RJMorris - Genetics Dept Retreat - Stanford University1September 18, 2008 by Roberta J. Morris, Ph.D., Esq. Lecturer, Stanford University Law School Member of the Patent Bar and of the Bars of New York and Michigan Introduction to Patent Law

RJMorris - Genetics Dept Retreat - Stanford University2September 18, 2008 TODAY’S TALK Basic questions of Patent Law 1.Is [it] valid? 2.Is [it] infringed? 3.So what? (Remedies) “it” refers to a specific CLAIM of the patent, not the patent itself What is a patent (concrete) What is a patent (abstract)

RJMorris - Genetics Dept Retreat - Stanford University3September 18, 2008 Your group has some great ideas and preliminary results. You wonder: 1.Might somebody out there think that our work is patentable? 2.If so, what other people’s patents might that somebody need to license, acquire or defeat? 3.What is the present value of our potential patent(s)? Tech Transfer View

RJMorris - Genetics Dept Retreat - Stanford University4September 18, 2008 Your group invents something. You wonder: 1.Can we get a patent? 2.Can other people sue us on their patent? 3.If somebody infringes our patent, what can we get?

RJMorris - Genetics Dept Retreat - Stanford University5September 18, 2008 These 3 questions reflect the major issues in Patent Law 1.Can we get a patent? 2.Can other people sue us on their patent? 3.If somebody infringes our patent, what can we get? VALIDITY INFRINGEMENT LIABILITY REMEDIES (DAMAGES)

RJMorris - Genetics Dept Retreat - Stanford University6September 18, 2008 Patent Law ISSUES To understand VALIDITYand INFRINGEMENT let’s consider let’s consider what a patent is, and what a patent is, and what a patent is not.what a patent is not.

RJMorris - Genetics Dept Retreat - Stanford University7September 18, 2008 The Mona Lisa appears next to TERMS OF ART. Use such terms carefully. They don’t always mean what you think they mean. Anyone who knows what they mean may misunderstand you if you misuse them. TERMS OF ART

RJMorris - Genetics Dept Retreat - Stanford University8September 18, 2008 What a patent IS and IS NOT: CONCRETE What a patent IS and IS NOT: ABSTRACT What is a Patent?

RJMorris - Genetics Dept Retreat - Stanford University9September 18, 2008 Starbucks Coffee Sleeve #

RJMorris - Genetics Dept Retreat - Stanford University10September 18, 2008 The coffee sleeve patent, 5,205,473, has a cover sheet (the top page), a specification: 8 sheets of figures, and text starting at column 1, line 1 and ending at column 4, line 61, and eighteen CLAIMS, from column 4, line 63 to the end. A Patent (concrete) – The Coffee Sleeve Example Every patent has these 3 parts. Patents to compositions of matter may not have figures but will have chemical formulae in the text.

RJMorris - Genetics Dept Retreat - Stanford University11September 18, ,205,473 COVER SHEET This patent expires on Mar. 19, 2012 [at issue, the expiration date would have been Apr. 27, 2010 but the statute was amended in 1994] issue date filing date prior art

RJMorris - Genetics Dept Retreat - Stanford University12September 18, 2008 Mochly-Rosen 405 Patent

RJMorris - Genetics Dept Retreat - Stanford University13September 18, 2008 Prior Art Patents and published patent applications Printed Publications: Journal Articles, books, brochures, manuals, dissertations, webpages… Things: on sale, offered for sale, shown at trade shows and conferences, … The inventor’s own [ ] if dated more than 1 year before the filing date of the application the on-sale bar or statutory bar No obligation to SEARCH when you file, but YES obligation to disclose what you know: the duty of candor

RJMorris - Genetics Dept Retreat - Stanford University14September 18, 2008 What is a patent (concrete) A patent can be divided into two parts: SPECIFICATION and CLAIMS What does the patent CLAIM? The CLAIMS are the special language that defines the legal significance of the patent, validityprior art -as to its validity over the prior art, and infringement - as to whether someone else is liable for infringement of it. What does the patent TEACH? Find the answer in the SPECIFICATION [no S, please]: {all the talk and the figures}

RJMorris - Genetics Dept Retreat - Stanford University15September 18, 2008 Validity There are also VALIDITY requirements for the SPECIFICATION. They are, however, analyzed with respect to the CLAIMED INVENTION. The snowflake indicates something that is true, more or less, and/or may be more complicated than appears at first glance.

RJMorris - Genetics Dept Retreat - Stanford University16September 18, 2008 One Patent - Many Claimed Inventions … 405 patent cols (last page) … that differ in scope on 3, which depends on 2, which depends on 1. Claim 1 is independent. Claim 4 is dependent

RJMorris - Genetics Dept Retreat - Stanford University17September 18, 2008 Broad v. Narrow Claims Broad claims are (usually) SHORT. Narrow claims are (usually) LONG. A dependent claim may look short, but it has all the limitations of the claims from which it depends. Easier to invalidate, harder to avoid infringing. Harder to invalidate, easier to avoid infringing.

RJMorris - Genetics Dept Retreat - Stanford University18September 18, 2008 Claim 1 4:63-5:2 Figure 1 Sheet 1 of 8 Claim 1, Figure 1

RJMorris - Genetics Dept Retreat - Stanford University19September 18, 2008 Claim 1 – 5,205, A recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said cor- rugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recyclable adhesive. hard to read, hard to think about

RJMorris - Genetics Dept Retreat - Stanford University20September 18, 2008 Left Column: Write the claim, dividing it into short phrases and using sequential tabbing to make it easy to see parallel and subsidiary relationships, etc. The CLAIMED INVENTION: Is it valid? Is it infringed? Right Column: EITHER -information about the accused thing (device, method, compostion). If the claim “reads on” infringed the accused thing, it is infringed. OR - disclosures of the PRIOR ART. If the claim “reads on” invalid the prior art, it is invalid. ALWAYS make a claim chart

RJMorris - Genetics Dept Retreat - Stanford University21September 18, 2008 Claim 1 – 5,205,473 A recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recyclable adhesive. preamble transitional phrase body

RJMorris - Genetics Dept Retreat - Stanford University22September 18, 2008 Significance of Transitional Phrases comprising = these elements and anything else consisting = only these and nothing more consisting essentially of = these and anything else as long as the properties are not affected

RJMorris - Genetics Dept Retreat - Stanford University23September 18, 2008 Significance of Transitional Word “COMRISING” COMPRISING = these elements + anything else for validity: if the PRIOR ART includes those elements plus anything else, the claim still READS ON it and is INVALID. for infringement: if the accused device includes those elements plus anything else, the claim still READS ON it and is INFRINGED.

RJMorris - Genetics Dept Retreat - Stanford University24September 18, 2008 Claim 1 – 5,205,473 VALIDITY Coffin’s filing date was in Which elements of the claim [body only] were not already in the prior art ( the PRIOR ART= coffee sleeves of the time)? A recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recyclable adhesive.

RJMorris - Genetics Dept Retreat - Stanford University25September 18, 2008 Claim 1 – 5,205,473 INFRINGEMENT Which elements of the claim [body only] could be eliminated in a DESIGN AROUND coffee sleeve in order to avoid infringement? A recyclable, insulating beverage container holder, comprising a corrugated tubular member comprising cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recyclable adhesive.

RJMorris - Genetics Dept Retreat - Stanford University26September 18, 2008 What is a patent - abstract –A patent has nationality. –A patent is a right to exclude, not a right to do. –"Patents don't last forever"

RJMorris - Genetics Dept Retreat - Stanford University27September 18, 2008 W invents and patents the WHEEL. B later invents and patents the BICYCLE. Who can make and sell BICYCLES? A patent confers the right to exclude, NOT the right to do

RJMorris - Genetics Dept Retreat - Stanford University28September 18, 2008 Who can make and sell BICYCLES? Not W, without a license from B -- or the risk of a lawsuit. Not B, without a license from W -- or the risk of a lawsuit -- unless B wants to sell wheel-less frames. A patent confers the right to exclude, NOT the right to do

RJMorris - Genetics Dept Retreat - Stanford University29September 18, 2008 The Right to Exclude A patent confers the Right to Exclude – NOT The Right to Do so what happens when patents (or rather, their OWNERS) COMPETE? Licensing Retreat - Retool Lawsuit FISH STORY [M&A]

RJMorris - Genetics Dept Retreat - Stanford University30September 18, 2008 How the dilemma may be resolved OR

RJMorris - Genetics Dept Retreat - Stanford University31September 18, 2008 “Patents don’t last forever.” FRONT END: You can not enforce your patent against infringers until the patent ISSUES. The patent process can take several years: APPLICATION EXAMINATION (office actions [rejections], amendments, appeals) ISSUANCE At every step, you pay the Patent Office a fee. = SUE [start a lawsuit]

RJMorris - Genetics Dept Retreat - Stanford University32September 18, 2008 Maintenance fees must be paid to the Patent Office to keep the patent in force after it issues and before it expires. Patents expire after a certain amount of time. Generally, 20 years from date of earliest FILING. “Patents don’t last forever.”

RJMorris - Genetics Dept Retreat - Stanford University33September 18, 2008 "PERSON HAVING ORDINARY SKILL IN THE ART" (PHOSITA) Does the specification ENABLE the PHOSITA to make and use the claimed invention? Is the claimed invention OBVIOUS to the PHOSITA? VALIDITY is judged from the point of view of a HYPOTHETICAL

RJMorris - Genetics Dept Retreat - Stanford University34September 18, 2008 DAMAGES ($$) ATTORNEY FEES (sometimes) DAMAGES MULTIPLIED by > 1 and <=3, (sometimes) PREJUDGMENT INTEREST (most times) INJUNCTIONS – preliminary or permanent (sometimes) Is it valid? Is it infringed? So what?

RJMorris - Genetics Dept Retreat - Stanford University35September 18, 2008 Thank You. Questions?

RJMorris - Genetics Dept Retreat - Stanford University36September 18, 2008 What is “prior”? Anything more than 1 year before your application date ALSO Anything that is before your invention date. TWO THINGS YOU SHOULD KNOW, IFYOU KNOW ANYTHING AT ALL ABOUT U.S. PATENT LAW: The on-sale bar: anything YOU did more than a year before your application date could invalidate your patent. The duty of candor: you MUST tell the Patent Office what you know about prior art. You don’t have to search, but you have to be honest about what you know, and what you find.