Week /28/03Adv.Pat.Law Seminar - rjm1 Today’s Agenda Filling in the Gaps in Your Knowledge of “Basic” Patent Law Duty of Candor – an historical case (1945) Indirect Infringement in the 1952 Patent Act § 271(c) Contributory Infringement, and § 271(b) Inducing Infringement

Week /28/03Adv.Pat.Law Seminar - rjm2 Duty of Candor - historical case (1945) Why should the PO have lost this one? Why not?Indirect Infringement v. Limiting the MONOPOLY – misuse, 271c, 271b, and even CLAIM INTERPRETATION Generally: advocacy in action. Spotting cut-and- pastes, cut from the party’s briefs, pasted into the judge’s opinion More Substantive Law

Week /28/03Adv.Pat.Law Seminar - rjm3 Sleepless nights: what do you think YOU might have done, at various stages of the unfolding story? Why might you NOT do, although we with hindsight know it would have looked better? How helpful is it to consult ‘outside ethics counsel’? Precision Instruments

Week /28/03Adv.Pat.Law Seminar - rjm4 Sleepless nights: what do you think YOU might have done, at various stages of the unfolding story? Why might you NOT do, although we with hindsight know it would have looked better? How helpful is it to consult ‘outside ethics counsel’? Which lawyer’s position - during the unfolding of the events, or during the later infringement litigation – was the scariest? What do you want to know to decide who is the baddest bad guy? Does the outcome sit well with you? Precision Instruments

Week /28/03Adv.Pat.Law Seminar - rjm5 (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Whoever does stuff with something that isn’t the WHOLE invention, but IS a ‘material part’ with KNOWLEDGE of the patent AND of the relationship of the part to the whole when that PART isn’t a staple of article of commerce AND that part doesn’t have a substantial non-infringing use [is in big trouble.] 271 c

Week /28/03Adv.Pat.Law Seminar - rjm6 271 b and c (b) Whoever actively induces infringement of a patent shall be liable as an infringer. (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Is KNOWLEDGE required in BOTH? What knowledge?

Week /28/03Adv.Pat.Law Seminar - rjm7 No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; … Dawson – 271(d)

Week /28/03Adv.Pat.Law Seminar - rjm8 (d) [ENACTED AFTER DAWSON] (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned. Dawson – 271(d)

Week /28/03Adv.Pat.Law Seminar - rjm9 Compare Proofs and Arguments regarding “Market Power” and “relevant market” - if AI plans to assert misuse or anti-trust violation - if PO plans to seek lost profits Who wants to show: * ABSENCE/PRESENCEof non-infringing substitutes * 2-player Market/multi-player market Dawson – 271(c) and (d)

Week /28/03Adv.Pat.Law Seminar - rjm10 Dawson Story: How come R&H has a patent on method ONLY? Concessions/Stipulations/Narrowing of Issues How does Court determine what 271c and d mean?? Who is the star witness?

Week /28/03Adv.Pat.Law Seminar - rjm11 Fromberg Story: How come Fromberg didn’t assert its other patent? Concessions/Stipulations/Narrowing of Issues What is the difference between 271 b and c in this case?

Week /28/03Adv.Pat.Law Seminar - rjm12 CR Bard v. ACS Story: How come CR Bard doesn’t have a patent on the catheter? Concessions/Stipulations/Narrowing of Issues?? What is the difference between 271 b and c in this case?

Week /28/03Adv.Pat.Law Seminar - rjm13 Next Week Liz Durham Drug Patents -3. The International Scene: TRIPS and the proposal for compulsory licensing. Spencer Goodson Markman Hearings -2. What happens in suit #2 to the Markman Ruling of suit #1?