2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1

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 2

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

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 3

How the Seminar Will WorkMost typos + ideas:

1. Scott. 2. Asa 3. (Tie) Patrick and EmilySpecial 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: select suitable patents; identify a balanced issue on either validity or infringement; prepare claim charts and materials for testimony; and give 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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2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 4

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

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 5

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.

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 6

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

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 7

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

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 8

Anticipation and Obviousness - SSI v. TEK - SJ decision

Anticipation: the '581 patent withstands the challengeObviousness: 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

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 9

Obviousness - KSRScott: 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.

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)

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

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)

Hernan; AMUSED. The Court relied upon the corollary principle that when the prior art teaches

away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. (8-1)

Asa: ANNOYED. (re SC v. RJM on vacating v. reversing)

Helio: SURPRISED: A person of ordinary skill is also a person of ordinary creativity, not an automaton (10:2)

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".

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).

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Obviousness - KSR (quotes from p. 2)

Why "sought to be patented"?

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 11

Team WorkAJEPD RSAHC

5994056 6242235 56479906,626,925

Reformat Cl. 1 Emily Jenn Rob ScottCompare 2 Indep Cls ??Asa?? David Andy

ChinyereTerms Patrick Hernan

2013-05-01 (Week 5) RJM - IP: Sci Ev in Pat Lit - Spring 2013 12

Next WeekA. Infringement, especially the doctrine of equivalents

B. Daubert: challenging experts.

C. Follow-up regarding first round of meetings.