10/18/10 RJM - Sci Ev Seminar - Fall Today’s Agenda Warner-Jenkinson 1. tosinDKTS aka Dockets 2. janeJMNJ aka Jumanji 3. joshJMNJ 4. li(ZL) 2 aka ZL-square 5. keyaDKTS 6. milingJMNJ 7. zac(ZL) 2 8. darrellDKTS Spine Solutions 9. shenghanDKTS 10. jingWWJD aka [obvious] 11. normJMNJ 12. zubin(ZL) lieven(ZL) wyattWWJD 15. willWWJD 16. daniel WWJD Find your namecard and sit anywhere. Please don’t remove the yellow post-it. It means you are a Warner-Jenkinson commenter.

10/18/10 RJM - Sci Ev Seminar - Fall Today’s Agenda Before the Break Obviousness – KSR; Spine Solutions; PTO Training Materials Infringement, Literal and DOE Shenghan’s excellent questions Warner-Jenkinson Spine Solutions 5:20 Break After the Break - Simulation Projects DKTS’s excellent questions JMNJ’s excellent questions Review of each team’s situation First appointments with me, this week or next week 6:30 Law Questionnaire (law students and anyone else who wants to stay)

10/18/10 RJM - Sci Ev Seminar - Fall Obviousness The Graham inquiries (see KSR 2.1m)  scope and content of the prior art  differences between the prior art and the CLAIMED invention  level of skill in the art are really the statutory inquiries (see KSR 2.1t and next slide).

10/18/10 RJM - Sci Ev Seminar - Fall Obviousness 103(a) says: (a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if -the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious -at the time the invention was made -to a person having ordinary skill -in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

10/18/10 RJM - Sci Ev Seminar - Fall Obviousness Spine Solutions: What prior art is relevant? What are the differences between that combination of prior art and the claim (the claimed invention AS A WHOLE)? What is the level of skill? How many of those factors are controversial this time? Which one(s)? For any non-controversial factors, how might they be controversial?

10/18/10 RJM - Sci Ev Seminar - Fall Infringement, Literal and DOE – Warner-Jenkinson Warner-Jenkinson Hilton Davis’ problem Warner-Jenkinson’s problem Who won? What is the rationale for having two tests – FWR and insubstantial differences?

10/18/10 RJM - Sci Ev Seminar - Fall Obviousness and Infringement, Literal and DOE – Spine Solutions Spine Solutions Who won on OBVIOUSNESS? Why? Who wins on INFRINGEMENT – literal and DOE? Reconcile these decisions.

10/18/10 RJM - Sci Ev Seminar - Fall Shenghan’s Questions 1. EN BANC: In the case of Warner-Jenkinson vs. Hilton-Davies, why is it so important that the entire bench of judges are involved in the decision? This case is not something like interpreting the constitution, so I am really surprised by the en banc decision. 2. FESTO: I googled about Festo case and it basically says that if a patent application is amended, then the patent applicant surrenders all the claims amended and they bear the burden of proof to show that equivalents are not surrendered. I am a bit confused, is this to say that if I surrender claim A, I still have a chance to claim A' if I have enough evidence to differentiate A from A'? Following are the W-J/Festo Presumption Slides from last year, first presented in some form in Patent Law Sup Ct 02, Fed Cir remand SJ and JMOL: Can you tell me what is the difference between the judgment summary and judgment as a matter of law? X X In this class, please avoid the use of the word “claim” as a noun OR a verb, unless you are referring to a numbered patent claim!

10/18/10 RJM - Sci Ev Seminar - Fall W-J/Festo Mode of analysis 1.Was there a NARROWING AMENDMENT? [or maybe merely a narrowing argument] 2.Was the REASON for that amendment 'a substantial one relating to patentability'? As far as I know, no PO has yet argued that their amendment was related to patentability but the reason was not ‘substantial.’ 3.What is the scope of the SURRENDER of coverage?

10/18/10 RJM - Sci Ev Seminar - Fall The Warner-Jenkinson Presumption (Q2) The REASON for the AMENDMENT was a substantial one related to patentability (and therefore the AMENDMENT *may* bar DOE) The Festo Presumption (Q3) The SURRENDER was of EVERYTHING (and therefore the AMENDMENT bars ALL equivalents: PO can only win on LITERAL infringement) The Presumptions

10/18/10 RJM - Sci Ev Seminar - Fall Was there a NARROWING AMENDMENT? Compare the claim BEFORE to the claim AFTER amendment. Find the ELEMENT that changed. (If there is more than one, select the one that people are fighting over). Ask: Does something that infringed before no longer infringe? Then the claim was narrowed (even if it was broadened somewhere with regard to some other element). W-J/Festo Mode of analysis. Q1.

10/18/10 RJM - Sci Ev Seminar - Fall Was the reason for that amendment 'a substantial one relating to patentability'? If the amendment was in direct response to a citation of prior art, then the answer is YES. If the amendment was in response to some 112 rejection/objection, then MAYBE. If the amendment was totally voluntary: HOW WOULD THAT HAPPEN? then the narrowing is W-J PRESUMED to have been for ‘a substantial one relating to patentability’ To rebut that PRESUMPTION: PO can ONLY use the prosecution history record. (If the PO rebuts, then the answer to Q2 is NO.) W-J/Festo Mode of analysis. Q2.

10/18/10 RJM - Sci Ev Seminar - Fall What is the scope of the SURRENDER? It may be ZERO, if the PO can show: -unforeseeable equivalents -amendment has no more than a tangential relationship to the equivalent in suit -some other reason that the applicant could not reasonably have been expected to have described 'the INSUBSTANTIAL SUBSTITUTE' in question FESTO PRESUMPTION: The scope of the surrender is 100%: Everything was surrendered. (Or anyway, anything that is accused of infringing in the current suit...) W-J/Festo Mode of analysis. Q3.

10/18/10 RJM - Sci Ev Seminar - Fall Validity – Spine Solutions The Graham inquiries are really the statutory inquiries: 1. scope and content of the prior art 2. differences between the prior art and the CLAIMED invention 3. the level of skill in the pertinent art 103(a) says: (a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, ifsection 102 -the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious -at the time the invention was made -to a person having ordinary skill -in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

10/18/10 RJM - Sci Ev Seminar - Fall Remember, in a variation on famous words from 1992: IT’S THE _______ STUPID. Reading a Patent CLAIM

10/18/10 RJM - Sci Ev Seminar - Fall Simulation Teams TEAMS.HTMTEAMS.HTM will be updated regularly. JMNJ – 6,628,382 (TH only on PAIR) (ZL) 2 – 5,515,719 – File History ORDERED WWJD – 6,035,015 (TH) ? or 5,247,562 (TH) NB: neither had any prior art rejections. DKTS – 6,498,854 – (TH only)

10/18/10 RJM - Sci Ev Seminar - Fall JMNJ’s Questions What should be fact and what can be fiction? Prior Art – FACT Skill Level – FACT Dates of Prior Art and of Invention: FACT if known, FICTION if necessary Design-Around – A little of both: It should not violate the laws of physics (or any other science) but you can invent it yourselves. It does not have to be anything anyone would bother to commercialize. It can be expensive, slow, cumbersome) but it should be operable. The Law – Fact Other Things: Fact, unless after discussion with me, fiction can be used. The grad students are responsible for finding prior art, conferring on skill level, and determining relevant dates. The law students are responsible for grounding the legal issue in the law as it is today.

10/18/10 RJM - Sci Ev Seminar - Fall Simulation Teams Where is the support in the specification for EACH phrase in the claim? “Reformat claim 1. In the reformat, underline the specific phrase that you think is most likely to be the subject of the parties' dispute. (The reformatted and underlined claim 1 should be sent as a.doc attachment to the .) Cite the column and line numbers (in form X:Y-Z) and the Figure/part number supporting each phrase. You can do this using 2 columns, or any other way that is readable. You don't have to be 100% right on this; just take a stab at it. It should be easy if you have gone over the patent with some attention.” Why do this for a patent you might not even use? Why do it for a patent you WILL use?

10/18/10 RJM - Sci Ev Seminar - Fall Next Week – Or the Week After Presentations on your patent and your legal issue? Expert witness law?

10/18/10 RJM - Sci Ev Seminar - Fall Law Questionnaires Standards of Review Law Fact Equity “An appellate court, however, may set aside a discretionary decision if the decision rests on an erroneous interpretation of the law or on clearly erroneous factual underpinnings. If such error is absent, the determination can be overturned only if the trial court's decision represents an unreasonable judgment in weighing relevant factors.” A. C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1039 (Fed. Cir. 1992)