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IP: Scientific Evidence in Patent Litigation Week 5

IP: Scientific Evidence in Patent Litigation Week 5. Open Seating. Today’s Agenda. Catch-up Read+preposition ; Your Week 4 Questions (selected ) Basics validity v. infringement KSR – obviousness Infringement – literal and under the Doctrine of Equivalents

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IP: Scientific Evidence in Patent Litigation Week 5

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  1. IP: Scientific Evidence in Patent Litigation Week 5 Open Seating RJM - IP: Sci Ev in Pat Lit - Winter 2012

  2. Today’s Agenda • Catch-up • Read+preposition; • Your Week 4 Questions (selected) • Basics validity v. infringement • KSR – obviousness • Infringement – literal and under the Doctrine of Equivalents • Next Week: A real live expert tells all (well, tells some) • More team meetings with me. Break ~5:20 RJM - IP: Sci Ev in Pat Lit - Winter 2012

  3. Catch-Up – verb phrase with READ -1. ON Last week we discussed READ ON. Review: If a claim READS ON the prior art, it is INVALID. If a claim READS ON the accused device, it is INFRINGED. Think of a two-column chart. “READING ON” means you read the left and compare it to the right – you read the claim ON the other thing. If there is a 1:1 correspondence, the claim READS ON the other thing. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  4. Verb phrase with READ -2. IN NEVERread ina limitation from the specification. On the other hand, ALWAYSconstrue the meaning of claim terms by interpreting them ‘in light of the specification.’ One way to understand this might be to say: WhenIargue it, it is proper claim construction, but When you argueit, it is the sin of READING IN. Would that it were so easy. What constitutes [evil] READING INwill make more senseafter you have begun to struggle with your simulation patents. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  5. Verb phrase with READ -3. OUT NEVERread outa limitation that is in the claim. On the other hand, if the limitation in question, properly construed, adds nothing to the claim, it adds nothing. One way to understand this might be to say: When I argue it, it is proper claim construction, but When you argue it, it is the sin of READING OUT. Again, it’s not that simple. What constitutes [evil] READING OUT will make more sense after you have begun to struggle with your simulation patents. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  6. WARE v MORRIS Judge Ware said that the claims should be construed as the examiner understood them when neallowed them. (And if the claim was reexamined/reissued? asked Tim. Kevin, maybe others. More on that later.) Ware says: in particular, the Federal Circuit says to IGNORE the accused device because the accused device did not exist at the time the patent issued. Morris says: neither did the lawsuit. And neither did any dispute about what the claim language meant. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  7. WARE v MORRIS How does a claim term come to be disputed? Put another way, how do you -- the lawyers and the experts -- decide what language in the claim(s) would need a judge’s CONSTRUCTION? Answer: Because you have considered 1. Validity 2. Infringement My preference is for HONESTY. I see no merit in not sweeping the truth under the rug. By the time the Claim Construction papers are filed, counsel for both sides and the judge know: about the accused device – at least to the extent it has motivated a claim construction question. Why pretend not to know? about any uncited prior art that has motivated a claim construction question. Why pretend not to know? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  8. WARE v MORRIS In this, as in many a discussion about patent law, - abandon abstract words (objective, e.g.) and - come up with a concrete example. Corollary: distrust people (yes, even a Big Kid) who cannot give a concrete example. Chances are they have not thought the matter through very well. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  9. Prosecution History Estoppel (PHE) v. Interpreting akaConstruing the Claims in light of the Prosecution History When you interpret a claim in order to determine literal infringement (or validity), you use the PROSECUTION HISTORY. That is *NOT* the same as PHE. PHE refers to something specific: PHE limits the PO’s right to win on infringement when the claim does not LITERALLY cover the accused device, but the wider scope is within the doctrine of equivalents (DOE). RJM - IP: Sci Ev in Pat Lit - Winter 2012

  10. I WONDER - DAVE Or BISS. Or a misguided notion that what they say is FAIR and LOGICAL and WISE…  I wonder what the doctrine of claim differentiation actually dictates. The defendants mention in a footnote, "The doctrine of claim differentiation dictates that different claims with different language have different meaning,and should not be inferred to have the same construction because of some misguided notion of 'parallel terms'." I'd like to unpack this statement a little bit.Claim differentiation simply dictates that different claims should be interpreted to cover different things. In a few minutes of searching, I can't find anything to support the second part of the sentence, in particularly how it relates to parallel terms.  I'm guessing that the defendants don't have any case work to support this sentence (since it's not cited) and instead are relying on Big Kid syndrome.I'm also guessing that the defendants are trying to pull a fast one by obfuscating "claims" and "elements". The doctrine of claim differentiation dictates that claims should be construed differently rather than elements. The elements in Row 23, 19, 28 largely DO contain parallel language. There's no reason why truly parallel elements shouldn't be treated as such even if separate claims are given the benefit of the doubt Good instincts! Claim differentiation only kicks in if EVERYTHING would be the same. If the two claims have differences in addition to the parallel terms, then CD does not apply. And those parallel terms CAN mean the same thing. Really, Trust me, but not BISS. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  11. I WONDER - AMY       I wonder how long this case has been in process? We knowthat at some point the three plaintiffs had separate cases. How longwas each involved before it became a joint case?Looking at the link provided to the docket, I can see that Acer firstfiled a complaint for declaratory judgement in Feb 2008. I tried toregister with PACER to get access to other dockets but it seems Icannot register unless I am a court appointed Criminal JusticeAttorney or a US Government Agency (I am probably not looking in theright place) therefore I'm not sure when Barco and HTC first filedcomplaints. Looking at the link provided for us for the Acer case, Ican see that Dec 2008 there is a motion to relate the Barco case.Finally, it is in January 2012 we see that the Claim Constructionhearing will be held. According to this timeline, both Acer and Barcohave been involved for at least two years jointly. Surprisingly, Ididn't see any mention of HTC in the docket but HTC is listed as aplaintiff in the brief for the joint construction hearing. I found thedocket to be very helpful to get a idea of the timeline for claimconstruction and to see all the motions and stipulations that arefiled over time. There was a previous case that resulted in all those settlements in EDTex before Judge War*D*, as we know from the field trip. There is only one reported decision in that case, the claim construction order. It was entered in June 2007. From the case number, CIVIL ACTION NO. 2:05-CV-494 (TJW) we know the case was filed in 2005. The first reexam on the ‘336 was filed – per LEXIS – in 2006. The 5th of 6th requests listed by Lexis was filed by Heidi Keefe, then at White & Case. The ‘148 has lists only 2 reex requests, the first I 2006, the second Heidi’s. The ‘584 has four requests, none from Heidi. The ‘890 was not in suit in Texas. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  12. I WONDER - PATRICK Question: Where and when were these cases all filed? How did they getconsolidated?Answer: After playing around with Lexis Courtlink (gotta love thestudent subscription - "Normal Cost $200, Your Cost $0"), it lookslike there were 3 DJ actions filed against Technology Properties et alin ND Cal on the same date, Feb. 8, 2008. The three cases were filedby Acer & Gateway (08-00877 JF), HTC (08-00882 JL) and Asus (08-00884EMC). After Acer and Gateway were assigned to Judge Fogel, theymotioned to consolidate (or 'relate') the three cases, which wasgranted on Apr. 22, 2008. Then another company, Barco N.V. filedanother DJ on Dec. 1, 2008 in ND Cal and subsequently filed a motionto relate its case to the existing three, which was granted on Dec.17, 2008. Interestingly enough though, the Asus case does not appearon the joint claim construction brief, which leads me to believe thatthey might have settled. But in my quick research I could not find outwhen or why they dropped out. On the docket I posted, http://www.stanford.edu/~rjmorris/sciev.12/DOCS/ACER_DKT.HTM884 is a related case but with JF as the initials. I suspect that if we looked at that docket, we would find that it settled before the consolidation. A word search of that docket comes up empty for “asus.” RJM - IP: Sci Ev in Pat Lit - Winter 2012

  13. We stopped here on 2/2 and discussed KSR Subsequent slides we covered on 2/2 are marked usually in the top right. Some of those slides we did not finish. Others we did finished but may revisit. begun 2/2 RJM - IP: Sci Ev in Pat Lit - Winter 2012

  14. I WONDER - WAQAS I wondered about the background of Judge Ware. I had already spent a bit of time on it before reading this question so here goes: Here Judge Ware lays out some of his thoughts on how patent language needs to be understood as how it would have been understood at the time by someone of ordinary skill and that he says weighs even above the testimony of the actual inventor.That’s something I find against the spirit of patent protection from an inventors perspective. http://www.stanfordlawreview.org/2011keynote.pdf In this article Judge Ware discusses some rules that can be used in dealing with patent evidence and also some difficulties in developing more rules due to the differing standards of Circuit and District courts. http://heinonline.org/HOL/Page?handle=hein.journals/sccj23&div=31&g_sent=1&collection=journals On his withdrawn nomination from the federal circuit: http://www.paloaltoonline.com/weekly/morgue/news/1997_Nov_19.WARE.html http://rs9.loc.gov/cgi-bin/query/D?r105:3:./temp/~r105PFiUd3:: A fairly harsh response to the scandal: http://www.rangemagazine.com/archives/stories/spring98/stories_the_infamous_ninth.htm Don’t blame Judge Ware. 1. The statute (that is, Congress) supports this. 2. The Supreme Court and the Fed Cir (his Bosses) have said or at least implied this. 3. The ordinary artisan, being a legal fiction, can’t lie, die, forget, misremember, have an ax to grind, or be confused by opposing counsel. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  15. I WONDER - SAM I wondered where the term "Markman brief" came from. After some quick searching, I learned that it refers to the claims construction hearings in general, named after Markman v. Westview Instruments Inc., which set a precedent that terms of art and in particular claims would be construed by the judge, not the jury. Useful websites include:http://www.casebriefs.com/blog/law/civil-procedure/civil-procedure-keyed-to-cound/trial/markman-v-westview-instruments-inc/http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/jlawp5&div=31&id=&page= RJM - IP: Sci Ev in Pat Lit - Winter 2012

  16. I WONDER - SAM I wondered where the term "Markman brief" came from. After some quick searching, I learned that it refers to the claims construction hearings in general, named after Markman v. Westview Instruments Inc., which set a precedent that terms of art and in particular claims would be construed by the judge, not the jury. Useful websites include:http://www.casebriefs.com/blog/law/civil-procedure/civil-procedure-keyed-to-cound/trial/markman-v-westview-instruments-inc/http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/jlawp5&div=31&id=&page= RJM - IP: Sci Ev in Pat Lit - Winter 2012

  17. Catch-Up – Law and Fact (and Equity) begun 2/2 FACT 101 Lack of Utility 102a Anticipation 102g Diligence 102g Corroboration 103 Analogous Art 112P2 Best Mode 112 P1Written Descrip. R56 Intent (Ineq. Cond.) R56 Materiality (Ineq. Cond.) 271 Infringe. – literal 271 Infringe.– DOE 285 Exceptional Case EQUITY R56 Ineq. Conduct 283 Injunction 284 Multiple Damages 285 Award of atty fees - Patent Misuse 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 . Some have changed, with various effective dates. Compiled first in the 1990s, then made into a slide for Adv Pat Seminar 11/15/05, updated for SciEv Seminar 9/5/07 and updated again for SciEv 2012. See also pdf pages 31-33 of my amicus brief in Microsoft v. i4i. -rjm RJM - IP: Sci Ev in Pat Lit - Winter 2012

  18. Tim – shaping expert testimony; attacking the other expert; hiring experts • If the above is true, then how should one go about cleanly and respectfully, but brutally and efficiently, tearing down an opposing expert witness's credibility in the eyes of the fact finder? • What are typical chinks in an expert witness's armor that can be exploited? • (“Individual concern”) I would like to learn more about the practicalities of expert witness battles. It is, of course, difficult to talk about this subject matter in class. But I have known of cases where, for instance, race and "funny names" are successfully used by litigators to undermine opposing scientific testimony. And this is an issue, especially when many scientific experts are foreigners and immigrants (e.g., 40% of all graduate students at MIT). U.S. society is simply not as enlightened as we would hope it to be; and many patent battles take place in areas of the country that are still very backward in thinking. Should that play into my calculations? How and why? • My own experience has informed me that I should never allow myself as a litigator to be mired in trivial details and theoretical debates. What's important is constructing a coherent, convincing, and compelling narrative, for the specific case in hand. Is that true? • If the above is true, then allowing a patent dispute to degenerate into a "battle of the experts" over scientific details incomprehensible and uninteresting to the fact finder would not be the winning move. How does one maintain narrative when talking to a Ph.D. whose duty is to talk science? • An experienced litigator has once told me that the best way to attack an opposing expert witness is to bypass the scientific details and destroy his credibility. Is that true? After all, as Sun Tzu wrote, "If you lay siege to a town, you will exhaust your strength.“ An expert witness's greatest weapon is his knowledge, and challenging him about scientific details is little different from laying siege to a town. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  19. Attacking the other side’s Expert Treating an expert like any old witness in a he-said-she-said contest: making ner sweat and stutter and get angry and… GOOD IDEA? What makes one expert more CREDIBLE than another? How do juries view all the things that make killer litigators excited? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  20. Catch-up: Your Questions - Nicolaj • B: Judge Ware talked a bit about the hypothetical "PHOSITA", but during the tutorial we did not hear any of the counsels address the issue of who might be the relevant PHOSITA for this case (maybe for a good reason as this issue might be more relevant to address at the actual claim construction hearing the following day), but I was just wondering (and thought we could discuss) who the PHOSITA might be for this case? • C: Will it be possible to appeal Judge Ware's claim construction - or will the parties have to wait until a final decision on the merits has been rendered? • I was a bit puzzled by the discussion raised by Plaintiff's counsel in the Acer case re interpretation of the prosecution history (and the patentee's later amendments during prosecution). This led to a short discussion between Plaintiff's counsel and Judge Ware about what point in time the claim construction should take its outset. No clear conclusion came out of that. I know that for validity purposes we construe the claims as the PHOSITA would understand as per date of filing. But what about infringement, I think Lemley taught us that for infringement purposes we construe the claims as the PHOSITA would understand them as per date of the infringement. I just got a bit confused, if you have a claim construction hearing like in the Acer case and both validity and infringement is argued (which I guess is the normal - and we also heard Plaintiff's counsel (the one with "the skirt" say that Judge Ware's construction would have great impact on the infringement issues)), would you not in a way have to have two claim construction hearings - one for validity purposes and one for infringement? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  21. begun 2/2? Catch-up: Your Questions - Corinne c. Regarding claim construction: does the Judge _have_ to pick one of the parties' suggested interpretations, or can he make up his own? At the hearing, Judge Ware appeared ready to invent his own constructionfor some of the terms. Is this common?2. Questions about individual concernsa. It seems like we will have very limited time to prepare the simulations—the quarter is already half over. Is our workload suddenly about to mushroom?b. In our simulations, how will we argue infringement without the benefit of claim construction? • Overall, motions for reconsideration, like that in _BCS_ _v.__Cordis_, are rare. Are they any more common in the claim construction context? On that note, what kind of review is available for claim constructions, in general? They likely can't be appealed before a final judgment, but it seems courts would be reluctant to grant interlocutory appeals on the issue, despite it's importance. Does this play into the calculation for making a motion for reconsideration? b. Regarding the field trip: What does the class think about the plaintiff's argument that the ring oscillator should be defined as "non-controllable"? Were they convinced? Would knowing about theallegedly infringing product help/hurt their analysis in any way? It‘s already obvious why each party wants the term defined in their respective ways. What more could knowing about the product add? If it would add something, is that something appropriate to consider during claim construction? They’re not reluctant. The Fed Cir made it a policy, right after Markman, of NEVER granting petitions for interlocutory appeal See above re TRUTH. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  22. DONE on 2/2 Catch-up: Your Questions - Corinne c. Regarding claim construction: does the Judge _have_ to pick one of the parties' suggested interpretations, or can he make up his own? At the hearing, Judge Ware appeared ready to invent his own constructionfor some of the terms. Is this common?2. Questions about individual concernsa. It seems like we will have very limited time to prepare the simulations—the quarter is already half over. Is our workload suddenly about to mushroom?b. In our simulations, how will we argue infringement without the benefit of claim construction? You *can* make your simulation JUST claim construction. Or argue it along with infringement. Things to remember: 1. From the time that patents had claims until 1994, claim construction was not dealt with separately, not even in bench trials (“bench” = NO jury). 2. Some judges STILL don’t decide claim construction until after trial. 3. Most districts do not have patent Local Rules. • Overall, motions for reconsideration, like that in _BCS_ _v.__Cordis_, are rare. Are they any more common in the claim construction context? On that note, what kind of review is available for claim constructions, in general? They likely can't be appealed before a final judgment, but it seems courts would be reluctant to grant interlocutory appeals on the issue, despite it's importance. Does this play into the calculation for making a motion for reconsideration? b. Regarding the field trip: What does the class think about the plaintiff's argument that the ring oscillator should be defined as "non-controllable"? Were they convinced? Would knowing about theallegedly infringing product help/hurt their analysis in any way? It‘s already obvious why each party wants the term defined in their respective ways. What more could knowing about the product add? If it would add something, is that something appropriate to consider during claim construction? Judge Ware can come up with his own construction. On appeal, the Federal Circuit can come up with yet a different one. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  23. begun 2/2 Catch-up: Your Questions - Amanda •          c. If it's true that it's the claims that truly matter, why does adjusting the specification make you lose the filing date? Doesn't this seem like an entirely artificial requirement if it doesn't technically "matter." But then again it has to support the claims for the claims to be valid. So what's the deal? • 1. Class Discussion         a. Is the tutorial a useful and truly neutral process? It was easy to hear arguments from the attorneys sneak in, so what do we think about that?         b. Who has the burden of proof in a DJ dealing with infringement? We know the burden is on the filthy rotten patent owner in a normal infringement action, but it seems the procedural posture requires it be on the plaintiffs (greedy slimy accused infringers) here. Define “matter”! Patents must “TEACH.” That is the quid pro quo for the MONOPOLY. BOP is determined by the issue, not who is plaintiff and who is defendant. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  24. begun 2/2 Catch-up: Your Questions - Kevin • *Q2: *Are there strategic benefits to raising the RDOE even if it isunlikely to be successful on its own? Does it help to color the case? You’re right. RDE is the last refuge of scoundrels (well, not the original one). Or so I learned from a very big Big Kid who, to the best of my knowledge, never told me something I later found to be untrue. *Q1:* During the claim construction hearing it appeared as though the 336patent covered the concept of putting a second (ring oscillator variablespeed) clock on the microprocessor and was not as fully developed as thelater products that are now alleged to infringe. Is it likely the plaintiffs will claim the reverse doctrine ofequivalents[1]<file:///C:/Users/Kevin/Documents/Scientific%20Evidence%20in%20Patent%20Litigation/2.2/Catchup.docx#_ftn1>(RDOE)at a potential trial as a defense to infringement(?) and, if so, howlikely is it that such a strategy will be successful? (My guess is veryunlikely and less than 5%) RJM - IP: Sci Ev in Pat Lit - Winter 2012

  25. begun 2/2 Kevin’s Questions - 2 • *Q4:* What are the origins of Agility IP Law? Where did the firm’sattorneys previously work, when did they jump ship, and why? • *Q5:* What were people’s thoughts on the use of the various metaphors andpresentation styles we observed in court? Which attorney was most effective and why? Was there anything that surprised you by the proceedings or the way the attorneys handled themselves? *Q3:* The defendant in the case claimed that the 336 patent stood up to 16 ex partereexams and ~900 prior art references. Is this an atypically largenumber of reexam proceedings and references cited? Should much credence be given to these statistics? Wilson, Sonsini. Yes What ‘credence’? What might the statistics prove? Do they? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  26. Catch-up: Your Questions -Chris That’s what you’ll do in preparing for the simulation. You’ll have your teammates and me to help you. 1. The cases we have to discussed so far were quite complex. I would like discuss an example claim and a possible design-around to better understand what it takes not to infringe a patent.2. Person of ordinary skill in the art. Would an inventor be a person of extraordinary skill in the art? You also mentioned the 'POSITA' is a myth. What exactly did you mean by that? 3. Whenever a patent gets declared invalid, are the prosecutors of the patent in trouble? Could you sue them for writing you a bad patent?   Yup. If you got a patent, you’re not ordinary (until the patent is invalidated for obviousness…) The ordinary artisan is a legal fiction, a way of thinking that should lead to justice. The OAATTOI (my newest acronym: oh-AAH-toy; AAH like the a in map) is like the Reasonably Prudent Person in Tort Law. Invalid, not likely. WHY? Unenforceable (violation of the duty of candor), possibly. I occasionally taught such a case... Not sure it’s in the Winter 2004 materials, though. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  27. Catch-up: Your Questions -Chris That’s what you’ll do in preparing for the simulation. You’ll have your teammates and me to help you. 1. The cases we have to discussed so far were quite complex. I would like discuss an example claim and a possible design-around to better understand what it takes not to infringe a patent.2. Person of ordinary skill in the art. Would an inventor be a person of extraordinary skill in the art? You also mentioned the 'POSITA' is a myth. What exactly did you mean by that? 3. Whenever a patent gets declared invalid, are the prosecutors of the patent in trouble? Could you sue them for writing you a bad patent?   Yup. If you got a patent, you’re not ordinary (until the patent is invalidated for obviousness…) The ordinary artisan is a legal fiction, a way of thinking that should lead to justice. The OAATTOI (my newest acronym: oh-AAH-toy; AAH like the a in map) is like the Reasonably Prudent Person in Tort Law. Invalid, not likely. WHY? Unenforceable (violation of the duty of candor), possibly. I occasionally taught such a case... Not sure it’s in the Winter 2004 materials, though. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  28. Catch-up: Your Questions - Waqas Q1) We have on multiple occasions said that most parties settle after the claim construction. Are their ever any reasons not to settle? and what do the court proceedings look like after claim construction? Q2) What are things to consider when preparing a person for scientific testimony? Q3) How to approach a scientist/engineer for cross examinations? See Tim’s Questions and our answers in class. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  29. Catch-up: Your Questions - Ram That’s the universe in the US. There are no other kinds of patents? Drug patents are ‘utility patents.’ What are the different kinds of patents that can be applied for (isthere anything apart from utility, design and plant)? I am interestedin knowing if there is a specific kind of patent that is required forinventions in pharmaceutical industry.Can discoveries also be patented or does it necessarily have to be aninvention. For example, if it is discovered that root or leaf extractof a plant A has anti-cancer properties, can it be patented? A “discovery” cannot be patented unless it is disclosed as something an ordinary artisan would be ENABLED to make and use. For an inventor and a good claims drafter, that ‘unless’ is not a serious barrier. A more serious barrier is that the “discovery” is already in “the prior art” *inherently*. Inherent anticipation is still anticipation. You can’t claim the extract because it already exists in the plant, the plant is known to have the properties, and the extraction process may also be known. If not, youu can claim the way to extract it, or the use of it to cure a disease that it wasn’t used to cure before. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  30. Catch-up: Your Questions -Jamie 1. Do the engineers in the class think that judges are really qualified to interpret the claims of highly-specialized technologies during MARKMAN hearings? If ACER is any indication, how often do you think they get it right? 2. At the Patent Pilot Program presentation two weeks ago, Chief Judge Ware emphasized the favor a party gains when they “concede” certain points during proceedings. Chief Judge Ware explained, “Often counsel for each party will try to take the most extreme positions possible, as opposed to taking a reasonable position to help us get closer to the true meaning of the claims during the claim construction process.” Did either counsel for the litigants in the ACER last week exhibit this “reasonable” approach in their presentation?  3. Do you feel that NDCA Local Rule 4-3, which requires parties to submit joint claim construction briefs, helps foster cooperation between opposing parties (i.e. encouraging them to agree on claim term meanings) or merely encourages them to pick the ten most disputed and case-dispositive claim terms, confining the battlefield and creating a highly contentious environment?   4. Should the patent system allow monetization of patent rights by companies that don’t actually bring a product to market (e.g. non-practicing entities (“NPEs”))? By threatening product-based companies with lawsuits and compelling them to license the patent rights to an invention the NPE neither invented nor plans to make, are non-practicing entities extracting unearned revenues from mid-sized and large companies that could have instead funded more R&D? Or, by providing cash for inventor’s whose product might not otherwise make it to market, are non-practicing entities helping to encourage innovation?  Might your answer depend on (i) the amount of money an NPE invests in small inventors (i.e. the amount it expends to purchase patents from small inventors) vs. (ii) the amount of money an NPE spends trolling for royalties (i.e. the amount of money it extracts from bigger companies like Apple, Lenovo, or Samsung through its lawsuits and license agreements)? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  31. Jamie’s Questions -2 • QUESTIONS ABOUT INDIVIDUAL CONCERNS1. Based on Chief Judge Ware’s comment that file wrappers should be better organized to facilitate claim construction, is the patent office undertaking any efforts to improve the organization of existing or newly filed documents to assist judges in understanding and accessing the information concerning a patent’s prosecution history? 2. I was hoping to get further clarification on one of Chief Judge Ware’s questions regarding claim construction for a patent that has undergone reexamination. He asked, “does the judge at a MARKMAN hearing read the clams as a PHOSITA would have read them at the time of reexamination or when the patent application was originally filed?” Plaintiff’s counsel seemed unsure whereas his co-counsel from Cooley (Heidi Keefe) seemed to be nodding her head in the affirmative.   • 3. Why do most judges not elect to take on a technical advisor as Chief Judge Ware has done in ACER? Depending on the complexity of the technology, it seems incredibly inefficient not to bring on someone to at least assist the judge. Why would a judge expend the kind of resources a district court does and then risk misinterpreting the science behind the invention? Moreover, in a jurisdiction like NDCA where the court requires the parties to identify the most case-dispositive claim terms in the case (Rule 4-3), how can a judge ensure the parties have really honed in on the pressure points of a claim without understanding the technology objectively with the assistance of a technical advisor? • Also about Acer: q 1, previously slide RJM - IP: Sci Ev in Pat Lit - Winter 2012

  32. Sam’s Questions • 1) Questions.a) What does "substantially" mean in patents? I've come across phrases like "substantially the same material" and "with time betweenexcitation and detection being substantially equal to the fluorescencelifetime." Is this quantifiable or is it similar to the 99.9%certainty of "beyond reasonable doubt"? The two examples I gave seemlike different uses, as at first glance I would say "substantially thesame material" would mean the same except for color or some cosmeticdifference, whereas for a time interval, it must involve someprecision.b) I'd be curious to know an example of the dream suit you mentioned in which the PO would be caught both ways on either winning infringement but losing validity or winning validity but losing infringement. It seems that looking at the court decisions and history of a suit like this would be a great exercise, at least for non-law students.c) I'm intrigued (and maybe a bit concerned) that in the claimsconstruction hearing, the complexity seems to be simply in the wordgames. The word "asynchronous" is not difficult to define clearly forsomeone skilled in the art, but for a judge and lawyers (and probablyjury) it proved elusive. On the other hand, a scientist or engineerwould likely be biased based on his/her experience in ways that ajudge would not. This seems like an unfortunate situation: aspecialist-arbiter may be biased whereas a lay person is supposedlyless biased, even though a specialist would immediately understand thecrucial concepts and definitions (and be honest about them, or atleast they should be in scientific fields) while the lay person mightget them wrong or distort them deliberately (resulting in appeals andmore uncertainty). Am I right in thinking of the PHOSITA idea as someinexact way to bridge this gap?. • d) Will we talk much about the AIA and its predicted effects, either now or later in the class? • 2) Individual questions:a) Can you recommend any primer of legal terms, such as a short book or maybe a website that could serve as a crash course in all law and legal procedures (not just patent law). I'd like a better broad knowledge, and the vocabulary/jargon seems like a barrier to "joining the club" that I'd like to get through. We can have a reunion in the spring or summer quarter, though, and talk about it. Ask a law student about books and websites! Yes! Exactly right! RJM - IP: Sci Ev in Pat Lit - Winter 2012

  33. KSR – page 2.1 The analysis is objective: "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. [bracketed numbers mine - RJM] Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as - commercial success, - long felt but unsolved needs, - failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." ([Graham] at 17‑18) RJM - IP: Sci Ev in Pat Lit - Winter 2012

  34. 35 USC 103 (a) (as amended in the AIA, but quite similar to the 1952 version [103 first 2 sentences.) 2. Differences between the CLAIMED INVENTION and the P.A. "A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made." 1. Scope and content of the P.A. 3. Level of skill in the art Purple phrases are changed from the 1952 version, but not in ways that matter for us. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  35. Law and Fact 3. Level of skill in the art 2. Differences between the CLAIMED INVENTION and the P.A. 1. Scope and content of the P.A. The THREE Graham Factors are question so FACT Despite might/may, the Fed Cir has ruled that the secondary considerations must ALWAYS be considered and the Supreme Court did not change that. The secondary considerations are also questions of FACT. • “Such secondary considerations as • - commercial success, • - long felt but unsolved needs, • - failure of others, etc., • might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries mayhave relevancy.” Graham v. Deere. • The secondary considerations, post KSR, are now called the FOURTH Graham factor. To make it harder to stay in the club for the old people? • BUT, adding together all those FACTS, the court decides OBVIOUSNESS, a question of LAW. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  36. Your Shared Likes and Dislikes in KSR “Obvious to try” – Dave (L), Nick (D) Automaton – Chris, Patrick, Amy, Kevin (all L) …Asano… (what the prior art teaches/doesn’t) - Amanda, Waqas, Sam, Jamie (all D) - Corinne (L) [Mealy mouthed phrases] – Tim, Dave, Corinne Role of Experts (!) – Patrick (D) Q. Why do I ask you to start with a quote? RJM - IP: Sci Ev in Pat Lit - Winter 2012

  37. Similarities between Infringement and Validity Anticipation : Literal Infringement ::Obviousness : DOE Both Infringement and Validity ask you to see if the claim READS ON something. If it does, then there is{infringement/invalidity}. ANTICIPATION is invalidity when only ONE piece of prior art is needed for the right hand column. OBVIOUSNESS is invalidity when only ONE piece of art does not suffice. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  38. Similarities between Infringement and Validity • Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987) (Nies, J.) (Fish & Neave for defendants/successful appellants): • “The district court acknowledged that basic principle, but went on to make the following observations: • As the defendants put it, "that which infringes if later in time will anticipate if earlier than the patent. . . . The inquiry as to anticipation is symmetrical with the inquiry as to infringement of a patent." The classic test of anticipation provides: "That which will infringe, if later, will anticipate, if earlier. Thus a claim fails to meet the novelty requirement if it covers or reads on a product or process found in a single source in the prior art." • Id. at 22. While "the classic test of anticipation" was indeed as stated, n3  [citing Supreme Court cases going back to 1889,]  under the current statute "anticipation" does not carry the same meaning as before, and the "classic test" must be modified to: • That which would literally infringe if later in time anticipates if earlier than the date of invention. RJM - IP: Sci Ev in Pat Lit - Winter 2012

  39. Warner-Jenkinson; Siemens Tell the story – the issue before the Supreme Court, and how it got there -- from the point of view of Hilton Davis. SUCCINCTLY. How would Warner-Jenkinson’s story differ? What is the FWR test? Which of F, W and R are most likely to be disputed? What is the ‘insubstantial differences’ test? RJM - IP: Sci Ev in Pat Lit - Winter 2012

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