Sci.Ev. 2007-rjm Week 3 - 9/26/07 1

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Today’s Agenda The Arrival of the Graduate Students

Who You Are, What You’ll Dp

The Grad Students’ Patented Objects and Their Patents

Tutorial on Patent Law: Basic Concepts the Lawyers can teach their Experts

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

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Who You Are

- Handout about Grad Students

- Handout about Law Students

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What You Will Do in this Seminar

- Recall what the course description said. (See next slide)

- If you are taking the course for a grade, you must agree to the contract or walk.*

- Please state your BIAS – PO or AI – now. You can change later.

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

Or, even bigger, slower, AND reformatted (next slide)

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For the first part of the term, the class will review

- relevant patent law and - expert testimony law.

After that, the law and graduate students will work together to select patents for their final simulation projects. Working collaboratively, the students will

- prepare claim charts and - devise a design-around,

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

either - patent owner or - accused infringer.

As adversaries, they will present

- short oral arguments (law students) and - summaries of expert

declarations (grad students)

for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and

witnesses in simulations of expert testimony. The judges will be

- practicing patent litigators and- patent professors.

TERM OF ART

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Grad Students’ Patented Objects

AyresChangConleyDaiGambleGanesanGarciaHaHuKachirskaiaKawaharaLiuLopezMeltzerOlcott

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Law Students’ Patented ObjectsCraven: Pill ContainerFreed: Garbage BagFaulkner: Magnetic Snap Fastener

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

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

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

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Reading a Patent

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

• None?

• Single digits?

• Tens of Patents?

• More?

For your simulations, I require you to choose a patent whose number appears on something you can buy. WHY?

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Marking

The legal effect of marking is governed by

STATUTE

as interpreted by the COURTS

in written opinions.

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Reading a Patent

Parts of a Patent:• Cover Sheet (it has many parts, too: stay tuned)• Figures• Specification (no S, please)

(This word can mean all the pages except the cover sheet and the claims, in which case it includes the figures. OR it can mean only the text on those pages. OR it won’t matter.)

• CLAIMS

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CLAIMS

Claims

- define the legal effect of the patent

- new VERB: READ ON

if a claim READS ON the prior art

they are INVALID

if a claim READS ON an accused device, the device INFRINGES the claim

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CLAIMS

Claims

define the legal effect of the patent

Learn a new VERB: READ ON

- if a claim READS ON the prior art,

the claim is INVALID

- if a claim READS ON an accused device, the device INFRINGES the claim

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Lawsuit ≈ Liability & Damages

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

IS IT VALID?IS IT INFRINGED?

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

Liability ≈ Validity & Infringement

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P-I-S v P.A.Situation A

Patent-in-suit = NEWPrior Art Patent = OLD

Situation BPatent-in-suit = OLDPatent on accused device = NEW

Is the New patent valid over the Old patent?

Is the Old patent infringed by someone practicing the New patent?

New Patent Look at New's CLAIMS Look at New's SPECIFICATION

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

Look at Old's CLAIMS

One patent does not infringe another. Only real things can infringe.

But someone practicing NEW who marks its product with the NEW patent number, will have a very hard time arguing that its marked PRODUCT isn’t the same – for purposes of

analyzing infringement of OLD patent –as the NEW PATENT.

This happens in real life litigation. It’s easier, cheaper, and doable BEFORE you even write the first letter,

to analyze the patent of your competitor (potential AI) than to get discovery

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Liability ≈ Validity & Infringement

Given what the IT is in a patent case,what is the key to deciding BOTH validity and infringement?

How is resolved in many patent trials?

It’s the CLAIMS, stupid.

A Markman hearing.For the JUDGE alone, even if there will later be a JURY trial.

CLAIM CONSTRUCTION

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Validity – or rather INVALIDITY

VocabularyREAD ONPrior Art

Ways to Demonstrate Invalidity ~ ISSUESAnticipationObviousnessIndefinitenessfailing to provide an adequate Written DescriptionEnablement / failure to EnableBest Mode / failure to disclose the Best Mode

Red = terms of art or ISSUES

Black = correct wording for the phrase: the claim was found invalid for _________

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(In)ValidityWhich issues involve the CLAIMS,

which the SPECIFICATION?

AnticipationObviousnessIndefinitenessWritten DescriptionEnablement Best Mode

primarily

primarily

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Anticipation and Obviousness

Depends on what is in the PRIOR ART.How do those 2 differ?

1. HOW MUCH ART?2. What other things matter, besides the art and what it

DISCLOSES?

The STATUTE defines the kinds of things that can be PRIOR ART.It does that in Title 35of the United States Code, Section 102. (35 USC 102)

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Anticipation and Obviousness

1. How much art?Anticipation: A single piece of prior art is

ON ALL FOURS. The claim READS ON this single reference.

Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the PERSON OF ORDINARY SKILL IN THE ART.

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Anticipation and Obviousness

2. What else matters besides <P.A.>?Anticipation: NOTHING. Except that the single

piece of P.A. must ENABLE at least as well as the patent does.Obviousness: LOTS.

The PRIMARY CONSIDERATIONS. (really not much beyond the p.a., but there’s a formula for

them, from the statute and from court decisions)

The SECONDARY CONSIDERATIONS

Guess which one AIs prefer to use to challenge a patent?What about POs?

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Next Week

More of the tutorial.

Preparation for attending the Boston Scientific Trial.