Adv.Pat.Sem. 2003-rjm Week 1 1

SEMINAR IN ADVANCED PATENT LAW

LAW 865Prof. Roberta J Morris

Room 904 Legal Research647-4037

rjmorris<at>umich.edu

Email Group: apl_03<at>umich.eduCourse Materials on the Web:

coursetoolsOR

~rjmorris

Adv.Pat.Sem. 2003-rjm Week 1 2

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

Adv.Pat.Sem. 2003-rjm Week 1 3

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?

Adv.Pat.Sem. 2003-rjm Week 1 4

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?

Adv.Pat.Sem. 2003-rjm Week 1 5

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

Adv.Pat.Sem. 2003-rjm Week 1 6

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

Adv.Pat.Sem. 2003-rjm Week 1 7

Question 22. Worst aspect of the life of

prosecutors

litigators

REVIEW OF ALL OF PATENT LAW – ESP.

VOCABULARY

Vander Velde,

Vander Velde, Kumar?Kumar?

Stasa, Stasa, Goodson, Goodson, DurhamDurham

AbramowitzAbramowitz, Pandya, , Pandya, ChavezChavez

Adv.Pat.Sem. 2003-rjm Week 1 8

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

INFRINGEMENTAre the concepts of

“interference,” and “senior and junior party” relevant?

Adv.Pat.Sem. 2003-rjm Week 1 9

23.2 and 23.3 WHO HAS THE BOP?

WHAT IS THE QOP?

Validity

Infringement

AI

Preponderance

C&C

PO

Adv.Pat.Sem. 2003-rjm Week 1 10

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

Adv.Pat.Sem. 2003-rjm Week 1 11

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.

Adv.Pat.Sem. 2003-rjm Week 1 12

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

Adv.Pat.Sem. 2003-rjm Week 1 13

Name some other implications if an issue presents a QUESTION OF LAW rather than a QUESTION OF FACT or EQUITY

Adv.Pat.Sem. 2003-rjm Week 1 14

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

Adv.Pat.Sem. 2003-rjm Week 1 15

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 InfringerExclusive 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).

Adv.Pat.Sem. 2003-rjm Week 1 16

“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.

Adv.Pat.Sem. 2003-rjm Week 1 17

Question 26.1. Your client is a resident of Ann Arbor. Yourclient would like to sue a resident of Detroit for patentinfringement. 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 whatcourt 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.

Adv.Pat.Sem. 2003-rjm Week 1 18

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 (10th 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.

Adv.Pat.Sem. 2003-rjm Week 1 19

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.>

Adv.Pat.Sem. 2003-rjm Week 1 20

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.)

Adv.Pat.Sem. 2003-rjm Week 1 21

How many of you have taken (or are taking or planning

to take)

JURISDICTION?

Adv.Pat.Sem. 2003-rjm Week 1 22

Post Vornado Patent Miserymight 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.

Adv.Pat.Sem. 2003-rjm Week 1 23

§ 1338. Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition (a) The district courts shall have originaljurisdiction of any civil action arising under any Actof Congress relating to patents, plant varietyprotection, copyrights and trademarks. Suchjurisdiction shall be exclusive of the courts of thestates in patent, plant variety protection andcopyright cases. (b) The district courts shall have originaljurisdiction of any civil action asserting a claim ofunfair competition when joined with a substantialand related claim under the copyright, patent, plantvariety protection or trademark laws.

* * *

Adv.Pat.Sem. 2003-rjm Week 1 24

§ 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];

Adv.Pat.Sem. 2003-rjm Week 1 25

§ 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 ...

Adv.Pat.Sem. 2003-rjm Week 1 26

Constitution: Art. I, sec. 8, cl.8

Patent Statute: ___ USC35

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.)

Adv.Pat.Sem. 2003-rjm Week 1 27

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:

Adv.Pat.Sem. 2003-rjm Week 1 28

Pfaff1999 – on sale bar

Festo2002 – pros.history estoppel

Markman1996 – claim construction

Graham v. Deere1966 – obviousness

Blonder-Tongue1971 - res judicata - validity

Court?all supremeFA

MO

US C

AS

ES –

Year

- Is

sue