1. Adv.Pat.Sem. 2003-rjmWeek 11 SEMINAR IN ADVANCED PATENT LAW LAW 865 Prof. Roberta J Morris Room 904 Legal Research 647-4037 rjmorris umich.edu Email Group: apl_03 umich.edu Course Materials on the Web: coursetools OR ~rjmorris

2. Adv.Pat.Sem. 2003-rjmWeek 12 Today’s Agenda Who You Are What You Will Do in this Seminar Review of Your Basic Knowledge of Patent Law Begin discussion of Preliminary Injunctions Next Week

3. Adv.Pat.Sem. 2003-rjmWeek 13 Who Are You? Handout: 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. 2003-rjmWeek 14 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, Packets Straight through (and done at 5:30) or Snack [Cookies or Veggies?] and small-l law discussions?

5. Adv.Pat.Sem. 2003-rjmWeek 15 Talk (draft due) [prelim mtg] 1st Hour 2nd Hour ----------------------------------------------------------------------- 10/14 (9/23) [week of 9/15] Abramowitz NOBODY 10/21 (9/30) [week of 9/22] Vandervelde Durham 10/28 (10/8 - WED., NO CL. 10/7) [week of 9/29] Pandya NOBODY 11/4 (10/14) [week of 10/6] Goodson NOBODY 11/11 (10/21) [week of 10/13] Chavez NOBODY 11/18 (10/28) [week of 10/20] Stasa Kumar 11/25 (11/4) [week of 10/27] NOBODY NOBODY

6. Adv.Pat.Sem. 2003-rjmWeek 16 Question 21. Divide Patent Lawyers Into 2 Groups (Polite words only.) those who represent inventors in connection with applications for patent protection filed with the United States Patent and Trademark Office and other patent offices throughout the world those who provide court representation for people involved in patent infringement cases. prosecutors litigators REVIEW OF ALL OF PATENT LAW – ESP. VOCABULARY

7. Adv.Pat.Sem. 2003-rjmWeek 17 Question 22. Worst aspect of the life of prosecutors litigators REVIEW OF ALL OF PATENT LAW – ESP. VOCABULARY Vander Velde, Kumar? Stasa, Goodson, Durham Abramowitz, Pandya, Chavez

8. Adv.Pat.Sem. 2003-rjmWeek 18 23. Question 23.1. In a patent infringement trial, as in all trials, the question of liability is tried before* damages. Name the two major liability issues. *If you want the court to separate both 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 VALIDITY INFRINGEMENT Are the concepts of “interference,” and “senior and junior party” relevant?

9. Adv.Pat.Sem. 2003-rjmWeek 19 23.2 and 23.3 WHO HAS THE BOP? WHAT IS THE QOP? Validity Infringement AI Preponderance C&C PO

10. Adv.Pat.Sem. 2003-rjmWeek 110 If the question is WHO HAS THE BURDEN OF PROOF, the answer must be If the question is WHAT IS THE STANDARD OR QUANTUM OF PROOF (TO WIN), the answer must be One of the parties ONE OF THESE THREE Preponderance of the evidence Clear and convincing evidence Beyond a reasaonable doubt

11. Adv.Pat.Sem. 2003-rjmWeek 111 The next part of the questionnaire concerned QUESTIONS OF EQUITY. But you should know that this is the rarest kind of question in a lawsuit. There are two other kinds of QUESTIONS that are more common. Each kind has a different standard of review. BONUS! Name these two questions, name the standards of review, and give an example of each in a patent case.

12. Adv.Pat.Sem. 2003-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. 2003-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. 2003-rjmWeek 114 Question 24. PATENT LAW - EQUITABLE ISSUES Question 24.1. 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_.) Question 24.2. 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, too), right to an injunction

15. Adv.Pat.Sem. 2003-rjmWeek 115 Question 25.1 A patent infringement case is called _X v. Y_. [Who is X, if not the patent owner?] Question 25.2. For each of those 2 (or more) possibilities, name their relationship to the patent. Question 25.3. 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).

16. Adv.Pat.Sem. 2003-rjmWeek 116 “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.

17. Adv.Pat.Sem. 2003-rjmWeek 117 Question 26.1. 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.) Question 26.2. Why is that the right court? Question 26.3. The trial judge dismisses your case. In what court of appeals do you file your notice of appeal? Question 26.4. 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.

18. Adv.Pat.Sem. 2003-rjmWeek 118 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.

19. Adv.Pat.Sem. 2003-rjmWeek 119 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.>

20. Adv.Pat.Sem. 2003-rjmWeek 120 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.)

21. Adv.Pat.Sem. 2003-rjmWeek 121 How many of you have taken (or are taking or planning to take) JURISDICTION ?

22. Adv.Pat.Sem. 2003-rjmWeek 122 Post Vornado Patent Misery might be a good topic for this seminar. There is at least one case (7/2002), Telcomm Tech. Servs., Inc. v. Siemens Rolm Communs., Inc., 295 F.3d 1249, where 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.

23. Adv.Pat.Sem. 2003-rjmWeek 123 § 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. * * *

24. Adv.Pat.Sem. 2003-rjmWeek 124 § 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];

25. Adv.Pat.Sem. 2003-rjmWeek 125 § 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...

26. Adv.Pat.Sem. 2003-rjmWeek 126 Constitution: Art. I, sec. 8, cl.8 Patent Statute: ___ USC 35 Patent Regulations: ___ CFR § 1. ___ 37 What is __ CFR § 1.56? Rule 56, duty of candor BONUS! What is Rule 56, F.R.Civ.P.? Summary judgment (still! Even though nowadays people say JMOL.)

27. Adv.Pat.Sem. 2003-rjmWeek 127 PTO’s internal rulebook is called: Manual of Patent Examining Procedure (MPEP) What kind of authority is it? Fed. Cir. View: Practical view – during prosecution:

28. Adv.Pat.Sem. 2003-rjmWeek 128 Pfaff 1999 – on sale bar Festo 2002 – pros.history estoppel Markman 1996 – claim construction Graham v. Deere 1966 – obviousness Blonder-Tongue 1971 - res judicata - validity Court? all supreme FAMOUS CASES – Year - Issue