Sci.Ev. - rjm Week 06 1 Please sit with your team* Experts Lawrence KLEIN Brett STAAHL Sondra HELLSTROM Lisandra WEST Sarah JARCHOW-CHOY Samantak GHOSH Mark MELAHN David Yeh ?? Experts Lawrence KLEIN Brett STAAHL Sondra HELLSTROM Lisandra WEST Sarah JARCHOW-CHOY Samantak GHOSH Mark MELAHN David Yeh ?? Attorneys Jen ROBINSON David LYDON Andy PARK Tim SAULSBURY Karni CHAGAL Julie KANE Julia KRIPKE Greg SOBOLSKI Technology Bio: Molecular Mechanisms? Biotech? DNA-Chemistry? Low/Mechanical? *If you want to switch, let me know.

Sci.Ev. - rjm Week 06 2 Today’s Agenda Teams and Patents The Fontirroche Litigation and the DOE How the DOCTRINE OF EQUIVALENTS became important NO prosecution history ESTOPPEL but YES prosecution history for claim interp. Graver Tank, Warner-Jenkinson, Festo Obviousness Graham v. Deere, 35 USC 103, and in 2007: KSR MuniAuction and O’Neill’s testimony Next Week: 11/3: Finish up from this week, and make sure all teams have their prosecution history; Daubert Field Trips (optional) 11/6 Tutorial and Claim Construction Hearing: Micron v. MOSAID (DJ) in SJ before Judge Jeremy Fogel. Lead attorney for DJplaintiff/AI: Greg Arovas (MMPS ‘91), Kirkland & Ellis 11/10 Sun v. Network & Network v. Sun: Claim Construction Hearing in SF before Magistrate Elizabeth LaPorte 11/10: Daubert in a patent case; Tivo?; One last area for experts: enablement and other 35 USC 112 matters. Rest of term: Simulations. Week of 11/10: team meetings with me. 11/17 class will be to discuss common problems. Rest of week of 11/17 and 11/24-26 will be for team meetings with me

Sci.Ev. - rjm Week 06 3 Number of Applications? Years in Prosecution? Did you look at your patent? Did you look for the words “Related US Application Data”? Almost always, those words were there. If you did not find those words, you could ask about their absence. (Sarah did. Thank you, Sarah!) Remember the introduction to patent law at the first class? I handed out some patents and talked about them. [next slide]

Sci.Ev. - rjm Week 06 4 Mochly-Rosen 405 Patent Source: Slide 12 of INTRODUCTION TO PATENT LAW, which was linked on 01.PPT, slide 7. The INTRODUCTION slides were shown at the first class, September 29. The INTRODUCTION is now also in the PPT directory and linked here.PPThere Please use the course website. It is there for YOU. If you can’t find something you remember having seen, please ask!

Sci.Ev. - rjm Week 06 5 Mochly-Rosen 405 Patent Test yourself: Number of CONTINUING applications (parents)? Number of years in prosecution (from earliest application)?

Sci.Ev. - rjm Week 06 6 Fontirroche ‘594 Test yourself again: Number of CONTINUING applications (parents)? Number of years in prosecution (from the earliest application)? Remember this patent?

Sci.Ev. - rjm Week 06 7 Patent 1 Student said “0?” continuing applications.

Sci.Ev. - rjm Week 06 8 Student’s Patent - 2 Student said “0?” continuing applications.

Sci.Ev. - rjm Week 06 9 What about CHILD patents of YOUR patent? Samantak: Parent applications spawned patents. Sondra: No parents, but research revealed children. Which of them (or both) should care about children: in this class? later on as real litigators and experts?

Sci.Ev. - rjm Week Prosecution History Here’s the PAIR entry for 6,345,617 (chosen at random or because the number is easy to remember…). You may have to get into PAIR first, by typing in those funny words. After that, even though you don’t immediately get the right page, you SHOULD get the right page by clicking on PUBLIC PAIR.PAIR entry for 6,345,617 Even if PAIR does not have an IMAGE FILE WRAPPER tab (which means you can print out the file history right away), it should have a TRANSACTION HISTORY tab. From that, you can see how many Office Actions and how many Responses there were, whether there were any appeals, etc. REMINDER: If you want to look for a patent on PAIR, just use this link on this slide, and then click on the SELECT NEW CASE tab at the top left. Please make use of the links in the slides. Remember that all slides are in the PPT directory of the course website. Do you all know how to find that directory?

Sci.Ev. - rjm Week Graver TankGraver Tank and Warner-JenkinsonWarner-Jenkinson The FWR (triple identity) test The insubstantial differences test The role of prosecution history (=file history = file wrapper) LITERAL: for claim interpretation. Part of the INTRINSIC evidence. DOE: for ESTOPPEL (an equitable principle, but hey, it’s still a question of FACT…)

Sci.Ev. - rjm Week Graver TankGraver Tank -1 "To temper unsparing logic and prevent an infringer from stealing the benefit of an invention"{n1} {n1} L. Hand in Royal Typewriter Co. v. Remington Rand, 168 F. 2d 691, 692.} a patentee may invoke this doctrine to proceed against the producer of a device "if it performs substantially the same function in substantially the same way to obtain the same result." Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 ([1929)]. {This is sometimes called the function- way-result test and abbreviated FWR,or the triple identity test. NB: There are 2 substantially the same's and one plain same. - RJM} Page 3:1m (slugged) What is “IT”? The answer is in Warner- Jenkinson.

Sci.Ev. - rjm Week Graver TankGraver Tank -2 Page 4:1m (slugged) Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to - the purpose for which an ingredient is used in a patent, - the qualities it has when combined with the other ingredients, and - the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

Sci.Ev. - rjm Week Graver TankGraver Tank -3 Page 8 (last words) DOUGLAS, J. (dissenting) Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article..

Sci.Ev. - rjm Week Warnerr-JenkinsonWarnerr-Jenkinson -1 Page 4-5 There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement. Judge Nies identified one means of avoiding this conflict: "[A] distinction can be drawn that is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed "Where a claim to an invention is expressed as a combination of elements, as here, 'equivalents' in the sobriquet 'Doctrine of Equivalents' refers to the equivalency of an element or part of the invention with one that is substituted in the accused product or process. Page 5 A B A is OK. B is BAD.

Sci.Ev. - rjm Week Warnerr-JenkinsonWarnerr-Jenkinson -1 Page 5 "This view that the accused device or process must be more than 'equivalent' overall reconciles the Supreme Court's position on infringement by equivalents with its concurrent statements that 'the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office.' [Citations omitted.] The 'scope' is not enlarged if courts do not go beyond the substitution of equivalent elements." 62 F.3d at (Nies, J., dissenting) (emphasis in original). = underlining

Sci.Ev. - rjm Week Festo -1 The more important FESTO for our purposes is the Federal Circuit decision, after the Supreme Court gave its guidance and remanded. The first page of my Fall 2004 edit of the Supreme Court decision provides a useful chronology.Fall 2004 edit of the Supreme Court decision The rest of the SC decision (edited) is there, too, if you want to read it. The Fed Cir decision on remand is also my edit from Fall The important section appears on the next slides.Fed Cir decision on remand

Sci.Ev. - rjm Week FestoFesto Fed Cir Page 2 To begin with, we recognize that the Court expressly endorsed our holding that a narrowing amendment made to comply with any provision of the Patent Act, including § 112, may invoke an estoppel. We next reinstate our holding that a "voluntary" amendment may give rise to prosecution history estoppel. Festo VI, 234 F.3d at 568. That separate holding was not considered, and certainly was not rejected, by the Supreme Court. Moreover, it is consistent with the Court's remand, and its reinstatement confirms what we have already determined by an overwhelming 11 ‑ 1 majority.

Sci.Ev. - rjm Week Page 2 In addition, we clarify that the Supreme Court's Warner-Jenkinson presumption, which treats a narrowing amendment as having been made for a "substantial reason related to patentability" when the record does not reveal the reason for the amendment, 520 U.S. at 33, remains intact after the Court's Festo decision, although the consequences of failing to overcome that presumption have been altered. [Now] a patentee's failure to overcome the Warner-Jenkinson presumption gives rise to the new Festo presumption of surrender. Festo VIII, 535 U.S. at 740 ("When the court is unable to determine the purpose underlying a narrowing amendment -- and hence a rationale for limiting the estoppel to the surrender of particular equivalents -- the court should presume that the patentee surrendered all subject matter between the broader and the narrower language."). presumably! FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 2-3 But if the accused infringer establishes that the [P.3] amendment was a narrowing one, then the second question is whether the reason for that amendment was a substantial one relating to patentability. See id. When the prosecution history record reveals no reason for the narrowing amendment, Warner- Jenkinson presumes that the patentee had a substantial reason relating to patentability; consequently, the patentee must show that the reason for the amendment was not one relating to patentability if it is to rebut that presumption. See id. (citing Warner-Jenkinson, 520 U.S. at 33). In this regard, we reinstate our earlier holding that a patentee's rebuttal of the Warner-Jenkinson presumption is restricted to the evidence in the prosecution history record. Festo VI, 234 F.3d at 586 & n.6; see also Pioneer Magnetics, 330 F.3d at 1356 (stating that only the prosecution history record may be considered in determining whether a patentee has overcome the Warner-Jenkinson presumption, so as not to undermine the public notice function served by that record). FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 3 If the patentee successfully establishes that the amendment was not for a reason of patentability, then prosecution history estoppel does not apply. If, however, the court determines that a narrowing amendment has been made for a substantial reason relating to patentability -- whether based on a reason reflected in the prosecution history record or on the patentee's failure to overcome the Warner-Jenkinson presumption -- then the third question in a prosecution history estoppel analysis addresses the scope of the subject matter surrendered by the narrowing amendment. See Pioneer Magnetics, 330 F.3d at FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 2 At that point Festo VIII imposes the presumption that the patentee has surrendered all territory between the original claim limitation and the amended claim limitation. See Festo VIII, 535 U.S. at 740. The patentee may rebut that presumption of total surrender by demonstrating that it did not surrender the particular equivalent in question according to the criteria discussed below. Finally, if the patentee fails to rebut the Festo presumption, then prosecution history estoppel bars the patentee from relying on the doctrine of equivalents for the accused element. If the patentee successfully rebuts the presumption, then prosecution history estoppel does not apply and the question whether the accused element is in fact equivalent to the limitation at issue is reached on the merits. FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 4 [Unforeseeability] The first criterion requires a patentee to show that an alleged equivalent would have been "unforeseeable at the time of the amendment and thus beyond a fair interpretation of what was surrendered." Id. at 738. This criterion presents an objective inquiry, asking whether the alleged equivalent would have been unforeseeable to one of ordinary skill in the art at the time of the amendment. FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 4 [Tangential Rationale] The second criterion requires a patentee to demonstrate that "the rationale underlying the narrowing amendment [bore] no more than a tangential relation to the equivalent in question." Festo VIII, 535 U.S. at 740. In other words, this criterion asks whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent. [Citations to dictionary definitions of "tangential" omitted.] Although we cannot anticipate the instances of mere tangentialness that may arise, we can say that an amendment made to avoid prior art that contains the equivalent in question is not tangential; it is central to allowance of the claim. FestoFesto Fed Cir

Sci.Ev. - rjm Week Page 5 [Other Reasons] The third criterion requires a patentee to establish "some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question." Festo VIII, 535 U.S. at 741. This category, while vague, must be a narrow one; it is available in order not to totally foreclose a patentee from relying on reasons, other than unforeseeability and tangentialness, to show that it did not surrender the alleged equivalent. Thus, the third criterion may be satisfied when there was some reason, such as the shortcomings of language, why the patentee was prevented from describing the alleged equivalent when it narrowed the claim. When at all possible, determination of the third rebuttal criterion should also be limited to the prosecution history record. FestoFesto Fed Cir

Sci.Ev. - rjm Week Bottom Line: Avoid any DOE argument that would get you into Festo PHE presumptions. You CAN make simplifying assumptions, of course, to help narrow your focus. All assumptions will be communicated to your panel of judge/observers before your simulation. FestoFesto Fed Cir

Sci.Ev. - rjm Week Obviousness: 103 Section 103 forbids issuance of a patent when "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." Now 103(a) What the statute actually says: 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 What if the invention IS identically disclosed or described as set forth in section 102? What do we call that reason to forbid issuance?

Sci.Ev. - rjm Week Obviousness: KSRKSR "Under § 103, [1] the scope and content of the prior art are to be determined; [2] differences between the prior art and the claims at issue are to be ascertained; and [3] the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as - commercial success, - long felt but unsolved needs, - failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." [Quoting Graham v. Deere] Page 1