09/27/10 RJM - Sci Ev Seminar - Fall 2010 1 Today’s Agenda – 9/27/10 Housekeeping Show and Tell...

09/27/10 RJM - Sci Ev Seminar - Fall 2010 1

Today’s Agenda – 9/27/10• Housekeeping• Show and Tell of Patented Items• Questions from Last Week

• Scheduling the Simulations• This Week

• Formatting a Claim• Becoming familiar with a patent and its file history

(and why)• Reading a Case

Timing – 5:20 break (10 minutes); 6:35 adjourn.

Next Week: Optional: Instant Patent Law – what topic(s) or just as much of the can of worms as we can get through?


Great Editors!

I was out of town Tuesday-Sunday and have not yet had a chance to read your annotated How—works carefully. But at a fast skim, I was able to tell that there are some excellent editors in this group.

I will announce the stopper-finder prize winner on 10/11 because the 10/4 class is optional.

Please see me at the break: Shenghan, Keya, Will, Jane / Josh (Brett? Evan?)


Good Note Taker Needed

Zubin won’t be here today and won’t be here next week. I need a volunteer notetaker to go over the slides with him and tell him what the slides don’t. That shouldn’t take more than a few minutes before or after class on 10/11.

Li Tian won’t be here today either. Would a good notetaker be willing to talk to her next week before or after class?


Teams, etc.6 law students: Darrell, Zac, Wyatt, Norm, Will, Jane.

Last initials start with A through K. 8 science grad students:

Zubin, Tosin, Keya, Daniel, Lieven, Miling, Shenghan, Zhou

Last initials start with H, then O-Z. Weird.4 science auditors

Brett, Evan, Li, Josh. Last initials mostly at end of alphabet, too.

Simulations: 3 Teams (assuming no dropouts)2 with 2 lawyers, 2 experts, 1 tutorial expert1 with 2 lawyers, 2 experts

or a 4th team of 2 Ph.D. candidates who can be both or a 4th team of 2 Ph.D. candidates who can be both lawyers and experts and/or use auditors for extra roles.lawyers and experts and/or use auditors for extra roles.


Who Are You? Questions about Course Description- cont’d

Grad Students - Zubin: Explain the simulation format in more detail.

Daniel: Is the goal for PhDs to teach us how to be experts or about the patent process?

Shenghan:

How much patent law reading will I need to do to follow the discussion?

Do the experts in the simulation just answer questions, or do they argue? Is there a verdict?

What do you mean by “balanced”? Can I venture out of my own field within Chem Eng for the simulation project?


Questions about last week

Norm: validity v. enforceability

Daniel: is this how law school is?

Jane: law students’ questionnaire

Shenghan: fence-sitting; the various meanings of “art”; infringement

Miling: Rule 56? Posting date/time?

Jing: Infringement; other countries?

Will: ‘work-for-hire’


Why I need to know NOWhow reliable and serious you are

http://lawreg.stanford.edu/stanford/prereg/CourseDetails.asp?cClschedid=+24922

1

2


2009 - Sci.Ev. - rjm Week 01 8

Your Patented Objects

If you brought the item, show it off. darrell watchzac staplerwyatt tea sacnorm liquid hand soapzubin ultra jet dusterwill steam masterjane kleenex boxtosin chlorox containerkeya boxer...daniel gemini specsziv crest toothpasteli pineapple slicerlieven colgate toothpasteshenghan dandruff shampoomiling animal watererjing hair condit


If nobody volunteers...ht

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Order of Comments on VNUSnorm

shenghandarrell

jing[zubin]keyawyattmilingjoshwillzac

lievenjane[li]jing

Random Order 2darrell norm jane evan

lieven tosin wyatt will jing keya zac

daniel shenghan

josh miling brett

Random Order 1miling

shenghan jane tosin josh

wyatt lieven

zac keya

daniel brett will

norm jing

darrell evan cp

Randomized by random.org/lists


Reformatting a Claim

Li (also Wyatt, Zac and Will, and ~Jing) present [C] so you know you can discuss it as “applying energy ... to create a thermal effect...”


2009 - Sci.Ev. - rjm Week 01 11

Reformatting a Patent Claim

2009 - Sci.Ev. - rjm 11Week 01

We are also not at liberty to DELETE words when we reformat. Later, to facilitate discussion of particular aspects of the claim, we may shorten it. The reformatting will help us figure out what is ignorable. Deleting words when you first quote a claim would be wrong (and possibly dishonest); deleting words when you reformat a claim is wrong (and absolutely foolish). EVERY WORD must be there.

Why?


Today’s Assignment - Looking at a Patentht

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not in the Hologic Patent


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Assignee: Not Hologic?


Today’s Assignment - Looking at a File History

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Today’s Assignment - Looking at a Case; Looking at Another Student’s Work

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But also (and always) remember, in a variation on famous words from 1992:

IT’S THE _______

STUPID.2009 - Sci.Ev. - rjm Week 01 16

Reading a Patent

2009 - Sci.Ev. - rjm 16Week 01

CLAIM


Major Issues of Liability in Patent Law

•Validity•Infringement

The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES


Next Week

Claim Interpretation and File Histories.

As you look at a patent and its history, think about:

- ideas for design arounds and noninfringement arguments

- ideas for invalidity arguments

- questions for which experts would be needed


19

Concept Patent Copyright Trademark

Coverage Inventions(Machines, Things, Processes, Mole-cules, etc.)

Creative Expression(Words, Art, Video, Audio)

Commercial Identity Stuff (Logos, names, slogans, product appearance,etc.)

Agency associated with obtaining it

Patent & Trademark Office (Part of the Dept of Commerce)

Copyright Office(Part of the Library of CONGRESS)

Patent & Trademark Office (Part of the Dept of Commerce)

Verb associated with obtaining it

APPLY REGISTER APPLY

Can Agency REJECT?

YES Not often YES

When does protection START

From ISSUANCE From CREATION From use or registration

When does protection STOP

20 years from date of filing of application, MOSTLY

Life of author + 70 years to the next 12/31, USUALLY

Never, MOSTLY

PTO PTO

Patents != Copyright != Trademarks


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 (to see what people do who would PRACTICE New’s invention)

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

Look at Old's CLAIMS

Q.When do you look at the CLAIMS? A.When the patent is ________

Because we have 2 toothpaste patents, let’s use them for NEW and OLD. Do they have to CLAIM similar things, or not?


2009 - Sci.Ev. - rjm Week 01 21

Validity

Infringement

AI

Preponderance

C&C

PO

WHO HAS THE

BOP?

WHAT IS THE QOP?

How do BOP and QOP affect the litigators and scientific experts?

Major Issues of Liability in Patent Law


2009 - Sci.Ev. - rjm Week 01 22

Reading a Patent – Who asked you to?

• AI – to design around it to avoid infringement– to challenge validity or enforceability

• PAppl – – to see if you need to disclose (and claim around)– to see if you should buy/license it

• M&A – to evaluate an asset

• PO – to evaluate whether you can sue within the bounds of Rule 11

Why? • AVOID inequitable conduct• COMPLY with

Rule 56 and your duty of candor

• Obtain a solid patent

09/27/10 RJM - Sci Ev Seminar - Fall 2010 1 Today’s Agenda – 9/27/10 Housekeeping Show and Tell...

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