A Child’s Guide to the Myths and Legends of Patent Law (A Child’s Guide to the Myths and Legends of Patent Law)

A Child’s Guide to the Myths and Legends of Patent Law(A Child’s Guide to the Myths and Legends of Patent Law) Roberta J. Morris, Esq, Ph.D. Lecturer, Stanford Law School Member of the Patent Bar and of the Bars of New York and Michigan rjmorris@alumni.brown.edu Salishan Conference

Thank you • Steve Joncus, Klarquist Sparkman and OPLA. • The Stanford Law Library reference librarians, especially Rachael Samberg and George Wilson this time. • They always find everything I ask for, including things I didn’t know I was asking for. • But don’t blame them for any errors. • All errors are mine. Salishan Conference

You know who I am. Who are you? -1 • If you can hear the sound of my voice, please rise/raise your hand. • Lower your body/hand if • - you were already practicing patent law when the Federal Circuit decided Markman (4/5/1995) • - you started practicing patent law before the Supreme Court decided KSR (4/30/2007) • Welcome, children! Salishan Conference

You know that *I* think there are myths. But what do you think? • Please write your best guesses for patent law’s top myths on the index card in your folder. • If you want to write at greater length, email rjmorris@alumni.brown.edu. • Please pass the cards in now.I’ll look at them tonight and track you down in the morning! Salishan Conference

From my talk here 2 years ago:Quotes from Judge Rich • “Be prepared. Be concise. Be clear. • If your client • does not have a good case, • counsel him, her or it • to conserve resources – • including your potential fee. • At best, litigation is a gamble.” (quoted in The Almanac of the Federal Judiciary) “If you look long enough in the patent law, you can find a case to support any kind of proposition[.]” Judge Rich, Jefferson Medal Acceptance Speech, New Jersey Patent Law Association, 1955 (quoted in Smith1999) Salishan Conference

What some of my students just won't believe • It’s the CLAIM, stupid. Salishan Conference

Dis[claim]er • My new thoughts • - not found in any reference I know of, and • - which I may disagree with any minute now • will be identified with • This means • - it’s my baby: don’t blame anyone else • - it’s only a baby: not fully developed, not mature Salishan Conference

A claim from my 2010 talk, reissued. Claim was time-barred by a disclosure in a previous talk. • 1. A method for curling hair, comprising the steps of: • acquiring a knowledge of patent law, • and, • while maintaining the hair free of restraint, • reading a judicial opinion from a court selected from the group consisting of the Court of Appeals for the Federal Circuit and the Supreme Court. • 2. The method of claim 1, wherein the opinion is authored by a person selected from the group consisting of ____, ______, _____ or _________. Salishan Conference

Behind the MYTHS: The Religion(Another Claim) 101 Questions Utility (~ a perpetual motion machine)? A law of nature? An abstract idea? 102/103 Questions Publicly known more than a year before 1787? • We, the people of the United States, claim: • 1. A method for Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. Salishan Conference

Behind the MYTHS: The Religion - 2 Practical questions What is the art? Who would be an infringer? Can we apply NOW? Hint: actual RTP requires determining that the invention will work for its intended purpose. Maybe we're still experimenting! • We, the people of the United States, claim: • 1. A method for Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. Salishan Conference

Behind the MYTHS: The Religion - 3 • We, the people of the United States, claim: • 1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. If you have no problem with this claim, you are a true believer. If you have doubts, you are an agnostic. If you shout REJECT!, you are an atheist. Salishan Conference

Behind the MYTHS: The Religion - 4 • I am a believer. • I also believe in the adversary process. • Not based on the evidence of specific cases • Not based on surveys of aggregate data, • if there were any reliable ones, • which there are not... • We, the people of the United States, claim: • 1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. Salishan Conference

The Religion – Data Objective: The evidence from 19th century Europe: Schiff, Industrialization without National Patents (1971): Holland – no patent law 1869 to 1912, Switzerland – none until 1888 Petra Moser, 95 Am Econ Rev 1214 2005) : Crystal Palace 1851 (GB) and Centennial Exhibition 1876 (US) Roger Cullis, Technological Roulette (Queen Mary IP Research Institute) (2004) Subjective: Surveys About Beliefs and Actions [By economists in the 20th century] By Berkeley law professors in the 21s century: Graham Merges Samuelson Sichelman • We, the people of the United States, claim: • 1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. Salishan Conference

The Religion – Logic • The Carrot-Carrots. the Stick-Carrot, the Public Domain (adding, not subtracting) • encourages IN_V_TORS because a temporary exclusivity could mean • - more money in the relevant market , and • - more money in M&A (but note: Instagram didn't need any stinkin' patents. [TBOOK: appls and pats searched 4/12/12] • encourages IN_V_TORS to design around because of the threat of other people's patents • patent disclosures* are a great resource even in the Google Age, enriching the Public Domain • *"There are no bad patents, only good prior art." -RJM re BMPs and other hated patents that could be shot down by 103 but aren't ... • We, the people of the United States, claim: • 1. A method of Promoting Progress in Useful Arts, comprising the [single] step of: • securing • for limited Times • to Inventors • the exclusive Right • to their Discoveries. The Supreme Court does not know the phrase 'design around' The Supreme Court writes about protecting the PD, not expanding it. Salishan Conference

Word Choices Speak Volumes IN __ V __ TORS Fill in the blanks: no a ? OR -- en ? Salishan Conference

THE MYTHS and LEGENDS • Statute’s statue comes to life? • Can a real person ever be the "person of ordinary skill in the art" mentioned in the statute? • I.8.8: “authors and inventors.” “inventors = authors”? The inventors wrote the specification, claims, arguments and amendments? Really? • Life (for claims) begins at conception The claim as issued existed from the moment of conception of the invention. (E.g. re the on-sale bar and its negation by experiental use) • Equal Protection (well, construction) for claims All claim terms have an absolute right to be construed. (112p2 means very little. Cf. The Rich Legacy.) There exists a construction [one or more?] for every term in every claim. • Good guys/Bad guys ≡ Relationship to Patent • Not quite. Color(Hat) = f(Rp, t). Salishan Conference

Ordinary Skill • The statute invokes the knowledge • that a hypothetical Person • having Ordinary Skill • in the Art • to which {the claimed invention} pertains • would have had • at an earlier date* • in order to evaluate • OBVIOUSNESS and • ENABLEMENT • (and OK, written description) • *THROUGH 3/15/13: the time of invention • FROM AND AFTER 3/16/13: the effective filing date of the application Salishan Conference

103(a) before, and 103 after, the AIA • Pre-AIA:: Read center (regular) and left (italics). • applies to applications filed before 3/16/13, and their conts and divs. • Post-AIA: Read center (regular) and right (bold) • applies to applications filed on or after 3/16/13. PTO eff. dates . Salishan Conference

112 first paragraph now and soon • Pre-AIA:: Read center (regular) and left (italics). • applies to applications filed before 3/16/13, and their conts and divs. • Post-AIA: Read center (regular) and right (bold) • applies to applications filed on or after 3/16/13. the invention Subject of previous talk! Salishan Conference

Ordinary Skill – Shorthand Terms • 1. Acronyms • PHOSITA • first (TBOOK) printed use in 1966: Cyril A Soans, patent lawyer in Chicago, in IDEA (“Some Absurd Presumptions in Patent Cases”) • picked up by Fed Cir in 1984 {guess which judge}; 9 court cases • next in Bradley G.Lane’s Note in U.Mich.J.L.Ref. article, 1987, and then as of 4/8/2012: ~300 law review articles, per Westlaw • Pronounced FA (as in father)-zit-tuh (as in tub)] • POSITA • I wrote it that way in 2001 in JPTOS • Others did too in later years: ~40-50 law review articles by now - Pronounced po-ZEE-tuh: a POSITA is also a small poseur • POSA • seems to be gaining popularity: first citing/sighting 2004, ~ 10 law review articles by now. • Michigan Patent lawyer John Posa loves it. • 2. Real words • ordinary artisan • in use since at least 1913 {guess which judge}* • Chief Judge Rader used this term in 2009 and 2010. Judge Moore used it last month, quoting Rader’s 2010 opinion. Salishan Conference

Ordinary Skill – Shorthand Terms Is TAHOA as good in the Googleage as PHOSITA is,and POSITA and POSA are not? Alas, no. It’s a Second Life ski resort. • ORDINARY and ARTISAN are both important words. • But they don't express the hypothetical and temporal aspects of this legal fiction. • Candidate acronyms • HOAATTRD (hypothetical ordinary artisan at the relevant date)? • HOA-TOI and HOA-TOF or HOA-AOTPD (hypothetical ordinary artisan at the time of invention or time of filing or as of the priority date) • TAHOA (time-appropriate hypothetical ordinary artisan) • HOA-TA(hypothetical ordinary artisan, time appropriate) HOA-TA KSR told us the ordinary artisan is not an automaton. Salishan Conference

Experts and Ordinary Artisans - 1 • Can you challenge an expert in the art as TOO expert, and thus not ORDINARY? • Yes, litigators still do that, and sometimes they win. See Duramed v. Watson Labs, 701 F.Supp.2d 1163, 1170 (D.Nev. 2010) • But not permanently. reversed (Fed Cir 2011) (unpub, Lourie, Linn, Dyk). Why unpublished? Why no sanctions? Salishan Conference

Experts and Ordinary Artisans - 2 • Can you challenge a qualified expert's testimony because it does not require her expertise? • Yes: PO's expert's testimony concerned proving infringement from AI's marketing docs. 5,004,681 B1. Technical area was a therapeutic composition of cryogenically preserved stem cells See Pharmastem, 491 F.3d 1342 (Fed Cir 2007) (Newman, Bryson and Prost; Newman dissenting) Salishan Conference

Experts and Ordinary Artisans - 3 Tension between TECHNICAL expertise and ISSUE expertise. Examples: PharmaStem - high tech patent, marketing docs Sundance - low tech patent, simple prior art On SJ, PO's lawyers attach the docs and argue. But if they lose SJ and go to trial - what witness do they call to introduce the docs? - what witness can they call to compare the docs to the claim? Nobody? Salishan Conference

Experts and Ordinary Artisans - 4 An expert who compares HIGH TECH claims to [Prior Art/Accused Device] should have ??technical AND patent law qualifications?? (First-time experts would have to explain how the client's attorneys educated them?) Salishan Conference

Sundance v. DeMonte - The Story • PO Sundance's Patent: 5,026,109: a retractable segmented cover for trucks; segments are independently removable. • Jury Trial. AI DeMonte's expert on obviousness (and other things) is its patent attorney, Mr. Bliss. • PO's motion in limine against Bliss is heard along with other motions 5 days before trial. Trial Judge denies it from the bench. • Jury Verdict: For AI on invalidity. For PO on infringement. • JMOL: For PO on validity. • AI appeals the JMOL. PO appeals prejudgment interest. Who can appeal the denial of the motion in limine? Salishan Conference

Experts and Ordinary Artisans • Sundance: Patent attorney who lacks ‘ordinary skill in the art’ cannot be qualified as a ‘technical’ expert. “We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless the witness is qualified as an expert in the pertinent art.” • 550 F.3d 1356, 1364(2008)(Dyk, Prost, Moore) (reversing Senior Judge Avern Cohn) My second favorite sight-gag number joke; There are 10 kinds of people in the world. Those who understand binary, And those who don't. Salishan Conference

Experts and Ordinary Artisans • Nobody – yet – has argued that it is malpractice for a member of the patent bar • - to write an amendment/argument to the PTO after a 103 rejection or • - give an opinion of counsel concerning validity or infringement • without first hiring a person of ordinary skill in the art to advise them. • Why not? Because the HOA-TA is a fiction. Salishan Conference

Rules of Evidence and Patent (liability-side) Experts • Sundance quoted Rule 702, F.R.Evid: • “If scientific, technical or other specialized • knowledge … will assist the trier of fact…” Salishan Conference

Prof. Arthur Miller's Rules of Civil Procedure • First Rule: Read the rule. • Second Rule: Read on. • [also stated in my "Open Letter to the Supreme Court concerning Patent Law" 83 JPTOS 438 (2001).] • These rules are also good Rules of Evidence... Salishan Conference

Rule 702 (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. • Rule 702. Testimony by Expert Witnesses • A witness • who is qualified as an expert • by knowledge, skill, experience, training, • or education • may testify in the form of an opinion or otherwise • if: • (a) the expert's • scientific, technical, or • other specialized • knowledge • will help the trier of fact • to understand the evidence • or • to determine a fact in issue; Salishan Conference

Law-Fact-Equity EQUITY R56 Ineq. Conduct 283 Injunction 284 Multiple Damages 285 Award of atty fees - Patent Misuse FACT 101 Lack of Utility 102a Anticipation 102g Diligence 102g Corroboration Analogous Art 103 Graham 1 - S&C of PA 103 Graham 2 - Diffs: Cl. v. PA Graham 3 - Level of Skill 103 Graham [4] – Secondary considerattions 112P2 Best Mode 112 P1 Written Descrip. R56 Intent (Ineq. Cond.) R56 Materiality(Ineq. Cond.) 271 Infringe. – literal 271 Infringe. – DOE 285 Exceptional Case LAW 101 Patentable Subj. Matter 102b Experimental/Public Use 102b On Sale 102g Priority of Inv. 102g Conception 102g Reduc. to Prac. 103 Obviousness 112P1 Enablement 112P2 Indefiniteness 101, 102, 103,112, 271 Claim Construction NB: All statute numbers are pre-AIA . Consult your tax advisor for the new numbers. Compiled first in the 1990s, then made into a slide for Adv Pat Seminar2005, updated for SciEv Seminar 2007 and 2012. See also pdf pages 31-33 of my amicus brief in Microsoft v. i4i. which has citations. -rjm FACTS! Salishan Conference

Miller's Rules after graduation -->Morris's Truth: Read Anew, See Something New While the ultimate question of patent validityis one of law, A. & P. Tea Co. v. Supermarket Corp. [ 340 US 147, 155 (1950)] the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. 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. Graham v. Deere, 383 US 1, 17 (1966). 1. 'Validity' = 'Obviousness' here. No intended contradiction with ANTICIPATION and WRITTEN DESCRIPTION being questions of FACT. 2. One of THREE conditions? 102 and 112 being the other TWO? 101 is not a CONDITION? Dicta, but it shows the state of knowledge and understanding of persons of ordinary skill in the art of rendering Supreme Court opinions in patent law at the time the Graham decision was written Salishan Conference

Inflation/Numerology: 3 is bad, 4 is better Graham used to be known as having THREE factors (often re jury instructions) Sakraida (US 1976) "Graham three-pronged test" (quoting 7 Cir.) Roberts v. Sears, Roebuck (7 Cir. 1983) Graham tripartite inquiry Hilton Davis (Fed Cir 1995), quoting Roberts, with no quibble about that 3 Hybritech (Fed Cir 1986) "three factual determinations and ...objective evidence of obviousness [sic: non]" Trans-World Mfg (Fed Cir 1984) "three primary factors" But NOWADAYS, see Siemens (Fed Cir 2011): FOUR. Statutory Conditions for patentability Per Graham: 103 is 1 of 3 Per Bilski and Prometheus, 101 is not only a 4th , it is #1 of 4. Salishan Conference

Sundance and Experts and Rule 702 • Is comparing a claim to prior art something scientists and engineers do in the course of practicing their art? • Or is it something lawyers and examiners do? • What area of EXPERTISE is relevant? • Or areas? • Clients with ordinary - or more - skill in a technical field • rely on YOU on questions of law (obviousness, say) andlegal questions of fact (such as scope and content of the prior art, anticipation, enablement)? Salishan Conference

Sundance’s Ruling • Although • - nobody appealed the denial of PO’s motion in limine • - neither side could have, and • - no further briefing was requested, • the court held that • Bliss’s testimony on obviousness, comparing the claims to 2 references [one of which is listed on the patent] • should have been excluded • because Bliss did not have • ordinary skill in the art of the invention. • Bad Judge Cohn. Bad. Bad. key words: scope of appeal waiver fairness equity jurisprudence judicial economy Salishan Conference

Sundance’s Bottom Line • Held: The jury didn’t need expert testimony on obviousness because the level of skill was so low. • Therefore a reasonable jury • (a hypothetical one? unprejudiced by AI’s patent lawyer’s testimony?) • could have concluded that the invention was obvious • by comparing the claim to the two references • using only the knowledge of an ordinary person, • especially in light of KSR. (which had not yet been decided). • Therefore Judge Cohn abused his discretion • in granting JMOL. • Bad Judge. Bad. Bad. AI’s witness was probably an ordinary person, although a lawyer… Salishan Conference

Compare two legal fictions • The Reasonably Prudent Person • We let jurors decide what a RPP would have done • We don’tvoir dire jurors about how R and P they are • We trust judges to decide, too, without checking their homeowner's insurance, tax payments, traffic tickets... • Why? • Because the RPP is a fiction. You don’t have to BE one to KNOW what one would do. • COMPARE • The Ordinary Artisan • We require expert witnesses to be at least ‘ordinary' artisans. • Why? Salishan Conference

Sundance’s Ruling • NOBODY sitting in a courtroom today can be an ordinary artisan at the time the patent application was filed (absent a time machine). Why debate whether the person has adequate credentials to be an impossibility.? • Instead, ask if the person's special expertise – EXPERT in the art, TODAY, or EXPERT in reading and thinking about patents/applications in that art TODAY -- makes the person qualified to ‘assist the trier of fact.' • Experienced patent lawyers who specialize in patents in that art may not qualify as ordinary artisans (often defined as X years of education and Y years of experience practicing that art) but may well be the experts from whom real people [clients] seek assistance. Judges too - both as real people and as potential experts. Salishan Conference

Myth 2: Inventors=Authors • Inventors=Authors • Is that necessary? • Writers: Use the passive voice when discussing the words in the specification, claim and prosecution history! • Honesty is the best policy, and avoiding outright untruths is the better policy compared to lying... Salishan Conference

Authorship: "Ignorance is No Excuse"? • Naive (first-time) inventor tragedies. • Lough v. Brunswick (1997) • Brasseler v Stryker (2001) • EZ Dock v. Schafer (2002) Salishan Conference

Myth 3: Right-to-life for claims – Life begins at the moment of conception? • On-sale bar: does the claim read on the thing offered for sale? If so, it's invalid. • The claim-as-issued – that bunch of words in that order -- did not come into existence until sometime after the pre-application offer. • Maybe that doesn’t really matter. Or does it? Salishan Conference

Right-to-life for claims – Life begins at the moment of conception? -2 • The HOA-TA gets involved, too. • Pfaff’s two prong test is • 1. a commercial sale, and • 2. an invention ‘ready for patenting.’ • RFP = RTP or inventor-prepared docs that would enable a HOA-TA to *practice* the invention. Salishan Conference

102(b) now and soon • Pre-AIA:: Read center (regular) and left (italics). • applies to applications filed before 3/16/13, and their conts and divs. • Post-AIA: Read center (regular) and right (bold) • applies to applications filed on or after 3/16/13. Nice that Congress tossed 102(a)’s ‘known’ (held to mean ‘publicly known’ based on [??]) and said this instead. Salishan Conference

Life begins at the moment of conception? - • Experimental Use: An experiment that • - verifies that no further changes are needed, rather than causing changes, • - and therefore does not affect claim language • is not an experiment that can negate the on-sale bar. • But at the time of the experiment, there was no claim language... Salishan Conference

MYTH 4:Equal Protection for claims – Every claim term is entitled to a construction? • 3/25/13: the 15th anniversary of Cybor and Judge Rader, concurring in the judgment, identifying • 1. CVI/Beta v. Tura: the Fed Cir did not agree with its own previous claim interpretation, and • 2. JTEaton v Atlantic and 3. Exxon v. Lubrizol: the appellate court 's interpretation was not selected from the group consisting of constructions by the trial court or the parties Salishan Conference

Equal Protection for claims – Every claim term is entitled to a construction? - 2 • In all 3, the claims at issue had numerical limitations. • What jumped off the page: The metrics not anything a HOA-TA would have known or used. • Cf. Myth 2: Inventor=author Salishan Conference

Equal Protection for claims – Every claim term is entitled to a construction? • Why not use the BOP on the underlying issue, the way we do for summary judgment? tinyurl.com/claim-bop. • But then construing courts would have to admit that they know why the parties proffer different interpretations. They should [admit] because they do [know]. Truth is better than fiction. Salishan Conference

Myth 5: Good Guys, Bad Guys • My Patent Law Classes, 1991 to 2004: • Greedy Sleazy PO v. Filthy Rotten Stinking AI • 19th Century: Bad = PO (Free trade) • 20th Century: Bad= PO (Antitrust) • ~1982 ± 12: Good=PO • POs - Honorable and Dishonorable DPO=NPE? • AIs - Honorable and Dishonorable DPO=??? • My Microsoft v i4i Amicus Brief at *12: • It's Trolls v. Thugs • [Thugs come in 2 types: Muggers and Bullies] Salishan Conference

THE END • THANK YOU. • QUESTIONS? • COMMENTS? Salishan Conference

A Child’s Guide to the Myths and Legends of Patent Law (A Child’s Guide to the Myths and Legends of Patent Law)