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USC Gould School of Law

PATENT LAW FOR

SCIENTISTS AND

ENGINEERS

LAW-599

SPRING 2013 SYLLABUS

I. BASIC INFORMATION

A. Course Description

Many graduate and professional students in engineering, the natural sciences, medicine,

and pharmacy will go on to become inventors. Most, however, will have little or no

understanding of the rules that govern the process of obtaining and enforcing the patents

that protect their inventions. Because a single patent can be worth hundreds of millions

of dollars, it is vital that scientists and engineers understand the legal framework in which

patents exist so that they can avoid critical mistakes that can result in inadequate patent

protection for their inventions or, indeed, complete loss of such protection.

This course aims to give future inventors the tools to make, in consultation with their

patent attorneys, more informed decisions about protecting their inventions by providing

them with an in-depth introduction to patent law using materials appropriate for non-

lawyers. The topics to be covered include indefiniteness of patent claims, the written

description and enablement requirements, invalidity based on anticipation, rules for what

is and is not prior art, invalidity based on statutory bar, invalidity based on obviousness,

claims and claim interpretation, literal infringement, infringement under the doctrine of

equivalents, indirect infringement, unenforceability, and post-grant proceedings such as

reexamination and reissue. The course will cover both current law and the changes to be

phased-in under the 2011 Leahy-Smith Act.

Students who have successfully completed the class will also be able to make an

informed decision about whether they wish to study for and take the US patent bar

examination and become registered US patent agents, obtaining an additional credential

that can expand career opportunities and improve employment prospects both in the US

and in other countries.

B. Instructor

Professor: Roman Melnik

Phone: 626-356-1869

Email: romanmelnik@yahoo.com

Office Hours: Wed., 3:15-4:15pm (Law 306B), or by appointment.

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C. Textbooks

Janice Mueller, “Patent Law” (3d ed. 2009)

Alan L. Durham “Patent Law Essentials” (3d ed. 2009)

Additional materials for some lectures will be posted on Blackboard.

D. Time and Place

Thursdays, 6:30 pm to 9:30 pm.

Room 114, Musick Law Building, USC.

E. Credit and Grading

3.0 Units; option of numerical grading or CR/D/F.

F. Prerequisites

There are no formal course prerequisites.

G. Class Recording

Classes will not be routinely recorded but may be recorded upon a request made through

the Law Portal (or to the instructor) by an individual student who is unable to attend a

particular class due to illness or other emergency. Routine requests for recording are

disfavored.

H. Course Objectives

After completing the course, students should be able to:

(1) Analyze a patent claim and develop alternative interpretations of the claim language

based on the nature of the accused products, the prior art, and other relevant factors.

(2) Determine what is and what is not prior art to a particular patent claim, both for

anticipation and obviousness purposes, under both current law and the 2011 Leahy-

Smith Act.

(3) Assess whether a particular art reference anticipates a patent claim.

(4) Evaluate whether a particular prior art reference or combination of prior art references

renders a patent claim obvious.

(5) Assess whether a particular accused product or process infringes a patent claim

literally or under the doctrine of equivalents.

(6) Determine whether an accused infringer may be liable for indirect or foreign activity

infringement.

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(7) Evaluate whether a patent has been rendered unenforceable by conduct of the patent

applicant.

(8) Assess whether a patent claim may be invalid due to indefiniteness, lack of

enablement, or lack of compliance with the written description requirement.

(9) Determine when and whether initiation of particular post-grant proceedings may be of

benefit to either the patentee or the accused infringer.

(10) Evaluate which arguments and defenses in a patent lawsuit are most likely to lead

to a cost-effective resolution.

II. COURSE REQUIREMENTS & GUIDELINES

A. Class Preparation and Participation

Class discussion will commence with the assumption that everyone is thoroughly familiar

with the assigned materials and is prepared to participate in discussions in a professional

manner.

B. Attendance and Classroom Behavior

Regular and punctual attendance is expected of all students. Copies of all lecture slides

will be posted on Blackboard shortly after each lecture. Diagrams drawn on the board

during the lecture will not usually be posted, and should be obtained from classmates’

notes.

C. Grading Criteria

Homework will consist of reading assignments from the above two textbooks and other

selected materials, and practice problems. Practice problems assigned as homework will

not be graded, but will, instead, be solved collectively during a subsequent class.

No separate points will be awarded for class participation (but students who participate in

class will be rewarded with fabulous snack prizes). There will be an open book in-house

final examination, which will be at least partially multiple-choice in format. Students are

permitted to use computers with Soft Test (an exam administration program installed by

the Law School) on the final.

D. Statement on Academic Integrity

USC seeks to maintain an optimal learning environment. General principles of academic

honesty include respect for the intellectual property of others, the expectation that the

work submitted represents solely the effort of the person(s) submitting the work (unless

otherwise allowed by an instructor), and the obligations both to protect one’s own

academic work from misuse by others as well as to avoid using another’s work as one’s

own. All students are required to understand and abide by the Law School’s policies and

expectations, http://mylaw2.usc.edu/portal/policies/handbook/character/plagiarism.cfm,

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as well as those of the University, http://www.usc.edu/student-

affairs/SJACS/forms/AcademicIntegrityOverview.pdf, regarding academic integrity.

E. Accommodation of Disabilities

USC is committed to providing reasonable accommodations for members of the student

body who have permanent or temporary physical, learning or other disabilities, to ensure

that all students are given an equal opportunity for learning and for pursuing their

academic interests. Students wishing to seek accommodation should consult the policies

and procedures in the Law School Student Handbook,

http://mylaw2.usc.edu/portal/policies/handbook/exceptions/disabilities.cfm.

F. Emergency Preparedness/Course Continuity in a Crisis.

In case of a declared emergency if travel to campus is not feasible, USC executive leadership will

announce an electronic way for instructors to teach students in their residence halls or homes

using a combination of Blackboard, teleconferencing, and other technologies.

Please activate your course in Blackboard with access to the course syllabus. Whether or not you

use Blackboard regularly, these preparations will be crucial in an emergency. USC's Blackboard

learning management system and support information is available at blackboard.usc.edu.

III. ASSIGNMENTS

Tentative Course Schedule: A Weekly Breakdown

Topics Readings and Homework (to be completed before that week’s

lecture) (check Blackboard for possible changes)

Week 1

Date

An introduction to different forms of

intellectual property; format of the US

patent document; claims and claim

drafting; US patent prosecution and

litigation.

(1) Schechter & Thomas,

"Intellectual Property," pages 1-9

(posted under " Content")

(2) McJohn, "Intellectual Property,"

(2d ed.) pages 1-5 (posted under "

Content")

(3) Mueller textbook: chapters 1 & 2

(except pages 59-63).

(4) Durham textbook: pages 9-21,

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33-38, 62-70, 77-80 & 218-223.

(5) Goldstein et al., "Patent Law for

Scientists and Engineers," pages 3-

19 and 203-240 (you can skim pages

6-11 and 210-214) (posted under

"Content")

(6) Handout of prosecution history

of '685 patent (posted under

"Content") (simply browse this

document).

Week 2

Date

Claims and claim drafting (continued);

claim definiteness under §112, ¶2;

overview of the two disclosure

requirements of §112, ¶1; the enablement

requirement.

(1) Mueller 97-113.

(2) Durham pages 80-85.

(3) Goldstein et al, chapter 4 (but

omit 4.5) and portions of chapter 8

(pages 147-156 & 166-173) (posted

under Content).

(4) Finish any practice problems not

completed in class.

Week 3

Date

The enablement requirement (continued);

the written description requirement;

overview of §102; the standard for

anticipation.

(1) Durham 90-94 & 108-111.

(2) Mueller 121-33 and 135-153.

(3) Merges (4th ed.) 387-93 (posted

under Content).

(4) Finish any practice problems not

completed in class.

Week 4

Date

The standard for anticipation (continued);

the novelty-destroying provisions:

§§102(a) and 102(e); §102(f); novelty-

destroying provisions (continued): §102(g).

(1) Durham 94-108 & 120-21.

(2) Mueller 153-156 & 174-90.

(3) Finish any practice problems not

completed in class.

Week 5

Date

Section 102(g) (concluded); Rule 131

practice; international issues and §102.

(1) Mueller 530-541.

(2) Finish any practice problems not

completed in class.

Week 6

Date

Introduction to the statutory-bar

provisions; § 102(b) "public use”; §102(b)

"on-sale bar."

(1) Durham 121-29.

(2) Mueller 156-73.

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(3) Homework problem re Williams

v. Forsythe interference.

(4) Finish any practice problems not

completed in class.

Week 7

Date

Experimental use and sale negation of the

§102(b) bar; §§102(c) and 102(d); the

obviousness requirement and §103

(historical overview).

(1) Durham 111-120.

(2) Mueller 191-233.

(3) Finish any practice problems not

completed in class.

Week 8

Date

The obviousness requirement and §103

(historical overview) (continued); the

obviousness requirement after KSR.

(1) No additional reading

assignment.

(2) Finish any practice problems not

completed in class.

Week 9

Date

The obviousness requirement after KSR

(concluded); claim construction and literal

infringement; the prima facie test under the

doctrine of equivalents.

(1) Durham 53-64 & 149-160.

(2) Mueller 325-359 (except 328-

30).

(3) Finish any practice problems not

completed in class.

Week 10

Date

The prima facie test under the doctrine of

equivalents (concluded); the four legal bars

to the application of the doctrine of

equivalents; infringement of means plus

function claims; reverse doctrine of

equivalents

(1) Durham 160-174 & 67-70 &

174-175.

(2) Mueller 360-382 & 87-91 &

359-360.

(3) Finish any practice problems not

completed in class.

Week 11

Date

Experimental use exception; indirect and

foreign activity infringement; inequitable

conduct.

(1) Durham 141-49 & 175-76 &

133-37.

(2) Mueller 328-31 & 383-401 &

412-416 & 431-42.

(3) New cases on joint direct

infringement and inequitable

conduct (posted under Content)

(4) Finish any practice problems not

completed in class.

Week 12 Post-grant proceedings: correction,

reexamination, reissue, inter-partes review

(1) Durham 40-43.

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Date and post-grant review.

(2) Mueller 297-324.

(3) Finish any practice problems not

completed in class.

Week 13

Date

The new prior art rules under the 2011

Leahy-Smith Act.

(1) Merges ’12-’13 Supp. at 29-44 &

53-54 (posted under Content).

(2) Chisum Supp. on Leahy-Smith

Act, sec. 3 (pages 9-41) and

Appendices B & C (posted under

Content) (optional reading)

(3) Wegner Supp. on Leahy-Smith

Act, secs. 100-237 & 300-432

(posted under Content) (optional

reading)

(3) Finish any practice problems not

completed in class.

Week 14

Date

Review for final: practice problems from

old exams.

(1) Homework Problem – 2008

Final Exam Essay (posted under

Content). Note: when this question

was administered, students were

permitted to use a ruler when

answering the question.

(2) Homework Problem – 2009

Final Essay Question (posted under

Content). Note: when this question

was administered, students were

permitted to use a ruler when

answering the question.

(3) Finish any practice problems not

completed in class.

Week 15

Date

[Reserved for make-up lectures and

additional exam review].

FINAL

Date

[TBD]