2013-04-10 (Week 2) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1 Please take your seat Rob Rob David Emily Andy* Scott Asa Hernan Jennifer Helio Andy Jenn

2013-04-10 (Week 2) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1

Please take your seat

Rob DavidEmily Andy*Scott AsaHernan Jennifer

Helio Andy Jenn Chinyere Scott Patrick Emily

Jenn* Asa Helio ChinyereHernan* Patrick Rob David

RJM

DOOR

Whi

tebo

ard

* This week's scribes: TOA: Hernan, Jenn Teacher's HW: Andy (1st item: video link)

This week - BlackLast Week - Grayshadow - law student


Today’s Agenda• Prof's HW• How the seminar will work • X,Y,Z,Q; boilerplate• Sched• Your Patents and Your Comments (cont'd) • Begin Review of / Introduction to Patent Law: P!=C!

=T; WHAT IS A PATENT (CONCRETE).• SSI v TEK • ~9:45 Adjourn (Asa and David to see me)

• 8:30 Break (timekeeper needed)Asa and David: please see me.

• 8:40 Resume


Teacher's Homework (per Scott)1) What patent number ranges are design patents in? Slide below. I was off by a factor of 10!

2) Will we be able to take a "field trip" to see an actual patent case? Yup. Sure looks like it. Slide below.

3) Why don't patents use some type of 3-dimensional rendering technology for diagrams (e.g., SolidWorks)?1. You can if you want. See https://forum.solidworks.com/thread/58678

example of figure page linked here courtesy of someone named Lenny Bucholz2. Official USPTO statement that Lenny also linked to is not there any more (dead link: here). Here's the MPEP provision about the drawing requirements, including the statutory authority.Skim through it to see how detailed the MPEP is.

https://forum.solidworks.com/thread/58678

https://forum.solidworks.com/servlet/JiveServlet/download/308272-87219/patent%20drawing.jpg

http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_84.htm

http://mpep.uspto.gov/RDMS/detail/manual/MPEP/e8r9/d0e18.xml




Iconography

New symbol in my iconography. The Milky Way. From apod.The Milky Way will be used to designate words that are not terms of art but are part of the universe of patent law.

http://apod.nasa.gov/apod/ap051004.html

http://apod.nasa.gov/apod/ap051004.html

RJM - IP: Sci Ev in Pat Lit - Spring 2013 5

Patent Issuances - 1On Tuesday, 4/2/13 the PTO issued 5,852 patents :

5415 utility patents PLUS 20 reissues (35 USC 251+) [RE+5digits],

8 plant patents (35 USC 161+) [PP+5digits] 409 design patents(35 USC 171+) [D+6digits]

[Arithmetic by RJM from hits on uspto search site.]

Utility patents issued per year - >~250KDesign patents issued per year - <~25K

On 4/2/13, theLast Utility Patent was 8,413,261 will reach 10M in ~2019Last Plant Patent PP23,513 Last Reissue Patent Re44,131Last Design Patent D679,475 will reach 1M in ~2026 ?

* Patents are issued once a week on Tuesdays.

2013-04-10 (Week 2)


Patent Issuances -2

On 1/10/12: 4840+32+10+410 (5292 total)On 9/14/10: 4382+50+16+450 (4898 total)On 9/22/09: 3242+ 4+32+450 (3729 total)On 9/17/08: 1989+12+35+400 (2435 total)On 9/18/07: 2992+12+35+499 (3540 total)[Arithmetic by RJM from hits on uspto search site.]

In 2012, 253,155 utility patents were issued.In 2011, 224,505 In 2010, 219,614In 2009, 167,349 In 2008, 157,772

***In 1963, 45,679

For the last ~5 years, design patent issuances have averaged about 22,000/year.

Source for earlier years: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm

2013-04-10 (Week 2)

http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm

http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm


How the Seminar Will Work

Hand in your mark-ups!

Reward(s) distributed on or before May 1.

Try to avoid asking me a question that was covered in How Work. This means: please check it before asking!

Similarly, with regard to the homepage: please check it for answers to your questions.

When you're right that the information is not there, I'm happy to tell you. When you're not right, I'm not happy.


X Y X Q - Your quick responses to the first class

andy - trial happenings (on handout, previous slide)

asa- ethics chinyere - paRent applications emily - Prof? Roberta? What? , structure for

remaining 8 weeks* david - helio - TOAs (see TOA list; will be posted weekly)

hernan - validity and infringement don't depend

on science? expert's role jenn - patentable subject matter, most important

cases for simulation * jennifer - abbreviations like PO, etc.patrick - procedures, motions rob - Meet Mag. Grewal? scott - details about simulations *

*Answer: See homepage for a start

http://www.stanford.edu/~rjmorris/sciev.13/DOCS/TOA_WK1.TXT


Boilerplate Survey

12 x 3 -1 (Scott and Andy's Ord. Pat. was the same- and was a NO BOILERPLATE patent!)+1 (I checked the '581 patent) Sample size: 36

Results: patents without boilerplate in the paragraph(s) directly preceding the claims: 5 out of 36.

Scott/Andy 5,664,299Chinyere 7,137,746 (not her OP)David 7,997,297 (not his OP)Helio 6,993,838 (not his OP)Jennifer 6,000,536 (not her OP)

Also: Hernan: tell us about that extra sentence you found in 5,875,807 (disclaiming experimental error...)


Scheduling Questions

See handout. Complete and return to me today.

Also has information about what happens at a trial.


Scheduling - SSI v TEK - Handout to discuss/complete (NDCal, SJ Div, Mag. Grewal (pron. GRAY-wall) presiding)

CHECKING THE DOCKET

From Rachael Samberg, SLS law librarian and, in a former life, IP attorney:Docket: Many law students already have BLAW accounts, but if they don't, they need only go to *blaw.com/activate *and create one through the sign-up form.

Anyone with a Stanford ID should be able to get an account with your @stanford.edu email address. Say that your law school is Stanford (obviously) and you are a student. - On BLAW's end, a human enters info from the form, so it may take a few hours to receive the account. They say you'll hear back in 24-48 hours, but I received a login and password in 2 minutes. An activation code is *not* required; that section can be skipped. - This sign-up should also work for your grad students, but if they encounter trouble, please pass along their names and we'll square it away.Let me know!Searching for dockets and filings in BLAW is very easy. From the mainscreen, one just clicks "Litigation & Dockets," then "Search Dockets," andyou can enter the case info. Rachael has made a video walking through this but I think it's pretty easy to use without additional help. Let me know if you want the link to the video. One important point Rachael makes in the video: IGNORE any messages that say you have to pay a fee. You don't because you're logging in from Stanford, not from a money-making enterprise. (Or anyway, not money-making from the practice of law. Or anyway, not DIRECTLY money-making from...)

Read th

is aft

er cla

ss.

The PPTs a

re in th

e

PPT subdire

ctory.

Recently filed document (#188, 4/1/13) Joint Proposed Jury Instruction #18

Judge Grewal judged a simulation in 2009 when he was still a practicing lawyer. The simulation was unusual for 4 reasons: 1. the patent was on a method, 2. it was not exactly in the expertise of the experts, and 3. the issue was obviousness.The team's experts were both geneticists. One lawyer was a physicist (non-law student), the other was a PhD chemist who was a law student. 4. The panel was activist (but not Grewal so much) to the dismay of the poor lawyers.

http://www.jmbm.com/stanley-m-gibson.html

http://www.adlilaw.com/attorneys-agents/dr-dariush-adli/

http://www.cand.uscourts.gov/psg



mailto:://[email protected]:22../DOCS/SSI_JTPROPOSEDJURYINSTRUCTION18.PDF

mailto:://[email protected]:22../DOCS/SSI_JTPROPOSEDJURYINSTRUCTION18.PDF

http://www.stanford.edu/~rjmorris/sciev.09/TEAMS.HTM

http://www.google.com/patents/US7498015


Ordinary Patent Assignment (cont'd) - 1

Filing Dates, Other Kinds of Applications

Filing dates and years in prosecution corrected on the handout: check my work (cover sheets for all the patents are in DOCS/STU_PATS )

Questions: provisional (why file), paRents, continuation, continuation-in-part, PCT, foreign filings [Postpone until simulation patents selected?]

sciev.13/ORD_PAT.HTM

http://www.stanford.edu/~rjmorris/sciev.13/ASSIGN/0403.HTM

http://www.stanford.edu/~rjmorris/sciev.13/DOCS/STU_PATS/

http://www.stanford.edu/~rjmorris/sciev.13/ORD_PAT.HTM


Ordinary Patent Assignment (cont'd) - 2

CLAIM LANGUAGE and SUPPORT IN THE SPECIFICATIONQ. 06.5 If either of your selections does not appear word-for-word in the specification, does something similar appear? Discuss, with citations.

Did you notice a lack of correspondence between claim language and specification

in any of the 4 (WOW!) patents you've now looked at?

sciev.13/ORD_PAT.HTM


http://www.stanford.edu/~rjmorris/sciev.13/ORD_PAT.HTM


Ordinary Patent Assignment (cont'd) - 3Writer WEEK 1 WEEK 2(alpha) was rev'd by and then by------------------------------------------andy helio chinyereasa jennifer patrickchinyere asa davidemily scott jenniferdavid patrick andyhelio david jennhernan jenn emilyjenn reddy scottjennifer rob hernanpatrick chinyere helioreddy andy --rob emily asascott hernan rob


15

Throughout the term, I will use the snowflake to indicate anything that

is true, more or less,could be VERY complicated if you went into it deeply, and might melt if you touch it.

FEEL FREE TO ASK AFTER CLASS ABOUT SNOWFLAKES (the words they accompany on the slides, or the makeaflake website)

SUBSTANTIVE LAW

2013-04-10 (Week 2) RJM - IP: Sci Ev in Pat Lit - Spring 2013

http://snowflakes.barkleyus.com/index.html


Tim

Lau

’s P

ate

nt

5,3

13

,70

5 -

CO

VE

R S

HE

ET

issue date

Earliest US Filing Date

prior art

This pate

nt expire

s

NOT on May 13, 2

011

but on M

ay 24. 2011.

It did not g

o into

effect until

May 24. 1994.

class

Applicaton Date (of appl. that issued as this patent)

2013-04-10 (Week 2)


To calculate the expiration of a patent, you need to know these dates. Then consult DOCS/TERMCALC.DOC on the 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…

2013-04-10 (Week 2)

http://www.stanford.edu/~rjmorris/sciev.12/DOCS/TERMCALC.DOC


Reading a Patent – Who asked you to?

• AI – to design around it to avoid infringement– to challenge validity or enforceability

• PAppl – – to see if you need to disclose (and claim around)– to see if you should buy/license it

• M&A – to evaluate an asset• PO – to evaluate whether you can sue within the bounds

of Rule 11

Why? • AVOID inequitable conduct• COMPLY with

Rule 56 and your duty of candor

• Obtain a solid patent

2013-04-10 (Week 2)


Major Issues of Liability in Patent Law

•Validity•Infringement

The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES

2013-04-10 (Week 2)

But first: some abbreviations used on the next slide.AI: Accused InfringerPO: Patent Owner

BOP: burden of proofQOP: quantum of proof

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%?



2013-04-10 (Week 2)


Validity

Infringement

AI

Preponderance

C&C

PO

WHO HAS THE

BOP?

WHAT IS THE QOP?

How do BOP and QOP affect the litigators and scientific experts?


2013-04-10 (Week 2)


P-I-S v P.A.Situation A

Patent-in-suit = NEWPrior 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 ________

2013-04-10 (Week 2)


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


SSI v TEK - Individual Questions - 1

HC Question 1 on page 2.1R Question 2 on page 2.1 AW Question 3 on page 2.1

P 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 6.2

C Question 8 on page 8.1HS Question 8 on page 8.1 JE Question 8 on page 8.1

HC

R

AW







SSI 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}

E S







DJR

These 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?

AC



"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"?





remove the ambiguity by reversing the order


SSI v TEK Individual Questions - 5





"an enclosure

that sealingly receives air and/or tire sealant.

that may be formed within and as an integral part of the housing


"

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.







{8. Of the 10 claim terms and analyses, which did you like the best? Define “like.” Which did you like the least?-RJM}


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 2-3

2013-04-03 RJM - IP: Sci Ev in Pat Lit - Spring 2013 31

Next Week

Next Week: A litigated patent: the patent in suit in SSI/AMI v TEK, and maybe a visit to the courthouse

As you read/review the patent and court decisions, think about:

- ideas for design arounds and noninfringement arguments

- ideas for invalidity arguments

- any questions for which YOU need/would be an expert

Also: Obviousness: KSR v Teleflex

Documents

2013-04-10 (Week 2) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1 Please take your seat Rob Rob David Emily Andy* Scott Asa Hernan Jennifer Helio Andy Jenn