1. 2009 - Sci.Ev. - rjm Week 02 1 2009 - Sci.Ev. - rjm 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 / GENETICS 243 Prof. Roberta J. Morris Room 208 Crown Quad 723-9505 rjmorris@stanford.edu scievseminar09@lists.stanford.edu

2. 2009 - Sci.Ev. - rjm Week 02 2 2009 - Sci.Ev. - rjm 2 Today’s Agenda Handouts/Handbacks/Handins – HO: Replacement p. 3 of student list; 5,000,000 cover sheet; Calculating Expiration Dates. HB/HI: Your How-the’s Review of / Introduction to Patent Law - the object-or-case patent assignment - the start of the introduction to patent law - the Hologic claim construction assignment Hologic – Claim 1 – parts of a claim; reformatting problems (Start on this no later than 5:45) Next Week: No classes for law students. Therefore no assignment. Class for Genetics 243, however. Optional review session, open to everyone. Topic to be discussed: Speak up now, or send suggestions by email.

3. 2009 - Sci.Ev. - rjm Week 02 3 Communications and Websites; Word Police Coursework v. Blog v. Email? Any thoughts? ADDED AFTER CLASS: Democratic Choice: Coursework. (Email is only used in special situations.) In patent law, the word INFRINGE takes a direct object. Anyone who says INFRINGE ON in this class is making a big mistake. And while the Word Police are patrolling, remember that a patent has a specification, no S. If you have two patents, you have specificationS, but that’s still one per.

4. 2009 - Sci.Ev. - rjm Week 02 4 2009 - Sci.Ev. - rjm 4 Patent Law Questions Why choose a patent whose number is more than 5,000,000? - BumQ’s answer (good research!) Let’s look at 5,000,000, and calculate its expiration date. Handouts. - Design patents and Reissue patents v. Utility Patents Yesterday the Patent Office issued D 601,325; Re. 40,925; and PP 20,374. 7.6M in utility patents is only a few weeks away. Other good research: Guillaume, Matt T, Matt B

5. 2009 - Sci.Ev. - rjm Week 02 5 2009 - Sci.Ev. - rjm 5 Patent Law Questions {From TIFFANY} How does a REISSUE differ from the 3 kinds of continu ing applications: continuations, divisionals and continuations- in-part? Obvious Q. How do they differ from each other. A. Later. Matt’s Q: How does a REISSUE differ from the ORIGINAL? A. Later. My question to you, is there any other way besides REISSUE that an issued patent can be changed? Another to learn, and avoid using for a while.

6. 2009 - Sci.Ev. - rjm Week 02 6 More Information than You Need (“MITYN”?): This time about Plant Patents Compare the PTO’s narrative with the statutePTO’s narrative 35 U.S.C. 16135 U.S.C. 161 Patents for plants. Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided. (Amended Sept. 3, 1954, 68 Stat. 1190.) {Tiffany’s Question} Why is PLANT not marked as a term of art? {My questions} What IS a term of art? Are the uninitiated as likely to misuse “plant patent” as they are “design patent” “reissue” and even “utility patent”? Why or why not?

7. 2009 - Sci.Ev. - rjm Week 02 7 2009 - Sci.Ev. - rjm 7 What matters in the PATENT-in-SUIT v. Prior Art Patents and Patents Practiced by [the other side] (Accused Infringers/Potential Licensees) What does “patent-in-suit” mean? What does it mean to “assert” a patent? What else besides patents can be prior art? How does that help you remember whether you need to care about the CLAIMS of a prior art patent? Sometimes a patent owner or patent applicant SHOULD care about the claims of a prior art patent. When? Answer: when it MIGHT be the patent-in-suit; when it might be ASSERTED. (And how would that happen?)

8. 2009 - Sci.Ev. - rjm Week 02 8 2009 - Sci.Ev. - rjm 8 What matters in the PATENT-in-SUIT v. Prior Art Patents and Patents Practiced by [the other side] (Accused Infringers/Potential Licensees) Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent on accused device = NEW Is the New patent valid over the Old patent? Is the Old patent infringed by someone practicing the New patent? New PatentLook at New's CLAIMSLook at New's SPECIFICATION (to see what people do who would PRACTICE New’s invention) Old PatentLook at Old's SPECIFICATION (to see what it "teaches") Look at Old's CLAIMS Q.When do you look at the CLAIMS? A.When the patent is ________

9. 2009 - Sci.Ev. - rjm Week 02 9 Claims, Broad and Narrow BROAD claims are SHORT NARROW claims are LONG Breadth aka “scope” Length (in words) WHY? Explain! Cf. Emily’s question about “vague wording.” Patent Claims

10. 2009 - Sci.Ev. - rjm Week 02 10 2009 - Sci.Ev. - rjm 10 Your Patented Objects/Cases Last week you were asked to highlight two phrases in your claim that “you think may be important” and then you were asked to find those phrases in the specification. What did you observe? Have you looked at what your colleague said about your claim? What was good about having someone comment on your work? What was not? What else would you have liked to comment on, either in your patent or in your colleague’s claim 1?

11. 2009 - Sci.Ev. - rjm Week 02 11 2009 - Sci.Ev. - rjm 11 Your Reformatting Generally, EXCELLENT! Thoughtful! Serious! Some common problems: - deleting/changing/rearranging the text. That is NOT ALLOWED. The point is to QUOTE the claim exactly but to make it easier to understand it, see its flaws, figure out how to attack it, etc. - indenting rightward without enough thought. See Hologic claim analysis ahead. As stated in FORMAT.DOC, rote does not work.ahead New concepts: The parts of claim: preamble, transitional phrase, body.

12. 2009 - Sci.Ev. - rjm Week 02 12 2009 - Sci.Ev. - rjm 12 Your Patented Objects/Cases and your Questions about Law* and about the Hologic Decision Your Object/Case and patent and its claim 1 – what you liked, what surprised you, what mystified you, etc. Comments on someone else’s claim; on the claim itself, on the exercise of looking at someone else’s reformatting Your questions/answers from last week’s review of patent law The HOLOGIC claim construction Choose 1 of the above but please be different from your predecessor. Everyone else: please ask questions. MattT BumQ DmitryAaron Ryan David Guillaume MattP Riti Emily Tiffany MattB Denise Ben Randomized by the Randomizer Randomizer * Patent law only. We can talk about (T) and (C) during breaks.

13. 2009 - Sci.Ev. - rjm Week 02 13 Hologic Claim 1 1. Apparatus for delivering radioactive emissions to a body location with a uniform radiation profile, comprising: (a) a catheter body member having a proximal end and distal end; (b) an inner spatial volume disposed proximate the distal end of the catheter body member; (c) an outer, closed, inflatable, chamber defined by a radiation transparent wall affixed to the body member proximate the distal end thereof in surrounding relation to the inner spatial volume with a predetermined constant spacing between said inner spatial volume and the radiation transparent wall; (d) a material containing a radionuclide(s) disposed in one of the inner spatial volume and outer chamber; and (e) means disposed in the other of the inner spatial volume and outer chamber for rendering uniform the radial absorbed dose profile of the emissions from the one of the inner spatial volume and outer chamber containing the radionuclides. Did anyone have a claim that did NOT use the word COMPRISING?

14. 2009 - Sci.Ev. - rjm Week 02 14 The Parts of a Claim 1. Apparatus for delivering radioactive emissions to a body location with a uniform radiation profile, comprising: TRANSITIONAL PHRASEPREAMBLE Everything up to the TRANSITIONAL PHRASE is the PREAMBLE. BODY Everything after the TRANSITIONAL PHRASE is the BODY. The 3 most-frequently-used transitional pharses are: comprising OPEN - comprising OPEN consisting of CLOSED - consisting of CLOSED consisting essentially of COMPOSITION OF MATTER - consisting essentially ofCLOSED except OPEN to additional things that do not affect the PROPERTIES of the claimed invention. (Only found in COMPOSITION OF MATTER claims.) OPEN: The claim READS ON anything with AT LEAST the claimed elements. elements The claim has elements A B and C. Prior Art shows A B C and D. Claim is INVALID Accused device has A B C and E F and G. Claim is INFRINGED. CLOSED: The claim READS ON only what has exactly those elements and nothing more. The claim has elements A B and C. Prior Art shows A B C and D. Claim is NOT INVALID Accused device has A B C and D. Claim is NOT INFRINGED. Anything in this color Why the double negative? Why not just say VALID?

15. 2009 - Sci.Ev. - rjm Week 02 15 OPEN Claims (“comprising,” or sometimes “having”) The claim READS ON anything with AT LEAST the claimed elements. elements The claim has elements A B and C. The accused device has A B C and D (and so on). The claim is INFRINGED. We initiates will say, do not take you out of “Additional elements do not take you out of infringement.”

16. 2009 - Sci.Ev. - rjm Week 02 16 OPEN Claims and READING ON CLAIM X: “A whosits COMPRISING:” ACCUSED DEVICE or PRIOR ART AA BB CC -D I think of the concept of READING ON in a visual way. It requires a 1:1 correspondence between the claim and [the other], but without taking into consideration anything EXTRA that is not in the claim.

17. 2009 - Sci.Ev. - rjm Week 02 17 OPEN Claims – cont’d CLAIM X: “A whosits COMPRISING:” ACCUSED DEVICE or PRIOR ART AA BB CC -D Two more pairs of concepts you will need to understand are LITERAL INFRINGEMENT/ INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS, and ANTICIPATION/ OBVIOUSNESS. For now, let’s consider only the first ( big red ) term in each pair. What about “anything extra” that is mentioned  in other claims?  in the specification?  in the product the PO marks with this patent number (aka the “commercial embodiment”)? What READING ON looks like It’s the CLAIM, stupid.

18. 2009 - Sci.Ev. - rjm Week 02 18 OPEN: The claim READS ON anything with AT LEAST the claimed elements. elements The claim has elements A B and C. Prior Art shows A B C and D. Claim is INVALID Accused device has A B C and D. Claim is INFRINGED. OPEN Claims – cont’d CLAIM X: “A whosits COMPRISING:” ACCUSED DEVICE or PRIOR ART AA BB CC -D What READING ON looks like for ANTICIPATION LITERALLY We initiates say, “That which [literally] infringes if after, anticipates if before.”

19. 2009 - Sci.Ev. - rjm Week 02 19 OPEN Claims 2 more sample claim charts CLAIM X: “A whosits COMPRISING:” ACCUSED DEVICE AA BB C C’C’ DD C != C ’ but they are variants/similar. (Those are not TOAs; they are ordinary words.) Is the claim LITERALLY INFRINGED or not? CLAIMACCUSED DEVICE AA BB -D E- Is the claim INFRINGED OR NOT? What else might you want to know?

20. 2009 - Sci.Ev. - rjm Week 02 20 READING ON != READING IN “READING ON” is what you have to do to evaluate validity and infringement. READING IN – used in the phrase “reading in a limitation from the specification into a claim” is a SIN.

21. 2009 - Sci.Ev. - rjm Week 02 21 Hologic Claim 1 - Preamble 1. Apparatus for delivering radioactive emissions to a body location with a uniform radiation profile, comprising: Which word is modified by the phrase “with a uniform radiation profile"? Is it APPARATUS, DELIVERING, EMISSIONS, or LOCATION? If you don’t know for sure, wordsearch the patent. the patent First, as always, break the words into phrases. These breaks are preliminary. You start to see what modifies what, etc. Apparatus for delivering radioactive emissions to a body location with a uniform radiation profile

22. 2009 - Sci.Ev. - rjm Week 02 22 Hologic Claim 1 - Clauses A and B (a) a catheter body member having a proximal end and distal end; (b) an inner spatial volume disposed proximate the distal end of the catheter body member; (a) and (b) are both noncontroversial. It's good practice to break them down and place the constituent phrases at the best horizontal position, but it’s not going to be hugely important. REMINDER: Why do catheter claims (and other things, too) always recite a PROXIMAL and a DISTAL end? Or an INNER and OUTER SURFACE? Or obvious things like that? In catheter-speak: P roximal is by the D octor and D istal is by the P atient

23. 2009 - Sci.Ev. - rjm Week 02 23 Hologic Claim 1 - Clause C (c) an outer, closed, inflatable, chamber defined by a radiation transparent wall affixed to the body member proximate the distal end thereof in surrounding relation to the inner spatial volume with a predetermined constant spacing between said inner spatial volume and the radiation transparent wall; (c) an outer, closed, inflatable, chamber defined by a radiation transparent wall affixed to the body member proximate the distal end thereof in surrounding relation to the inner spatial volume with a predetermined constant spacing between said inner spatial volume and the radiation transparent wall; Which noun preceding the phrase "in surrounding relation to the inner spatial volume" does that phrase modify: chamber, wall, member or end? Same problem for the phrase "with a predetermined constant spacing...." Which noun has such a spacing: volume or one of the preceding 4?

24. 2009 - Sci.Ev. - rjm Week 02 24 2009 - Sci.Ev. - rjm 24 Next Week, and the Week after That 10/07: ?? 10/14: BSC v. Cordis. Claim 1 was discussed in DOCS/FORMAT.DOC. Readings selected from Trial Transcript, Claim Construction Order, File History