will anticipate, if
earlier. Thus a claim fails to meet the novelty requirement if it covers or
reads on a product or process found in a single source in the prior art."
Id. at 22. While "the classic test of anticipation" was indeed as
stated, n3 [citing Supreme Court cases going back to 1889,] under
the current statute "anticipation" does not carry the same meaning
as before, and the "classic test" must be modified to:
That which would literally infringe if later in time anticipates
if earlier than the date of invention.
02/02/2012
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Warner-Jenkinson; Siemens
Tell the story – the issue before the Supreme Court, and how
it got there -- from the point of view of Hilton Davis.
SUCCINCTLY.
How would Warner-Jenkinson’s story differ?
What is the FWR test?
Which of F, W and R are most likely to be disputed?
What is the ‘insubstantial differences’ test?
02/09/2012
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