1. Welcome and Thank You © Gordon & Rees LLP 2013

2. Constitutional Foundation Article 1; Section 8 Congress shall have the Power to... Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries Not an Afterthought

3. What’s a Patent? - “right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” - limited time (20 years from filing); takes about 3 years to get it issued

4. What can be patented? - new, nonobvious and useful: (1) Process; (2) Machine; (3) Article of manufacture; (4) Composition of matter; (5) Improvement of any of the above. -design patent: “ornamental design” -plant patent: “invented or discovered and asexually reproduced a distinct and new variety of plant…”

5. What cannot be patented? (1) Laws of nature; (2) Physical phenomena; (3) Abstract ideas; (4) Literary, dramatic, musical, and artistic works; (5) Not useful; or (6) Offensive to public morality

6. Business Methods / Software - may be patentable if the method is: (1) “it is tied to a particular machine or apparatus”, or (2) “it transforms a particular article into a different state or thing.” Business methods are patentable. Abstract ideas are not patentable.

7. Statutory Bars (i.e.: cannot be patented if) someone else thought of it first (or filed their patent application first). U.S. has very limited 1 year grace period (during which invention can be public).

8. Provisional Patents Low cost, no rules to content, never examined. Regular patent must be filed within 1 year. Foreign filing must be filed within 1 year.

9. Foreign Patents File foreign patents within one year of US filing. A Patent Cooperation Treaty (PCT) application stretches this out to 2 ½ years (and covers 146 countries).

10. The Prima Facie case: 1.The Plaintiff is the owner of the Patent 2.The Patent is presumed valid 3.The accused devise must exhibit each element of a claim 4.Competitors are awarded lost profits and an injunction Non-competitors are awarded a reasonable royalty

11. Defense (The Hard Stuff) Patent Invalidity - Improper Inventorship - Improper Ownership - Improper Timing - Improper Subject Matter - Invention is NOT New - Invention is NOT Useful - Invention is obvious to one skilled in the art - Specification is NOT Enabling, NOT Definite, and is NOT written to show the inventor knew his invention (lacks written description)

12. Defense Non-Infringement - Claim Construction Means Plus Function claim terms - Infringed claims - Accused devices - All Elements Rule, No infringement of one element of the claim is NOT exhibited by the accused device

13. Remedies Monetary Damages Competitors - Lost profits (Revenue less cost of goods) - Not less than a reasonable royalty - Entire Market Rule - Proration based upon value of invention to device Non-Competitors - Reasonable royalty Willful infringement Attorneys fees (exceptional case)

14. Remedies Injunctive Relief - Competitor - Non Competitor - Going forward royalty

15. Average Awarded 2008-2012 Information Provided by Economic Advisors Overall Total Award Amount Cases Over $100 m$17.2 b 29 Under $100 m$ 4.4 b305 Under $ 5 m$352 m339 Average Average Award Amount Over $100 m$ 591 m Under $100 m$ 14.5 m Under $ 5 m$ 2.5 m

16. Thank You Thank You for the chance to introduce you to the Issues and Opportunities relating to Patent Infringement Litigation. John L. Haller (Patent Attorney / Real Attorney) 35+ years exclusive IP Specialist Masters of Science in Physics (Physics was easy) Past President, Deans Advisory Committee, College of Science Advisory Board, CSU-SD Past President, San Diego Intellectual Property Law Association. (15 members) Lawyer Representative, Ninth Circuit SD District Court Local Patent Rules Advisory Committee