1. Defenses & Counterclaims II Class Notes: March 25, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

2. 03/25/032Law 677 | Spring 2003 Today’s Agenda 1.Inequitable Conduct 2.Patent Misuse & Antitrust 3.First Sale 4.Implied License 5.Repair versus Reconstruction

3. 03/25/033Law 677 | Spring 2003 Inequitable Conduct Considers Behavior Before the PTO Can include misrepresentations, failure to disclose, or submission of false informationCan include misrepresentations, failure to disclose, or submission of false information Test:Test: 1.Establish that baseline levels of materiality and intent exist. (Factual analysis.) 2.Balance materiality and intent to determine inequities involved. (Discretion by Court.)

4. 03/25/034Law 677 | Spring 2003 Inequitable Conduct: Intent Kingsdown Medical Consultants (Fed. Cir. 1988) What did Kingsdown’s patent attorney do? Why does the court emphasize that the claims-at- issue were patentable? (How does this fit in the analysis?) Why does gross negligence ≠ intent for IC? (Can’t gross negligence cause the same problems for the PTO/public that inequitable conduct is designed to address?) What is the ‘rule’ for intent? (What is the intent to be directed towards?) How do you show it?

5. 03/25/035Law 677 | Spring 2003 Inequitable Conduct: Materiality Critikon v Becton-Dickenson (Fed. Cir. 1997) Why take the materiality standard from the PTO’s rules? oPre-1992: ‘important to a reasonable examiner’ oPost-1992: ‘establishes prima facie case of invalidity / refutes argument put forth my applicant” Why does the court find that the McDonald patent should have been disclosed? (How does one know when a prior art reference is sufficiently unrelated to not disclose?) Why should the existence of litigation concerning the patent have been disclosed during reissue? What does the court’s expansive approach to materiality suggest about incentives to search for prior art?

6. 03/25/036Law 677 | Spring 2003 Inequitable Conduct: Hypos Halfway through the prosecution process, you find relevant prior art. In order to avoid slowing the process, you simply amend the claim to avoid the art (everyone agrees you were successful in doing so) rather than notifying the examiner. Inequitable conduct? After finding relevant prior art, you file a notice with the PTO, listing the problematic reference together with 35 other less relevant (but not irrelevant) documents. Inequitable conduct? You claim to have submitted the quantity or art to impress the examiner with the scope of your search. Any change? The inventor of the patent application you are prosecuting tells you that she does not know of any relevant prior art; accordingly, you do not notify the PTO of any. After the patent has issued, it becomes clear that the inventor did know of relevant prior art. Inequitable conduct?

7. 03/25/037Law 677 | Spring 2003 Patent Misuse Misuse: impermissibly broadening the physical or temporal scope of the patent Mallinckrodt v Medipart (Fed. Cir. 1992) Why do you think Mallinckrodt marks its device for ‘one use only’? (What are the social benefits?) What is the argument that the restriction on reuse is a form of patent misuse? What, specifically, are the things a patentee cannot do under the misuse doctrine? oTie-in oPrice-fixing oOther? How does the court describe the analysis/rule?

8. 03/25/038Law 677 | Spring 2003 Patent-Antitrust Key case: In re ISO II (Fed. Cir. 2001) Xerox refuses to sell patented parts to ISOs, with the goal of expanding into the service market Why does the Federal Circuit decline to find an antitrust violation? (Do you agree?) Consider the following antitrust violations: oIllegal tying oFraud at the PTO (Walker-Process Fraud) oSham Litigation oDoes this exhaust the list of problematic circumstances? Do you agree with the view that patentees may refuse to deal, but may not condition sales where anticompetitive concerns exist?

9. 03/25/039Law 677 | Spring 2003 First Sale Limitations on Patent Rights 1.First Sale Doctrine 2.The Doctrine of Implied License 3.Repair versus Reconstruction First Sale Doctrine: sale of a patented product implies … Purchasers can use the product Purchasers can re-sell the product Note: can be overridden by contract terms What is the theory supporting this doctrine?

10. 03/25/0310Law 677 | Spring 2003 Implied License / Repair & Reconstruction Implied license: arises from equitable estoppel Typically requires ‘inferred consent’ to use the patented invention Repair versus Reconstruction Repair: okay; reconstruction: not okay (Why?) Key issue: how to determine repair/reconstruction line

11. 03/25/0311Law 677 | Spring 2003 Next Class Defenses & Counterclaims III Limitations on Patent Licenses First Inventor Defense Experimental Use Defense