Sci.Ev. 2007-rjm Week 5 - 10/10/07 1

Seating Plan

PO AI(White (GlassBoard Wall)Wall)

Door

Screen

Grad Students and Law Students who submitted a comment^2 (4 + 10)

EVERYBODY ELSE

DIFFERENT from last week

Grad Students who submitted an object

and a patent this week; Law Student who submitted slides

(6 + 1)

Sci.Ev. 2007-rjm Week 5 - 10/10/07 2

Today’s Agenda• Field Trip• The Grad Students Lecture on Patent Law

• and invoke their Patented Objects and their Patents as concrete examples

• More discussion of Boston Scientific to learn ... EVERYTHING?

Sci.Ev. 2007-rjm Week 5 - 10/10/07 3

Field TripG Ayres, Janelle ( janelle1 ) G Chang, Catherine ( ling84 ) G Conley, Nick ( nrconley )G Dai, Lixin ( cosimo )G Gamble, Sara ( sjgamble )G Ganesan, Prasad ( pganesan )G Garcia, John ( johngarc )G Hu, RUSSELL Qicong ( qiconghu )G Kachirskaia, Ioulia ( iouliak )G Kawahara, Tiara ( tiarak )G Liu, Gwen ( gwenliu )G Lopez, Manny ( mel3 )G Olcott, Peter ( pdo )G Pushkarev, Dmitry ( umka )L Craven, Sarah ( scraven )L Faulkner, Joelle ( joellef )L Freed, JAKE John ( jfreed1 )L Marshall, Sean ( seanm22 )L Pan, Lillian ( ljpan )L Peng, Heyue ( heyuep )L Petrova, JENNY Evgeniya ( epetrova )L Reeslund, Marcus ( marcusr )L Reyes, Juan ( jfreyes )L Van Niekerk, RALPH Roy ( ralphvn )L Wahlstrand, Julie ( juliebw )N Lavian, Tal ( NO_SUNet )N Soffer, Stuart ( soffer ) P Morris, Roberta ( rjmorris )

going, but not with usgoing, but leaving earlygoing

doesn’t know yet

NOT going

italics: based on earlier poll answer

10 passengers can meet at Tresidder at 7 am and go in the Blue Shuttle (actually white with blue letters ) Van.

Sci.Ev. 2007-rjm Week 5 - 10/10/07 4

X

#47 stops at this intersection, traveling on Van Ness.TO courthouse it’s going up the page, FROM courthouse it’s going down the page; stopping, if memory serves, betewen McAllister and Grove.

COURTHOUSE

Sci.Ev. 2007-rjm Week 5 - 10/10/07 5

Pad and paper.

MAYBE bring the opinion.

MAYBE bring a copy of a patent (the Kastenhofer ancestor, if I had to choose one; or arrange with friends for each of you to bring one of the 5 patents BELIEVED STILL TO BE in suit.

Money that the bus (or train? Jake?) will accept. The fare is $1.50. I’ll reimburse you, but probably won’t have enough change or singles tomorrow.

If you’re returning to campus with me, you won’t need to buy a CalTrain ticket because I’ll put them all on my credit card. If you’re going by yourself, the one-way fare is $5.75. R/T $11.50 MP, PA and Calif Ave are in zone 3. Redwood City is in zone 2 ($4 & $8 respectively)/

Field Trip – What to Bring

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Law Student Lecturers1. Claim Chart – van Niekerk2. Prior Art - Faulkner

There are TWO different definitions of prior3. CLAIM V. Specification - Peng 4. Statutory Bar (102(b) - Marshall

5. Anticipation (!= Obviousness) - Pan 6. Obviousness - Petrova7. Enablement – Craven8. Best Mode - Reeslund9. Duty of Candor 10. Literal Infringement - Freed 11. Doctrine of Equivalents - Wahlstrand 12. US v. THE WORLD (patent-wise) - Reyes

Sci.Ev. 2007-rjm Week 5 - 10/10/07 7102

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RPRIOR is defined in 35 USC 102 as being

EITHERbefore THE INVENTION BY THEAPPLICANT/PATENTEE. 102 a e and g

ORMORE THAN ONE YEAR (aka 12MONTHS) before the US application filed by the applicant/patentee. 102 b and d

the CRITICAL DATE = Month of appl – day of appl – YEAR OF APPL MINUS ONE

Why do I write “applicant/patentee”?

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R35 USC 102. A person shall be entitled to a patent unless -(a) the invention was …before the invention thereof …,

or(b) the invention was … more than one year prior to the

date of the application for patent in the United States, or

(c) he has abandoned the invention, or(d) the invention was … more than twelve months before

the filing of the application in the United States, or(e) the invention was described in –

(1) an application … before the invention by the applicant …

(2) a patent … before the invention by the applicant …, or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) another inventor … before such person's invention

thereof ..., or(2) before such person's invention thereof ….

Confirmation from the statute, in pertinent part

Sci.Ev. 2007-rjm Week 5 - 10/10/07 9102

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R 35 USC 102. A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in – (1) an application for patent, published under section 122(b), by another filed in the United

States before the invention by the applicant for patent or

(2) (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

All the words – if you need them (1 of 2)

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R35 USC 102. A person shall be entitled to a patent unless -

(f) he did not himself invent the subject matter sought to be patented, or

(g)

(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

All the words – if you need them (2 of 2)

Sci.Ev. 2007-rjm Week 5 - 10/10/07 11

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent[.]

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States[.]

102 a v. 102 b (handout)

Sci.Ev. 2007-rjm Week 5 - 10/10/07 12

102 a and b

For our purposes,

we will assume that

nobody

can prove an invention date

earlier than the application date.

That means that ONLY 102 b matters.

Sci.Ev. 2007-rjm Week 5 - 10/10/07 13

COMPARE 102 a and b

2004 Patent Law CP 35A.1

§ 102. Conditions for patentability; novelty and loss of right to patent. A person … unless …(a)... before the invention thereof (b)...more than one year priorby the applicant for patent, to the date of the

application for patent in the United States,TWO POSSIBLE CHRONOLOGIES

appl date

critical date

102b-BAR PERIOD INV

102a period ends before critical date

INV

102a period ends later than critical date

Sci.Ev. 2007-rjm Week 5 - 10/10/07 14

Grad Students’ Patented Objects – Round 1

Janelle AYRES 4,996,151 Process - EagI Restriction Endonuclease Catherine CHANG 3,617,859 Bandgap voltage reference patent

D304975 Experimental Electronics TrainerNick CONLEY -- --Sara GAMBLE 5,025,926 Flouroware semiconductor wafer box John GARCIA 4,781,487 Vortex mixerRussell HU 5,457,105 Drugs useful for neoplastic diseasesIoulia KACHIRSKAIA 5,872,261 Method to synthesize a protein crosslinker Tiara KAWAHARA 5,722,553 SnapStrip PCR TubesGwen LIU 6,001,233 Invitrogen XCell SureLock Mini-CellManny LOPEZ 4,981,797 Process of producing highly transformable cells*Peter OLCOTT 6,196,681 UVEX Genesis Safety GlassesDmitry PUSHKAREV 3.681.709 Laser resonator, Diffraction coupledColor Code

In litigationNOT “MARKED”Design Patent

Sci.Ev. 2007-rjm Week 5 - 10/10/07 15

Grad Students’ Patented Objects – Round 2

Janelle AYRES 5,836,618 Labels for Cryogenic Vial (?Marked? Or mfr-based db search?)

Nick CONLEY 5,406,073 Movable Entity DetectorSara GAMBLE 6,657,823 Perpendicular Disk Drive (searched patent db for hard

drive technology)Prasad GANESAN 6,884,628 Polymer (not marked, but assigned to mfr of

material he uses under a confidentiality agreement) John GARCIA 5,503,741 Dialysis CassetteRussell HU 7,105,130 Adjustable PipetteGwen LIU 5,442,241 miRNA Detection KitManny LOPEZ 6,818438 Culture Flask (not marked, but assigned to mfr of lab

flask) “ 7,045,675 Genes for NPC disease (gene he works on)Peter OLCOTT 6,908,605 Non-invasive in vivo imaging (unlitigated relative of

marked patent)Dmitry PUSHKAREV 3,834,507 Printing Apparatus “ various-old Textronics Oscilloscope

Color Code“MARKED”NOT marked

Sci.Ev. 2007-rjm Week 5 - 10/10/07 16

Good Patent, Bad PatentDoes the patent use your expertise?

It probably needs to be fairly recent.

Is the patent really commercialized? If you did NOT find it because of MARKING, check that at least one claim READS ON something in your lab.

Did the patent sail through the PTO or not? Does it have parent applications or not?

Sci.Ev. 2007-rjm Week 5 - 10/10/07 17

Looking at File Histories- Looking for WHAT?

See Marcus’s 10/10 comment on Boston Scientific.Was claim 1 amended? What language was ADDED? What was ARGUED about the language that was there

already? About the additional language?Did the Examiner say “I’d allow claim 2 if it was rewritten in

independent form” and then claim 2 became claim 1?What language was replaced with a variant on the sane

theme? Make a CLAIM CHART showing the claim language before

and after. This can be EXTREMELY revealing and inspirational.

Sci.Ev. 2007-rjm Week 5 - 10/10/07 18

Bos

ton

Sci

enti

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an C

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1A process for forming a fluid tight seal between

a polymeric body and a polymeric dilation member

surrounding the body, comprising the steps of:- positioning

a dilation member of polymeric material

along and in surrounding relation to

a body of polymeric material, -- with

the dilation member and body

aligned to place a first surface portion

of the dilation member and a second surface portion

of the body in a contiguous and confronting relation,

--- wherein the polymeric materialsforming the body and the dilation member

have non-uniform energy absorption spectra

that include high absorptivity wavelength bands,

and

--- wherein at least one of

the high absorptivity wavelength bands

of the polymeric material forming the body

and at least one of

the high absorptivity wavelength bands

of the polymeric materialforming the dilation member

overlap one another in at least one range of overlapping wavelengths;

- selecting a monochromatic energy wavelengththat is contained within at least one of the overlapping wavelength ranges;

- generating substantially monochromatic energy at said selected monochromatic energy wavelength;- controllably directing the monochromatic energy

onto the body and the dilation member to concentrate the monochromatic energy in a narrow bond site

-- circumscribing the body and -- running along the interface of the first and second surface portions,

thus to melt the polymeric materials along said bond site and the immediate region thereof; and

- allowing the previously melted polymeric material to

cool and solidify

to form a fusion bond between the body and dilation member.

Sci.Ev. 2007-rjm Week 5 - 10/10/07 19

Kastenhofer Family Tree

time(not to scale)

08/309,234

09/20/94

08/657,004

05/28/96

08/937,110

09/24/97

08/936,352

09/24/97

5,961,76510/05/99

5,843,03212/01/98 09/317,293

05/24/99

6,471,67310/29/02

09/053,969

04/02/98

6,027,4772/22/00

NO C-I-Ps

COLOR KEYparent

continuationdivisionalPATENT

Sci.Ev. 2007-rjm Week 5 - 10/10/07 20

Boston Scientific – Terms of Art - 1

Summary Judgment; summary adjudication

Preferred Embodiment

Boilerplate; black letter law

“no genuine issue of material fact” / “triable issue”

Credibility

Hearsay

Clear and convincing evidence

contrast ‘preponderance of the evidence’

Sci.Ev. 2007-rjm Week 5 - 10/10/07 21

Boston Scientific – Terms of Art - 2

LimitationConstrue – construing - constructionLiteral InfringementDoctrine of Equivalents START HERE?Question of fact/question of lawPossession (of the invention)TSM test [teaching, suggestion or motivation to

combine]Secondary Considerations

Sci.Ev. 2007-rjm Week 5 - 10/10/07 22

Boston Scientific – Terms of Art - 3

Critical Date

“teaching away” [not just omission, but a real NEGATIVE: ‘away’ means AWAY]

Patent Exhaustion

=====

Sci.Ev. 2007-rjm Week 5 - 10/10/07 23

Boston Scientific – Your questions -1

Differing SCOPE of specification and claimsPresumption of Validity (35 USC 282) and

DEFERENCEGoals (better: “OBJECTS of the Invention”)“Preferred Embodiment(s)” v. BEST MODEInteraction of MARKMAN HEARING and

dispositive (pre-trial) motions- The killer ‘reading IN’ != reading on- Strategic issues in bringing the SJ motion- NDCal’s local rules

Sci.Ev. 2007-rjm Week 5 - 10/10/07 24

Boston Scientific – Your questions - 2

Comprising/consisting/consisting essentially of ~~ open / closed /mostly closed

Filing dates / priority dates 35 USC 119 and 120 [and the problem of CONTINUATION I N PART child applications]

PROSECUTION HISTORY: for claim interpretation AND “prosecution history estoppel”

REFERENCES CITED: #, origin, meaning

Sci.Ev. 2007-rjm Week 5 - 10/10/07 25

Next Week

Look at one of the patents and its file history [coursework link] that the students used last year for their simulations

EITHERBilayers [my website link] for biotech application

ORMagnetic separation [my website link] device

FYI: Here’s the schedule of the simulations from 2006

NOTE: To use the links on my sciev.06 webpage, you must manually change ‘sciev’ in the URL to ‘sciev.06’ or you will get PAGE NOT FOUND. The links above all work but links you follow from the parent page itself will not until you fix them. Some day I’ll update the whole page. I promise.