Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm1 Today’s Agenda Dolly – The Patent, The 1992 Preliminary Injunction Decision, Claim Interpretation and the 1994 DOE Decision Westinghouse, 1898 The Federal Circuit Judges (along the way) Next Week

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm2 The Dolly Patent What did Marcus et al think they’d invented? With or without hindsight: What did the patent attorneys do that was praiseworthy? What did the patent attorneys do that was blameworthy?

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm3 The Dolly Patent – Claim The portable adjustable child's chair of claim 17 further comprising means for retaining the occupant in said child's chair and means for securely attaching said child's chair to an existing chair or other support. 17. The portable adjustable child's chair of claim 16 further comprising: a serving tray; and means for removably attaching said tray to said child's chair.

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm4 The Dolly Patent – Claim A portable adjustable child's chair, comprising: (a) a contoured seat panel; (b) a contoured back panel; (c) two side panels having on their inner surfaces facing each other a plurality of generally horizontal grooves or channels to slidably receive said seat panel whereby said seat panel may be raised or lowered; and (d) a stable rigid frame which is formed in part from said side panels and which along with said seat panel and said back panel provides a body supporting feature, said stable rigid frame being self-supporting and free-standing, whereby said child's chair is readily portable and easily stored.

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm5 The Dolly Patent – Claim 19 (d) a stable rigid frame which is formed in part from said side panels and which along with said seat panel and said back panel provides a body supporting feature, said stable rigid frame being self-supporting and free-standing,

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm6 Dolly – Best/Worst Facts Best and Worst Facts should pertain to the decision in question, not to the OTHER decision (or the life of the parties in the future), They should be FOCUSED on the issue that the court determines (even if there are other side issues that the parties may have thought were more important). Knee-jerk answers that MAY be right, but you’d better have a good reason for them. Appellant Status. (Phrased variously, but what it boils down to is “this party won below.”

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm7 Dolly – Best/Worst Facts Knee-jerk answers that MAY be right, but you’d better have a good reason for them. Appellee Status. (Phrased variously, but what it boils down to is “this party won below.”) The language of the claim OR the structure of the accused device.

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm8 Dolly THE PANEL – ARCHER, RADER, PLAGER READING INTO GENERALLY – THE PROBLEM OF THE PREFERRED EMBODIMENT CLAIM DIFFERENTIATION

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm9 Dolly Pennwalt v. Corning? Is there a difference we could articulate better than the Federal Circuit does?

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm10 Chief Judges of the Federal Circuit Markey 10/1/82 to 6/27/90 [CCPA] Niesto 3/17/1994[CCPA] Archerto 12/24/97[DC Tax, then Asst AG for 4 years] Mayer to present[Claims Court, not Court of Claims]

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm11 Westinghouse From Graver Tank: The theory on which it is founded is that "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." Machine Co. v. Murphy, 97 U.S. 120, 125.

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm12 Westinghouse But even if it be conceded that the Boyden device corresponds with the letter of the Westinghouse claims, that does not settle conclusively the question of infringement. We have repeatedly held that a charge of infringement is sometimes made out, though the letter of the claims be avoided. Machine Co. v. Murphy, 97 U.S. 120 … Reverse Doctrine of Equivalents

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm13 The converse is equally true. The patentee may bring the defendant within the letter of his claims, but if the latter has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent his actual invention, he is as little subject to be adjudged an infringer as one who has violated the letter of a statute has to be convicted, when he has done nothing in conflict with its spirit and intent. Westinghouse

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm14 Westinghouse "An infringement," says Mr. Justice Grier in Burr v. Duryee, 1 Wall. 531, 572, "involves substantial identity, whether that identity be described by the terms, 'same principle,' same 'modus operandi,' or any other.... The argument used to show infringement assumes that every combination of devices in a machine which is used to produce the same effect, is necessarily an equivalent for any other combination used for the same purpose. This is a flagrant abuse of the term 'equivalent.'"

Week 5 - 9/30/03Adv.Pat.Law Seminar - rjm15 DOE and RDOE Function Way Result Do we look at the INVENTION AS A WHOLE, or the separate ELEMENTS (LIMITATIONS) [CLAIM CHART ROWS]?