2013-04-17 (Week 3) - PowerPoint Presentation

Slide1

2013-04-17 (Week 3)

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

1

Please take your seat

Rob*

David Patrick*Emily* Andy* JennScott * Asa ChinyereHernan Jennifer Helio*

Helio Andy Jenn Chinyere Scott Patrick EmilyHernan David* Rob Asa

Andy Jenn* Asa Scott Helio ChinyereJennifer Hernan* Patrick Emily Rob David

ScreenRJM

DOOR

Whiteboard

* Scribe This week's scribes: TOA: Helio, DavidTeacher's HW: Patrick

This week - Purple

Week 2 - Black

Week 1- Gray

shadow = law studentSlide2

2013-04-17 (Week 3)

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

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Today’s Agenda

Finish Review of / Introduction to Patent Law: P!=C!=T; WHAT IS A PATENT (CONCRETE).

Simulation schedule/5 person teams + coach to both

At break: Figure out best time for Instant Patent LawSSI v TEK and KSR~9:45 Adjourn 8:30 Break (timekeeper needed)8:40 ResumeSlide3

2013-04-17 (Week 3)

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

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Teacher's Homework (per Andy)

1) How can we watch videos of past simulations?

Links sent earlier todaySlide4

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

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To calculate the expiration of a patent, you need to know

these

dates. Then consult DOCS/TERMCALC.DOC on the

2012 course website (or read the statute).

The calculated date is not your final answer, however. You must also consider - nonpayment of maintenance fees - extensions due to delays by the government.But there’s good news! This is just FYI. The patents you use for simulations will be assumd to be in full force and effect at all relevant times…2013-04-17 (Week 3)Slide5

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

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Reading a Patent – Who asked you to?

AI

to design around it to avoid infringement

to challenge validity

or enforceabilityPAppl – to see if you need to disclose (and claim around)to see if you should buy/license itM&A – to evaluate an assetPO – to evaluate whether you can sue within the bounds of Rule 11Why? AVOID inequitable conductCOMPLY with Rule 56 and your duty of candor

Obtain a solid patent

2013-04-17 (Week 3)link is to MPEP - it's good for finding cases, statutes and rules (PTO rulesnot Rules of Civil Procedure) . PTO rules are cited 37 CFR 1.[rule#]Rule 11, F.R. Civ.P

., not 37 CFR 1.11Slide6

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

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Major Issues of Liability in Patent Law

ValidityInfringement

Word police note: 'infringe,' in patent law, takes a direct object.

Please say, "The accused device infringes the patent. "

Please do NOT say, "It infringes ON the patent."The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES2013-04-17 (Week 3)Slide7

But first: some abbreviations used on the next slide.

AI: Accused Infringer

PO: Patent Owner

BOP: burden of proof

sometimes called 'burden of persuasion'

QOP:

quantum of proof sometimes called 'standard of proof'Judge Grewal mentions burden of production sometimes also called 'burden of going forward.' Understanding that means understanding 'prima facie case,' too.The Different Quanta of ProofPrep: Preponderance of the Evidence = 50%+ЄC&C: Clear and Convincing Evidence = ~70%??BARD: [evidence] beyond a reasonable doubt =99.99%?RJM - IP: Sci Ev in Pat Lit - Spring 2013

7Major Issues of Liability in Patent Law2013-04-17 (Week 3)How many sdo we need

on this slide?Slide8

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Validity

Infringement

AI

Preponderance

C&CPOWHO HAS THE BOP?WHAT IS THE QOP?How do BOP and QOP affect the litigators and scientific experts?

Major Issues of Liability in Patent Law2013-04-17 (Week 3)Slide9

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P-I-S v P.A.

Situation A

Patent-in-suit

= NEW

Prior Art Patent = OLD

Situation BPatent-in-suit

= OLDPatent on accused device = NEW

Is the

New

patent valid

over the Old patent?

Is the

Old

patent

infringed

by someone

practicing

the

New

patent?

New Patent

Look at

New

's

CLAIMS

Look at

New

's

SPECIFICATION

(to see what people do

in order to PRACTICE

New

’s

patent)

Old Patent

Look at

Old

's

SPECIFICATION

(to see what it

teaches

)

Look at

Old

's

CLAIMS

Q.When

do you look at the CLAIMS?

A.When

the patent is ________

2013-04-17 (Week 3)

This is the most important slide of the entire quarter.

This is the most important slide of the entire quarter.Slide10

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SSI v TEK - Individual Questions - 1

HC Question 1 on page 2.1

R Question 2 on page 2.1

AW Question 3 on page 2.1P Question 4 on page 3E Question 5 on page 4.2S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2JR Question 7 on page 6.2C Question 8 on page 8.1HS Question 8 on page 8.1     JE Question 8 on page 8.1HCRAWSlide11

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SSI v TEK - Individual Questions - 2

HC Question 1 on page 2.1

R Question 2 on page 2.1

AW Question 3 on page 2.1P Question 4 on page 3E Question 5 on page 4.2S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2JR Question 7 on page 6.2C Question 8 on page 8.1HS Question 8 on page 8.1     JE Question 8 on page 8.1SSI disputes that the patent discloses [TEK's contention concerning] simultaneous or distinct streams of compressed air that force sealant out of the container and also "continuously" or "directly" direct air into the tire. {4. What does this sentence suggest about TEK's product? Why else would TEK argue this? -RJM}P

{In this Order, the court does not address what the level of skill is or what education and experience would characterize the HYPOTHETICAL person of ordinary skill in the art. Experts – who by definition are not ordinary – can and do testify to the state of knowledge of this hypothetical person

at the relevant time in the past (usually many years before trial). 5. At trial, what might the parties’ technological experts testify about? –RJM}ESSlide12

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SSI v TEK - Individual Questions - 3

HC Question 1 on page 2.1

R Question 2 on page 2.1

AW Question 3 on page 2.1P Question 4 on page 3E Question 5 on page 4.2S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2JR Question 7 on page 6.2C Question 8 on page 8.1HS Question 8 on page 8.1     JE Question 8 on page 8.1DJRThese uses suggest that the absence of "integral" in the description of the receptacle is not happenstance. Without more, the court will not impose "integral" as a limitation. The claim term will be given its plain and ordinary meaning. See Phillips, 415 F.3d at 1323 (cautioning against reading limitations that may be present in the specification into the claim).

{6. Why is it wrong to read a limitation from the specification into the claim? Who would urge doing so and why? When should it be permitted? ACSlide13

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

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SSI v TEK - Individual Questions - 4

"an enclosure

that may be formed

within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant."What "sealingly receives"? The "separate structure" or the "enclosure"?

"an enclosure that may be formed within and as an integral part of the housing or as a separate structure that

sealingly receives air and/or tire sealant."remove the ambiguity by reversing the orderSlide14

2013-04-17 (Week 3)

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SSI v TEK Individual Questions - 5

"an enclosure

that may be formed

within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant.""an enclosure

that sealingly receives air and/or tire sealant.that may be formed within and as an integral part of the housing

or as a separate structure"Replace the second THAT with 'and' or 'which'? Replace 'that may be formed' with 'the enclosure being formed...'?Replace 'within and as' with 'as and within' so that both phrases lead with an AS. This helps the reader who is looking for parallelisms.Slide15

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SSI v TEK - Individual Questions - 6

HC Question 1 on page 2.1

R Question 2 on page 2.1

AW Question 3 on page 2.1P Question 4 on page 3E Question 5 on page 4.2S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2JR Question 7 on page 6.2C Question 8 on page 8.1HS Question 8 on page 8.1     JE Question 8 on page 8.1{8. Of the 10 claim terms and analyses, which did you like the best? Define “like.” Which did you like the least?-RJM}Slide16

2013-04-17 (Week 3)

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

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SSI Claim Construction -1

Study the approach! It gives you a good idea about how lawyers (and later, their experts) confront a new patent that their client -

(PO) is asserting or is thinking about asserting by writing The Letter (PO) is considering offering a license, possibly after writing The Letter

(AI) is accused of infringing or thinks the other side is thinking about it and/or is considering starting a DJ (like SSI did) (AI) is considering taking a license, either because it received The Letter or otherwise or AI has found the patent and is about to make a product that might infringe and wonders what to doSlide17

2013-04-17 (Week 3)

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SSI Claim Construction -2

"intrinsic evidence" = page 1.2 boldface

claims specification prosecution history"extrinsic evidence" = page 2.2 after 2nd cite to Phillips. dictionaries testimony (whether by inventors, experts or others)Slide18

2013-04-17 (Week 3)

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SSI Claim Construction -3

MYTH: the 'inventor' authors the specification and correspondence with the PTO. ("response to office action"

aka "amendment") What's bad about this myth?TEK and the "direct and continuous stream" of compressed air. What How Why? p.3. Using prosecution history. Using particular embodiments.Slide19

2013-04-17 (Week 3)

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SSI Claim Construction - 4

"Entrained" - Did the court 'read in' a limitation from the specification in the interpretation that this means "drawn" [into the air flow path].

Or did the court [merely] find a synonym?Review: READ IN (INTO) != READ ON (now called "MAP")READ IN(INTO) v. CONSTRUECONSTRUE: Is the construction for all time forever after?Slide20

2013-04-17 (Week 3)

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Markman Orders and other things that cause cases to settle

{

In the Northern District of California by

Local Rule, and elsewhere either by Local Rule or judge's rule, the parties must, well before trial, identify all the disputed terms in the claims (or as many terms as the court is willing to consider, usually about ten as here) and propose constructions for them. The court then construes the terms, sometimes choosing one of the parties' constructions, sometimes crafting its own. These constructions then govern subsequent motions, such as motions for summary judgment, as well as the trial. Experts are often involved in assisting with claim construction and sometimes present a tutorial in court. Usually the hearing on claim construction consists of attorney argument but it can include live testimony from experts. The Construction Order, sometimes called a Markman Order after a famous case about claim construction (full cite in opinion above) often leads to early settlement. These orders, generally unappealable until there is a final judgment, can be overturned by the appellate court. When that happens, a new trial is usually ordered. More in class about factors leading to settlement, and the role of experts at early stages of the litigation. -RJM}page 2-3Slide21

2013-04-17 (Week 3)

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

21

Obviousness(SSI-SJ, KSR), Field Trip,

TOAs

TOA lists - week 1 and week 2(known , clueless, in between)Rob: infringement, reissue, inequitable conductScott: prosecution, litigation, work product privilege

on homepage, linked below date (see next slide)

KSRSSITrial

andy

frustrated

amused

tues pm

(+reporter)

asa

annoyed

flabbergasted

tues pm

chinyere

surprised

surprised

mon all

david

(exempt)

wed am

(+reporter)

emily

mystified

surprised

tues pm

helio

surprised

surprised

mon all

(+reporter)

hernan

amused

intrigued

wed am

jenn

vexed

unimpressed

tues

pm

patrick

intrigued

impressed

tues pm

rob

confused

surprised

TOAs

scott

confused

frustrated

TOAsSlide22

2013-04-17 (Week 3)

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

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Field Trip

KSR

SSI

Trial

andy

frustratedamusedtues pm

(+reporter)

asa

annoyed

flabbergasted

tues pm

chinyere

surprised

surprised

mon all

david

(exempt)

wed am

(+reporter)

emily

mystified

surprised

tues pm

helio

surprised

surprised

mon all

(+reporter)

hernan

amused

intrigued

wed am

jenn

vexed

unimpressed

tues

pm

patrick

intrigued

impressed

tues pm

rob

confused

surprised

TOAs

scott

confused

frustrated

TOAs

What did we miss by not going Monday?

Tuesday afternoon?

Today?

Rob and Scott: question these people!

Trippers: What was most surprising? As expected? Difficult? Slide23

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SSI

KSR

SSI

Trial

andy

frustratedamusedtues pm

(+reporter)

asa

annoyed

flabbergasted

tues pm

chinyere

surprised

surprised

mon all

david

(exempt)

wed am

(+reporter)

emily

mystified

surprised

tues pm

helio

surprised

surprised

mon all

(+reporter)

hernan

amused

intrigued

wed am

jenn

vexed

unimpressed

tues

pm

patrick

intrigued

impressed

tues pm

rob

confused

surprised

TOAs

scott

confused

frustrated

TOAs

explain yourself!

Also discuss:

Good guy and bad guy determination

Credibility of COUNSEL not just witnesses

Role of Experts

Andy (validity v. infringement during prosecution)

Asa

(Japanese patents)Slide24

2013-04-17 (Week 3)

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

24

KSR - 1

KSR

SSI

Trial

andy

frustratedamusedtues pm

(+reporter)

asa

annoyed

flabbergasted

tues pm

chinyere

surprised

surprised

mon all

david

(exempt)

wed am

(+reporter)

emily

mystified

surprised

tues pm

helio

surprised

surprised

mon all

(+reporter)

hernan

amused

intrigued

wed am

jenn

vexed

unimpressed

tues

pm

patrick

intrigued

impressed

tues pm

rob

confused

surprised

TOAs

scott

confused

frustrated

TOAs

Explain yourself!

Graham

Analysis - KSR p.2.1

Primary

Considerations:

1. Scope and content of the PA,

2. Differences between the CLAIMED invention and the PA, 3. Level of Skill in the Art

Secondary

Considerations: Long-felt unmet need, commercial success, failure of others, [etc.] but must have NEXUS.Slide25

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25

KSR - 2

P.3 Who

wrote the facts

?P.3 Seven (7) pieces of prior art to render the claimed combination obvious???P. 5. Word Police: Claims do not disclose. Likewise, the specification does not claim. Nor does the prior art. P. 5. Really bad greedy sleazy PO or normal PO?P. 6 The odor of inequitable conductP. 7 A 'rigid' approach? Scott as defender!P.8 teaches AWAY. Remember: AWAY.Slide26

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KSR - 3

P. 9 A perso

n or ordinary skill in the Supreme Court Justice art?

P. 9 Market Demand? On summary judgment?P. 9 A later patent deprives an earlier one of its 'value or utility'?P.10 Start with the problem the inventor wanted to solve, but ignore the inventor's avowed purpose or particular motivation??P. 11: KSR's own patent application??P. 14: Convincing evidence (on SJ) of obviousness of adding Asano to fixed pivot point.Slide27

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27

TOA Lists

on homepage, linked below dateSlide28

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Next Week

Next Week:

Guest Speaker: Alicia

Frostick Shah, Partner, Kirkland & Ellis [also MMPS from patent law 2004 and advanced patent seminar 2005]In preparation, read a transcript from a claim construction hearing in a case she was following. Read the SJ/Cl Const order that followed that hearing (and consideration of voluminous evidence and oversized briefs) Grad students: find some patents for possible use in the simulation. Law students: check if those patents have been litigated.Slide29

2013-04-17 (Week 3)

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

29

SSI v TEK - Claim Construction Winner? 6:6

andy

TEK

asa SSI chinyere TEK emily SSI david TEK helio TEK hernan TEK jenn

SSI jennifer TEK patrick SSI rob SSIscott SSI