Today's Agenda

2013-05-08 (Week 6) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1

Today's Agenda• Warner-Jenkinson. Also (take home?) O2 Micro.

Read especially if you are thinking about doing DOE.• SSI/AMI v. TEK: The jury's verdict on claims

anticipated and claims not infringed.• Instant Patent Law• Teams - When do we meet next?Meetings

• APJED (? pajed, japed, depaj...)+HC&R• SHARC+HC&R

• ~9:45 Adjourn

http://www.stanford.edu/~rjmorris/sciev.13/VERDICT.PDF


Warner-JenkinsonTell the story and

- Favor PO- Favor AI


Warner-Jenkinson - QuotesScott: Analysis of patent claim will inform 7.2Patrick: Application to chemical composition 3.2Hernan: Equivalence not absolute to be considered in vacuum

3.2Helio: Burden on PO to establish reason for amendment 7.1Jenn: proper time for evaluating is at infringement 7.1Rob: ph of approximately 6.0 to 9.0 infringed under DOE 2.2Emily: equivalence refers to an element or part 4.2David: equivalency determined against context of patent, prior

art 3.2Asa: presume substantial reason related to patentability 6.1Chinyere: intent plays no role 7, heading BAndy: things equal to the same are not equal to each other 3.2


Warner-JenkinsonB. Select a different passage, one that raises a question in your mind, from either the decision or the commentary. Quote the passage. Use ellipsis to keep it from being too long but this time I leave it to you to decide what is "too long." Give the page:column citation. State your question. Speculate on a possible answer and then discuss why you might be wrong. Use an appropriate label for each of the four parts of your answer to B: Quote; Question; Answer?; Wrong?

Your submission and your comments on a classmate's.


O2 MicroAnother example of how a DOE argument comes into

being.Read it at home? Now at DOCS/O2MIC.PDF (Don't

look at the postscript on the last page until you've read the whole thing.)

http://www.stanford.edu/~rjmorris/sciev.13/DOCS/O2MIC.PDF


Instant Patent LawCaveat: the statute has changed (but not in any way that affects your simulations)

Things I may not have said before, in whole or in part

2 - Big Kids Syndrome17 - What is PRIOR ART20 - To Search or Not To Search33 - Parts of a Claim (terminology)38 - "Patent" (abstract)

What you already know7-8 - The major issues of patent law26 - specification, n. (teaches, v.) and

claims (n. and v.)28-29 - independent and dependent

claims, 'scope'32 - claim chart to compare claim and

[prior art, accused product]34-35 - comprising, etc. - definitions39-40 - the bicycle and the wheel41-42 - After "I say 'You infringe!'"

what happens?43-44 - In the PTO45 - The person of ordinary skill46 - Remedies

http://www.stanford.edu/~rjmorris/sciev.10/PPT/1004_INST_PAT.PPT


SSI/AMI Verdict - 1X=not infringed: 36

and 45-47X= anticipated

22-24 and 38

X XXX X X X X

Yes, this was very hard work. Headache producing, too. But not busy work, not a waste of your time. Rather: the start of aquiring an important skill,

and a litmus test. If you want never to have to do this kind of thing again, then patent law, whether as a lawyer or an expert, is probably not for you.


SSI/AMI Verdict -1Claim Ant N/I Surviving

22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34 (27) S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

How did you approach this question?

What do you do to understand what is MISSING (and -> anticipation)?PRESENT (and -> non-infringement)?

Claim Ant N/I Surviv'g

22-1 TRD A

23-22-1 TRD A

24-21-1 TRD A

27 TRD S

28-27 TRD S

29-28-27-1 TRD S

30-29-28-27 TRD S

31-29-28-27 TRD S

34 (27) bottle S

36 (28-27) bottle N/I

38 TRD A

40-39 TRD S

42 TRD S

45 Disp TRD N/I

46-45 Disp TRD N/I

47-45 Disp TRD N/I

Why did 27 survive the anticipation challenge when 38 did not?

Why was 34 found to be infringed when 36 was not?

If you were SSI/AMI or TEK, what would you do now?


SSI/AMI Verdict - 2Claim Ant N/I Surviving

22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34-27 S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

Asa's Question

36 is a claim drawn to a BOTTLE (for use in 28-27 TRD)

38: mentions - but does not claim! - the compressor or the bottle. Prosecutors: why not?

Other anomalies?



22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34 (27) S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

36: not infringed because _"Z"_ is includedHernan: Substantially opposesPatrick: subst. opp.Jenn: subst. opp.Rob/Scott: subst. opp.Emily: claims the bottle

RJM: compare to surviving claim 34Asa: subst. opp.David: plastic bottle? disposableness?Andy: subst. opp.Chinyere: ??

RJM: subst. opp.



22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34(27) S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

45-47: not infringed because _"Z"_ is included

Hernan: disposablePatrick: disposableJenn: intake IN port

RJM: 38 (anticip so infr ignored by jury?) also has intake and exhaust claimed separately

Rob/Scott: port with both intake & exhaust IN Emily: the container? disposable?Asa: disposableDavid: plastic bottle? disposable?Andy: intake DIRECTS, exhaust RECEIVES

and DIRECTSChinyere: exhaust? RJM: disposable? TRD incl container?



22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34-27 S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

22-24: Anticipated because _"Q"_ is missingHernan: Port? Valve?Patrick: PortJenn: PortRob/Scott: valve (incl) but no man.override (of 25)

RJM: but 25 not litigated so its validity is unknown; instead compare to 27 or 42

Emily: PortAsa: Valve

RJM: valve is claimed; for anticipation there has to be something MISSING compared to a surviving, similar claim.

David: pressure relief override switchAndy: Bottle; valveChinyere: housing? port?



22-1 A

23-22-1 A

24-21-1 A

27 S

28-27 S

29-28-27-1 S

30-29-28-27 S

31-29-28-27 S

34-27 S

36 (28-27) N/I

38 A

40-39 S

42 S

45 N/I

46-45 N/I

47-45 N/I

38: Anticipated because _"Q"_ is missingHernan: port?Patrick: housing+recep? disposable?Jenn: Receptacle (but has port) (27-valid: has

port+recep; 22:-invalid: recep without port)Rob/Scott: compressor (compared to 39)

RJM: again, 39 not litigated; look to 27, 42*Emily: has port but it is not 'in reservoir or

recep'Asa: housing? NOT disposable?

RJM: true, disposable claims apparently survived the validity challenge but compare 38 to 27, 42*

David: pressure relief override switchAndy: bottleChinyere: (has port, unlike 1)

RJM: compare 38 to 27, 42*RJM - compressor

* 27 and 42 are similar to 38 (indep, TRD) but survive validity challenge


Next Week 1. Short presentations. Team by team. Each person

should present ~ 2 slides and speak for ~5 minutes. 30 minutes per team MAX. More info. on next slide and in ASSIGN/0515.HTM

2. Recent Daubert decision and your notes from Ms. Shah's talk. (Please read them beforehand and bring them with you.)


Next Week (cont'd)The first slide MUST be the reformatted claim with the language that you particularly care about highlighted in some way.After that, explain your selected issue, with reference to the claim language. Keep the slides simple, clear, and useful. Use animation if you want to amplify something before starting a new slide.

You should also go through the claim and explain how the actual THING works, with reference to claim language or without, as common sense dictates.You will want to explain the technology. You may want to explain why the patent has market share (which may involve explaining the prior art), and anything else you think an expert will be asked in the simulation.

The order of these things - after the first slide - is up to you. Talk it through before writing. Decide what goes when by talking. Really. Talk first, and many times, before writing. Always. For everything. Everyone should. Their writing and speaking would improve vastly. I include myself in 'everyone.'


Slides from last week


The Patent-in-Suit and NoninfringementIf an element that is in claims 36-45-46-47 is not in the accused device (and not in the other claims), then claims 36-45-46-47 do not __________ the accused device. The other claims do.Visual representation

Because they include element Z, claims 36-45-46-47 are not infringed. Find element Z.

Claims 36-45-46-47 Other Claims Accused DeviceA A A

B B B

Z

read on

http://stanford.edu/~rjmorris/sciev.13/DOCS/5265562.PDF


The Patent-in-Suit - InvalidityIf an element is MISSING from claims 22-23-24-38but is found in the other claims, then claims 22-23-24-38 __________ the prior art but the other claims do not.Visual representation:

Because they do not include element Q, claims 22-23-24-38 are anticipated.What is element Q?

Claims 22-23-24-38 Other Claims Prior ArtA A A

B B B

Q

read on

http://stanford.edu/~rjmorris/sciev.13/DOCS/5265562.PDF


The Field TripThe Verdict. (Also interesting: Questions from the Jury)

X XXXx=not infringedx=invalid (anticipated)XXX X

Look at the patent. Why those 4 claims and not others?

This is a question about the elements of the claims.Or rather, missing elements. Unless someone already figured that out, answer during the break. Collaboration is OK.

http://www.stanford.edu/~rjmorris/sciev.13/VERDICT.PDF

http://www.stanford.edu/~rjmorris/sciev.13/SSI_JURYQS.PDF

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