Please take your seat Whiteboard Screen RJM Andy

Please take your seat Whiteboard Screen RJM Andy

Please take your seat Whiteboard Screen RJM Andy Jenn* Asa Scott Helio Chinyere Jennifer Hernan* Patrick Emily Rob David Rob* David Patrick* Emily* Andy* Jenn Scott * Asa Chinyere Hernan Jennifer Helio* Helio Andy Jenn Chinyere Scott Patrick Emily Hernan David* Rob Asa * Scribe This week's scribes: TOA: Helio, 2013-04-17 (Week 3) David DOOR This week - Purple Week 2 - Black Week 1- Gray

shadow = law student RJM - IP: Sci Ev in Pat Lit - Spring 2013 1 Todays Agenda Finish Review of / Introduction to Patent Law: P!=C! =T; WHAT IS A PATENT (CONCRETE). Simulation schedule/5 person teams + coach to both At break: Figure out best time for Instant Patent Law SSI v TEK and KSR ~9:45 Adjourn 8:30 Break (timekeeper needed) 8:40 Resume 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 2 Teacher's Homework (per Andy) 1) How can we watch videos of past simulations? Links sent earlier today 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 3 But theres good news! This is just FYI. The patents you use for simulations will be assumd

to be in full force and effect at all relevant times 2013-04-17 (Week 3) To calculate the expiration of a patent, you need to know these dates. Then consult DOCS/TERMCALC.DOC on the 2012 course website (or read the statute). The calculated date is not your final answer, however. You must also consider - nonpayment of maintenance fees - extensions due to delays by the government. RJM - IP: Sci Ev in Pat Lit - Spring 2013 4 Reading a Patent Who asked you to? AI to design around it to avoid infringement to challenge validity or enforceability PAppl link is to MPEP - it's good for finding cases, statutes and rules (PTO rules not Rules of Civil Procedure) . PTO rules are cited 37

CFR 1.[rule#] Why? AVOID claim around) inequitable conduct COMPLY with Rule 56 and your duty of candor Obtain a solid patent to see if you need to disclose (and 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 Rule 11, F.R. Civ.P., not 37 CFR 1.11 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 5 Major Issues of Liability in Patent Law Validity Infringement Word police note: 'infringe,' in patent law, takes a direct object. Please say, "The accused device infringes the patent. " Please do NOT say, "It infringes ON the patent." The other part of a patent case, after liability is determined, is DAMAGES, or more generally

REMEDIES 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 6 Major Issues of Liability in Patent Law But first: some abbreviations used on the next slide. AI: Accused Infringer How PO: Patent Owner many s do we need on this slide? BOP: burden of proof sometimes called 'burden of persuasion' QOP: quantum of proof sometimes called 'standard of proof' Judge Grewal mentions burden of production sometimes also called 'burden of going forward.' Understanding that means understanding 'prima facie case,' too. The Different Quanta of Proof Prep: Preponderance of the Evidence = 50%+ C&C: Clear and Convincing Evidence = ~70%?? BARD: [evidence] a reasonable doubt 7 RJM - IP:beyond Sci Ev in Pat Lit - Spring

2013 2013-04-17 (Week 3) Major Issues of Liability in Patent Law How do BOP and QOP affect the litigators and scientific experts? WHAT IS THE QOP? WHO HAS THE BOP? Validity AI C&C Infringement PO Preponderance 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 8 P-I-S v P.A. t

n tr a r. o e p t r m ua i t q s o e r i m t n e h ee t s th i s f i o h T i de sl Situation A Patent-in-suit = NEW Prior Art Patent = OLD

Situation B Patent-in-suit = OLD Patent 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 News patent) Old Patent Look at Old's Look at Old's CLAIMS SPECIFICATION (to see what it TEACHES) Q.When do you look at the CLAIMS? A.When the patent is ________ This is the most important slide of the entire quarter. 2013-04-17 (Week 3)

RJM - IP: Sci Ev in Pat Lit - Spring 2013 9 SSI v TEK - Individual Questions - 1 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 HC R AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 AW 10 SSI v TEK - Individual Questions - 2 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2

S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 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 2013-04-17 (Week 3)

RJM - IP: Sci Ev in Pat Lit - Spring 2013 11 SSI v TEK - Individual Questions - 3 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 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 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1

2013-04-17 (Week 3) D JR RJM - IP: Sci Ev in Pat Lit - Spring 2013 12 SSI v TEK - Individual Questions - 4 "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." What "sealingly receives"? The "separate structure" or the "enclosure"? "an enclosure "an enclosure that may be formed that may be formed within and as within and as an integral part of the housing an integral part of the housing or or as a separate structure as a separate structure that sealingly receives that sealingly receives air and/or air and/or tire sealant." tire sealant." 2013-04-17 (Week 3)

RJM - IP: Sci Ev in Pat Lit - Spring 2013 remove the ambiguit y by reversin g the order 13 SSI v TEK Individual Questions - 5 "an enclosure "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives that sealingly receives air and/or air and/or tire sealant." tire sealant. Replace the second THAT with 'and' or 'which'? Replace 'that may be formed' with 'the enclosure being formed...'?

that may be formed within and as an integral part of the housing or Replace 'within and as' as a separate structure with 'as and within' so " 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 that both phrases lead with an AS. This helps the reader who is looking for parallelisms. 14 SSI v TEK - Individual Questions - 6 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 {8. Of the 10 claim terms and analyses, which did you like the best? Define like. Which did you like the least?-RJM} C Question 8 on page 8.1

HS Question 8 on page 8.1 JE Question 8 on page 8.1 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 15 SSI Claim Construction -1 Study the approach! It gives you a good idea about how lawyers (and later, their experts) confront a new patent that their client (PO) is asserting or is thinking about asserting by writing The Letter (AI) is accused of infringing or thinks the other side is thinking about it and/or is considering starting a DJ (like SSI did) (PO) is considering offering a (AI) is considering taking a license, license, possibly after writing The either because it received The Letter or Letter otherwise or AI has found the patent and is about to make a product that might infringe and wonders what to do 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 16

SSI Claim Construction -2 "intrinsic evidence" = page 1.2 boldface claims specification prosecution history "extrinsic evidence" = page 2.2 after 2nd cite to Phillips. dictionaries testimony (whether by inventors, experts or others) 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 17 SSI Claim Construction -3 MYTH: the 'inventor' authors the specification and correspondence with the PTO. ("response to office action" aka "amendment") What's bad about this myth? TEK and the "direct and continuous stream" of compressed air. What How Why? p.3. Using prosecution history. Using particular embodiments. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 18 SSI Claim Construction - 4 "Entrained" - Did the court 'read in' a limitation from the specification in the interpretation that this means "drawn" [into the air flow path].

Or did the court [merely] find a synonym? Review: READ IN (INTO) != READ ON (now called "MAP") READ IN(INTO) v. CONSTRUE CONSTRUE: Is the construction for all time forever after? 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 19 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 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 20 Obviousness(SSI-SJ, KSR), Field Trip, TOAs KSR frustrated SSI amused asa chinyere david (exempt) emily helio annoyed surprised flabbergasted surprised mystified surprised surprised surprised

hernan jenn patrick rob scott amused vexed intrigued confused confused intrigued unimpressed impressed surprised frustrated andy Trial tues pm (+reporter) tues pm mon all wed am (+reporter) tues pm mon all (+reporter) wed am tues pm tues pm TOAs

TOAs on homepage, linked below date (see next slide) TOA lists - week 1 and week 2(known , clueless, in between) Rob: infringement, reissue, inequitable conduct Scott: prosecution, litigation, work product privilege 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 21 Field Trip andy asa chinyere david (exempt) emily helio hernan jenn patrick rob scott KSR frustrated What did we SSI

surprised surprised amused miss by not annoyed going Monday?flabbergasted mystified surprised Tuesday afternoon? surprised surprised amused vexed Today? intrigued confused confused intrigued unimpressed impressed surprised frustrated Rob and Scott: question these people! Trial tues pm (+reporter) tues pm mon all

wed am (+reporter) tues pm mon all (+reporter) wed am tues pm tues pm TOAs TOAs Trippers: What was most surprising? As expected? Difficult? 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 22 SSI KSR frustrated SSI amused asa chinyere david (exempt) emily helio

annoyed surprised flabbergasted surprised mystified explain surprised surprised surprised hernan jenn patrick rob scott amused vexed intrigued confused confused intrigued unimpressed impressed surprised frustrated andy yourself!

Trial tues pm (+reporter) tues pm mon all wed am (+reporter) tues pm mon all (+reporter) wed am tues pm tues pm TOAs TOAs Also discuss: Good guy and bad guy determination Credibility of COUNSEL not just witnesses Role of Experts Andy (validity v. infringement during prosecution) Asa (Japanese patents) 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 23 KSR - 1 andy KSR frustrated

asa chinyere david (exempt) emily helio annoyed surprised hernan jenn patrick rob scott amused vexed intrigued confused confused mystified surprised SSI amused Trial tues pm (+reporter) flabbergasted tues pm surprised mon all wed am

(+reporter) Explain yourself! surprised tues pm surprised mon all (+reporter) intrigued wed am unimpressed tues pm impressed tues pm surprised TOAs frustrated TOAs Graham Analysis - KSR p.2.1 Primary Considerations: 1. Scope and content of the PA, 2. Differences between the CLAIMED invention and the PA, 3. Level of Skill in the Art Secondary Considerations: Long-felt unmet need, commercial success, failure of others, [etc.] but must have NEXUS. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 24 KSR - 2 P.3 Who wrote the facts? P.3 Seven (7) pieces of prior art to render the claimed

combination obvious??? P. 5. Word Police: Claims do not disclose. Likewise, the specification does not claim. Nor does the prior art. P. 5. Really bad greedy sleazy PO or normal PO? P. 6 The odor of inequitable conduct P. 7 A 'rigid' approach? Scott as defender! P.8 teaches AWAY. Remember: AWAY. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 25 KSR - 3 P. 9 A person or ordinary skill in the Supreme Court Justice art? P. 9 Market Demand? On summary judgment? P. 9 A later patent deprives an earlier one of its 'value or utility'? P.10 Start with the problem the inventor wanted to solve, but ignore the inventor's avowed purpose or particular motivation?? P. 11: KSR's own patent application?? P. 14: Convincing evidence (on SJ) of obviousness of adding Asano to fixed pivot point. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 26 TOA Lists on homepage, linked below date

2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 27 Next Week Next Week: Guest Speaker: Alicia Frostick Shah, Partner, Kirkland & Ellis [also MMPS from patent law 2004 and advanced patent seminar 2005] In preparation, read a transcript from a claim construction hearing in a case she was following. Read the SJ/Cl Const order that followed that hearing (and consideration of voluminous evidence and oversized briefs) Grad students: find some patents for possible use in the simulation. Law students: check if those patents have been litigated. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 28 SSI v TEK - Claim Construction Winner? 6:6 andy TEK asa SSI

chinyere emily david helio hernan jenn TEK SSI TEK TEK TEK SSI jennifer TEK patrick SSI rob scott 2013-04-17 (Week 3) SSI SSI RJM - IP: Sci Ev in Pat Lit - Spring 2013 29

Recently Viewed Presentations

  • Social Security Administration Call Order 0001: Job Analysis

    Social Security Administration Call Order 0001: Job Analysis

    Agenda Introductions SSA Debra Tidwell-Peters David Blitz Michael Dunn Elizabeth Kennedy Mark Trapani Overview of Team ICF International Brian Cronin, Ph.D. Lance Anderson, Ph.D. Beth Heinen, Ph.D. Jessica Jenkins, MPhil Allison Cook, M.S. Daniel Fien-Helfman Subcontractors Paul Davis, Ph.D. Kelly...
  • New France - Mr. O'Neill's Class Site

    New France - Mr. O'Neill's Class Site

    The Seigneurial System. What is the Seigneurial System? It is the way the King of France wanted to divide the land. Land was divided into large squares. One man was given the land. This man was called a seigneur or...
  • Punnett Squares

    Punnett Squares

    So fill in the Punnett Square and predict the possible outcomes of this cross. Give % for both genotype and phenotype. T t T t T T t t T T t t Genotypes: 25% TT, 50% Tt, and 25%...
  • Trade Routes established by 600 C.E. before the rise and ...

    Trade Routes established by 600 C.E. before the rise and ...

    Locate them on a map List empires that are connected to each other via these trade routes List products (commodities), technology and inventions, diseases and beliefs that are travelling through these routes and the flow of direction from origin to...
  • Parsing - University of California, Berkeley

    Parsing - University of California, Berkeley

    Unified Pragmatic Models for Generating and Following Instructions. Daniel Fried, Jacob Andreas, and Dan KleinUC Berkeley. Pragmatic models that generate instructions by reasoning about they'll be interpreted, and interpreting instructions by reasoning about why they were generated the way they...
  • Basic concepts (Early Diagenesis, chapters 2-3) Transport and

    Basic concepts (Early Diagenesis, chapters 2-3) Transport and

    Ceara Rise (WEqAtl) sediment composition; Martin et al., 2000 Non-steady-state (non 1-D) processes 3280 m 4675 m Diagenetic reactions will, in general, lead to changes in pore water solute concentrations, which in turn drive solute fluxes out of or into...
  • Certification of Death: A Reference Guide

    Certification of Death: A Reference Guide

    Death while in custody of law enforcement or mental health facility . Death in emergency treatment facility, urgent care, walk-in or under foster care. Toxidrome (drugs, alcohol, poison) Individual found dead. Death of a pregnant woman during any stage of...
  • PAOK - Pirkanmaan avoin oppimiskulttuuri -ohjelma http ...

    PAOK - Pirkanmaan avoin oppimiskulttuuri -ohjelma http ...

    Kokeen tekeminen, kun sinulla on käytössäsi koepohja Kokeet Lisää uusi Nimeä koe (esim. GE1 - Luvun 2 tehtävät) Valitse mihin kurssiin ja lukuun ja/tai kappaleeseen koe liittyy LATAA POHJA (äsken tekemäsi) Huom: Oletuksena koe on julkinen eli näkyy heti kurssillasi....