“be prepared. be concise. be clear. if your client does not have a good case, counsel him, her or...

SLS Lunch Talk 1

Quotes from Judge Giles S. 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 - 2012

“If you look long enough in the patent law, you can find a case to support any kind of proposition[.]”

Jefferson Medal Acceptance Speech, NJ Patent Law Association, 1955 (quoted in Smith1999)

http://www.njipla.org/jefferson_winners.asp

http://www.njipla.org/jefferson_winners.asp

http://www.law.berkeley.edu/journals/btlj/articles/vol14/Smith/html/text.html

A Child’s Guide to the Myths and Legends

of Patent Law (part 1)a presentation for 0.5 SLS Faculty

Lunch Workshop

Roberta J. Morris, Esq, Ph.D.Lecturer, Stanford Law School

Member of the Patent Bar and of the Bars of New York and Michigan

[email protected]

Guess the rest of the talk.

Please write your favorite (or any) patent law myth on the index card provided.

Include your name if you like.

RJM - 2012

RJM - 2012 SLS Lunch Talk 4

Snowflakes are complex asterisks.They identify things that

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

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

SYMBOLS

The Mona Lisa indicates TERMS OF ART (TOAs). Please be careful with TOAs.Anyone who DOES know what they mean may misunderstand you if you misuse them.

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

SLS Lunch Talk 5

Survey: State of Knowledge(Handout: US Patent 7,845,512*)

Have you ever read a patent before? If NO: Welcome, children.

If YES: Please do not ask or answer any questions unless I ask for adult participation.

If adults outnumber children, click here?

* I chose it because it's short, ~post-KSR, and was sued upon.Want to read a second one? There are a few copies of another patent,7438213, as a bonus.

RJM - 2012


Terms of Art in the Next Slides

PATENT-IN-SUIT (P-I-S)PRIOR ART (PA)CLAIMSPECIFICATIONSTEACH (verb)PRACTICE (verb)MARK (verb)

Please: No final "S" unless you are talking about multiple patents!


Some Other Terms

ACCUSED DEVICE (AD)EXAMINATIONPROSECUTION"READ ON""READ IN"


Q. What is the most important part of a patent?

As with all questions addressed to a lawyer, the right response is:Who wants to know and why do they want to know it?

Situation B.

OLD is the patent-in-suit.

NEW.com marks its products with

the NEW patent number.

Question: Is OLD infringed by NEW?

Analysis:

Compare OLD's CLAIM to

NEW's SPECIFICATION.

NEW's specification describes

the accused device (AD).


PA and P-I-S and ADSituation A.

OLD is a prior art patent.

NEW is the patent-in-suit .

Question: Is NEW valid over OLD?

Analysis:

Compare NEW's CLAIM to

OLD's SPECIFICATION.

OLD's specification is where

OLD teaches.

Q. When do you consider a patent’s CLAIMS?

A. When that patent is _________________.

the patent-in-

suit


What does a patent claim look like?

7,845,512 patentColumn 4, line 33 to column 5, line 4

SLS Lunch Talk 11

7,8

45

,51

2 P

ate

nt

("'5

12

") -

CO

VE

R S

HE

ET

RJM - 2012

Patents don't last forever unlike trademarks and [almost] copyrights.

Exercise: What is the term of this patent?

NB: Patents also differ from trademarks and copyrights because patents have maintenance fees. The rule is:Pay on time for each additional 4 years of coverage or your patent will RISE INTO the public domain.

SLS Lunch Talk 12

7,8

45

,51

2 P

ate

nt

("'5

12

") -

CO

VE

R S

HE

ET

issue date

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

RJM - 2012

Term: ~18 years.monopoly

Effective: f

rom is

suance

.

Dec. 7, 2

010.

Expiratio

n = date

of *earli

est* filin

g + 20 years

+delay not c

aused by applic

ant.

Aug. 14, 2

026+862=Dec. 23, 2

028

SLS Lunch Talk 13

7,8

45

,51

2 P

ate

nt

("'5

12

") -

CO

VE

R S

HE

ET

prior art

class

RJM - 2012

EXAMINATION, PRIOR ART

SLS Lunch Talk 14

7,8

45

,51

2 P

ate

nt

("'5

12

") -

CO

VE

R S

HE

ET

RJM - 2012

SLS Lunch Talk 15

The Myths and Legends - Part 1Myth? Religion? Hope? The US Constitution, I.8.8

Statute’s statue comes to life? The "person of ordinary skill in the art" is nobody

I.8.8: “authors and inventors” - 'and' isn't 'equal'

Life (for issued claims) begins at conception The claim as issued and the on-sale bar/experimental use

Equal Protection (well, construction) for claimsAll claim terms have an absolute right to be construed. For every term in every claim, there exists a correct construction. Or >1.

Good guys/Bad guys ≡ Relationship to Patent?Not quite. Color(Hat) = f(Rp, t,...).

RJM - 2012

SLS Lunch Talk 16

Myth 1 (Religion, Hope)

RJM - 2012

ARTICLE I. Section 8. The Congress shall have Power

***[clause 8]To promote the Progress of

Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective

Writings and Discoveries.

COPYRIGHT PATENT

SLS Lunch Talk 17

Word Choice

RJM - 2012

IN __ V __ TORS

Fill in the blanks:

no a ?

-- en ?

Data?? Compare monopoly??

SLS Lunch Talk 18

Word Choice

RJM - 2012

IN __ V __ TORS

On another index card, please 1. indicate your preference

NO + A or

-- +EN2. state whether you identify more with Patent Owners (PO) or Accused Infringers (AI)

SLS Lunch Talk 19

Myth 1 (Religion, Hope)in the form of a patent 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 - 2012

ValidityQuestions

Unprovable Utility (~ a perpetual motion machine)?

A law of nature?An abstract idea?Publicly known or used

by others before disclosure in Philadelphia in 1787?

SLS Lunch Talk 20

Myth/Religion - 3

We, the people of the United States, claim:1. A method for Promoting Progress in Useful Arts, comprising the [single] step of:



RJM - 2012

Practical questions It's 1789. Must we apply

immediately? Hint: actual reduction to practice requires determining that the

invention will work for its intended purpose.

Maybe we're still experimenting!

(That could help us with validity, too.)

What is the art? Who would be an infringer?

SLS Lunch Talk 21

Myth/Religion - 4

We, the people of the United States, claim:1. A method of Promoting Progress in Useful Arts, comprising the [single] step of:



RJM - 2012

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.

SLS Lunch Talk 22

Myth/Religion - 5




RJM - 2012

I am a believer.

I also believe in the adversary process.

Both may be like• Democracy (per

Churchill) • Christianity (per

GKChesterton) and• Western Civilization

(per Gandhi)

SLS Lunch Talk 23

The Religion – Data??




RJM - 2012

Objective: The evidence from 19th 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) [and subsequent articles]

Roger Cullis, Technological Roulette (Queen Mary IP Research Institute) (2004) [book version 2007]

Subjective: Surveys About Beliefs and Actions[By economists in the 20th century]By Berkeley law professors in the 21s century:

Graham Merges Samuelson Sichelman

SLS Lunch Talk 24

The Religion – Logic


securing for limited

Times to Inventors the exclusive Right to their Discoveries.

RJM - 2012

The Carrot-Carrots, the Stick-Carrots, 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.

SLS Lunch Talk 25

Myth 1: the statute's statue

RJM - 2012

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 andWRITTEN DESCRIPTIONd

*THROUGH 3/15/13: the time of invention

FROM AND AFTER 3/16/13: the effective filing date of the

application

SLS Lunch Talk 26

103

(a)

befo

re, a

nd 1

03 a

fter

, the

AIA

RJM - 2012

103. Conditions for patentability; non-obvious subject matter

(a) A patent

for a claimed inventionmay not be obtained

though the notwithstanding that theclaimed

invention is not identically disclosedor described as set forth in section 102of this title,

if the differences between the subect matter

sought to be patented claimed invention

and the prior art are such that thesubject 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 skillin the art to which

said subject matter the claimed inventionpertains.

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 .

http://www.uspto.gov/aia_implementation/patents.jsp



SLS Lunch Talk 27

112

firs

t par

agra

ph n

ow a

nd s

oon

RJM - 2012




Pre-AIAThe 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 inventorof carrying out

his theinvention.

the invention

SLS Lunch Talk 28

Myth 1 - Ordinary Skill - Acronyms

PHOSITA - 284 law review sightings • 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)• Pronounced FA (as in father)-zit-tuh (as in tub)]

POSITA - ~21 law review sightings• RJM in 2001 in JPTOS• Pronounced po-ZEE-tuh:

POSA - ~14 law review sightings • Michigan Patent lawyer John Posa loves it.

RJM - 2012

SLS Lunch Talk 29

Myth 1 - Ordinary Skill - Phrases

ORDINARY ARTISAN • in use since at least 1913 {guess which judge}*• used in 60 Fed Cir decisions to date

RJM - 2012

SLS Lunch Talk 30

Myth 1 - Ordinary Skill - Suggestions

ORDINARY and ARTISAN are both important words. But alone they don't express the hypothetical and temporal aspects of what is a legal fiction.

SUGGESTIONS

HOAATTRD (hypothetical ordinary artisan at the relevant date)?

TAHOA (time-appropriate hypothetical ordinary artisan)

HOA-TA(hypothetical ordinary artisan, time appropriate)

RJM - 2012

Is TAHOA as good in the google-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

SLS Lunch Talk 31

Experts and Ordinary Artisans - 1

Can 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, Lynn, Dyk).Why unpublished?Why no sanctions?

RJM - 2012

SLS Lunch Talk 32

Experts 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 - 2012

SLS Lunch Talk 33


Tension 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 - 2012

SLS Lunch Talk 34


An 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?)

RJM - 2012

SLS Lunch Talk 35

Sundance 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.

RJM - 2012

Who can appeal the denial of

the motion in limine?

SLS Lunch Talk 36

Experts and Ordinary Artisans

Sundance: 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 - 2012

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.

SLS Lunch Talk 37

Experts 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 infringement

without first hiring a person of ordinary skill in the art to advise them.

Why not? Because the HOA-TA is a fiction.

RJM - 2012

SLS Lunch Talk 38

Rules 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 - 2012

SLS Lunch Talk 39

Prof. Arthur's Rules of Civil Procedure

First 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 - 2012

SLS Lunch Talk 40

Rule 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 - 2012

(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.

SLS Lunch Talk 41

Law-Fact-Equity

RJM - 2012

EQUITYR56 Ineq. Conduct283 Injunction284 Multiple Damages285 Award of atty fees- Patent

Misuse

FACT101 Lack of Utility102a Anticipation102g Diligence102g Corroboration103 Analogous Art103 Graham 1 - S&C of

PA

103 Graham 2 - Diffs: Cl. v. PA

104 Graham 3 - Level of Skill

103 Graham [4] – Secondary considerattions

112P2 Best Mode112 P1 Written

Descrip.R56 Intent (Ineq. Cond.)

R56 Materiality (Ineq.

Cond.)

271 Infringe. – literal

271 Infringe. – DOE

285 Exceptional Case

LAW101 Patentable Subj. Matter

102b Experimental/Public Use

102b On Sale 102g Priority of Inv.102g Conception 102g Reduc. to Prac.103 Obviousness112P1 Enablement112P2 Indefiniteness101, 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. -rjmFACTS!

http://www.stanford.edu/~rjmorris/10-290_Morris.pdf

SLS Lunch Talk 42

Miller's Rules after graduation -->Morris's Truth: Read Anew, See Something New

RJM - 2012

1. 'Validity' = 'Obviousness' here. No intended contradiction with ANTICIPATION and ENABLEMENT 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 lawat 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).

SLS Lunch Talk 43

Inflation/Numerology: 3 is bad, 4 is better

RJM - 2012

Statutory Conditions for patentabilityPer Graham: 103 is 1 of 3Per 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 inquiryHilton Davis (Fed Cir 1995), quoting Roberts, with no quibble about

that 3Hybritech (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.

SLS Lunch Talk 44

Sundance 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 - 2012

SLS Lunch Talk 45

Sundance’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.

RJM - 2012

key words: scope of appealwaiverfairnessequity jurisprudencejudicial economy

SLS Lunch Talk 46

Sundance’s Bottom Line

Held: 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 obviousby 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 - 2012

AI’s witness was probably an ordinary person, although a lawyer…

SLS Lunch Talk 47

Compare two legal fictionsThe Reasonably Prudent Person

We let jurors decide what a RPP would have doneWe don’t voir dire jurors about how R and P they areWe 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?RJM - 2012

SLS Lunch Talk 48

Sundance’s Ruling

NOBODY 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.

RJM - 2012

SLS Lunch Talk 49

Myth 2: Inventors=Authors

Inventors=Authors

Is 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 - 2012

SLS Lunch Talk 50

Authorship: "Ignorance is No Excuse"?

Naive (first-time) inventor tragedies.

Lough v. Brunswick (1997)

Brasseler v Stryker (2001)

EZ Dock v. Schafer (2002)

RJM - 2012

SLS Lunch Talk 51

Myth 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?

RJM - 2012

SLS Lunch Talk 52

Right-to-life for claims – Life begins at the moment of conception? -2

The 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.

RJM - 2012

SLS Lunch Talk 53

102(

b) n

ow a

nd s

oon

RJM - 2012




102. Conditions for patentability; noveltyand loss of right

to patent(a) Novelty; Prior Art.

A person shall be entitled to a patent unless***

(b) the (1) the claimedinvention

was patentedor {comma}

described in a printed publicationin this or a foreign country {comma}

or in public useor {comma}

on salein this country {comma} or otherwise

available to the publicmore than one year prior to the before the

effective filing

date of theapplication for patent

in the United Statesclaimed 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.

SLS Lunch Talk 54

Life 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 language

is not an experiment that can negate the on-sale bar.

But at the time of the experiment, there was no claim language...

RJM - 2012

SLS Lunch Talk 55

MYTH 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 - 2012

SLS Lunch Talk 56

Equal Protection for claims – Every claim term is entitled to a construction? - 2

In 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=author

RJM - 2012

SLS Lunch Talk 57

Equal 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 - 2012

SLS Lunch Talk 58

Myth 5: Good Guys, Bad GuysMy Patent Law Classes, 1991 to 2004: Greedy Sleazy PO v. Filthy Rotten Stinking AI

19th Century: Bad = PO (Free trade)20th Century: Bad= PO (Antitrust)~1982 ± 12: Good=PO

POs - 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 - 2012

SLS Lunch Talk 59

THE END

THANK YOU. QUESTIONS? COMMENTS?

RJM - 2012

SLS Lunch Talk 60

Bibliography

RJM - 2012

Do patents work for their intended purpose?Moser = Moser, PetraGraham = Graham, Merges, Samuelson and SichelmanMachlup & Penrose = Fritz Machlup and Edith PenroseEisenberg =

ExpertsWu = 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)CeccarelliEZDock

SLS Lunch Talk 61

1964: PTO pledges to improve disposal rate

RJM - 2012

46 JPTOS 876-877 (1964)

SLS Lunch Talk 62

Claim 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 - 2012

SLS Lunch Talk 63

OUTTAKES

RJM - 2012

SLS Lunch Talk 64

Experts and Ordinary Artisans

If 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 nonWho 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.

RJM - 2012

http://tinyurl.com/ne-ner-nis

http://tinyurl.com/ne-ner-nis

SLS Lunch Talk 65

The Legacy: WHAT? WD QUIZ 1

The 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

RJM - 2012

SLS Lunch Talk 66

The Legacy: WHAT? WD ANSWER TO QUIZ 1

Not 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 - 2012

SLS Lunch Talk 67

Final Quiz: THAT’S RICH means: -1

RJM - 2012

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.

SLS Lunch Talk 68RJM - 2012

A method claim and another symbol

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 disclosure in 2003 at a previous talk.

http://stanford.edu/~rjmorris/SVA_TALK.PPT

“be prepared. be concise. be clear. if your client does not have a good case, counsel him, her or...

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