Sci.Ev. 2007-rjm Week 2 - 9/12/07 1

LAW

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Today’s Agenda What We Will Do in this

Seminar (again); What You Have Done So Far

Review of Patent Law – why I wanted to know how much you (collectively) know

The object/patent assignment

KSR – and why it matters for the seminar

5 min. break at 5:10. Over at 6:15.

Sci.Ev. 2007-rjm Week 2 - 9/12/07 2

What You Will Do in this Seminar

- I assumed you had read the course description long ago, and hadn’t forgotten too much yet. (next slide)

- You’ll either perform on the contract or walk.*

- Your responses to this week’s assignment were very good. Thank you.

- Any questions about the rest of the term?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 3

For the first part of the term, the class will review relevant patent law and expert testimony law. After that, the law and graduate students will work together to select patents for their final simulation projects. Working collaboratively, the students will prepare claim charts and devise a design-around, creating a situation that gives each side adequate room for argument. All students will then be assigned a client, either patent owner or accused infringers. As adversaries, they will present short oral arguments (law students) and summaries of expert declarations (grad students) for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be practicing patent litigators and patent professors.

Or, even bigger (next slide)

Sci.Ev. 2007-rjm Week 2 - 9/12/07 4

For the first part of the term, the class will review relevant patent law and expert testimony law. After that, the law and graduate students will work togetherto select patents for their final simulation projects. Working collaboratively, the students will

prepare claim charts and devise a design-around,

creating a situation that gives each side adequate room for argument. All students will then be assigned a client,

either patent owner or accused infringers. As adversaries, they will present

short oral arguments (law students) and summaries of expert declarations (grad students)

for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be practicing patent litigators and patent professors.

Sci.Ev. 2007-rjm Week 2 - 9/12/07 5

Your Plans and Biases:PO/AI; also Pros/Lit/Corp

Sci.Ev. 2007-rjm Week 1 5

prosecutors litigators

best

worst

Hours BillingDeadlinesLevel of Excitement, Intellectual StimulationClient contact, esp. with new companiesNature of work: Science v. Strategizing, Business Team v. SolitaryCooperative v. AdversarialLevel of Compensation

corporatetransactional

Which (one or more?!)

are you planning to be?

Last Week’s Slide 5

Sci.Ev. 2007-rjm Week 2 - 9/12/07 6

Validity

Infringement

AI

Preponderance

C&C

PO

WHO HAS THE

BOP?

WHAT IS THE QOP?

How does this affect you, the litigator, as you work with a scientific expert?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 7

Aro Top1964 – repair v reconstruction

City of Elizabeth1878 – experimental use

Chakrabarty1980 – patentable subject matter

DSU v. JMS *2006 – inducing infringement

eBay2006 – permanent injunctions

Egbert1881 - experimental use

FAM

OU

S C

AS

ES –

Year

- Is

sue All SUPREME except *

Sci.Ev. 2007-rjm Week 2 - 9/12/07 8

Festo2002 – pros.history estoppel

Graver Tank [Graver Mfg v Linde]1950 – doctrine of equivalents

Graham v. Deere1966 – obviousness

Gurley *1994 – teaching away

Harvard Mouse [Canada]2002 - patentable subject matter

Knorr-Bremse*2004 - willfulness

KSR 2007 – obviousness

FAM

OU

S C

AS

ES –

Year

- Is

sue All SUPREME except *

Sci.Ev. 2007-rjm Week 2 - 9/12/07 9

Markman1994 – claim construction

Monsanto (Canadian) *2004 – plants

Parker v Flook1978 – patentable subject matter

Seagate1994 – teaching away

State Street *1998 – patentable subject matter

Westinghouse v Boyden Brake 1898 – reverse DOE

FAM

OU

S C

AS

ES –

Year

- Is

sue All SUPREME except *

Sci.Ev. 2007-rjm Week 2 - 9/12/07 10

Your Patented ObjectsCraven: Pill ContainerFreed: Garbage BagFaulkner: Magnetic Snap Fastener

[Gamble - Applied Physics: Kleenex Box]Marshall: TI Calculator

[Morris: Coffee Sleeve (handout from last week)] Pan: Toothpaste SqueezerPeng: Auto-turn-off Vacuum Cleaner (three patents)Petrova: TI CalculatorReeslund: Disposable ThermometerReyes: Water Filter (two patents)van Niekerk: Bicycle BearingWahlstrand: Tooth Whitening Strip (two patents)

Color/Font KeyHigh techLow techTech not what you expected(last category not incomplete due to CW outages)

Sci.Ev. 2007-rjm Week 2 - 9/12/07 11

Reading a Patent

How many patents have each of you looked at (howver defined) before last week?

• None?

• Single digits?

• Tens of Patents?

• More?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 12

Reading a Patent

What you looked at first (first through fifth), what you looked at later, what you ignored.

(HANDOUT)

What about that cover sheet?

Your comments on other people’s cover sheets.

What I look at…

Sci.Ev. 2007-rjm Week 2 - 9/12/07 13

Reading a Patent

Why choose a patent whose number appears on something you can buy?

Your experts may balk at this requirement. Be ready to be firm.

How do you read a patent?

Always ask: who wants to know?

Different perspectives:

- PO, PAppl, AI, VC, Curiousity (you, now)

- Commonalities and differences in approach

Sci.Ev. 2007-rjm Week 2 - 9/12/07 14

Reading a Patent

• PAppl – (looking at prior art patent)– to disclose and maybe to claim around – to see if you should buy/license it

• Potential Licensee /AI - litigation– to design around – or buy – or merge…– to challenge validity or enforceability [assuming you’re within the

claims]– to negotiate a license intelligently

• M&A (PO or Licensee or AI-lit/settlment)– to evaluate an asset

• PO - litigation– to evaluate whether you can sue within the bounds of Rule 11

Sci.Ev. 2007-rjm Week 2 - 9/12/07 15

Who has to look at CLAIMS? Who can IGNORE claims?

• PAppl (looking at prior art patent)

• Potential Licensee /AI - litigation

• M&A (either side)

• PO – litigation (to sue on the patent)

Sci.Ev. 2007-rjm Week 2 - 9/12/07 16

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

Old Patent Look at Old's SPECIFICATION (what it "teaches")

Look at Old's CLAIMS

Sci.Ev. 2007-rjm Week 2 - 9/12/07 17

Lawsuit ≈ Liability & Damages

In ANY IP case (copyright, trademark, trade secret), the liability questions are:

IS IT VALID?IS IT INFRINGED?

What the “it” is will vary, of course.What makes an“it” valid is different, too.So: What is the “it” in a patent case?

Liability ≈ Validity & Infringement

Sci.Ev. 2007-rjm Week 2 - 9/12/07 18

Liability ≈ Validity & Infringement

Given what the IT is in a patent case,what affects BOTH validity and infringement?

How is that resolved in many patent trials?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 19

Your Good Instincts, Your Naivete, Your Insights, Your Ignorance, and All of the Above

Craven: “Land”

?Marshall?: M+F

Faulkner: boiler plate introducing claims

& Faulkner: “substantially”

Reyes: role of inventor’s other, NOT cited, patent. Why might it NOT matter? 6103114 v 5882507

statute(s)

MPEP

Peng & ____: references cited are the PTO/Examiner’s finds

Sci.Ev. 2007-rjm Week 2 - 9/12/07 20

Claim Language – M+F

How many of you already know about M+F claims?

Means + Function claims are common.

They are permitted under Sec. 112 P 6 (quoted on next slide).

Looking at the statute, or from prior experience, where will the controversies lie in a M+F claim?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 21

35 U

SC

112

¶ 6

An element in a claim for a combination may be expressed as a means or step

for performinga specified function

without the recital of structure, material, or acts

in support thereof, and

such claim shall be construed to cover the corresponding

structure, material, or acts

described in the specification

and equivalents thereof.

**for LITERAL infringement,

not DOE infringement**

Sci.Ev. 2007-rjm Week 2 - 9/12/07 22

KSR

Your Verbs - POS NEG or BOTHSC - thrillsJAF - frustratesJDF - engenders ambivalenceSM - slightly bothersLP - amusesJP - intriguesHP - charmsJR - shocksMR - concernsRvN - surprisesJW - appeals to

RM – irritates, when it doesn’t make me chortle (arrogantly)

Sci.Ev. 2007-rjm Week 2 - 9/12/07 23

KSR and the factoid

Two-edged sword – the strategic problem of such evidence

Simultaneous independent invention:

proof of obviousness?

or

grounds to declare an interference?

Sci.Ev. 2007-rjm Week 2 - 9/12/07 24

Next Week

Meet the graduate students

Reading assignment for them and you – TBD.