Transcript A Child’s Guide to the Myths and Legends of Patent Law (A Child’s Guide to the Myths and Legends of Patent Law) Roberta J.

A Child’s Guide to the
Myths and Legends
of Patent Law
(A Child’s Guide to the Myths and Legends of Patent Law)
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]
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Steve Joncus, Klarquist Sparkman and OPLA.
The Stanford Law Library reference librarians,
especially Rachael Samberg and George Wilson this
time.
They always find everything I ask for, including things I
didn’t know I was asking for.
But don’t blame them for any errors.
All errors are mine.
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If you can hear the sound of my voice, please
rise/raise your hand.
Lower your body/hand if
- you were already practicing patent law when
the Federal Circuit decided Markman (4/5/1995)
- you started practicing patent law before the
Supreme Court decided KSR (4/30/2007)
Welcome, children!
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Please write your best guesses for patent law’s top
myths on the index card in your folder.
If you want to write at greater length, email
[email protected].
Please pass the cards in now. I’ll look at them
tonight and track you down in the morning!
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“Be prepared. Be concise. “If you look
Be clear.
long enough
If your client
in the patent law,
does not have a good case,
you can find a case
counsel him, her or it
to conserve resources –
to support any kind of
including your potential fee.
proposition[.]”
At best, litigation is a
Judge Rich, Jefferson Medal
gamble.”
Acceptance Speech,
(quoted in The Almanac
New Jersey Patent Law
Association, 1955 (quoted in
of the Federal Judiciary)
Smith1999)
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It’s the CLAIM, stupid.
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My new thoughts
- not found in any reference I know of, and
- which I may disagree with any minute now
will be identified with
This means
- it’s my baby: don’t blame anyone else
- it’s only a baby: not fully developed, not mature
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Claim was time-barred by a disclosure in a previous talk.
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 _________.
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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.
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101 Questions
Utility (~ a perpetual
motion machine)?
A law of nature?
An abstract idea?
102/103 Questions
Publicly known more
than a year before
1787?
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Practical questions
We, the people of the
What is the art?
United States, claim:
1. A method for Promoting
Who would be an infringer?
Progress in Useful Arts,
comprising the [single] step
Can we apply NOW?
of:
Hint: actual RTP requires
securing
determining that the
for limited Times
invention will work for its
to Inventors
intended purpose. Maybe
the exclusive Right
we're still experimenting!
to their Discoveries.
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We, the people of the
United States, claim:
1. A method of Promoting
Progress in Useful Arts,
comprising the [single] step
of:
securing
for limited Times
to Inventors
the exclusive Right
to their Discoveries.
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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.
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We, the people of the
United States, claim:
1. A method of Promoting
Progress in Useful Arts,
comprising the [single] step
of:
securing
for limited Times
to Inventors
the exclusive Right
to their Discoveries.
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I am a believer.
I also believe in the adversary
process.
• Not based on the evidence
of specific cases
• Not based on surveys of
aggregate data,
o if there were any reliable
ones,
 which there are not...
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We, the people of the
United States, claim:
1. A method of
Promoting Progress in
Useful Arts, comprising
the [single] step of:
securing
for limited
Times
to Inventors
the exclusive Right
to their Discoveries.
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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)
Roger Cullis, Technological Roulette (Queen
Mary IP Research Institute) (2004)
Subjective: Surveys About Beliefs and Actions
[By economists in the 20th century]
By Berkeley law professors in the 21s century:
Graham
Merges Samuelson Sichelman 13
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We, the people of the
United States, claim:
1. A method of
Promoting Progress in
Useful Arts, comprising
the [single] step of:
securing
for limited
Times
to Inventors
the exclusive Right
to their Discoveries.
The Supreme
Court does not
know the phrase
'design around'
The Carrot-Carrots. the Stick-Carrot, 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 writes about protecting the PD, not expanding it.
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IN __ V __ TORS
Fill in the blanks:
no
a
?
OR
-en ?
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Statute’s statue comes to life?
Can a real person ever be the "person of ordinary skill in the art"
mentioned in the statute?
I.8.8: “authors and inventors.” “inventors = authors”?
The inventors wrote the specification, claims, arguments and
amendments? Really?
Life (for claims) begins at conception
The claim as issued existed from the moment of conception of the
invention. (E.g. re the on-sale bar and its negation by experiental use)
Equal Protection (well, construction) for claims
All claim terms have an absolute right to be construed. (112p2 means
very little. Cf. The Rich Legacy.)
There exists a construction [one or more?] for every term in every claim.
Good guys/Bad guys ≡ Relationship to Patent
Not quite. Color(Hat) = f(Rp, t).
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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 evaluate
OBVIOUSNESS and
ENABLEMENT
(and OK, written description)
*THROUGH 3/15/13: the time of invention
FROM AND AFTER 3/16/13: the effective filing date of the application
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103. Conditions for patentability;
non-obvious subject matter
(a)
A patent
for a claimed invention
may not be obtained
though the notwithstanding that the
claimed
invention is not identically disclosed
or described
as set forth in section 102
of this title,
if the differences between the
subect matter claimed invention
sought to be patented
and the prior art are such that the
subject 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 skill
in the art to which
said subject matter the claimed invention
pertains.
Patentability shall not be
negatived negated
by the manner in which the invention was made.
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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 .
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Pre-AIA Post-AIA
The Specification. (a) In General.—The
[undesignated &1] Specification
The specification shall contain
a written description
of the invention,
and of the manner and process
of making and using it,
the invention
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 inventor
of carrying out
his the
invention.
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.
Subject of previous talk!
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1. Acronyms
PHOSITA
• 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}; 9 court cases
• next in Bradley G.Lane’s Note in U.Mich.J.L.Ref. article, 1987, and then
as of 4/8/2012: ~300 law review articles, per Westlaw
– Pronounced FA (as in father)-zit-tuh (as in tub)]
POSITA
• I wrote it that way in 2001 in JPTOS
• Others did too in later years: ~40-50 law review articles by now
- Pronounced po-ZEE-tuh: a POSITA is also a small poseur
POSA
• seems to be gaining popularity: first citing/sighting 2004, ~ 10 law review articles by now.
• Michigan Patent lawyer John Posa loves it.
2. Real words
ORDINARY ARTISAN
• in use since at least 1913 {guess which judge}*
• Chief Judge Rader used this term in 2009 and 2010. Judge Moore used it last month,
quoting Rader’s 2010 opinion.
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ORDINARY and ARTISAN are both important words.
But they don't express the hypothetical and temporal
aspects of this legal fiction.
Candidate acronyms
HOAATTRD (hypothetical ordinary artisan at the relevant
date)?
HOA-TOI and HOA-TOF or HOA-AOTPD (hypothetical
ordinary artisan at the time of invention or time of filing or
as of the priority date)
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.
HOA-TA
TAHOA (time-appropriate hypothetical ordinary artisan)
HOA-TA(hypothetical ordinary artisan, time appropriate)
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KSR told us the
ordinary artisan is not
an automaton.
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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, Linn, Dyk).
Why unpublished?
Why no sanctions?
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Can 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)
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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?
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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?)
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PO 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.
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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)
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.
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Nobody – 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.
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Sundance quoted Rule 702, F.R.Evid:
“If scientific, technical or other specialized
knowledge … will assist the trier of fact…”
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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...
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Rule 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;
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(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.
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LAW
101
Patentable Subj. Matter
102b Experimental/Public Use
102b On Sale
102g Priority of Inv.
102g Conception
102g Reduc. to Prac.
103
Obviousness
112P1 Enablement
112P2 Indefiniteness
101, 102, 103,112, 271
Claim Construction
FACTS!
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101
102a
102g
102g
103
103
103
103
103
112P2
112 P1
R56
R56
271
271
285
FACT
Lack of Utility
Anticipation
Diligence
Corroboration
Analogous Art
Graham 1 - S&C of PA
EQUITY
R56 Ineq. Conduct
283 Injunction
284 Multiple Damages
285 Award of atty fees
- Patent Misuse
Graham 2 - Diffs: Cl. v. PA
Graham 3 - Level of Skill
Graham [4] – Secondary
considerattions
Best Mode
Written Descrip.
Intent (Ineq. Cond.)
Materiality (Ineq. Cond.)
Infringe. – literal
Infringe. – DOE
Exceptional Case
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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. -rjm
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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).
1. 'Validity' = 'Obviousness' here. No intended contradiction with ANTICIPATION
and WRITTEN DESCRIPTION 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 law
at the time the Graham decision was written
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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 inquiry
Hilton Davis (Fed Cir 1995), quoting Roberts, with no quibble about
that 3
Hybritech (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.
Statutory Conditions for patentability
Per Graham: 103 is 1 of 3
Per Bilski and Prometheus, 101 is not only a 4th , it is #1 of 4.
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Is 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 field
rely on YOU on questions of law (obviousness, say) and
legal questions of fact (such as scope and content of the
prior art, anticipation, enablement)?
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Although
- nobody appealed the denial of PO’s motion in limine
- neither side could have, and
key words:
of appeal
- no further briefing was requested, scope
waiver
fairness
the court held that
equity
Bliss’s testimony on obviousness,
jurisprudence
comparing the claims to 2 references judicial economy
[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.
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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 obvious
by comparing the claim to the two references
using only the knowledge of an ordinary person,
AI’s witness was probably
especially in light of KSR.
an ordinary person,
(which had not yet been decided).
although a lawyer…
Therefore Judge Cohn abused his discretion
in granting JMOL.
Bad Judge. Bad. Bad.
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The Reasonably Prudent Person
We let jurors decide what a RPP would have done
We don’t voir dire jurors about how R and P they are
We 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.
COMPARE
The Ordinary Artisan
We require expert witnesses to be at least ‘ordinary'
artisans.
Why?
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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.
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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...
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Naive (first-time) inventor tragedies.
Lough v. Brunswick (1997)
Brasseler v Stryker (2001)
EZ Dock v. Schafer (2002)
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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?
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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.
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102. Conditions for patentability; novelty
and loss of right (a) Novelty; Prior Art.
to patent
A person shall be entitled to a patent unless
Pre-AIA:: Read
***
(b) the (1) the claimed
center (regular) and
invention
left (italics).
was patented
applies to
or {comma}
applications filed
described in a printed publication
before 3/16/13,
in this or a foreign country {comma}
and their conts
or in public use
and divs.
or {comma}
on sale
in this country {comma} or otherwise available Post-AIA: Read
center (regular) and
to the public
more than one year prior to the before the
right (bold)
effective filing
applies to
date of the
applications filed
application for patent claimed invention
on or after
in the United States
3/16/13.
***
The AIA's version of the statutory bar
Nice that Congress tossed
(incomplete, linebreaks mine)
102(a)’s ‘known’ (held to
(b) Exceptions.-(1) Disclosures made 1 year or less
mean ‘publicly known’ based
before the effective filing date of the claimed invention.-on [??]) and said this instead.
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 ...
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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...
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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
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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
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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.
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My 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]
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THANK YOU.
QUESTIONS?
COMMENTS?
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Do patents work for their intended purpose?
Moser = Moser, Petra
Graham = Graham, Merges, Samuelson and Sichelman
Machlup & Penrose = Fritz Machlup and Edith Penrose
Eisenberg =
Experts
Wu = 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)
Ceccarelli
EZDock
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46 JPTOS 876-877 (1964)
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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?
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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 non
Who 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.
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The WRITTEN DESCRIPTION requirement is
SEPARATE from the ENABLEMENT requirement.
The authority for this rule comes from:
A.
B.
C.
D.
CONGRESS
THE SUPREME COURT
JUDGE RICH
ALL OF THE ABOVE
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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.
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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.
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