Mid-Term Above Average Answers

June 26 (Fri), 2009

From Day 1: 

U.S. Federal Judicial System

Prob. 1: (2 Points)

What kind of benefits do Art. III judges have?

Note Art. III is Art. III of U.S. Constitution.

Hint: Judge Rader is Art. III judge.

- life time tenure; - no salary reduction:  so that these two protections help an independent judiciary to decide cases free from popular passion and political influence;

Prob. 2: (1 Point)

How many justices are there at the U.S. Supreme Court?

- 9 justices      

Prob. 3: (1 Point)

How many Fed. Cir. (CAFC) is/are there in the U.S. ?

-          only 1

Prob. 4: (2 Points)

Does the Fed Cir. (CAFC) only review intellectual property matter?

- no, IP counts about 30% of what they review.

Prob. 5: (1 Point)

When was the Fed. Cir. (CAFC) established?

-          1982.

Prob. 6: (2 Points)

What were/was the main objectives for the establishment of the Fed Cir.?

-          uniformity of interpretation of IP matters (avoidance of forum shopping)

-          no inter-circuit conflicts (12 Fed Appellate Courts);

-          strengthen patent doctrines (non-obviousness, patent eligibility, inequitable conduct, preliminary injunction, damages, DOE, …..)

Prob. 7. (1 Point)

Does the U.S. Supreme Court have to review all the patent related cases that were appealed from CAFC?

-          No, review is almost completely discretionary.

Prob. 8: (1 Point)

Can a state court review the patent infringement dispute?  In other words, do they have a proper subject matter jurisdiction? 

-          Since Patent matter is based on the federal law, no state court can decide patent matter. Thus patentee must bring the case to a federal district court for the first instance.

Prob. 9: (1 Point)

If the above answer is “no”, then to where does the patentee should bring the infringement lawsuit when they find an infringement activity?

-          see above answer;

-          (plus) Patentee can bring the case to the federal district court that has jurisdiction in which an infringing activity takes place, or an accused infringer has a principal place of business (or accused infringer has some minimum contact with the jurisdiction).

Prob. 10: (2 Points)

Explain about 3 degrees of proof?

Hint: civil, criminal case…

-          preponderous evidence for most of civil matters;

-          clear and convincing evidence for criminally related civil matter, such as fraud;

-          beyond a reasonable doubt for a criminal case, such as murder, manslaughter, rape, arson….

Prob. 11: (2 Points)

What is “writ of certiorari”?

-          petition to U.S. Supreme Court to review the lower court’s decision.

Prob. 12: (1 Point)

In a year, the U.S. Sup Court will typically receive about 8,000 petitions for certiorari, and it will agree to hear only about          cases.  Choose one from 1; 10; 100; 1000.

- 100

Prob. 13: (3 Points)

Define “common law” in your words.

-          The American judicial process is based largely on the English common law system.  Common law is law that is developed and interpreted by judges, rather than a fixed body of legal rules (statutes and codes);

-          Under Doctrine of “precedent”, judges use the legal principles established in earlier cases to decide new cases that have similar facts and raise similar legal issues.  Thus, under which, judges of lower courts are required to follow the decisions of the higher courts within the jurisdiction.

Prob. 14: (3 Points)

What is the outcome of “In re Bilski (Fed Cir. 2008)” in few words?

-          For determination of the patent eligibility of process claim, a machine – or – transformation test (established in Benson Case: 1972) is to be used.

Ø         Machine test: Is claimed element relates substantially to a machine or device?

Ø         Transformation test: Is article transformed in other state?

Ø         If Yes to either one of the above tests, then the process claim is patent eligible under 35USC101.

From Day 2:

Claim Construction

Prob. 15: (1 Point)

Break down a claim in 3 (three) parts!  Hint: preamble,…

-          preamble, transition phrase, and body of claim;

Prob. 16: (1 Point)

Who can construe patent claims under Markman v. Westview ( Sup Ct. 1996)?

Hint: JP benrishi, an ordinary person, judge, lawyer….?

-          judge only;

Prob. 17: (2 Points)

Markman Decision holds that “Claim construction is a question of law, not a question of fact”.  What does the decision mean?

- Claim construction is a matter sorely decided by judge, not a jury.

Prob. 18: (2 Points)

Under Markman, what should the standard of review be for the claim construction at CAFC when the case is appealed from the lower federal district court?  Hint. Do the judges at CAFC pay some respect to the claim construction decided by the lower court?

-          De novo review, which means CAFC judges give no deference (respect) to what was decided at the lower district court, regarding the claim construction.

Prob. 19: (1 Point)

What about the standard of review at CAFC for “the factual findings” by the federal district court?

-          Clear erroneous standard of review.

Prob. 20: (2 Points)

How does the standard of review for the claim construction affect predictability of claim construction at CAFC when the lower court decision is appealed to CAFC?  In other words, do you think the decision at the lower court will be likely maintained at the higher court?

-          Since no deference is given to the lower court decision on claim construction, predictability of claim construction at CAFC will be uncertain.  Therefore, this standard of review may be benefit for the losing party at the lower court, but not for the winning party at the lower court.

Prob. 21: (2 Points)

With respect to the Supreme Court Markman Decision, Judge Rader and Judge Mayer (CAFC judges) expressed their view by stating “while the Supreme Court did conclude that claim construction is a matter for the judge, not the jury, however, it did not hold that claim construction was entirely a matter of law”.  In your own words, what do they mean to say?

-          They meant to say that although it was decided that the claim construction is entirely a matter of law, when construing the meanings of claim terms, factual analysis cannot be avoided, such as expert testimony or testimony by a person of ordinary skill in the art.

-          In other words, it is more true to say that the claim construction is a legal matter based on the factual analysis.

Prob. 22: (2 Points)

“Interlocutory Appeal”, explain what it means?

-          Interlocutory appeal is an appeal from the lower court by a losing party before the final decision is rendered at the lower court.  It could be much more beneficial for the losing party at the Markman hearing (the lower court) if they can appeal immediately thereafter rather than waiting for the final decision.

Prob. 23: (1 Point)

Under Phillips v. AWH (Fed. Cir. 2005), which evidence should be more prioritized, intrinsic evidence or extrinsic evidence?

-          intrinsic evidence;

Prob. 24: (2 Points)

By the way, what is “intrinsic evidence”?

-          intrinsic evidence includes claims/spec/dwgs, file history (amendments, remarks, arguments, declaration, and IDS).

Prob. 25: (2 Points)

In Phillips v. AWH (Fed. Cir. 2005), how did the “Doctrine of Claim Differentiation” play when interpreting the scope of “baffle plate (‘steel baffles’)” in claim 1?

Claim 1: Building modules….

…steel baffles extending inwardly from the steel shell walls.

Claim 2: Building modules as defined in Claim 1, wherein the steel baffles are oriented with the panel section disposed at angles for deflecting projectiles…

-          Because of the Doc. Of Claim Differentiation, a steel baffle of claim 1 was interpreted more than what is defined in claim 2.  Thus, it was found that a steel baffle in claim 1 encompasses an angled one and a perpendicular one against a wall.

Prob. 26: (2 Points)

Can you broaden a scope of claim after a U.S. Patent was issued?  If ‘Yes’, under what conditions can you broaden the scope of claim?

-          Yes, if reissue application was filed within 2 years from the issuance of the US patent.

-          It is called “a broadening reissue application”.

Prob. 27: (2 Points)

Is there any way you can broaden a scope of claim in the U.S. Patent, which was issued more than 3 years ago?  Hint: It has to do with dependent claim….

-          A broadening reissue is only possible if it is filed within 2 years of the issuance.  Thus, if more than 2 years have passed since the issuance of the US patent, only a narrowing amendment is possible.

-          However, adding the dependent claim is deemed “not” broadening the originally issued claim.  By defining element of its parent claim in the dependent claim to be added, then the element of the parent claim may be interpreted more than what was originally defined.

From Day 3:

Canons of Claim Interpretation:

Prob. 28: (2 Points)

First canon (‘1^st canon’) says that claims should be interpreted such that the preferred embodiment falls within their scope.  In your words, please explain what it means.

-          Claim should be such that it encompasses what is mentioned in the spec as a preferred embodiment. Otherwise, claim may be invalidated as lacking a proper support in the spec under 35USC112(1).

Prob. 29: (2 Points)

Second canon (‘2^nd canon’) says that a patent claim is not necessarily limited to the preferred embodiment/limitations from the written description.  In your words, please explain what it means.

-          Under canon 1, claim should encompass at least one of preferred embodiment mentioned in the specification, however, it does not mean all the detailed features described in the preferred embodiment are incorporated as claimed elements.

-          In other words, in principle, wordings of claim define the boundary of the scope, not the features shown in the preferred embodiment.

Prob. 30: (2 Points)

In SciMed Life System (Fed Cir. 2001), why was “lumen” in claim interpreted to be of a coaxial annular structure, excluding a side-by-side structure?  Hint: Lumen = a thin tube going into a human body: catheter)

-          Because in SciMed Patent, there are certain phrases that could limit the scope of claims, such as “the present invention is …..”.

-          Use of such expression may give a chance to the accused infringer that their device does not have what the inventor says as his invention is.

Prob. 31: (1 Point)

In general, is a preamble limitation of claim according to the U.S. patent practice?

-          Generally, no!

Prob. 32: (2 Points)

Claim 1:

A food container comprising A and B.

Claim 2:

A container comprising A and B.

In the above claims, during the Markman hearing, claim 1 was construed to cover only a food container by judge.  Why?

-          Because of claim differentiation theory, claim 2 was interpreted to cover different from what is covered by claim 1.

From Day 4:

Prob. 33: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), should the DOE apply to claim as a whole?  Note: DOE = Doctrine of Equivalent

-          Noops, DOE applies to each element of claim.

Prob. 34: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), when would be proper time for determination of scope of DOE?  Hint: at a time of infringement or at a time of fling a patent application (Invention)

-          at a time of infringement.

Prob. 35: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), should the “intent” by the accused infringer count?  In other words, if the accused infringer intentionally committed the infringing act, does this intention has any influence on determination of DOE?

-          intent by an accused infringer will not be counted for the determination of equivalents under DOE.  In other words, DOE is not used as a punishment to the accused infringer.

-          Thus, regardless of the intention of the accused infringer, DOE will be applied to the elements of claim without any prejudice.

Prob. 36: (1 Point)

Did Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997) clarify the steps of application of DOE more than Graver Tank Case (function/way/result-test)?

-          No!  Unfortunately W-J did not clarify the steps of application of DOE.  Instead, they said CAFC is better forum to determine details of such steps.

Prob. 37: (1 Point)

Who bears an initial burden to prove infringement when filing a lawsuit against a possible infringer?

-          Initially, a patentee bears the burden of proof of infringing activity by an accused infringer.

Prob. 38: (2 Points)

Can a patentee ‘P’ file a lawsuit against a possible infringing party ‘D’ with an Eastern Texas District Court (federal court) in case P finds infringing products sold in NY?

-          Probably not, because Defendant does not seem to have a minimum contact with the jurisdiction covered by ETDC.

-          In order for the patentee to file a lawsuit at ETDC, a patentee must prove some infringing act committed in the corresponding jurisdiction or Defendant has a principal place of business.  In other words, the requirement of “minimum contact” by defendant must be present to bring the case to the ETDC.

Prob. 39: (2 Points)

Do you remember anything about Rule 11 (FRCP: Federal Rules of Civil Procedure)?

-          Rule 11 requires all papers to be signed by the attorney (if party is represented).  It also provides for sanctions against the attorney or client for harassment, frivolous arguments, or a lack of factual investigation.  The purpose of sanctions is deterrent, not punitive.  Courts have broad discretion about the exact nature of the sanction which can include consent to in persona jurisdiction, fines, dismissal of claims, or dismissal of the entire case.

From Day 5:

35 USC § 271

Prob. 40: (1 Point)

In few words, what is the patent statute, 35USC271, all about?

-          defining the activities that would constitute infringement of the U.S. Patent.

Prob: 41:  (2 Points)       35 USC §271(a) 

Under 271(a), what kind of acts would constitute infringement?

Hint: making, selling, ….

-          Whoever without authority, making, using, selling, or offering to sell any patented invention within the United States , or imports into the United States any patented invention during the effective term of the patent, infringes the patent.

Prob. 42: (2 Points)         35 USC §271(e)

What is the patent statute 271(e)(1) about? 

Hint: 271(e)(1) is called “safe harbor”.

-          271(e)(1) is an exception to 271(a) so that using the patented invention solely for uses reasonably related to the development and submission of information under a Federal regulatory law shall not be deemed infringement of the patent.

Prob. 43: (2 Points)         35 USC §271(e)

In few sentences, what was the outcome of the Merck decision (Merck v. Integra Lifesciences: Sup Ct. 2005)?

Hint: using compound; FDA approval

-          Merck is the Sup Court Decision in 2008 that clarified the sprit decision by CAFC decision.  The Merck decision eventually broadened up the scope of the safe harbor provided under 271(e)(1), which holds that as long as there is a reasonable basis for believing that the experiments produce the type of information relevant to submission of the data to the Federal regulatory authority, the use of patented compounds in preclinical studies is protected under 271(e)(1).

Prob. 44: (2 Points)         35 USC §271(f)(1)

35USC271(f) was enacted in 1984, 12 years after the supreme court decision (Deepsouth Packing Co. v. Laitran Corp: 1972). What does the patent statute 271(f)(1) define?  In other words, what kind of activities does the statute 271(f) say “infringement”?

Hint: 271(f)(1) is about exportation of components of a patented invention.

-          271(f)(1) defines the type of exporting act that would constitute infringement of the U.S.   patent.  Under the 271(f)(1), the US company that exports all or a substantial portion of the components of a patented invention that are to be combined in the foreign country and such combined form would constitute the infringement if the act occurred within the U.S. will be deemed infringer.

Prob. 45: (2 Points)         35 USC §271(f)

By the way, do you remember anything about Deepsouth Packing case ( Sup Ct. 1972)?

Hint: Shrimp devenier; U.S. company sends parts abroad…..

-          Deepsouth was the patent holder, which is about a shrimp devenier.  The U.S. based company exported the parts of the shrimp devenier to the foreign country there the parts were assembled to form a shrimp devenier which falls the scope of the U.S. Patent owned by Deepsouth.  However, the Sup Court decided such act did not constitute the infringement under 35USC 271(a).

Prob. 46: (1 Point)            35 USC §271(f)

Under Microsoft v. AT&T (Sup Ct 2007), is “software (Microsoft’s Windows)” sent electrically qualified as a “component” under 271(f)?

-          No

Prob. 47: (2 Points)         35 USC §271(f)

MS (Microsoft) was sending a master disc version of Windows to JP ( Japan ), and a company A in JP ( Japan ) made copies from the master disk sent from MS and installed them onto Fujitsu’s computers.  When installed to the Fujitsu computer, all the claimed elements of AT&T’s patent were met.  Does the activity of MS constitute infringement under 271(f) in light of the Microsoft v. AT&T (2007: Sup Ct )? Why?

-          No, the act of MS does not constitute the infringement under 271(f) because the copied software (Windows) was not exported to JP by MS.  MS has exported the master disk (storing Windows software) to JP, however, the master disk was not combined to the Fujitsu’s computer.  No matter how easy it has been to make copies from the master disk, that was not the MS who made copies in JP.

Prob. 48: (2 Points)         35 USC §271(g)

If company A in the USA imports goods from Taiwan where the goods were made by processes that were claimed in US patent owned by company B, then president of company B comes to you and seek your advice.  What would you advise to the president of company B?

-          The act by company A would highly likely constitute the infringement of the US patent under 35USC 271(g).  Thus, I would advise the president of company B that they should prepare and consider filing an infringement lawsuit against company A.

From Day 6:

35 USC §112(6)

Prob. 49: (2 Points)

In your own words, what does 112(6) say?

-          112(6) basically says that you can write a claim term in terms of what it does rather than what it is.  However, if you take advantage of easy claim term drafting, you would pay the price, that is, the scope of the element drafted in such a manner will be construed to cover only what was described in the specification and equivalents thereof.

Prob. 50: (3 Points)

Under Chiuminatta (Fed Cir 1998), explain in your own words how to determine the literal infringement when the patent in question has a means plus function element?

-          the court must compare the accused device (structure) with the disclosed structure in the specification and must find equivalent structure as well as identity of claimed function for that structure.

-          In other words, for determining the literal infringement with respect to claim having an element expressed in means+function:

Ø         The court must compare the structures disclosed in the specification, which is expressed in means + function element with the element in question (of the accused device); and also,

Ø         The court must perform a F/W/R test on the element in question (of the accused device) where the court must ask if the element in question performs an identical FUNCTION in substantially the same WAY to achieve substantially the same RESULT.

Prob. 51: (2 Points)

Do you think presumption of means plus function interpretation (invoking 112(6) interpretation) with respect to a claimed element, “a coil spring means”, can be overcome in the following claim?  Explain why?

A device comprising:

              an element A;

an element B; and

a coil spring means for biasing the element A apart from the element B.

-          It is highly likely that the presumption can be overcome, because the term in means form has enough structural description, i.e., a coil spring (men with ordinary skill in the art can easily recognize the structure of it).

Prob. 52: (2 Points)

We have a claim 1 in USP8,123,43X, as follows:

A device comprising:

              an element A;

              an element B; and

              a bias means for biasing the element A against the element B.

Specification describes a coil spring and Drawing also shows a coil spring.  Then what will be the scope of claimed element, “a bias means” if 112(6) interpretation is to be applied to “a bias means”?

-          a coil spring and its equivalent(s).

Prob. 53: (2 Points)

Under Graver Tank Decision (Supreme Court Decision), how the DOE (Doctrine of Equivalents) should be applied to the claimed element to determine its scope of protection?

-          What is called F/W/R test is used where F stands for function, W stands for Way, and R stands for Result so that the test is to see if the element in question performs substantially the same function in substantially the same way to achieve substantially the same result with the patented element.

Prob. 54: (1 Point)

Who should determine the equivalents under DOE?

-          judge or jury (WJ refused to clarify this issue).

Prob. 55: (1 Point)

When is ‘equivalents’ under DOE determined?

-          at the time of infringement.

Prob. 56: (2 Points)

Under Chiuminatta ‘Fed Cir 1998) and Dawn Equipment (Fed Cir 1998), how the equivalents under 112(6) should be analyzed?

Hint: Use F/W/R

-          The analysis for determining an equivalent under 112(6) is similar to the analysis of equivalent under DOE; however, only difference is that an identical function must be present in the accused element for determination on if the accused element is equivalent to the means + function element in question.  If no identical function is present in the accused element, then no equivalent under 112(6) will result.

Prob. 57: (1 Point)

When is ‘equivalents’ under 112(6) determined?

-          at the time of filing the U.S. patent in question.

Prob. 58: (1 Point)

Under Down Equipment (fed Cir 1998), should there be DOE for means-plus-function claim limitation?

-          Yes

Prob. 59: (Bonus Question: 2 Points)

How did you prepare for this mid-term?

Prob. 60: (Bonus Question: 2 Points)

Any comment on this mid-term?