1. Patents V Claim Construction Class Notes: March 7, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

2. 3/7/032Law 507 | Spring 2003 Today’s Agenda 1.Clean Up: Obviousness & New Technologies 2.Claim Construction a)Allocation of Authority (Who Decides?) b)Interpretive Procedure (How?)

3. 3/7/033Law 507 | Spring 2003 Nonobviousness Challenge 3: Software/Business Models 1.Why do software and business model patents offer a challenge? 2.How should the courts deal with this? Lockwood v. American Airlines (1997) Do you agree with the court that the lack of detail about the software component was fatal? What does this suggest about software patents?

4. 3/7/034Law 507 | Spring 2003 Challenge 3: Software/Business Models Amazon.com v Barnesandnoble.com (2001): Note the procedural posture. What do you think the court suggests about the validity of the one-click patent? What does the court’s analysis suggest about software/business method/Internet patents more generally? Is there a problem here?

5. 3/7/035Law 507 | Spring 2003 The Centrality of Claim Construction “The Name of the Game is the Claims” (Judge Rich, 1990)

6. 3/7/036Law 507 | Spring 2003 What Does Claim Construction Look Like? The claim at Issue in Markman v Westview Inst … 1. [An] inventory control and reporting system, comprising; a data input device … a data processor including … means to maintain an inventory total; a dot matrix printer … and, at least one optical scanner …, whereby said system can detect and localize spurious additions to inventory as well as spurious deletions therefrom. What does inventory mean? 1.Receivables (Westview system) 2.Clothing 3.Receivables + Clothing

7. 3/7/037Law 507 | Spring 2003 Who Does Claim Construction? Markman (USSC 1996) Note the Court’s description of claim construction: a ‘mongrel practice’ Traditional analysis of judge/jury issues: 1.Is there a 7th Amendment guarantee of a jury trial? 2.Does precedent command the allocation of responsibility? 3.Are there functional reasons to allocate responsibility? Consider the Court’s functional analysis: a)Judges are more skilled at construing written documents b)Uniformity will be better served by the treatment of claim construction as an issue for the judge. o How will this work? Do you agree? o What does this imply about the Federal Circuit?

8. 3/7/038Law 507 | Spring 2003 Claim Construction: Allocation of Authority Consider … 1.The timing of claim construction 2.Appellate review of claim construction a)Interlocutory appeals b)Note: Cybor v FAS Techs (1998) - de novo review oImplications of Markman/Cybor? o~40-50% reversal rate of district court claim constructions

9. 3/7/039Law 507 | Spring 2003 Interpretive Procedure: The Johnson Worldwide Approach Johnson Worldwide (Fed Cir 1999) invention: trolling motor steering apparatus Key limitation: a)“a heading lock coupled to a trolling motor” Issue: does the heading detector have to be physically attached to the trolling motor?

10. 3/7/0310Law 507 | Spring 2003 The Johnson Worldwide Approach InformationDirectionWeight? Claim Language (plain meaning) Unqualified, broad language Written Description Interchangeable use of “heading” Possible inference that the preferred embodiment has a physical coupling Drawings Figure 1 shows compass attached to motor Prosecution history Inventor’s testimony Expert testimony Related references Does ‘coupled’ mean ‘physically attached’? Interpretive Sources

11. 3/7/0311Law 507 | Spring 2003 The Johnson Worldwide Approach The Johnson Worldwide “presumption”: 1.Presume claim terms have their ordinary meaning 2.Two circumstances can override the ordinary meaning: a)A patentee-provided definition (lexicographer), or b)where the claim language is unclear. Johnson Worldwide attempts to reconcile two conflicting canons of claim interpretation: 1.Claims must be read as part of the specification (i.e., in context) 2.Claims cannot be limited by “reading in” limitations from the specification

12. 3/7/0312Law 507 | Spring 2003 Dueling Approaches Johnson Worldwide: a “Procedural” approach Strict hierarchy among information sources Alternative: “Holistic” approach Consider entire context, totality of the circumstances Post-Markman: 62% procedural, 38% holistic (n=406)Post-Markman: 62% procedural, 38% holistic (n=406) Judges: range from 93% procedural to 85% holisticJudges: range from 93% procedural to 85% holistic What does this suggest about the Supreme Court’s decision in Markman?

13. 3/7/0313Law 507 | Spring 2003 Next Class Patents VI Infringement & the Doctrine of Equivalents