Adv.Pat.Sem. 2005-rjmWeek 11 SEMINAR IN ADVANCED PATENT LAW LAW 865 Prof. Roberta J Morris Room 904...

Adv.Pat.Sem. 2005-rjm Week 1 1

SEMINAR IN ADVANCED PATENT LAW

LAW 865Prof. Roberta J Morris

Room 904 Legal Research647-4037

[email protected]

Email Group: [email protected] Materials on the Web:

http://www-personal.umich.edu/~rjmorris/fall05/or possibly ctools for law 865


Today’s Agenda

Who We Are

What You Will Do in this Seminar

Review of Your Basic Knowledge of Patent Law

Origins of the DOE and Patent Law History – Winans v. Denmead

Next Week: More on history, claims, and equivalence

http://www-personal.umich.edu/~rjmorris/fall05/STU_TBL.DOC

http://www-personal.umich.edu/~rjmorris/fall05/HOWWORK.HTM

http://www-personal.umich.edu/~rjmorris/fall05/qaire.htm#rev

http://www-personal.umich.edu/~rjmorris/fall05/WINANS.doc




Who Are You?

Handout: Names, Education, Etc.

What should we know about you that is not apparent from your resume (education and work experience)?

Hobbies? Favorite book? Favorite movie? Favorite law professor first year? Favorite subject first year?

http://www-personal.umich.edu/~rjmorris/fall05/STU_TBL.DOC


How many of you have taken (or are taking or planning to take)

JURISDICTION?

How many of you took calculus in high school?


Talk Dates• everyone (well, 6) wanted 11/15 and 4 wanted 11/8 and people who wanted 11/15 put 11/8 as their 2nd choice…

• re-select by lottery? Everyone? Or only the 11/8 and 15 people?

• maybe have 3 people the weeks of 11/8 and 11/15? if so, when during the week? We can’t have 424 after 5:59 pm

•Second choices didn’t help much


Talk Date Selections – by email dateCarter 1108 – or 15Pearson 1108 – or 01Shui 1115 – or 22Olin 1115 Yates 1115 - or 08 or 01 Ko 1115 - or 08 Cohen 1122 – or 15Kolb 1101 – or 15 or 22Hawkins 1115 - or 29 Edsenga 1115 - or 22 Frostick 1018Murshak 1011[Wang] 1122 – or 15Cleary 1108Heller 1108


Talk Date

(Draft Due)

[PreliminaryMeeting*]

10/11 (09/20) [09/09]

10/18 (09/27) [09/16]

10/25 (10/04**) [09/23]

11/1 (10/11) [09/30]

11/8 (10/18) [10/07]

11/15 (10/25) [10/14]

11/22 (11/01) [10/21]

12/06 (11/08) [10/28]


What You Will Do in this Seminar• Grading by Contract

• Weekly Comments: Deadlines so that you can comment on a comment?

• Coursetools? Private website?

• Talks – Dates, Topics, Packet Drafts, Packets

• Straight through (and done at 5:30) or Snack [Cookies or Veggies?] and small-l law discussions?

http://www-personal.umich.edu/~rjmorris/fall05/HOWWORK.HTM

http://www-personal.umich.edu/~rjmorris/fall05/PRESENT.HTM#DATETABLE


prosecutors litigators

best

worst

licensing, transactional?, opinion?

Hours, Billing, Client contact, Writing


Plans, Prejudices, Perceptions

Who is planning a life of prosecution?

litigation?

other?

Who usually favors the PO, absent very compelling circumstances?

the AI?

neither, really and truly?


Validity

Infringement

AI

Preponderance

C&C

PO

*If you want the court to separate discovery and trial of liability from discovery and trial of damages, you would file a motion to __________ under Rule ___, F.R. Civ. P.]

bifurcate 42

WHO HAS THE

BOP?

WHAT IS THE QOP?


QUESTION OF FACT - SOR: clearly erroneous

(some deference to trier of fact) - Patent law examples:

anticipation, best mode

QUESTION OF LAW- SOR: de novo (no

deference) - Patent law examples: claim

construction, obviousness


Name some other implications if an issue presents a QUESTION OF LAW rather than a QUESTION OF FACT or EQUITY


Prosecution history

PATENT LAW - EQUITABLE ISSUES

Name at least one and no more than four issues

that arise fairly regularly in patent cases that are questions of

_equity_ (as opposed to questions of _law_ or _fact_.)

What is the standard of review on appeal for

questions of equity? Abuse of Discretion

inequitable conduct, laches, estoppel (from suit, and other kinds of estoppels EXCEPT NOT ______________ estoppel ), injunctions


PROSECUTION HISTORY ESTOPPEL

IS A QUESTION OF

law


Glaxo v. Impax (2004, Rader) cites Wang Labs (1997, Rich) which cites LaBounty (1989, Per Curiam, Nies, Bissell, Archer) (see below).

Ranbaxy (Fed.Cir. 2003, Mayer) cites Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc, Archer):

Insituform cites Mark I (1995, Lourie) which cites LaBounty which cites Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861 n.7, 871 (Fed. Cir. 1985, Baldwin).

“Prosecution history estoppel is a legal question subject to de novo review on appeal. See Insituform, 99 F.3d at 1107, 40 U.S.P.Q.2D at 1609 [(Fed.Cir. 1996, Michel)].”

What’s odd about the citations to this apparently well-settled

principle?


“n7 Compare Prodyne [(Fed Cir. 1984, Rich)] and Kinzenbaw [(Fed. Cir, 1984, Friedman)] where the court was unwilling under the facts there presented to "undertake the speculative inquiry" as to the necessity of certain claim amendments and otherwise to enlarge the literal scope of patent claims amended during prosecution. The results reached there only highlight that application of prosecution history estoppel to limit the doctrine of equivalents should be performed as a legal matter on a case-by-case basis, guided by equitable and public policy principles underlying the doctrines involved and by the facts of the particular case.”

Loctite.


Prosecution history estoppel, moreover, is an equitable doctrine. By its very purpose, equity jurisprudence provides a remedy individually tailored to the circumstances of the dispute at hand. As stated by the Supreme Court:

The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims.Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S. Ct. 587, 592, 88 L. Ed. 754 (1944) (emphasis added).

not a patent case – involved an injunction under Emergency Price Control Act

But then there’s Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 617 (Fed. Cir. 2000) (Plager, J., concurring).


"A district court abuses its discretion when its decision - is based on clearly erroneous findings of fact, - is based on erroneous interpretations of the law, or - is clearly unreasonable, arbitrary or fanciful."

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). [formatting mine. –RJM]

quoted in Pharmacia Corp. v. Par Pharm., 2005 U.S. App. LEXIS 16698 (Fed. Cir. 2005)

APPELLATE REVIEW OF EQUITABLE ISSUES


A patent infringement case is called _X v. Y_. Who is X, if not the patent owner? For each of those 2 (or more) possibilities, name their relationship to the patent.

Why can those non-patent-owners initiate suit?

Accused InfringerExclusive Licensee

AI: Right to seek Declaratory Judgment (equitable and statutory);Exclu. Licensee: Caselaw interpreting 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) and § 261 (“…The … patentee … may … convey an exclusive right …”) See, e.g., Prima Tek II, LLC v.

A-Roo Company, 222 F.3d 1372 (Fed. Cir. 2000).


Exclusive Licensee

35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” )

35 USC § 100(d) The word "patentee" includes not only the patentee to whom the patent

was issued but also

the successors in title to the patentee.


“Section 261 recognizes, and courts have long held, that an exclusive, territorial license is equivalent to an assignment and may therefore confer standing upon the licensee to sue for patent infringement. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255, 34 L. Ed. 923, 11 S.Ct. 334 (1891) ….”

Prima Tek II, 222 F.3d at 1377.


Your client is a resident of Ann Arbor. Yourclient would like to sue a resident of Detroit for patentinfringement. In what court do you bring the action?(Be as specific as you need to be.)

Why is that the right court?

The trial judge dismisses your case. In whatcourt of appeals do you file your notice of appeal?

Why is that the right court?

E.D.Mich.

Federal question. (28 USC 1338.) Personal jurisdiction and venue over defendant in the district. (venue: 28 USC 1391 b and c).

Bonus: what if

this were a suit on a patent license?

Fed. Cir. (subject to Vornado…)

All patent appeals (~~) go to the Fed. Cir. 28 USC. 1295.


Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (9:0, Scalia; Stevens, O’Connor+Ginsburg concurring)

Vornado sued a different company for trade dress infringement back in 1992 and lost (10th Circuit). Subsequently the Fed. Cir. decided another trade dress case the other way, and then the Supreme Court decided Traffix v. MDI, resolving the circuit split.

Vornado filed an ITC complaint against Holmes based on BOTH patent and trade dress. HOLMES retaliated by filing a D.J. on TRADE DRESS against Vornado, and sought an injunction restraining accusations of trade-dress infringement. VORNADO answered with a compulsory counterclaim alleging patent infringement, and in due course the Fed. Cir. was presented with an appeal.


Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (9:0, Scalia; Stevens, O’Connor+Ginsburg concurring)

The Supremes scolded the Fed Cir. Because the complaint had not asserted a federal patent law claim, the Fed Cir had no jurisdiction!

From the LEXIS overview:<A counterclaim could not serve as the basis

for"arising under" jurisdiction. 28 U.S.C. 1295(a)(1) did not use "arises under," but rather referred to jurisdiction under 28 U.S.C. 1338, where it was well established that "arising under any Act of Congress relating to patents" invoked, specifically, the well-pleaded-complaint rule.>


Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (~9:0, Scalia; Stevens conc-in-part; O’Connor+Ginsburg concurring in the judgment)

O’C & G pointed out that since the appeal did not concern a patent issue, they didn’t care about all the blather from Scalia. But if it HAD involved a patent issue, wouldn’t Scalia look like a fool to propose that Congress INTENDED that the regional circuits should muck around creating patent law precedent. (They were more polite.)


Post Vornado Patent Miserymight be a good topic for this seminar.

In July 2002, Telcomm Tech. Servs., Inc. v. Siemens Rolm Communs., Inc., 295 F.3d 1249, the Fed Cir transferred a case to a regional circuit where the appealed orders included, among other things, one entering judgment on a patent infringement jury verdict. But it appears to have settled after that.

another good topic might be: Proposed Legislation To Undo

Vornado


§ 1338. Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition (a) The district courts shall have originaljurisdiction of any civil action arising under any Actof Congress relating to patents, plant varietyprotection, copyrights and trademarks. Suchjurisdiction shall be exclusive of the courts of thestates in patent, plant variety protection andcopyright cases. (b) The district courts shall have originaljurisdiction of any civil action asserting a claim ofunfair competition when joined with a substantialand related claim under the copyright, patent, plantvariety protection or trademark laws.

* * *


§ 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- (1) of an appeal from a final decision of a district court of the United States … if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title, except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section 1338(a) shall be [appealed to the regional circuits];


§ 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- * * * (3) of an appeal from a final decision of the [United States Court of Federal Claims];

(4) of an appeal from a decision of-- (A) the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with respect to patent applications and interferences ...


Constitution: Art. I, sec. 8, cl.8

Patent Statute: ___ USC35

Patent Regulations: ___ CFR § 1. ___37

What is the cite for Rule 56?37 CFR § 1.56

What is it?the duty of candor


BONUS! What is Rule 56, F.R.Civ.P.?Summary judgment (still! Even

though nowadays people say JMOL.)

PTO’s internal rulebook is called:Manual of Patent Examining

Procedure (MPEP)

What kind of authority is it? De jure? De facto?


Markman1996 – claim construction

Graham v. Deere1966 – obviousness

Festo2002 – pros.history estoppel

Merck2005 – Hatch/Waxman and

experiment as defense to infringementBlonder-Tongue

1971 - res judicata - validityCourt?

all Supreme

FAM

OU

S C

AS

ES –

Year

- Is

sue


Back to the class list handout: your selections for 1980s, 1990s and 2000s cases of the Federal Circuit for which cert. was denied. (Hence the shaded names…)


Patent images

TIFF

German Patent Office

USPTO: $3

LEXIS??


Winans v. Denmead

Supreme Court, 1853

Who should have won?

Who should have won if it were decided

today?

What would the Federal Circuit do?


Winans’ Patent and Lawsuit

Patent: Draft Winans’ claim in today’s style of claiming.

Lawsuit:

Best Fact for PO

Best Fact for AI


Winans v. Denmead

“In the view of the plaintiff below, there were two questions;

- the first for the court, being the construction of the patent;

- the second for the jury, being the substantial, or only colorable difference between the cars in principle and mode of operation.”

(page 3.2m)


Winans v. Denmead

“The first is a question of law, to be determined by the court, construing the letters-patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury.”

(page 6.1b)


Winans v. DenmeadCompare what happened to Winans to what happens in a

Markman hearing.

Compare the dissent to 21st century views of the DOE:“Ful[l]ness, clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfil the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress. In my judgment, the principles of legal interpretation, as well as the public interest, require, that this language of this statute shall have its full significance and import.” (page 11.1t)


The Patent Statutethrough the ages

1790: examination [by 3 members of the Cabinet, including Thomas Jefferson]

1793: registration (sort of)1836: examination


Section 6 of the 1836 Act v. 35 USC §§ _??

And be it further enacted, That any person or persons having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer; and shall desire to obtain an exclusive property therein, may make application in writing to the Commissioner of Patents, expressing such desire, and the Commissioner, on due proceedings had, may grant a patent therefor.



But before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.



He shall, furthermore, accompany the whole with a drawing, or drawings, and written references, where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office; and he shall moreover furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts. The applicant shall also make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, machine, composition, or improvement, for which he solicits a patent, and that he does not know or believe that the same was ever before known or used; and also of what country he is a citizen; which oath or affirmation may be made before any person authorized by law to administer oaths.

Adv.Pat.Sem. 2005-rjmWeek 11 SEMINAR IN ADVANCED PATENT LAW LAW 865 Prof. Roberta J Morris Room 904...

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