2013-05-08 (Week 6) - PowerPoint Presentation

Slide1

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Today's Agenda

Warner-

Jenkinson

. Also (take home?) O2 Micro. Read especially if you are thinking about doing DOE.

SSI/AMI

v. TEK:

T

he jury's

verdict

on claims anticipated and claims not infringed.

Instant Patent Law

Teams

-

When do we

meet

next?

Meetings

APJED (?

pajed

, japed,

depaj

...)

+H

C

&R

SHARC

+H

C

&R

~9:45 AdjournSlide2

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Warner-Jenkinson

Tell the story and

- Favor PO

- Favor AISlide3

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Warner-Jenkinson

- Quotes

Scott: Analysis of patent claim will inform 7.2

Patrick: Application to chemical composition 3.2

Hernan

: Equivalence not absolute to be considered i

n vacuum 3.2

Helio

: Burden on PO to establish reason for amendment 7.1

Jenn

: proper time for evaluating is at infringement 7.1

Rob: ph of approximately 6.0 to 9.0 infringed under DOE 2.2

Emily: equivalence refers to an element or part 4.2

David: equivalency determined against context of patent, prior art 3.2

Asa

: presume substantial reason related to patentability 6.1

Chinyere

: intent plays no role 7, heading B

Andy: things equal to the same are not equal to each other 3.2Slide4

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Warner-Jenkinson

B

.  Select a different passage, one that raises a question in your mind, from either the decision or the commentary.  Quote the passage.  Use ellipsis to keep it from being too long but this time I leave it to you to decide what is "too long."  Give the

page:column

citation.  State your question.  Speculate on a possible answer and then discuss why you might be wrong.  Use an appropriate label for each of the four parts of your answer to B:  Quote; Question; Answer?; Wrong?

Your

submission

and your comments on a classmate's.Slide5

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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O2 Micro

Another example of how a DOE argument comes into being.

Read it at home? Now at

DOCS/O2MIC.PDF

(Don't look at the postscript on the last page until you've read the whole thing.)Slide6

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Instant Patent Law

Caveat: the statute has changed (but not in any way that affects your simulations)

Things I may not have said before, in whole or in part

2 - Big Kids Syndrome

17 - What is PRIOR ART

20 - To Search or Not To Search

33 - Parts of a Claim (terminology)

38 - "Patent" (abstract)

What you already know

7-8 - The major issues of patent law

26 - specification, n. (teaches, v.) and claims (n. and v.)

28-29 - independent and dependent claims, 'scope'

32 - claim chart to compare claim and [prior art, accused product]

34-35 - comprising, etc. - definitions

39-40 - the bicycle

and the wheel

41-42 - After

"I say 'You infringe!'" what happens?

43-44 -

In the PTO

45 - The person of ordinary skill

46 - RemediesSlide7

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RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict - 1

X=not infringed: 36 and 45-47

X= anticipated

22-24 and 38

X

X

X

X

X

X

X

X

Yes, this was very hard work.

Headache producing, too.

But

not

busy work,

not

a waste of your time.

Rather: the start of

aquiring

an important skill,

and

a litmus test

.

If you want never to have to do this kind of thing again, then pat

ent

law, whether as a lawyer or an expert, is probably not for you.Slide8

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict -1

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34 (27)

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

How did you approach this question?

What do you do to understand what is

MISSING (and -> anticipation)?

PRESENT (and -> non-infringement)?

Claim

Ant

N/I

Surviv'g

22-1

TRD

A

23-22-1

TRDA24-21-1TRDA27TRDS28-27TRDS29-28-27-1TRDS30-29-28-27TRDS31-29-28-27TRDS34 (27)bottleS36 (28-27)bottleN/I38TRDA40-39TRDS42TRDS45Disp TRDN/I46-45Disp TRDN/I47-45Disp TRDN/I

Why

did 27 survive the anticipation challenge when 38 did not?

Why

was 34 found to be infringed when 36 was not

?

If

you were

SSI/AMI or TEK, what would you do now?Slide9

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict - 2

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34-27

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

Asa's

Question

36 is a claim drawn to a BOTTLE (for use in 28-27 TRD)

38: mentions - but does not claim! - the compressor or the bottle. Prosecutors: why not?

Other anomalies?Slide10

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict -3

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34 (27)

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

36: not infringed because

_"Z"_

is included

Hernan

: Substantially opposes

Patrick:

subst

.

opp

.

Jenn

:

subst

.

opp.Rob/Scott: subst. opp.Emily: claims the bottle RJM: compare to surviving claim 34Asa: subst. opp.David: plastic bottle? disposableness?Andy: subst. opp.Chinyere: ??RJM: subst. opp. Slide11

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict -4

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34(27)

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

45-47: not infringed because

_"Z"_

is included

Hernan

: disposable

Patrick: disposable

Jenn

: intake IN port

RJM: 38 (

anticip

so

infr

ignored by jury?) also has intake and exhaust claimed separately

Rob/Scott: port with both intake & exhaust IN Emily: the container? disposable?Asa: disposableDavid: plastic bottle? disposable?Andy: intake DIRECTS, exhaust RECEIVES and DIRECTSChinyere: exhaust? RJM: disposable? TRD incl container?Slide12

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict -5

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34-27

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

22-24: Anticipated because

_"Q"_

is missing

Hernan

: Port? Valve?

Patrick: Port

Jenn

: Port

Rob/Scott: valve (

incl

) but no

man.override

(of 25)

RJM: but 25 not litigated so its validity is unknown; instead compare to 27 or 42Emily: PortAsa: Valve RJM: valve is claimed; for anticipation there has to be something MISSING compared to a surviving, similar claim.David: pressure relief override switchAndy: Bottle; valveChinyere: housing? port?Slide13

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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SSI/AMI Verdict -6

Claim

Ant

N/I

Surviving

22-1

A

23-22-1

A

24-21-1

A

27

S

28-27

S

29-28-27-1

S

30-29-28-27

S

31-29-28-27

S

34-27

S

36 (28-27)

N/I

38

A

40-39

S

42

S

45

N/I

46-45

N/I

47-45

N/I

38: Anticipated because

_"Q"_

is missing

Hernan

: port?

Patrick:

housing+recep

? disposable?

Jenn

: Receptacle (but has port) (27-valid: has

port+recep

; 22:-invalid:

recep

without port)

Rob/Scott: compressor (compared to 39) RJM: again, 39 not litigated; look to 27, 42*Emily: has port but it is not 'in reservoir or recep'Asa: housing? NOT disposable? RJM: true, disposable claims apparently survived the validity challenge but compare 38 to 27, 42*David: pressure relief override switchAndy: bottleChinyere: (has port, unlike 1) RJM: compare 38 to 27, 42*RJM - compressor * 27 and 42 are similar to 38 (indep, TRD) but survive validity challengeSlide14

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Next Week

1. Short presentations. Team by team. Each person should present ~ 2 slides and speak for ~5 minutes. 30 minutes per team MAX. More info. on next slide and in ASSIGN/0515.HTM

2. Recent

Daubert

decision and your notes from Ms. Shah's talk. (Please read them beforehand and bring them with you.) Slide15

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RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Next Week (cont'd)

The first slide MUST be the reformatted claim with the language that you particularly care about highlighted in some way.

After that, explain your selected issue, with reference to the claim language.

Keep the slides simple, clear, and useful. Use animation if you want to amplify something before starting a new slide.

You should also go

through the claim and explain how the actual THING works, with reference to claim language or without, as common sense dictates.

You will want to explain the technology. You may want to explain why the patent has market share (which may involve explaining the prior art), and anything else you think

an expert will be asked

in the simulation.

The order of these things - after the first slide - is up to you. Talk it through before writing. Decide what goes when

by talking.

Really. Talk first, and many times, before writing. Always. For everything. Everyone should. Their writing and speaking would improve vastly. I include myself in 'everyone.'Slide16

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RJM - IP: Sci Ev in Pat Lit - Spring 2013

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Slides from last week

Slide17

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RJM - IP: Sci Ev in Pat Lit - Spring 2013

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The

Patent-in-Suit

and

Noninfringement

If an element that is in claims 36-45-46-47

is

not

in the

accused device

(and not in the other claims)

, then claims 36-45-46-47 do not __________

the accused device. The other claims do.

Visual representation

Because they include element Z, claims 36-45-46-47 are

not infringed

. Find element Z.

Claims

36-45-46-47

Other Claims

Accused

Device

A

A

A

B

B

B

Z

read onSlide18

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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The

Patent-in-Suit

- Invalidity

If an element is MISSING from claims 22-23-24-38

but is found in the other claims, then claims 22-23-24-38 __________ the prior art but the other claims do not.

Visual representation:

Because they do not include element Q,

claims 22-23-24-38 are anticipated.

What is element Q?

Claims 22-23-24-38

Other Claims

Prior Art

A

A

A

B

B

B

Q

read onSlide19

2013-05-08 (Week 6)

RJM - IP: Sci Ev in Pat Lit - Spring 2013

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The Field Trip

The

Verdict

. (Also interesting:

Questions from the Jury

)

X

X

X

X

x=not infringed

x=invalid (anticipated)

X

X

X

X

Look at the patent. Why those 4 claims and not others?

This is a question about the

elements

of the claims.

Or rather, missing elements.

Unless someone already figured that out, answer during the break. Collaboration is OK.