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Today’s Agenda

Today’s Agenda. Comments-Visual Cues Prosecution The Duty of Candor Rule 56, then and now Molins PLC Next Week. Your Comments.

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Today’s Agenda

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  1. Today’s Agenda • Comments-Visual Cues • Prosecution • The Duty of Candor • Rule 56, then and now • Molins PLC • Next Week Adv.Pat.Law Seminar - rjm

  2. Your Comments • LABELS. Please use labels [and ALL CAPS – to defeat coursetools hatred of formatting]. Don’t rely only on the question number. Also include INTERNAL labels. They will help me, or any reader, the first time through as well as when skimming back looking for some gem. For example: • TWO MUST-READ CASES • MOLINS’ BEST FACT • TEXTRON’S COUNTER TO MOLINS • BEST JUDGE FOR ai’s DEFENSE COUNSEL • MAKE EVERY WORD COUNT. Your comment^2 should have something NEW that you did not say in your comment^1! It should also have some genuine content. “I agree” doesn’t. Adv.Pat.Law Seminar - rjm

  3. A Note from the Word Police Try – I know it’s hard - to Stop writing or saying or even thinking “I would argue that” or equivalents. As Senior Judge Tom Buiteweg ‘93 said to his writing class: Think Nike. Just do it. In writing, it just wastes space. And we KNOW you’re arguing, because you’re communicating and it’s law … Adv.Pat.Law Seminar - rjm

  4. A Note from the Thought Police Know what a ‘conclusory statement’ is, and don’t proffer it as a FACT. Example The pedestrian was careless. CONCLUSORY The pedestrian crossed when the light was red. FACT. You can summarize with a conclusory statement (CLEARLY!) but you should first give us the facts, with as many heavily loaded verbs and nouns (and failing that, adjectives) as you can find. Instead of ‘pedestrian,’ you could say the ‘aged, blind crone’ or the ‘unemployed drunken lout’ Adv.Pat.Law Seminar - rjm

  5. Kayton & Gardner on PROSECUTION • Who is/was Kayton • The Duty of Candor can skewer anybody • Sure the sky has fallen, but is it that much closer to the ground than it was 10 years ago? Adv.Pat.Law Seminar - rjm

  6. Fed. Cir. Decisions • Who is/was Kayton • The Duty of Candor can skewer anybody • Sure the sky has fallen, but is it that much closer to the ground than it was 10 years ago? • The Certification Story Adv.Pat.Law Seminar - rjm

  7. Cybor Corp. v. FAS Technologies, 138 F.3d 1448 (1998)■ NEWMAN, Circuit Judge, with whom Chief Judge MAYER joins; additional views. [*1479] Most of the shortfalls between expectation and reality arise from the manner of implementation of our de novo authority for claim interpretation. I cite three principal areas. The first area relates to the treatment of certified questions. Although the district courts have extended themselves, and so-called "Markman hearings" are common, this has not been accompanied by interlocutory review of the trial judge's claim interpretation. The Federal Circuit has thus far declined all such certified questions. Indeed, the certified question issue was an early warning of the difficulties that could flow from premature claim interpretation, for it was often apparent from the petition that the claims could not be finally and correctly interpreted without evidence beyond the patent documents.The absence of extrinsic evidence, of resolution of conflicting positions, and of detailed analysis and findings by the trial judge, inhibited claim interpretation by certified[**98] question. Thus, instead of conducting the expected dispositive de novo review, we simply declined the question. The possibility of early finality to claim interpretation has not materialized, with two untoward consequences…. FIVE YEARS LATER: NOTHING HAS CHANGED. The Fed Cir does not like to have to interpret claims the way they’ve told District Court judges to do it? Adv.Pat.Law Seminar - rjm

  8. Claim Interpretation Lingo • Limitations: Do ‘accused devices’ have LIMITATIONS? • How do we talk about INFRINGEMENT? Let’s make sure we all know the words. (And how to use a claim chart!) • UWA=use words accurately. It’s worthwhile to leave blanks and then fill in the RIGHT word. Being scrupulous about using the right word will ABSOLUTELY improve the quality of your thinking, as well as your writing. Or your money back! Adv.Pat.Law Seminar - rjm

  9. Rule 56 • Marshall Dann, PTO Commissioner: Know anything else about rules he promulgated? • Old Rule 56 • The ABDick Story (what WOULD a decent prosecutor do after that?) • Dates! • Judgment v. Risk Aversion {why are they paying you the big bucks?} Adv.Pat.Law Seminar - rjm

  10. Rule 56 – The Duty of Candor § 1.56 Duty to disclose information material to patentability. (a) [1]A patent by its very nature is affected with a public interest. [2]The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. [3]Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. [continued on next slide] Adv.Pat.Law Seminar - rjm

  11. Elements of Inequitable Conduct Materiality Intent They should be ADDED (earlier cases said they should be BALANCED, but that made no sense). Adv.Pat.Law Seminar - rjm

  12. Rule 56 – The Duty of Candor § 1.56 Duty to disclose information material to patentability. (a) cont’d: [4]The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. [5]Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. [6]There is no duty to submit information which is not material to the patentability of any existing claim. Adv.Pat.Law Seminar - rjm

  13. Rule 56 – The Duty of Candor § 1.56 Duty to disclose information material to patentability. (a) cont’d: [7]The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. [8]However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. How would the PTO find out? Adv.Pat.Law Seminar - rjm

  14. Rule 56 – The Duty of Candor § 1.56 Duty to disclose information material to patentability. (a) cont’d: [9]The Office encourages applicants to carefully examine: (1) prior art cited in search reports of a foreign patent office in a counterpart application, and (2) the closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office. Adv.Pat.Law Seminar - rjm

  15. Rule 56 – The Duty of Candor What is the duty? To whom is it owed? Who has it? How do you fulfill it? When do you fulfill it? Is it ongoing? Does it end? What if you violate it? what happens to the patent? to related patents? to the Patent Owner (in litigation)? to YOU, if you are a patent agent/attorney? Where do you find the answers? Adv.Pat.Law Seminar - rjm

  16. Rule 56 – The Duty of Candor Does the DUTY OF CANDOR mean you have a duty to SEARCH (for prior art)? NO But SHOULD you search? Why? And if you do search, what is your duty then? Do you fulfill your duty of candor by filing an IDS with 60 items on it? (See Molins) If you review 60 pieces of prior art while drafting the application, what should you do? Let’s look at SB 08 (formerly PTO1449) Adv.Pat.Law Seminar - rjm

  17. Adv.Pat.Law Seminar - rjm

  18. MPEP: 2001.04: The term "information" as used in 37 CFR 1.56 means all of the kinds of information required to be disclosed and includes any information which is "material to patentability." Materiality is defined in 37 CFR 1.56(b) and discussed herein at MPEP §2001.05. In addition to prior art such as patents and publications, 37 CFR 1.56 includes, for example, information on possible prior public uses, sales, offers to sell, derived knowledge, prior invention by another, inventorship conflicts, and the like. Adv.Pat.Law Seminar - rjm

  19. Molins Result of finding of INEQUITABLE CONDUCT Future Dollars: Current Dollars: patent is unenforceable: no more litigation, no more licensing, MAYBE lose royalties in existing licenses exceptional (when AI wins) ~ INEQ COND exceptional (when PO wins) ~~ WILLFULNESS § 285. Attorney fees The court in exceptional cases may award reasonable attorney fees to the prevailing party. Adv.Pat.Law Seminar - rjm

  20. Molins – The Judges Lourie http://www.fedcir.gov/judgbios.html#Lourie Newman http://www.fedcir.gov/judgbios.html - Newman Nies http://www.fjc.gov/servlet/tGetInfo?jid=1767 Adv.Pat.Law Seminar - rjm

  21. The patent is 99 pages. This application is a continuation-in-part of my copending application Ser. No. 695,817 filed Dec. 4, 1967, now abandoned, which in turn is a continuation-in-part of my copending applications Ser. No. 578,318 filed Sept. 9, 1966, and Ser. No. 636,993 filed May 8, 1967, both of which applications are now abandoned. Adv.Pat.Law Seminar - rjm

  22. On October 29, 1970, Molins filed United States application serial number 85,289 (hereinafter, "Case IV") as a continuation of the Case III application previously filed in December of 1967. The Batch Process claims (claims 79 and 80) that appeared in the Case IV application were identical to original Batch Process claims 2 and 4 which appeared in the September 1966 Batch Process patent application, and Batch Process claims 66 and 67 from the Case III application. K-59A, pp. 124-148; Stipulation 10.48. On December 29, 1971, the U.S. PTO issued an Office Action rejecting Batch claims 79 and 80. Tr., pp. 136-137; K-59B, pp 203-208. … because the examiner concluded that they were directed to an invention other than that disclosed in the Case III parent application. Excerpts from Trial Court Opinion, D.Del., Farnan. 821 F.Supp. 1551 (1992). What kind of rejection (§?) is that? Adv.Pat.Law Seminar - rjm

  23. Whitson and Smith met in April of 1972 to respond to the December 1971 Office Action. Tr., pp. 137, 163-167. In their response, filed April 27, 1972, [**17]Whitson and Smith amended the application adding new claims 176 through 185. It is clear from a statement prepared by Whitson and Smith that the new claims were included to distinguish the invention over Lemelson Reissue patent RE 26,770 … “the single prior art reference of record." K-59B, p. 239. … n9 n9 The other Lemelson patents (the '014 and '501 patents) had previously been distinguished in the prosecution of Case III. K-28, pp. 209-212 and Tr. pp. 1039-1040. Adv.Pat.Law Seminar - rjm

  24. In addition to adding claims 176 through 185, Molins copied claims from patent number 3,575,540 ("Fair patent") which, by assignment, was held by the Sundstrand Corporation. The Fair patent disclosed a computer controlled machining system and contained features common to[**18] the Case IV application. The purpose of copying the claims was to provoke an interference … (2) Perry/Fair/Williamson Interference On January 31, 1973, the U.S. PTO declared an interference proceeding. At issue in the interference were the Case IV application (Williamson patent application), the Fair patent, and the Perry patent application, a patent directed to a computer controlled machining system which had been assigned to Defendant Cincinnati Milacron. Adv.Pat.Law Seminar - rjm

  25. On April 4, 1977, the U.S. PTO awarded Molins priority • on all principal counts … • The continued prosecution of the Case IV • application in the United States required an additional • seven years before a patent was issued. During this • time the patent office examiner and Smith exchanged • several office actions [**19] and responses thereto. • n10 Eventually, [*1561] on January 25, 1983, the • Case IV application matured into the issuance of the • '563 apparatus patent. The corresponding '410 • method patent{called “batch” by the Fed. Cir. - RJM}, was issued on November 11, 1986. • n10 On June 27, 1978, the patent examiner • issued an office Action rejecting all pending Molins • claims on a variety of grounds including vagueness, • indefiniteness, and obviousness over prior art • references, which principally included a combination • of Lemelson references …. In this Office Action the examiner also • cited, as secondary references related to ancillary • claims, the Kumagai patent 3,245,144 and Riedel Adv.Pat.Law Seminar - rjm

  26. patent 3,010,371. (Stipulation 9.30). During 1978, 1979, and early 1980, the examiner and Smith exchanged several Office Actions and responses, in the course of which Smith submitted claim amendments directed at meeting the examiner's objections to the claims as then presented. Stipul 9.31.■ In April of 1980, the examiner notified Molins that he was prepared to allow some of the Molins claims then presented, except for claims that Molin had copied in 1973 from a Perry application. Stipulation 9.32. This refusal on the part of the examiner was upheld by the appeals Board on May 17, 1982. Stipulation 9.33. *** Who is Wagenseil? Possibly Ludwig W, a German, with quite a few US patents, but only one, and a recent one, explicitly on machine tool technology. http://patft.uspto.gov/netahtml/search-adv.htm Adv.Pat.Law Seminar - rjm

  27. Some more Molins things to ponder • Why didn’t Hirsh highlight Wagenseil • and why does Lourie think it was so important to highlight it? • MPEP v. CFR in Molins • The point is the DATES. The MPEP of 1980, which was the version that Smith (and Hirsh?) would have had at their desks, mentioned BURYING. The 1992 CFR made it UNNECESSARY to explain relevance for English language references. hindsight highlight? Adv.Pat.Law Seminar - rjm

  28. Some more Molins things to ponder -2 • What should SMITH have done about the Williamson/Lemelson situation? • What do CLIENTS want when they look for a patent lawyer? • Patent law conflicts – how are they handled? • Prosecution? • Litigation? • Ruhi: • Inequitable Conduct (centered on recent case? Dayco maybe?) Pandya and Durham have both abandoned IC as a topic?? • Conflicts v. Expertise Adv.Pat.Law Seminar - rjm

  29. Next Week – New Reading Material? • HISTORY: Another Article by Walterscheid, or possibly one of his legal historian competitors [see next slide] • HISTORY/CASES • DOE (Westinghouse? or the OTHER Graver Tank decision [really validity, but key background to Graver Tank-DOE]) • The ancient misuse/antitrust cases: universal talking pictures, morton salt (or: start with Dawson v. Rohm & Haas, if you never read that) • Precision Instruments (duty of candor & interference and what to do with slimebucket clients) • THE HUMAN SIDE OF PATENT LAW; THE JUDGES (handout) • CASES IN CONFLICT: a pair of cases you identified from Kayton? (Am I right that you contrasted Corning with Dolly last term?) • Some BRIEFS (_Festo_ amici): 2 or 4 students on each c:\usr\patent.all\festo2003 Adv.Pat.Law Seminar - rjm

  30. Next Week – New Reading Material? • Another Article by Walterscheid, or possibly one of his legal historian competitors. Some contenders: • ECW: The Use And Abuse Of History: The Supreme Court's Interpretation Of Thomas Jefferson's Influence On The Patent Law (1999 Idea) • ECW: Within The Limits Of The Constitutional Grant: Constitutional Limitations On The Patent Power (2002 JIPL) • Malla Pollack, Nebraska L.Rev. 2001: What Is Congress Supposed To Promote?: Defining "Progress" In Article I, Section 8, Clause 8 Of The United States Constitution, Or Introducing The Progress Clause Adv.Pat.Law Seminar - rjm

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