Above Average Answers
1: (2 Points)
kind of benefits do Art. III judges have?
Art. III is Art. III of
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;
2: (1 Point)
many justices are there at the U.S. Supreme Court?
- 9 justices
3: (1 Point)
many Fed. Cir. (CAFC) is/are there in the
the Fed Cir. (CAFC) only review intellectual property matter?
no, IP counts about 30% of what they review.
5: (1 Point)
was the Fed. Cir. (CAFC) established?
were/was the main objectives for the establishment of the Fed Cir.?
interpretation of IP matters (avoidance of forum shopping)
conflicts (12 Fed Appellate Courts);
doctrines (non-obviousness, patent eligibility, inequitable conduct, preliminary
injunction, damages, DOE, c..)
7. (1 Point)
the U.S. Supreme Court have to review
all the patent related cases that were appealed from CAFC?
No, review is almost
8: (1 Point)
a state court review the patent
infringement dispute? In other
words, do they have a proper subject
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.
9: (1 Point)
the above answer is gnoh, 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
about 3 degrees of proof?
civil, criminal casec
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, arsonc.
is gwrit of certiorarih?
petition to U.S.
Supreme Court to review the lower courtfs decision.
12: (1 Point)
a year, the
gcommon lawh 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
gprecedenth, 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.
14: (3 Points)
is the outcome of gIn re Bilski (Fed
Cir. 2008)h 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.
Is claimed element relates substantially to a machine or device?
test: Is article
transformed in other state?
If Yes to either one
of the above tests, then the process claim is patent eligible under 35USC101.
15: (1 Point)
down a claim in 3 (three) parts! Hint:
phrase, and body of claim;
16: (1 Point)
can construe patent claims under Markman
v. Westview (
JP benrishi, an ordinary person, judge, lawyerc.?
17: (2 Points)
Decision holds that
gClaim construction is a question of
law, not a question of facth.
What does the decision mean?
Claim construction is a matter sorely decided by judge, not a jury.
18: (2 Points)
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.
19: (1 Point)
about the standard of review at CAFC
for gthe factual findingsh
by the federal district court?
standard of review.
20: (2 Points)
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.
21: (2 Points)
respect to the Supreme Court Markman
Decision, Judge Rader and Judge Mayer (CAFC judges) expressed their view
by stating gwhile 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 lawh.
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
In other words, it is
more true to say that the claim construction is a legal matter based on the
22: (2 Points)
Appealh, explain what it means?
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.
23: (1 Point)
Phillips v. AWH (Fed. Cir. 2005),
which evidence should be more prioritized, intrinsic evidence or extrinsic
24: (2 Points)
the way, what is gintrinsic evidenceh?
includes claims/spec/dwgs, file history (amendments, remarks, arguments,
declaration, and IDS).
25: (2 Points)
Phillips v. AWH (Fed. Cir.
2005), how did the gDoctrine of Claim
Differentiationh play when interpreting the scope of gbaffle plate
(esteel bafflesf)h in claim 1?
1: Building modulesc.
baffles extending inwardly from the steel shell walls.
2: Building modules as defined in Claim 1, wherein the steel
baffles are oriented with the panel section disposed at
angles for deflecting projectilesc
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.
26: (2 Points)
you broaden a scope of claim after a U.S. Patent was issued?
If eYesf, under what conditions can you broaden the scope of claim?
Yes, if reissue
application was filed within 2 years from the issuance of the
It is called ga
broadening reissue applicationh.
27: (2 Points)
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 claimc.
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
However, adding the
dependent claim is deemed gnoth 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.
of Claim Interpretation:
canon (e1st canonf) 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
canon (e2nd canonf) 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.
SciMed Life System (Fed Cir.
2001), why was glumenh 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
gthe present invention is c..h.
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.
31: (1 Point)
general, is a preamble limitation of claim according to the
food container comprising A and B.
container comprising A and B.
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.
33: (1 Point)
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.
34: (1 Point)
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
35: (1 Point)
Warner-Jenkinson Case (WJ v.
Hilton Davis: Sup Ct 1997), should the gintenth 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.
36: (1 Point)
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)?
Unfortunately W-J did not clarify the steps of application of DOE.
Instead, they said CAFC is better forum to determine details of such
37: (1 Point)
bears an initial burden to prove infringement when filing a lawsuit against a
Initially, a patentee
bears the burden of proof of infringing activity by an accused infringer.
a patentee ePf file a lawsuit against a possible infringing party eDf
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
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 gminimum contacth by defendant must be present to bring the
case to the ETDC.
39: (2 Points)
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.
40: (1 Point)
few words, what is the patent
statute, 35USC271, all about?
activities that would constitute infringement of the U.S. Patent.
35 USC 271(a)
271(a), what kind of acts would constitute infringement?
making, selling, c.
authority, making, using, selling, or offering to sell any patented invention
42: (2 Points)
is the patent statute 271(e)(1) about?
271(e)(1) is called gsafe harborh.
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.
35 USC 271(e)
few sentences, what was the outcome of the Merck
decision (Merck v. Integra
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).
35 USC 271(f)(1)
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 ginfringementh?
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
35 USC 271(f)
the way, do you remember anything about Deepsouth
Packing case (
Deepsouth was the
patent holder, which is about a shrimp devenier.
46: (1 Point)
35 USC 271(f)
Microsoft v. AT&T (Sup Ct 2007),
is gsoftware (Microsoftfs Windows)h sent electrically qualified as a
gcomponenth under 271(f)?
47: (2 Points)
35 USC 271(f)
(Microsoft) was sending a master disc version of Windows to JP (
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 Fujitsufs 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.
35 USC 271(g)
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
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
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:
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);
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.
you think presumption of means plus function interpretation (invoking 112(6)
interpretation) with respect to a claimed element, ga coil spring meansh,
can be overcome in the following claim? Explain
an element A;
element B; and
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).
have a claim 1 in USP8,123,43X, as follows:
an element A;
an element B; and
a bias means for biasing the element A against the element B.
describes a coil spring and Drawing also shows a coil spring.
Then what will be the scope of claimed element, ga bias meansh if
112(6) interpretation is to be applied to ga bias meansh?
a coil spring and its
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.
54: (1 Point)
should determine the equivalents under DOE?
judge or jury (WJ
refused to clarify this issue).
55: (1 Point)
is eequivalentsf under DOE determined?
at the time of
Chiuminatta eFed Cir 1998)
and Dawn Equipment (Fed Cir 1998),
how the equivalents under 112(6) should be analyzed?
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.
57: (1 Point)
is eequivalentsf under 112(6) determined?
at the time of filing
58: (1 Point)
Down Equipment (fed Cir 1998),
should there be DOE for means-plus-function claim limitation?
Question: 2 Points)
did you prepare for this mid-term?
Question: 2 Points)
comment on this mid-term?