Transcript Please take any seat you like. No official scribes today. If, however, you notice any TOAs or any homework for me, I hope you will email.

Please take any seat you like.
No official scribes today.
If, however, you notice
any TOAs or
any homework for me,
I hope you will
email me after class.
2013-05-01 (Week 5)
RJM - IP: Sci Ev in Pat Lit - Spring 2013
1
Today’s Agenda
• How ... Work - awards, comments
• SSI/AMI v. TEK: what we saw, what we learned, the
verdict, what could happen next.
• Obviousness - SSI v. TEK and KSR
• Break: 8:30: Answer the question about the verdict (if
necessary)
• Teams - Meetings
• AWJEPD+HC&R - tomorrow,Thursday 5/2, at 2:05
• RSACHSC+HC&R- next week:Tuesday 5/7, at 11:15
• ~9:45 Adjourn
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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How the Seminar Will Work
Most typos + ideas:
1. Scott. 2. Asa 3. (Tie) Patrick and Emily
Special session (not): The Oxford Comma ("I'd like to thank my
parents, Bill Clinton [,] and Oprah Winfrey.")
From the course description (required reading for the first class)
"For the first several weeks, the class will examine judicial decisions
and trial documents involving scientific evidence in patent litigation.
The rest of the quarter is largely devoted to work on the final projects:
simulations of expert testimony in a patent case. Students will work
together in teams and will meet regularly with the instructor in order
to:1select suitable patents;2identify a balanced issue on either validity or
infringement;3prepare claim charts and materials for testimony; and
4give short, illustrated talks to inform their classmates about their
projects. Finally, they will choose sides (patent owner or accused
infringer) and finetune their presentations. The simulations will be
performed at the end of the quarter before panels of practicing patent
lawyers. "
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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Field Trip - Who Won?
Who chose PO?
Rob, Helio, Hernan, Jennifer, Emily, Jenn, Scott,
David, Chinyere
Who chose AI?
Patrick
Who didn't chose?
Andy, Asa
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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The Field Trip
The Verdict. (Also interesting: Questions from the Jury)
X
XXX
XX
XX
x=not infringed
x=invalid (anticipated)
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.
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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The Patent-in-Suit and Noninfringement
If 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 __________
read on
the accused device. The other claims do.
Visual representation
Claims 36-45-46-47
Other Claims
Accused Device
A
A
A
B
B
B
Z
Because they include element Z, claims 36-45-46-47
are not infringed. Find element Z.
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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The Patent-in-Suit - Invalidity
If an element is MISSING from claims 22-23-24-38
but is found in the other claims, then claims 22-23-24-38
read on the prior art but the other claims do not.
__________
Visual representation:
Claims 22-23-24-38
Other Claims
Prior Art
A
A
A
B
B
B
Q
Because they do not include element Q,
claims 22-23-24-38 are anticipated.
What is element Q?
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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Anticipation and Obviousness SSI v. TEK - SJ decision
Anticipation: the '581 patent withstands the challenge
Obviousness: the '110 patent does not withstand the
challenges.
Why do POs prefer to defend against
ANTICIPATION?
Why is OBVIOUSNESS kinder to AIs?
Things to think about:
Law v. Fact, secondary considerations, multiple
pieces of prior art, level of skill
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Obviousness - KSR
Scott: CONFUSED. In determining whether the
subject matter of a patent claim is obvious, neither the
particular motivation nor the avowed purpose of the
patentee controls. p. 10.1.
away from combining certain known elements,
discovery of a successful means of combining them is
more likely to be nonobvious. (8-1)
Jenn: VEXED. The Court of Appeals failed to
recognize that the problem motivating the patentee
may be only one of many addressed by the patent's
subject matter. (p. 10, col. 2)
Helio: SURPRISED: A person of ordinary skill is also a
person of ordinary creativity, not an automaton (10:2)
Emily: MYSTIFIED. Asano taught everything
contained in claim 4 except the use of a sensor to
detect the pedal's position and transmit it to the
computer controlling the throttle. 5.2-6.1.
Rob: CONFUSED.
"To the extent the court understood the
Graham approach to exclude the possibility of summary judgment
Asa: ANNOYED. (re
SC v. RJM on vacating v. reversing)
Patrick: INTRIGUED. [T] he Engelgau patent discloses
a purpose: 'less expensive, and which uses fewer parts
and is easier to package.' (4.2).
Chinyere: CONFUSED. "Rejections on obviousness
grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated
reasoning with some rational underpinning to support the
legal conclusion of obviousness".
when an expert provides a conclusory affidavit addressing the question
of obviousness, it misunderstood the role expert testimony plays in the
analysis. In considering summary judgment on that question the
district court can and should take into account expert testimony, which
may resolve or keep open certain questions of fact." (no page)
Andy: FRUSTRATED. Engelgau had not included
Asano among the prior art references, and Asano was not
mentioned in the patent's prosecution. Thus, the PTO did
not have before it an adjustable pedal with a fixed pivot
point.(page 5, column 1).
Hernan; AMUSED. The Court relied upon the
corollary principle that when the prior art teaches
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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Obviousness - KSR (quotes from p. 2)
Why "sought to be patented"?
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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Team Work
Reformat Cl. 1
Compare 2 Indep Cls
Terms
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AJEPD
5994056
6242235
Emily
Jenn
??Asa??
David
Patrick
RSAHC
5647990
6,626,925
Rob
Scott
Andy
Chinyere
Hernan
RJM - IP: Sci Ev in Pat Lit - Spring 2013
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Next Week
A. Infringement, especially the doctrine of equivalents
B. Daubert: challenging experts.
C. Follow-up regarding first round of meetings.
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
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