(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Today's Agenda Student Presentations Helio, then JAPED, then SHARC O2 Micro, review of validity and infringement, esp DOE and Festo presumptions Rules , Shah Talk Daubert Motions, Apeldyn, Teva Coin Toss to see who goes first (unless you decide yourselves) ~9:45 Adjourn

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Today's Agenda Student Presentations Helio, then JAPED, then SHARC O2 Micro, review of validity and infringement, esp DOE and Festo presumptions Rules , Shah Talk Daubert Motions, Apeldyn, Teva ~9:45 Adjourn

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring O2 Micro Validity During prosecution, claim rejected over Gradzki. Bad drafting again? or Lack of 'support in the specification' problem? Infringement Claim construction: What did the trial judge do? Literal or DOE? What did the trial judge do? Post-script: O2 wins on LITERAL infringement (bench trial). Exclusion of Expert Testimony: Death Penalty Sanction

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Warner-Jenkinson + Festo (presumptions) - 1 Warner-Jenkinson: A narrowing amendment is PRESUMED to have been made to achieve patentability. That presumption can only be rebutted from the intrinsic evidence. If that presumption is unrebutted, then the PO is barred from asserting DOE infringement by the doctrine of PROSECUTION HISTORY ESTOPPEL (PHE)

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Warner-Jenkinson + Festo (presumptions) - 2 Word Police Note: Using PROSECUTION HISTORY to argue about what claim language means is just CLAIM INTERPRETATION. Using PROSECUTION HISTORY to argue PO has no right to assert the doctrine of equivalents (DOE) is PROSECUTION HISTORY ESTOPPEL. Either way, though, you usually use the IDENTICAL parts of the prosecution history.

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Warner-Jenkinson + Festo (presumptions) - 3 Festo: By offering a narrowing amendment (or acquiescing to an examiner's amendment) and then having the patent issue with that language, PO is PRESUMED to have surrendered ALL equivalents of that element [the language added]. In that case PO can assert LITERAL infringement ONLY.

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Warner-Jenkinson + Festo (presumptions) - 4 Festo The PO may get some range of equivalents if it can show a. the AI's device uses later-developed technology b. the reason for the amendment (the invalidating aspect of the prior art relied on by the Examiner) is TANGENTIAL [That is, the prior art showed X, so PO added language meant to be 'not X.' The AI does Y. The PO wants to argue that interpreting 'not X' to mean 'not Y, either' is unfair.] c. 'some other reason'... Slides 8-12 (dotted frame for title, footer for 2010) walk you through the W-J/Festo analysis. We can skip them now.skip They'll be here if you need them.

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.

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Rules Even experts whose methods are 'generally accepted' may not be permitted to testify. Now, after Daubert (now incorporated in 702-5) which was based on the idea that to be admissible evidence should be both RELEVANT and NON-PREJUDICIAL. the test is: whether the expert had the "knowledge, skill, experience, training, [and] education" of a "specialized" nature that was likely to "assist the trier of fact to understand the evidence or to determine" infringement. Fed. R. Evid S.E.B. S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010) or validity or whatever issue the expert's testimony addresses.

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Shah Talk Questions? Comments?

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Apeldyn PO's Expert tested AI's devices When PO's Expert analyzed 'secondary considerations,' he used other people's depositions AI challenges both. AI loses. PO lost on claim construction, however. AI also won on disqualifying one of PO's attorney's.

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Teva Generic Drug Manufacturers challenge PO Teva's Experts under Daubert. There are about 6 motions/arguments: 1. (Testimony) difficulties in separating enantiomers 2. (Testimony) post-priority date development activities 3. Exp Jenner - because of refusal to answer 6 dep.Qs 4. Exp. Henchcliffe - not a POSA in Exp. Henchcliffe - compared PO's drug to placebo instead of to prior art 6.Exp Smith (tutorial on stoichiometry) - not a POSA Court says, [the usual]. Why did the AIs file all those motions?

(Week 7) RJM - IP: Sci Ev in Pat Lit - Spring Next Week Your questions about substance. ( by Tuesday 11:59 pm) Survey of patent liability issues scientific experts do not address Time to meet with each other, if you want it. (Room is available at 6:30 pm. If you want a room earlier, I 'll see what I can do.)