Myths and Legends of Patent Law A Childs Guide to the Myths and Legends of Patent Law Roberta J Morris Esq PhD Lecturer Stanford Law School Member of the Patent Bar and of the Bars of ID: 785147
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Slide1
A Child’s Guide to the Myths and Legends of Patent Law(A Child’s Guide to the Myths and Legends of Patent Law)
Roberta J. Morris, Esq, Ph.D.Lecturer, Stanford Law SchoolMember of the Patent Bar and of the Bars of New York and Michiganrjmorris@alumni.brown.edu
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1
Salishan
Conference
Slide2Thank youSteve Joncus, Klarquist Sparkman and OPLA.The Stanford Law Library reference librarians, especially Rachael Samberg and George Wilson this time.They always find everything I ask for, including things I didn’t know I was asking for.But don’t blame them for any errors. All errors are mine.
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Slide3You know who I am. Who are you? -1If you can hear the sound of my voice, please rise/raise your hand.Lower your body/hand if - you were already practicing patent law when the Federal Circuit decided Markman (4/5/1995) - you started practicing patent law before the Supreme Court decided KSR (4/30/2007)
Welcome, children!RJM - 4/13/2012Salishan Conference 3
Slide4You know that *I* think there are myths. But what do you think?Please write your best guesses for patent law’s top myths on the index card in your folder.If you want to write at greater length, email rjmorris@alumni.brown.edu. Please pass the cards in now. I’ll look at them tonight and track you down in the morning!
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Slide5From my talk here 2 years ago:Quotes from Judge Rich“Be prepared. Be concise. Be clear. If your client does not have a good case, counsel him, her or it
to conserve resources – including your potential fee. At best, litigation is a gamble.”(quoted in The Almanac of the Federal Judiciary)RJM - 4/13/2012
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“If you look
long enough
in the patent law,
you can find a case
to support any kind of proposition
[.]”
Judge Rich,
Jefferson Medal
Acceptance Speech,
New Jersey Patent Law Association, 1955 (quoted in
Smith1999
)
Slide6What some of my students just won't believeIt’s the CLAIM, stupid.RJM - 4/13/2012Salishan Conference 6
Slide7Dis[claim]erMy new thoughts - not found in any reference I know of, and - which I may disagree with any minute nowwill be identified with
This means - it’s my baby: don’t blame anyone else - it’s only a baby: not fully developed, not matureRJM - 4/13/2012
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Slide8RJM - 4/16/2010Salishan Conference 8A claim from my 2010 talk, reissued.1
. A method for curling hair, comprising the steps of: acquiring a knowledge of patent law, and, while maintaining the hair free of restraint, reading a judicial opinion from a court selected from the group consisting of the Court of Appeals for the Federal Circuit and the Supreme Court
.
2. The method of claim 1, wherein the opinion is authored by a person selected from the group consisting of ____, ______, _____ or _________.
Claim was time-barred by a disclosure in a
previous talk
.
Slide9Behind the MYTHS: The Religion(Another Claim)We, the people of the United States, claim:1. A method for Promoting Progress in Useful Arts, comprising the [single] step of: securing for limited Times to Inventors
the exclusive Right to their Discoveries.RJM - 4/13/2012Salishan Conference 9
101 Questions
Utility (~ a perpetual motion machine)?A law of nature?
An abstract idea?
102/103 Questions
Publicly known more than a year before 1787?
Slide10Behind the MYTHS: The Religion - 2We, the people of the United States, claim:1. A method for Promoting Progress in Useful Arts, comprising the [single] step of: securing for limited Times to Inventors the exclusive Right
to their Discoveries.RJM - 4/13/2012Salishan Conference 10
Practical questions
What is the art?
Who would be an infringer?
Can we apply NOW?
Hint: actual RTP requires determining that the invention will
work for its intended purpose.
Maybe we're still experimenting
!
Slide11Behind the MYTHS: The Religion - 3We, the people of the United States, claim:1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: securing
for limited Times to Inventors
the exclusive Right
to their Discoveries.RJM - 4/13/2012
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If you have no problem with this claim, you are a true believer.
If you have doubts, you are an agnostic.
If you shout REJECT!, you are an atheist.
Slide12Behind the MYTHS: The Religion - 4We, the people of the United States, claim:1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: securing
for limited Times to Inventors
the exclusive Right
to their Discoveries.RJM - 4/13/2012
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I am a believer.
I also believe in the adversary process.
Not based on the evidence of specific cases
Not based on surveys of aggregate data,
if there were any reliable ones,
which there are not...
Slide13The Religion – DataWe, the people of the United States, claim:1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: securing
for limited Times to Inventors
the exclusive Right
to their Discoveries.
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Objective: The evidence from 19
th
century Europe:
Schiff, Industrialization without National Patents (1971):
Holland – no patent law 1869 to 1912, Switzerland – none until 1888
Petra Moser, 95 Am Econ Rev 1214 2005) :
Crystal Palace 1851 (GB) and
Centennial Exhibition 1876 (US)
Roger
Cullis
, Technological Roulette (Queen Mary IP Research Institute) (2004)
Subjective: Surveys About Beliefs and Actions
[By economists in the 20th century]
By Berkeley law professors in the 21s century:
Graham Merges Samuelson
Sichelman
Slide14The Religion – LogicWe, the people of the United States, claim:1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: securing
for limited Times to Inventors
the exclusive Right
to their Discoveries.
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The Carrot-Carrots. the Stick-Carrot, the Public Domain (adding, not subtracting)
encourages IN_V_TORS because a
temporary exclusivity
could mean
- more money in the relevant market , and
- more money in M&A
(but note:
Instagram
didn't need any
stinkin
' patents. [TBOOK:
appls
and pats searched 4/12/12]
encourages IN_V_TORS to
design around
because of the threat of other people's patents
patent disclosures* are a great resource even in the Google Age, enriching the
Public Domain
*"There are no bad patents, only good prior art." -RJM re BMPs and other hated patents that could be shot down by 103 but aren't ...
The Supreme Court does not know the phrase 'design around'
The Supreme Court writes about
protecting
the PD, not expanding it.
Slide15Word Choices Speak VolumesRJM - 4/13/2012Salishan Conference 15
IN __ V __ TORSFill in the blanks: no a ?
OR
-- en ?
Slide16THE MYTHS and LEGENDSStatute’s statue comes to life? Can a real person ever be the "person of ordinary skill in the art" mentioned in the statute?I.8.8: “authors and inventors.” “inventors = authors”? The inventors wrote the specification, claims, arguments and amendments? Really?
Life (for claims) begins at conception The claim as issued existed from the moment of conception of the invention. (E.g. re the on-sale bar and its negation by experiental use)Equal Protection (well, construction) for claims
All claim terms have an absolute right to be construed. (112p2 means very little. Cf. The Rich Legacy.)
There exists a construction [one or more?] for every term in every claim.
Good guys/Bad guys ≡ Relationship to Patent
Not quite. Color(Hat) = f(
R
p
, t).
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Slide17Ordinary Skill RJM - 4/13/2012Salishan Conference 17
The statute invokes the knowledge that a hypothetical Person having Ordinary Skill in the Art to which {the claimed invention} pertains would have had
at an earlier date*
in order to evaluateOBVIOUSNESS and
ENABLEMENT
(and OK, written description)
*THROUGH 3/15/13: the time of invention
FROM AND AFTER 3/16/13: the effective filing date of the application
Slide18103(a) before, and 103 after, the AIA RJM - 4/13/2012Salishan Conference 18
103. Conditions for patentability;
non-obvious subject matter
(a)
A patent
for a claimed invention
may not be obtained
though the
notwithstanding that the
claimed
invention is not identically disclosed
or described
as set forth in section 102
of this title,
if the differences between the
subect
matter
sought to be patented
claimed invention
and the prior art are such that the
subject matter
claimed invention
as a whole
would have been obvious
at the time the
before the effective date of the claimed
invention
was made
to a person having ordinary skill
in the art to which
said subject matter
the claimed invention
pertains.
Patentability shall not be
negatived
negated
by the manner in which the invention was made.
Pre-AIA:: Read center (regular) and left (
italics)
.
applies to applications filed before 3/16/13, and their
conts
and
divs
.
Post-AIA: Read center (regular) and right (
bold
)
applies to applications filed on or after 3/16/13.
PTO
eff
. dates
.
Slide19112 first paragraph now and soonRJM - 4/13/2012Salishan Conference 19
Pre-AIA:: Read center (regular) and left (italics). applies to applications filed before 3/16/13, and their conts
and divs.
Post-AIA: Read center (regular) and right (
bold
)
applies to applications filed on or after 3/16/13.
Pre-AIA
The Specification.
[undesignated
&
1
]
Post-AIA
(a) In General
.—The Specification
The specification shall contain
a written description
of the invention,
and of the manner and process
of making and using it,
in such full, clear, concise,
and exact terms
as to enable any
person skilled in the art
to which it pertains,
or with which it is
most nearly connected,
to make and use the same,
and shall set forth
the best mode
contemplated by the inventor
or joint inventor
of carrying out
his
the
invention.
Subject of previous
talk!
the invention
Slide20Ordinary Skill – Shorthand Terms1. Acronyms PHOSITA first (TBOOK) printed use in 1966: Cyril A Soans, patent lawyer in Chicago, in IDEA (“Some Absurd Presumptions in Patent Cases”) picked up by Fed Cir in 1984 {guess which judge}; 9 court cases
next in Bradley G.Lane’s Note in U.Mich.J.L.Ref. article, 1987, and then as of 4/8/2012: ~300 law review articles, per Westlaw Pronounced FA (as in father)-zit-tuh
(as in tub)]
POSITA I wrote it that way in 2001 in JPTOS
Others did too in later years: ~40-50 law review articles by now
- Pronounced
po-ZEE-tuh
: a POSITA is also a small poseur
POSA
seems to be gaining popularity: first citing/sighting 2004, ~ 10 law review articles by now.
Michigan Patent lawyer John
Posa
loves it.
2. Real words
ordinary artisan
in use since at least 1913 {guess which judge}*
Chief Judge Rader used this term in 2009 and 2010. Judge Moore used it last month, quoting Rader’s 2010 opinion.
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Slide21Ordinary Skill – Shorthand TermsORDINARY and ARTISAN are both important words.But they don't express the hypothetical and temporal
aspects of this legal fiction. Candidate acronymsHOAATTRD (hypothetical ordinary artisan at the relevant date)?HOA-TOI and HOA-TOF or HOA-AOTPD (hypothetical ordinary artisan at the time of invention or time of filing or as of the priority date)
TAHOA (time-appropriate hypothetical ordinary artisan)HOA-TA(hypothetical ordinary artisan, time appropriate)
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Is TAHOA as good in the
G
oogle
age as
PHOSITA
is
,
and POSITA and POSA are not? Alas, no. It’s a Second Life ski resort.
KSR told us the ordinary artisan is not an automaton.
HOA-TA
Slide22Experts and Ordinary Artisans - 1Can you challenge an expert in the art as TOO expert, and thus not ORDINARY?Yes, litigators still do that, and sometimes they win.See Duramed v. Watson Labs, 701 F.Supp.2d 1163, 1170 (D.Nev. 2010)
But not permanently. reversed (Fed Cir 2011) (unpub, Lourie, Linn, Dyk).Why unpublished?Why no sanctions?
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Slide23Experts and Ordinary Artisans - 2Can you challenge a qualified expert's testimony because it does not require her expertise?Yes: PO's expert's testimony concerned proving infringement from AI's marketing docs. 5,004,681 B1. Technical area was a therapeutic composition of cryogenically preserved stem cells See
Pharmastem, 491 F.3d 1342 (Fed Cir 2007) (Newman, Bryson and Prost; Newman dissenting)RJM - 4/13/2012Salishan Conference
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Slide24Experts and Ordinary Artisans - 3Tension between TECHNICAL expertise and ISSUE expertise. Examples: PharmaStem - high tech patent, marketing docs Sundance - low tech patent, simple prior art
On SJ, PO's lawyers attach the docs and argue.But if they lose SJ and go to trial - what witness do they call to introduce the docs? - what witness can they call to compare the docs to the claim? Nobody? RJM - 4/13/2012Salishan Conference
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Slide25Experts and Ordinary Artisans - 4An expert who compares HIGH TECH claims to [Prior Art/Accused Device] should have ??technical AND patent law qualifications??(First-time experts would have to explain how the client's attorneys educated them?)
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Slide26Sundance v. DeMonte - The StoryPO Sundance's Patent: 5,026,109: a retractable segmented cover for trucks; segments are independently removable.Jury Trial. AI DeMonte's expert on obviousness (and other things) is its patent attorney, Mr. Bliss.
PO's motion in limine against Bliss is heard along with other motions 5 days before trial. Trial Judge denies it from the bench.Jury Verdict: For AI on invalidity. For PO on infringement.JMOL: For PO on validity.AI appeals the JMOL. PO appeals prejudgment interest.
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Who can appeal the denial of the motion in
limine
?
Slide27Experts and Ordinary ArtisansSundance: Patent attorney who lacks ‘ordinary skill in the art’ cannot be qualified as a ‘technical’ expert. “We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless the witness is qualified as an expert in the pertinent art.”550 F.3d 1356, 1364(2008)(
Dyk, Prost, Moore) (reversing Senior Judge Avern Cohn)RJM - 4/13/2012Salishan Conference
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My second favorite sight-gag number joke; There are 10 kinds of people in the world. Those who understand binary,
And those who don't.
Slide28Experts and Ordinary ArtisansNobody – yet – has argued that it is malpractice for a member of the patent bar - to write an amendment/argument to the PTO after a 103 rejection or - give an opinion of counsel concerning validity or infringementwithout first hiring a person of ordinary skill in the art to advise them.
Why not? Because the HOA-TA is a fiction.RJM - 4/13/2012Salishan Conference 28
Slide29Rules of Evidence and Patent (liability-side) Experts Sundance quoted Rule 702, F.R.Evid: “If scientific, technical or other specialized knowledge … will assist the
trier of fact…” RJM - 4/13/2012Salishan Conference 29
Slide30Prof. Arthur Miller's Rules of Civil ProcedureFirst Rule: Read the rule.Second Rule: Read on.[also stated in my "Open Letter to the Supreme Court concerning Patent Law" 83 JPTOS 438 (2001).]
These rules are also good Rules of Evidence...RJM - 4/13/2012Salishan Conference 30
Slide31Rule 702Rule 702. Testimony by Expert Witnesses A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or
other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; RJM - 4/13/2012
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(b) the testimony is based
on sufficient facts or data;
(c) the testimony is the product
of reliable principles and methods;
and
(d) the expert has reliably applied
the principles and methods
to the facts of the case.
Slide32Law-Fact-EquityRJM - 4/13/2012Salishan Conference 32
EQUITYR56 Ineq. Conduct
283 Injunction284 Multiple
Damages285 Award of
atty
fees
- Patent
Misuse
FACT
101 Lack of Utility
102a Anticipation
102g Diligence
102g Corroboration
Analogous Art
103
Graham 1 - S&C of PA
103
Graham 2 -
Diffs
:
Cl
. v. PA
Graham 3 - Level of Skill
103
Graham [4] – Secondary
considerattions
112P2 Best Mode
112 P1 Written
Descrip
.
R56
Intent
(
Ineq
.
Cond
.)
R56
Materiality
(
Ineq
.
Cond
.)
271
Infringe. –
literal
271
Infringe.
–
DOE
285
Exceptional Case
LAW
101
Patentable Subj. Matter
102b
Experimental/Public Use
102b On Sale
102g Priority of Inv.
102g Conception
102g
Reduc
. to
Prac
.
103
Obviousness
112P1 Enablement
112P2 Indefiniteness
101, 102, 103,112, 271
Claim Construction
NB: All statute numbers are pre-AIA .
Consult your tax advisor for the new numbers.
Compiled first in the 1990s, then made into a slide for Adv Pat Seminar2005, updated for
Sci
Ev
Seminar 2007 and 2012.
See also
pdf
pages 31-33
of my amicus brief in Microsoft v. i4i.
which has citations. -
rjm
FACTS!
Slide33Miller's Rules after graduation -->Morris's Truth: Read Anew, See Something NewRJM - 4/13/2012Salishan Conference 33
1. 'Validity' = 'Obviousness' here. No intended contradiction with ANTICIPATION and WRITTEN DESCRIPTION
being questions of FACT. 2. One of THREE conditions? 102 and 112 being the other TWO? 101 is not a CONDITION?
Dicta, but it shows the state of knowledge and understanding of
persons of ordinary skill
in the art
of rendering Supreme Court opinions in patent law
at the time
the Graham decision was written
While
the ultimate question of patent validity
is one of
law
,
A. & P. Tea Co. v. Supermarket Corp. [ 340 US 147, 155 (1950)]
the § 103 condition, which is but one of
three
conditions
,
each of which must be satisfied,
lends itself to several basic factual inquiries.
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.
Against this background,
the obviousness or
nonobviousness
of the subject matter is determined.
Graham v. Deere
, 383 US 1, 17 (1966).
Slide34Inflation/Numerology: 3 is bad, 4 is betterRJM - 4/13/2012Salishan Conference 34
Statutory Conditions for patentability Per Graham: 103 is 1 of 3 Per Bilski and Prometheus, 101 is not only a 4th , it is #1 of 4.
Graham used to be known as having THREE factors (often re jury instructions)
Sakraida
(US 1976) "Graham three-pronged test" (quoting 7 Cir.)
Roberts v. Sears, Roebuck
(7 Cir. 1983)
Graham tripartite inquiry
Hilton Davis
(Fed Cir 1995), quoting
Roberts
, with no quibble about that 3
Hybritech
(Fed Cir 1986) "three factual determinations and ...objective evidence of obviousness [sic: non]"
Trans-World Mfg
(Fed Cir 1984) "three primary factors"
But NOWADAYS, see
Siemens
(Fed Cir 2011): FOUR.
Slide35Sundance and Experts and Rule 702Is comparing a claim to prior art something scientists and engineers do in the course of practicing their art? Or is it something lawyers and examiners do? What area of EXPERTISE is relevant?Or areas?
Clients with ordinary - or more - skill in a technical fieldrely on YOU on questions of law (obviousness, say) and legal questions of fact (such as scope and content of the prior art, anticipation, enablement)?RJM - 4/13/2012
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Slide36Sundance’s RulingAlthough - nobody appealed the denial of PO’s motion in limine - neither side could have, and - no further briefing was requested,the court held thatBliss’s testimony on obviousness,
comparing the claims to 2 references [one of which is listed on the patent]should have been excluded because Bliss did not have ordinary skill in the art of the invention. Bad Judge Cohn. Bad. Bad.
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key words:
scope of appeal
waiver
fairness
equity
jurisprudence
judicial economy
Slide37Sundance’s Bottom LineHeld: The jury didn’t need expert testimony on obviousness because the level of skill was so low. Therefore a reasonable jury (a hypothetical one? unprejudiced by AI’s patent lawyer’s testimony?) could have concluded that the invention was obvious
by comparing the claim to the two references using only the knowledge of an ordinary person,especially in light of KSR. (which had not yet been decided).Therefore Judge Cohn abused his discretionin granting JMOL.
Bad Judge. Bad. Bad.RJM - 4/13/2012
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AI’s witness was probably an ordinary person,
although a lawyer…
Slide38Compare two legal fictionsThe Reasonably Prudent Person We let jurors decide what a RPP would have done We don’t voir dire jurors about how R and P they are We trust judges to decide, too, without checking their homeowner's insurance, tax payments, traffic tickets...
Why? Because the RPP is a fiction. You don’t have to BE one to KNOW what one would do. COMPAREThe Ordinary Artisan We require expert witnesses to be at least ‘ordinary' artisans. Why?
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Slide39Sundance’s RulingNOBODY sitting in a courtroom today can be an ordinary artisan at the time the patent application was filed (absent a time machine). Why debate whether the person has adequate credentials to be an impossibility.?Instead, ask if the person's special expertise – EXPERT in the art, TODAY, or EXPERT in reading and thinking about patents/applications in that art TODAY -- makes the person qualified to ‘assist the trier of fact.'Experienced patent lawyers who specialize in patents in that art may not qualify as ordinary artisans (often defined as X years of education and Y years of experience practicing that art) but may well be the experts from whom real people [clients] seek assistance. Judges too - both as real people and as potential experts.
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Slide40Myth 2: Inventors=AuthorsInventors=AuthorsIs that necessary?Writers: Use the passive voice when discussing the words in the specification, claim and prosecution history! Honesty is the best policy, and avoiding outright untruths is the better policy compared to lying...RJM - 4/13/2012
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Slide41Authorship: "Ignorance is No Excuse"?Naive (first-time) inventor tragedies. Lough v. Brunswick (1997) Brasseler v Stryker (2001) EZ Dock v. Schafer (2002)RJM - 4/13/2012
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Slide42Myth 3: Right-to-life for claims – Life begins at the moment of conception?On-sale bar: does the claim read on the thing offered for sale? If so, it's invalid.The claim-as-issued – that bunch of words in that order -- did not come into existence until sometime after the pre-application offer.Maybe that doesn’t really matter. Or does it?
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Slide43Right-to-life for claims – Life begins at the moment of conception? -2The HOA-TA gets involved, too. Pfaff’s two prong test is 1. a commercial sale, and 2. an invention ‘ready for patenting.’ RFP = RTP or inventor-prepared docs that would enable a HOA-TA to *practice* the invention.
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Slide44102(b) now and soonRJM - 4/13/2012Salishan Conference 44
Pre-AIA:: Read center (regular) and left (italics). applies to applications filed before 3/16/13, and their conts and
divs.
Post-AIA: Read center (regular) and right (
bold
)
applies to applications filed on or after 3/16/13.
102. Conditions for patentability; novelty
and loss of right
to patent
(a) Novelty; Prior Art.
A person shall be entitled to a patent unless
***
(b) the
(1) the claimed
invention
was patented
or
{comma}
described in a printed publication
in this or a foreign country
{comma}
or in public use
or
{comma}
on sale
in this country
{comma}
or
otherwise available to the public
more than one year prior to the
before the
effective filing
date of the
application for patent
in the United States
claimed invention
***
The
AIA's
version of the statutory bar
(incomplete,
linebreaks
mine)
(b) Exceptions.--
(1)
Disclosures
made 1 year or less
before the effective filing date of the claimed invention.--
A disclosure made 1 year or less
before the effective filing date of a claimed invention
shall not be
prior art
to the claimed invention
under subsection (a)(1) if--
(A) the disclosure was made by the inventor ...
Nice that
Congress tossed
102(a)’s ‘known’ (held to mean ‘publicly known’ based on
[??]) and said this instead.
Slide45Life begins at the moment of conception? -Experimental Use: An experiment that - verifies that no further changes are needed, rather than causing changes, - and therefore does not affect claim languageis not an experiment that can negate the on-sale bar.But at the time of the experiment, there was no claim language...RJM - 4/13/2012
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Slide46MYTH 4:Equal Protection for claims – Every claim term is entitled to a construction?3/25/13: the 15th anniversary of Cybor and Judge Rader, concurring in the judgment, identifying 1. CVI/Beta v. Tura: the Fed Cir did not agree with its own previous claim interpretation, and 2. JTEaton v Atlantic and 3. Exxon v. Lubrizol: the appellate court 's interpretation was not selected from the group consisting of
constructions by the trial court or the parties RJM - 4/13/2012Salishan Conference 46
Slide47Equal Protection for claims – Every claim term is entitled to a construction? - 2In all 3, the claims at issue had numerical limitations. What jumped off the page: The metrics not anything a HOA-TA would have known or used.Cf. Myth 2: Inventor=authorRJM - 4/13/2012Salishan
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Slide48Equal Protection for claims – Every claim term is entitled to a construction?Why not use the BOP on the underlying issue, the way we do for summary judgment? tinyurl.com/claim-bop.But then construing courts would have to admit that they know why the parties proffer different interpretations. They should [admit] because they do [know]. Truth is better than fiction.RJM - 4/13/2012
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Slide49Myth 5: Good Guys, Bad GuysMy Patent Law Classes, 1991 to 2004: Greedy Sleazy PO v. Filthy Rotten Stinking AI19th Century: Bad = PO (Free trade)20th Century: Bad= PO (Antitrust)~1982 ± 12: Good=POPOs - Honorable and Dishonorable DPO=NPE?AIs - Honorable and Dishonorable DPO=???My Microsoft v i4i Amicus Brief at *12: It's Trolls v. Thugs
[Thugs come in 2 types: Muggers and Bullies]RJM - 4/13/2012Salishan Conference 49
Slide50THE ENDTHANK YOU. QUESTIONS? COMMENTS? RJM - 4/13/2012Salishan Conference 50
Slide51BibliographyRJM - 4/13/2012Salishan Conference 51
Do patents work for their intended purpose?
Moser = Moser, Petra
Graham =
Graham
, Merges, Samuelson and
Sichelman
Machlup
& Penrose = Fritz
Machlup
and Edith Penrose
Eisenberg
=
Experts
Wu
= Dolly Wu, 2010 BC
Intell
. Prop. &
Tech.F
. 91501, “Patent Litigation: What about Qualifications for Court Appointed Experts” – comprehensive list cases in which technical expert testimony (almost all party experts) or qualifications is discussed
102b and experimental use (recent: post Pfaff)
Ceccarelli
EZDock
Slide521964: PTO pledges to improve disposal rateRJM - 4/13/2012Salishan Conference 52
46 JPTOS 876-877 (1964)
Slide53Claim Existence and Equal Protection Both are intertwined with the myth of the inventor’s authorship.Advice to writers: Use the passive voice. “In the application, it is stated…” Use the inanimate object as actor: “The claim says…” “The specification explains …” Avoid attributing When should we confront the myth? When EQUITY (that almost forgotten concept) demands it. When JUSTICE (ditto) demands it.But will the patent system grind to a halt without the myth of authorship?RJM - 4/13/2012
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Slide54OUTTAKESRJM - 4/13/2012Salishan Conference 54
Slide55Experts and Ordinary ArtisansIf an expert is expert, does that prevent ner from testifying about what a HYPOTHETICAL ordinary artisan at an earlier date would have known? Yes, said D.Nev in 2010. Fortunately, the Fed Cir,
Lourie, Linn and Dyk, disagreed. Duramed Pharms v. Watson Labs, unpub 2011.Sundance. Jury finds for AI: claim is OBV (but also for PO: claim is infringed). AI offered expert testimony from its patent lawyer that the claim was obvious over the combination H + C.Judge grants PO’s JMOL: claim is NOT
obv.AI moves for reconsideration in light of intervening KSR decision. Judge denies it and also denies AI’s JMOL of non
Who challenged the admission of the AI’s expert opinion on validity? Not the parties. The Fed Cir!But not followed in 594 F.3d 1360, SEB S.A. v. Montgomery Ward (Fed Cir 2010). Allowed former
ex’r
to be expert, where dist ct had so ruled, too.
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Slide56The Legacy: WHAT? WD QUIZ 1The WRITTEN DESCRIPTION requirement is SEPARATE from the ENABLEMENT requirement. The authority for this rule comes from:A. CONGRESSB. THE SUPREME COURTC. JUDGE RICHD. ALL OF THE ABOVE
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Slide57The Legacy: WHAT? WD ANSWER TO QUIZ 1Not A (Congress). The current statute is not clear.Not B (Supreme Court). The Supreme Court has never been asked whether a claim that is ENABLED is nevertheless not DESCRIBED.Therefore Not D (All of the above), either.
The correct answer is C. JUDGE RICH.RJM - 4/13/2012Salishan Conference 57
Slide58Final Quiz: THAT’S RICH means: -1RJM - 4/13/2012Salishan Conference 58
WAIT! Maybe you shouldn’t answer.You know never to make fun of someone’s name.But on the other hand, written language is always ambiguous. That’s why they pay patent lawyers the big bucks.