1. 2009 - Sci.Ev. - rjm Week 04 1 Seating Assignments Door Screen Warner- Jenkinson Ben, BumQ, Guillaume, Tiffany Graver Tank Aaron, Riti, Ryan KSR Matt T, David, (Emily) Sanofi Matthew, Dmitry, (Denise), Prosen DOE Obviousness

2. 2009 - Sci.Ev. - rjm Week 04 2 Today’s Agenda Leftovers: US Courts (esp. Federal) Interferences Any Remaining Questions about Cordis? Haikus DOE Graver Tank (1950) Warner-Jenkinson (1997) Festo (Prosecution History Estoppel limits the Doctrine of Equivalents) [Handout on Festo Chronology] Obviousness {Graham v. Deere} KSR Sanofi

3. 2009 - Sci.Ev. - rjm Week 04 3 Haikus

4. 2009 - Sci.Ev. - rjm Week 04 4 Court System Hierarchy of Non-Case Law: 1 Statutes 2 Regulations 3 MPEP (agency’s internal practice rules) Intro. to Civil Procedure and Federal Courts Court systems have trial courts and appeals courts. In the federal system, the trial courts are called DISTRICT Courts, e.g, the Northern District of California (ours) or the Southern District of New York (NYC).federal system Some rather big states are a single district (e.g., Minn. and Mass.) Some small population states have several districts (e.g., Iowa, which has 2, and Alabama which has 3.).small population Appeals go to the Courts of Appeals. Appeals to all the federal Courts of Appeal are “OF RIGHT.”* The federal appellate courts are organized into Circuits. The regional circuits, with several states and territories in each, are known by their numbers, 1 to 11.

5. 2009 - Sci.Ev. - rjm Week 04 5 Court System California is in the 9th Circuit. New York is in the 2nd. Chicago is in the 7th. Florida is the 11th and Texas the 5th. The 11th Circuit was created on 10/1/1981 because the 5th had gotten too big._There’s also an unnumbered circuit for the District of Columbia. In addition, since 10/1/1982, there is one circuit court with national jurisdiction. It is the Court of Appeals for the Federal Circuit. Patent cases go to the Fed Cir regardless of where the trial took place. A party who loses in the Circuit Courts of Appeal (or in the highest courts of the STATES, but that would never be a patent case) can PETITION the SUPREME COURT for review, but the SUPREMES have DISCRETION to hear or not hear cases (with very few exceptions). That is, there is essentially no appeal to the Supreme Court ‘as of right.’

6. 2009 - Sci.Ev. - rjm Week 04 6 Summary Judgment Rule 56, F.R.Civ.P. [Text effective until December 1, 2009, absent contrary Congressional action.] (a), (b), (c) [Any] party may move, with or without supporting affidavits, for summary judgment on all or part of the [cause of action]. (c) … An opposing party may serve opposing affidavits…. The judgment sought should be rendered if [the papers:] the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.

7. 2009 - Sci.Ev. - rjm Week 04 7 Last Week (finish) Any questions? Do we need to know more about BONDS?

8. 2009 - Sci.Ev. - rjm Week 04 8 Last Week (finish): Interferences Interference Slides

9. 2009 - Sci.Ev. - rjm Week 04 9 Doctrine of Equivalents When do you use it? What did Graver Tank say? Aaron, Riti, Ryan Who won? Why? Independent Research: Ryan Dissenters: Riti What about ‘disclosed but not claimed’? Patentable by someone else? Aaron What did Warner-Jenkinson say? Ben, BumQ, Guillaume, Tiffany Who won? Why? (Distinguish between discouraging other from inventing, patenting, DOING): BumQ What is an “estoppel”? Tiffany Element by element: Ben Judge or Jury: Ben Guillaume: “Substitution” limits PO’s rights

10. 2009 - Sci.Ev. - rjm Week 04 10 W-J/Festo Mode of analysis 1.Was there a NARROWING AMENDMENT? [or maybe merely a narrowing argument] 2.Was the REASON for that amendment 'a substantial one relating to patentability'? As far as I know, no PO has yet argued that their amendment was related to patentability but the reason was not ‘substantial.’ 3.What is the scope of the SURRENDER of coverage?

11. 2009 - Sci.Ev. - rjm Week 04 11 The Warner-Jenkinson Presumption (Q2) The REASON for the AMENDMENT was a substantial one related to patentability (and therefore the AMENDMENT *may* bar DOE) The Festo Presumption (Q3) The SURRENDER was of EVERYTHING (and therefore the AMENDMENT bars ALL equivalents: PO can only win on LITERAL infringement) The Presumptions

12. 2009 - Sci.Ev. - rjm Week 04 12 Was there a NARROWING AMENDMENT? Compare the claim BEFORE to the claim AFTER amendment. Find the ELEMENT that changed. (If there is more than one, select the one that people are fighting over). Ask: Does something that infringed before no longer infringe? Then the claim was narrowed (even if it was broadened somewhere with regard to some other element). W-J/Festo Mode of analysis. Q1.

13. 2009 - Sci.Ev. - rjm Week 04 13 Was the reason for that amendment 'a substantial one relating to patentability'? If the amendment was in direct response to a citation of prior art, then the answer is YES. If the amendment was in response to some 112 rejection/objection, then MAYBE. If the amendment was totally voluntary: HOW WOULD THAT HAPPEN? then the narrowing is W-J PRESUMED to have been for ‘a substantial one relating to patentability’ To rebut that PRESUMPTION: PO can ONLY use the prosecution history record. (If the PO rebuts, then the answer to Q2 is NO.) W-J/Festo Mode of analysis. Q2.

14. 2009 - Sci.Ev. - rjm Week 04 14 3.What is the scope of the SURRENDER? It may be ZERO, if the PO can show: -unforeseeable equivalents -amendment has no more than a tangential relationship to the equivalent in suit -some other reason that the applicant could not reasonably have been expected to have described 'the INSUBSTANTIAL SUBSTITUTE' in question FESTO PRESUMPTION: The scope of the surrender is 100%: Everything was surrendered. (Or anyway, anything that is accused of infringing in the current suit...) W-J/Festo Mode of analysis. Q3.

15. 2009 - Sci.Ev. - rjm Week 04 15 Obviousness What did KSR say? David, (Emily), MattT Who won? Why? Obvious to try: MattT (RJM’s thought: Casino v. Columbus) “Ordinary creativity”: David What did Sanofi say? (Denise), Matthew, Dmitry, Prosen Who won? Why? Obviousness to try: Prosen Compare KSR to Sanofi: what’s different? Matthew