(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Please take any seat you like. No official scribes today. If, however, you notice any TOAs or any homework for me, I hope you will me after class.

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Today’s Agenda How... Work - awards, comments SSI/AMI v. TEK: what we saw, what we learned, the verdict, what could happen next. verdict Obviousness - SSI v. TEK and KSR Break: 8:30: Answer the question about the verdict (if necessary)verdict Teams - Meetings A W JEPD+H C &R - tomorrow,Thursday 5/2, at 2:05 RSA C H S C+H C &R- next week:Tuesday 5/7, at 11:15 ~9:45 Adjourn

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring How the Seminar Will Work Most typos + ideas: 1. Scott. 2. Asa 3. (Tie) Patrick and Emily Special session (not): The Oxford Comma ("I'd like to thank my parents, Bill Clinton [,] and Oprah Winfrey.")The Oxford Comma From the course description (required reading for the first class) "For the first several weeks, the class will examine judicial decisions and trial documents involving scientific evidence in patent litigation. The rest of the quarter is largely devoted to work on the final projects: simulations of expert testimony in a patent case. Students will work together in teams and will meet regularly with the instructor in order to: select suitable patents; identify a balanced issue on either validity or infringement; prepare claim charts and materials for testimony; and give short, illustrated talks to inform their classmates about their projects. Finally, they will choose sides (patent owner or accused infringer) and finetune their presentations. The simulations will be performed at the end of the quarter before panels of practicing patent lawyers. "

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Field Trip - Who Won? Who chose PO? Rob, Helio, Hernan, Jennifer, Emily, Jenn, Scott, David, Chinyere Who chose AI? Patrick Who didn't chose? Andy, Asa

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring The Field Trip The Verdict. (Also interesting: Questions from the Jury)VerdictQuestions from the Jury X X X X x=not infringed x=invalid (anticipated) X X X X Look at the patent. Why those 4 claims and not others? This is a question about the elements of the claims. Or rather, missing elements. Unless someone already figured that out, answer during the break. Collaboration is OK.

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring The Patent-in-Suit and NoninfringementPatent-in-Suit If an element that is in claims is not in the accused device (and not in the other claims), then claims do not __________ the accused device. The other claims do. Visual representation Because they include element Z, claims are not infringed. Find element Z. Claims Other ClaimsAccused Device AAA BBB Z read on

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring The Patent-in-Suit - InvalidityPatent-in-Suit If an element is MISSING from claims but is found in the other claims, then claims __________ the prior art but the other claims do not. Visual representation: Because they do not include element Q, claims are anticipated. What is element Q? Claims Other ClaimsPrior Art AAA BBB Q read on

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Anticipation and Obviousness - SSI v. TEK - SJ decision Anticipation: the '581 patent withstands the challenge Obviousness: the '110 patent does not withstand the challenges. Why do POs prefer to defend against ANTICIPATION? Why is OBVIOUSNESS kinder to AIs? Things to think about: Law v. Fact, secondary considerations, multiple pieces of prior art, level of skill

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Obviousness - KSR Scott: CONFUSED. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. p Jenn: VEXED. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. (p. 10, col. 2) Emily: MYSTIFIED. Asano taught everything contained in claim 4 except the use of a sensor to detect the pedal's position and transmit it to the computer controlling the throttle Rob: CONFUSED. "To the extent the court understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obviousness, it misunderstood the role expert testimony plays in the analysis. In considering summary judgment on that question the district court can and should take into account expert testimony, which may resolve or keep open certain questions of fact." (no page) Hernan; AMUSED. The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. (8-1) Asa: ANNOYED. ( re SC v. RJM on vacating v. reversing) Helio: SURPRISED: A person of ordinary skill is also a person of ordinary creativity, not an automaton (10:2) Patrick: INTRIGUED. [T] he Engelgau patent discloses a purpose: 'less expensive, and which uses fewer parts and is easier to package.' (4.2). Chinyere: CONFUSED. "Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness". Andy: FRUSTRATED. Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent's prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point.(page 5, column 1).

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Obviousness - KSR (quotes from p. 2) Why "sought to be patented"?

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Team Work AJEPDRSAHC ,626,925 Reformat Cl. 1 EmilyJennRobScott Compare 2 Indep Cls ??Asa??DavidAndyChinyere TermsPatrick Hernan

(Week 5) RJM - IP: Sci Ev in Pat Lit - Spring Next Week A. Infringement, especially the doctrine of equivalents B. Daubert: challenging experts. C. Follow-up regarding first round of meetings.