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Teams and Patents Simulation schedule and critique assignments Obviousness – Your responses to your colleagues’ comments

Today’s Agenda. Teams and Patents Simulation schedule and critique assignments Obviousness – Your responses to your colleagues’ comments KSR MuniAuction and O’Neill’s testimony Daubert REST OF TERM This week: Wed-Fri Next week any day 11/10:

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Teams and Patents Simulation schedule and critique assignments Obviousness – Your responses to your colleagues’ comments

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  1. Today’s Agenda • Teams and Patents • Simulation schedule and critique assignments • Obviousness – Your responses to your colleagues’ comments • KSR • MuniAuction and O’Neill’s testimony • Daubert • REST OF TERM • This week: Wed-Fri • Next week any day • 11/10: • Common problems with choosing an issue for experts. • Daubert in a patent case: MEMC (calculations to prove infringement). • 11/17: • Experts’ powerpoint and other visual aids • Tivo v. Echostar cert. petition arguments about infringement expert talking about validity; 112 (written description) and expert on inherency: ICN Photonics • Week of 11/17 and 11/24-26 • 12/1 and 2. 7 to 10? Simulations Team meetings with me Team meetings with me Week 07

  2. Please sit with your team* Technology T-cell tagger 5,635,363 Computer Speaker 5,581,626 DNA synthesizer support 6,770,754 or Phosphorylation Method 5,959,090 Computer Mouse 7,233,319 Attorneys Jen ROBINSON David LYDON Andy PARK Tim SAULSBURY Karni CHAGAL Julie KANE Julia KRIPKE Greg SOBOLSKI Experts Lawrence KLEIN Brett STAAHL Sondra HELLSTROM Lisandra WEST Sarah JARCHOW-CHOY Samantak GHOSH Mark MELAHN FH ordered Ready for FH? FH on PAIR Ready for FH? FH on PAIR Week 07

  3. Scheduling Attorneys Jen ROBINSON David LYDON Andy PARK Tim SAULSBURY Karni CHAGAL Julie KANE Julia KRIPKE Greg SOBOLSKI Experts Lawrence KLEIN Brett STAAHL Sondra HELLSTROM Lisandra WEST Sarah JARCHOW-CHOY Samantak GHOSH Mark MELAHN Monday 12/1 or Tuesday 12/2? Starting at 7 (or 6:45?) or 8:30? Simulations will be held in the Moot Court Room (Room 80, Basement of Classroom Wing). They will be video-recorded. Week 07

  4. Critiques See How the Seminar Will Work – Part 5 - LINK HERE You will email me a critique - 3 roses and 3 thorns – of a fellow student’s presentation. Deadline: 12/8. After I receive all the critiques, I will forward them to the person critiqued. Week 07

  5. Obviousness: 103 Section 103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Now 103(a) What the statute actually says: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if Week 07

  6. KSR – The Supreme Court’s Response to the Fed Cir’s Response to the grant of cert. in KSR Page 9.1m slugged We note the Court of Appeals has since elaborated abroader conception of the TSM test than was applied in the instant matter. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1367 (2006) ("Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense"); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (2006) ("There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine  . . . ."). Denial of JMOL of obviousness (after jury verdict FOR PO on obviousness) REVERSED. Bench trial judgment of obviousness AFFIRMED (among other things). Did the test change? Or just who won? Week 07

  7. KSR – Supreme Court Page 2.1t slugged [T]he Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings" can be found in - the prior art, - the nature of the problem, or - the knowledge of a person having ordinary skill in the art. See, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323‑1324 (CA Fed. 1999). KSR challenges that test, or at least its application in this case. [Fed. Cir.] at 286‑290. Week 07

  8. KSR – what the Fed. Cir. actually said (at 285-6) "The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, 'leading inventors to look to references relating to possible solutions to that problem.' " Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (quoting Pro-Mold, 75 F.3d at 1572). "Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references." Dembiczak, 175 F.3d at 999; see also Ruiz, 234 F.3d at 665 (explaining that the temptation to engage in impermissible hindsight is especially strong with seemingly simple mechanical inventions). This is because "combining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor's disclosure as a blueprint for piecing together the prior art to defeat patentability--the essence of hindsight."  [*286]  Dembiczak, 175 F.3d at 999. prosecution; pumpkin bag; rejections reversed for lack of evidence of TSM; back in PTO, examiner did better job: no patent ever issued litigation; screw anchors for footings; v&r for Graham findings litigation; holder for sports cards, v&r because disputed facts Week 07

  9. KSR- Fed. Cir. (cont’d) Therefore, we have consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g., In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) ("Particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed." (emphasis added)); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) ("In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed." (emphasis added)). In v&r’ing the trial court’s grant of summary judgment, did the Federal Circuit follow or depart from its own rule concerning motivation to combine elements “in the manner claimed”? Week 07

  10. Obviousness – Your Questions about KSR Park: Hindsight and “flexible” standard Robinson: Questions of law that can/not go to the jury Jarchow-Choy: What has the PTO been doing since? Kane: “obvious to try” [itself] and regarding hindsight West: 282 v. 103: what is a “PRESUMPTION” [in law]; withholding of Asano from PTO: how to use this fact/omission. Melahn: ‘too rigid’ TSM was ‘concession to judicial administrability’? What have the courts been doing since? Chagal: why can’t [how can] secondaries help the AI? Kripke: expert conclusions of obvious v. 702 (save for Daubert!); secondaries after KSR? Week 07

  11. Obviousness – Your Questions about KSR Ghosh: consequence of the invention (it improves over Asano) v. objective (inventor’s reason for making the invention); the murkiness of the word “motivation” Sobolski: Does the court want to bring back “flash of genius”? Problems of cutting back on issuance / issuance customs Klein: BPAI (??): 60% cite KSR. (RJM: Why not 100?) The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. (KSR, 6.1B) Lydon: “hindsight bias” – big, complicated, worth discussing. Yeah: see http://www.iptoday.com/pdf/2007/4/Morris-Apr2007.pdf Week 07

  12. Obviousness – Your Questions about KSR Staahl: ordinary skill != ordinary creativity Hellstrom: Engelgau should have shown in the spec (??) the difficulties/unpredictabilities of putting modular sensor on Asano. [or in response to KSR’s motion for SJ??] Saulsbury: Persuaded by “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (RJM: the UNLESS clause?) RJM: Did the Supreme Court REJECT TSM or is it still usable? Week 07

  13. KSR – Bottom Line? The obviousness analysis cannot be confined by a formalistic conception of the words ["]teaching, suggestion, and motivation["], or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility. (KSR 7.2) B When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals … captured a helpful insight…. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. But wait! “Prior art” includes actual devices, not just patents and publications. Think “existence proof,” Justices. (And dead horse?) Week 07 Page 7.2 slugged

  14. Obviousness: KSR "Under § 103, [1] the scope and content of the prior art are to be determined; [2] differences between the prior art and the claims at issue are to be ascertained; and [3] the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as - commercial success, - long felt but unsolved needs, - failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." [Quoting Graham v. Deere] Page 1 Week 07

  15. MuniAuction – The Expert’s Testimony-1 Any similarities to Fontirroche litigation? Quicksand? Strategy? Secondaries: Ghosh on Jarchow-Choy (Melahn on Sobolski and who wants broad, who wants narrow; like obviousness it is a function of time). Claim construction Order changes the expert’s task Lydon on Hellstrom: Life is short and then you settle The Federal Circuit’s [early] subtext: love for the word NOT: All patents should be NOT invalid and NOT infringed. Week 07

  16. MuniAuction – The Expert’s Testimony-2; Also Primary/Secondary Considerations Kane+Sobolski/Kripke: Coaching experts on The Law; using testimony where the expert ducks (or quacks) Jarchow-Choy/Lydon: Ditto; “contributory infringement;” the single actor requireement (if we have time). Chagal/Lydon, also Sobolski/Hellstrom: {Can AI rely on LACK of certain secondaries to refute presence of others? Probably NOT, as a matter of law…} Klein/West: When are secondaries argued? {There is a right answer to this question. Or rather two. Neither MuniAuction nor KSR is clear on this.} Kripke/Melahn, also Robinson/Kane: The PRIMARY considerations. Saulsbury/Lydon and Staahl/Lydon: the {new-ish} requirement that nexus means the product/award/whatever and the claimed features are COEXTENSIVE. An impossible test or a good one? link to expert testimony Week 07

  17. MuniAuction – Obviousness; Nexus Obviousness Analysis: Compared to Teleflex? Secondary Considerations: What’s “NEXUS”? (MuniAuction page 8) Week 07

  18. Daubert Why is DaubertUNimportant for scientific experts in patent cases? What about patent damages experts, testifying about marketing, market share, licenses, accounting, royalty rates, profits, etc.? Why did Daubert’s experts state [only] that Bendectin was ‘capable of causing’ the harm? Week 07

  19. 1. RELIABLE Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliableprinciples and methods, and (3) the witness has appliedthe principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their  prejudicial effect. Rule 704. Opinion on Ultimate Issue (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant] 2. RELEVANT From Week 05 slides 14-16 Week 07

  20. Rules of Evidence – Rule 702 Rule 702. Testimony by Experts [An expert] witness … may testify … if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliableprinciples and methods, and (3) the witness has appliedthe principles and methods reliably to the facts of the case. Consider the categories of evidence provided by Daubert and Schuller’s expert witnesses: [1][A] and [B] animal and in vitro studies, [2] pharmacological studies based on chemical structure, and [3] reanalysis studies in light of Rule 702’s 3 requirements. Which studies were most easily challenged under which evidentiary requirements? Week 07

  21. Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their  prejudicial effect. Rule 704. Opinion on Ultimate Issue (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant] From Week 05 slides 14-16 Week 07

  22. Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their  prejudicial effect. Rule 704. Opinion on Ultimate Issue • Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because [cannot be objected to on the grounds that] it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant] What about an ultimate issue that is a CONCLUSION OF LAW? From Week 05 slides 14-16 Week 07

  23. Daubert – on Remand Why do I mention the FINAL JUDGMENT rule for appeals? Why did Daubert NOT supplement the record? If they had, what additional evidence might they have put in? Week 07

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