1. Adv.Pat.Sem. 2005-rjmWeek 11 SEMINAR IN ADVANCED PATENT LAW LAW 865 Prof. Roberta J Morris Room 904 Legal Research 647-4037 rjmorris@umich.edu Email Group: advpatseminar05@umich.edu Course Materials on the Web: http://www-personal.umich.edu/~rjmorris/fall05/ or possibly ctools for law 865

2. Adv.Pat.Sem. 2005-rjmWeek 12 Today’s Agenda  Who We Are Who  What You Will Do in this SeminarYou  Review of Your Basic Knowledge of Patent Law Patent Law  Origins of the DOE and Patent Law History – Winans v. DenmeadWinans v. Denmead  Next Week: More on history, claims, and equivalence

3. Adv.Pat.Sem. 2005-rjmWeek 13 Who Are You? HandoutHandout: Names, Education, Etc. What should we know about you that is not apparent from your resume (education and work experience)? Hobbies? Favorite book? Favorite movie? Favorite law professor first year? Favorite subject first year?

4. Adv.Pat.Sem. 2005-rjmWeek 14 How many of you have taken (or are taking or planning to take) JURISDICTION? How many of you took calculus in high school?

5. Adv.Pat.Sem. 2005-rjmWeek 15 Talk Dates everyone (well, 6) wanted 11/15 and 4 wanted 11/8 and people who wanted 11/15 put 11/8 as their 2 nd choice… re-select by lottery? Everyone? Or only the 11/8 and 15 people? maybe have 3 people the weeks of 11/8 and 11/15? if so, when during the week? We can’t have 424 after 5:59 pm Second choices didn’t help much

6. Adv.Pat.Sem. 2005-rjmWeek 16 Talk Date Selections – by email date Carter 1108 – or 15 Pearson 1108 – or 01 Shui 1115 – or 22 Olin 1115 Yates 1115 - or 08 or 01 Ko 1115 - or 08 Cohen 1122 – or 15 Kolb 1101 – or 15 or 22 Hawkins 1115 - or 29 Edsenga 1115 - or 22 Frostick 1018 Murshak 1011 [Wang] 1122 – or 15 Cleary 1108 Heller 1108

7. Adv.Pat.Sem. 2005-rjmWeek 17 Talk Date (Draft Due) [Preliminary Meeting*] 10/11 (09/20) [09/09] 10/18(09/27)[09/16] 10/25(10/04**)[09/23] 11/1(10/11)[09/30] 11/8(10/18)[10/07] 11/15(10/25)[10/14] 11/22(11/01)[10/21] 12/06(11/08)[10/28]

8. Adv.Pat.Sem. 2005-rjmWeek 18 What You Will Do in this Seminar Grading by Contract Weekly Comments: Deadlines so that you can comment on a comment? Coursetools? Private website? Talks – Dates, Topics, Packet Drafts, PacketsTalks Straight through (and done at 5:30) or Snack [Cookies or Veggies?] and small-l law discussions?

9. Adv.Pat.Sem. 2005-rjmWeek 19 prosecutors litigators best worst licensing, transactional?, opinion? Hours, Billing, Client contact, Writing

10. Adv.Pat.Sem. 2005-rjmWeek 110 Plans, Prejudices, Perceptions Who is planning a life of prosecution? litigation? other? Who usually favors the PO, absent very compelling circumstances? the AI? neither, really and truly?

11. Adv.Pat.Sem. 2005-rjmWeek 111 Validity Infringement AI Preponderance C&C PO *If you want the court to separate discovery and trial of liability from discovery and trial of damages, you would file a motion to __________ under Rule ___, F.R. Civ. P.] bifurcate 42 WHO HAS THE BOP? WHAT IS THE QOP?

12. Adv.Pat.Sem. 2005-rjmWeek 112 QUESTION OF FACT - SOR: clearly erroneous (some deference to trier of fact) - Patent law examples: anticipation, best mode QUESTION OF LAW - SOR: de novo (no deference) - Patent law examples: claim construction, obviousness

13. Adv.Pat.Sem. 2005-rjmWeek 113 Name some other implications if an issue presents a QUESTION OF LAW rather than a QUESTION OF FACT or EQUITY

14. Adv.Pat.Sem. 2005-rjmWeek 114 Prosecution history PATENT LAW - EQUITABLE ISSUES Name at least one and no more than four issues that arise fairly regularly in patent cases that are questions of _equity_ (as opposed to questions of _law_ or _fact_.) What is the standard of review on appeal for questions of equity? Abuse of Discretion inequitable conduct, laches, estoppel (from suit, and other kinds of estoppels EXCEPT NOT ______________ estoppel ), injunctions

15. Adv.Pat.Sem. 2005-rjmWeek 115 PROSECUTION HISTORY ESTOPPEL IS A QUESTION OF law

16. Adv.Pat.Sem. 2005-rjmWeek 116 Glaxo v. Impax (2004, Rader) cites Wang Labs (1997, Rich) which cites LaBounty (1989, Per Curiam, Nies, Bissell, Archer) (see below). Ranbaxy (Fed.Cir. 2003, Mayer) cites Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc, Archer): Insituform cites Mark I (1995, Lourie) which cites LaBounty which cites Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861 n.7, 871 (Fed. Cir. 1985, Baldwin). “Prosecution history estoppel is a legal question subject to de novo review on appeal. See Insituform, 99 F.3d at 1107, 40 U.S.P.Q.2D at 1609 [(Fed.Cir. 1996, Michel)].” What’s odd about the citations to this apparently well-settled principle?

17. Adv.Pat.Sem. 2005-rjmWeek 117 “ n7 Compare Prodyne [(Fed Cir. 1984, Rich)] and Kinzenbaw [(Fed. Cir, 1984, Friedman)] where the court was unwilling under the facts there presented to "undertake the speculative inquiry" as to the necessity of certain claim amendments and otherwise to enlarge the literal scope of patent claims amended during prosecution. The results reached there only highlight that application of prosecution history estoppel to limit the doctrine of equivalents should be performed as a legal matter on a case-by-case basis, guided by equitable and public policy principles underlying the doctrines involved and by the facts of the particular case.” Loctite.

18. Adv.Pat.Sem. 2005-rjmWeek 118 Prosecution history estoppel, moreover, is an equitable doctrine. By its very purpose, equity jurisprudence provides a remedy individually tailored to the circumstances of the dispute at hand. As stated by the Supreme Court: The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims. Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S. Ct. 587, 592, 88 L. Ed. 754 (1944) (emphasis added). not a patent case – involved an injunction under Emergency Price Control Act But then there’s Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 617 (Fed. Cir. 2000) (Plager, J., concurring).

19. Adv.Pat.Sem. 2005-rjmWeek 119 "A district court abuses its discretion when its decision - is based on clearly erroneous findings of fact, - is based on erroneous interpretations of the law, or - is clearly unreasonable, arbitrary or fanciful." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). [formatting mine. –RJM] quoted in Pharmacia Corp. v. Par Pharm., 2005 U.S. App. LEXIS 16698 (Fed. Cir. 2005) APPELLATE REVIEW OF EQUITABLE ISSUES

20. Adv.Pat.Sem. 2005-rjmWeek 120 A patent infringement case is called _X v. Y_. Who is X, if not the patent owner? For each of those 2 (or more) possibilities, name their relationship to the patent. Why can those non-patent-owners initiate suit? Accused Infringer Exclusive Licensee AI: Right to seek Declaratory Judgment (equitable and statutory); Exclu. Licensee: Caselaw interpreting 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) and § 261 (“…The … patentee … may … convey an exclusive right …”) See, e.g., Prima Tek II, LLC v. A-Roo Company, 222 F.3d 1372 (Fed. Cir. 2000).

21. Adv.Pat.Sem. 2005-rjmWeek 121 Exclusive Licensee 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) 35 USC § 100(d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

22. Adv.Pat.Sem. 2005-rjmWeek 122 “Section 261 recognizes, and courts have long held, that an exclusive, territorial license is equivalent to an assignment and may therefore confer standing upon the licensee to sue for patent infringement. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255, 34 L. Ed. 923, 11 S.Ct. 334 (1891) ….” Prima Tek II, 222 F.3d at 1377.

23. Adv.Pat.Sem. 2005-rjmWeek 123 Your client is a resident of Ann Arbor. Your client would like to sue a resident of Detroit for patent infringement. In what court do you bring the action? (Be as specific as you need to be.) Why is that the right court? The trial judge dismisses your case. In what court of appeals do you file your notice of appeal? Why is that the right court? E.D.Mich. Federal question. (28 USC 1338.) Personal jurisdiction and venue over defendant in the district. (venue: 28 USC 1391 b and c). Bonus: what if this were a suit on a patent license? Fed. Cir. (subject to Vornado…) All patent appeals (~~) go to the Fed. Cir. 28 USC. 1295.

24. Adv.Pat.Sem. 2005-rjmWeek 124 Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (9:0, Scalia; Stevens, O’Connor+Ginsburg concurring) Vornado sued a different company for trade dress infringement back in 1992 and lost (10 th Circuit). Subsequently the Fed. Cir. decided another trade dress case the other way, and then the Supreme Court decided Traffix v. MDI, resolving the circuit split. Vornado filed an ITC complaint against Holmes based on BOTH patent and trade dress. HOLMES retaliated by filing a D.J. on TRADE DRESS against Vornado, and sought an injunction restraining accusations of trade- dress infringement. VORNADO answered with a compulsory counterclaim alleging patent infringement, and in due course the Fed. Cir. was presented with an appeal.

25. Adv.Pat.Sem. 2005-rjmWeek 125 Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (9:0, Scalia; Stevens, O’Connor+Ginsburg concurring) The Supremes scolded the Fed Cir. Because the complaint had not asserted a federal patent law claim, the Fed Cir had no jurisdiction! From the LEXIS overview: <A counterclaim could not serve as the basis for "arising under" jurisdiction. 28 U.S.C. 1295(a)(1) did not use "arises under," but rather referred to jurisdiction under 28 U.S.C. 1338, where it was well established that "arising under any Act of Congress relating to patents" invoked, specifically, the well-pleaded-complaint rule.>

26. Adv.Pat.Sem. 2005-rjmWeek 126 Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826 (2002) (~9:0, Scalia; Stevens conc-in-part; O’Connor+Ginsburg concurring in the judgment) O’C & G pointed out that since the appeal did not concern a patent issue, they didn’t care about all the blather from Scalia. But if it HAD involved a patent issue, wouldn’t Scalia look like a fool to propose that Congress INTENDED that the regional circuits should muck around creating patent law precedent. (They were more polite.)

27. Adv.Pat.Sem. 2005-rjmWeek 127 Post Vornado Patent Misery might be a good topic for this seminar. In July 2002, Telcomm Tech. Servs., Inc. v. Siemens Rolm Communs., Inc., 295 F.3d 1249, the Fed Cir transferred a case to a regional circuit where the appealed orders included, among other things, one entering judgment on a patent infringement jury verdict. But it appears to have settled after that. another good topic might be: Proposed Legislation To Undo Vornado

28. Adv.Pat.Sem. 2005-rjmWeek 128 § 1338. Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition (a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases. (b) The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws. * * *

29. Adv.Pat.Sem. 2005-rjmWeek 129 § 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- (1) of an appeal from a final decision of a district court of the United States … if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title, except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section 1338(a) shall be [appealed to the regional circuits];

30. Adv.Pat.Sem. 2005-rjmWeek 130 § 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- * * * (3) of an appeal from a final decision of the [United States Court of Federal Claims]; (4) of an appeal from a decision of-- (A) the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with respect to patent applications and interferences...

31. Adv.Pat.Sem. 2005-rjmWeek 131 Constitution: Art. I, sec. 8, cl.8 Patent Statute: ___ USC 35 Patent Regulations: ___ CFR § 1. ___ 37 What is the cite for Rule 56? 37 CFR § 1.56 What is it? the duty of candor

32. Adv.Pat.Sem. 2005-rjmWeek 132 BONUS! What is Rule 56, F.R.Civ.P.? Summary judgment (still! Even though nowadays people say JMOL.) PTO’s internal rulebook is called: Manual of Patent Examining Procedure (MPEP) What kind of authority is it? De jure? De facto?

33. Adv.Pat.Sem. 2005-rjmWeek 133 Markman 1996 – claim construction Graham v. Deere 1966 – obviousness Festo 2002 – pros.history estoppel Merck 2005 – Hatch/Waxman and experiment as defense to infringement Blonder-Tongue 1971 - res judicata - validity Court? all Supreme FAMOUS CASES – Year - Issue

34. Adv.Pat.Sem. 2005-rjmWeek 134 Back to the class list handout: your selections for 1980s, 1990s and 2000s cases of the Federal Circuit for which cert. was denied. (Hence the shaded names…)

35. Adv.Pat.Sem. 2005-rjmWeek 135 Patent images TIFF German Patent Office USPTO: $3 LEXIS??

36. Adv.Pat.Sem. 2005-rjmWeek 136 Winans v. Denmead Supreme Court, 1853 Who should have won? Who should have won if it were decided today? What would the Federal Circuit do?

37. Adv.Pat.Sem. 2005-rjmWeek 137 Winans’ Patent and Lawsuit Patent: Draft Winans’ claim in today’s style of claiming. Lawsuit: Best Fact for PO Best Fact for AI

38. Adv.Pat.Sem. 2005-rjmWeek 138 Winans v. Denmead “In the view of the plaintiff below, there were two questions; - the first for the court, being the construction of the patent; - the second for the jury, being the substantial, or only colorable difference between the cars in principle and mode of operation.” (page 3.2m)

39. Adv.Pat.Sem. 2005-rjmWeek 139 Winans v. Denmead “The first is a question of law, to be determined by the court, construing the letters-patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury.” (page 6.1b)

40. Adv.Pat.Sem. 2005-rjmWeek 140 Winans v. Denmead Compare what happened to Winans to what happens in a Markman hearing. Compare the dissent to 21 st century views of the DOE: “Ful[l]ness, clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfil the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress. In my judgment, the principles of legal interpretation, as well as the public interest, require, that this language of this statute shall have its full significance and import.” (page 11.1t)

41. Adv.Pat.Sem. 2005-rjmWeek 141 The Patent Statute through the ages 1790: examination [by 3 members of the Cabinet, including Thomas Jefferson] 1793: registration (sort of) 1836: examination

42. Adv.Pat.Sem. 2005-rjmWeek 142 Section 6 of the 1836 Act v. 35 USC §§ _?? And be it further enacted, That any person or persons having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer; and shall desire to obtain an exclusive property therein, may make application in writing to the Commissioner of Patents, expressing such desire, and the Commissioner, on due proceedings had, may grant a patent therefor.

43. Adv.Pat.Sem. 2005-rjmWeek 143 Section 6 of the 1836 Act v. 35 USC §§ _?? But before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.

44. Adv.Pat.Sem. 2005-rjmWeek 144 Section 6 of the 1836 Act v. 35 USC §§ _?? He shall, furthermore, accompany the whole with a drawing, or drawings, and written references, where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office; and he shall moreover furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts. The applicant shall also make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, machine, composition, or improvement, for which he solicits a patent, and that he does not know or believe that the same was ever before known or used; and also of what country he is a citizen; which oath or affirmation may be made before any person authorized by law to administer oaths.