Today’s Agenda

Week 2 - 9/9/03Adv.Pat.Law Seminar - rjm 1

Today’s Agenda• Markman Hearings: What you

would never know if all you did was read court opinions. GUEST LECTURER: Allen M. Krass

• Glaxo v. Apotex – as another source for studying claim interpretation and trial strategy

• Preliminary Injunctions - background leading up to an appreciation of Glaxo

• Next Week


The story of the CUTLER Patent (4,135,202)http://www-personal.umich.edu/~rjmorris/fall03/4135202.pdf

And IPD v. TCI [Cablevision]filed 1994Fed Cir decision July 2003

http://www-personal.umich.edu/~rjmorris/fall03/ipd.doc

And dictionaries in the Fed Cir…

Markman Hearings: What You Should Know That You’d Never Learn From Just Reading Cases

http://www-personal.umich.edu/~rjmorris/fall03/4135202.pdf











Judges are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.

Vitronics Corp. v. Conceptronic, Inc. (Michel, Lourie, Friedman)90 F.3d 1576 (7/25/96). Earliest Fed Cir. Case from a search of:DICTIONAR! W/5 CONSTRU! OR INTERPRET! W/3 CLAIM with an opinion on the wisdom of consulting dictionaries.

Cf. Ms. Durant’s distress (which I definitely share)


Both Brookhill's and Intuitive's proposed constructions are in some measure supported by the various definitions provided. While dictionaries and treatises are useful resources in determining the ordinary and customary meaning or meanings of disputed claim terms, the correct meaning of a word or phrase is informed only by considering the surrounding text. This is why consulting dictionary definitions is simply a first step in the claim construction analysis and is another reason why resort must always be made to the[**14] surrounding text of the claims in question, the other claims, the written description, and the prosecution history. Our precedent referencing the use of dictionaries should not be read to suggest that abstract dictionary definitions are alone determinative. In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor. "Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.“ <=29> Renishaw PLC, 158 F.3d at 1250, 48 USPQ2d at 1122; see also <=30> Tex. Digital, 308 F.3d at 1203, 64 USPQ2d at 1819. If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all consistent meanings. <=31> Tex. Digital, 308 F.3d at 1203, 64 USPQ2d at 1819. Because multiple, potentially consistent, dictionary [**15] definitions exist for the claim terms in question, we turn now to the rest of the intrinsic record for further context and guidance. (Schall, Bryson, Linn)


Judge Linn: Why is he the one talking about dictionaries all the time? Just lucky?

The National Law Journal, October, 11, 1999*** Mr. Linn, a 55-year-old partner in the

Washington, D.C., office of Foley & Lardner, was nominated on Sept. 28 for Judge Rich's seat on the 12-member court. Two days earlier, a memorial was held at the appeals court to honor Judge Rich, the nation's longest-serving federal judge, who died in June at the age of 94.

*** Because of Judge Rich's stature in patent law, the assumption within the bar was that a well-known patent lawyer should replace him on the court.

But as a late-term nominee by a lame-duck president, Mr. Linn may face a struggle to be confirmed. The court has two vacancies, and Timothy Dyk, the nominee for a previous vacancy, has been awaiting confirmation since April 1998. Mr. Dyk, a partner in the Washington, D.C., office of Jones, Day, Reavis & Pogue, declined to comment.

*** Mr. Dyk has handled some IP cases in his career, but Mr. Linn is a former patent examiner at the U.S. Patent and Trademark Office and during his 30 years in the bar has been active in the American Intellectual Property Law Association, among other bar organizations. Mr. Linn, who joined Foley in May 1997, heads his firm's 36-lawyer electronics practice group.


If the meaning of the claim limitations is apparent from the totality of the intrinsic evidence, then the claim has been construed. If however a claim limitation is still not clear, we may look to extrinsic evidence to help resolve the lack of clarity. n1 Relying on extrinsic evidence to construe a claim is "proper only when the claim language remains genuinely ambiguous after consideration of the intrinsic evidence." Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 706, 45 U.S.P.Q.2D (BNA) 1033, 1038 (Fed. Cir. 1997) [Archer, Michel, Lourie];...

Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 2001 U.S. App. LEXIS 15710 (Fed. Cir. 2001) (Schall, Plager, Linn)

IPD v. Cablevision


Some links

History of cable televisiongoogle searchcable industry non-profit

CABLECENTER.ORG

IPD v. Cablevision

http://www.cablecenter.org/history/timeline/index.cfm


•Claim interpretation•Strategy

TCI’s reconsideration motionThe multidistricting, and remanding102f (“did not HIMSELF INVENT…”)

This defense does NOT assert that the claims are not INVENTIVE. That would be a matter of 101 -103. It means that the person named as inventor is not the right person.)

DATES!What to appeal, what NOT to appeal

(getting to write an opening brief, keeping bad docs out of the appendix….)

IPD v. Cablevision


A review of many important patent law concepts.•Claim evolution during prosecution•The non-infringement argument•The Canadian judgment?•Inherent anticipation?

Why does Michel keep using words like “in the preliminary injunction context”?

THE BOND

Glaxo v. Apotex


Your answers & the WORD POLICE – 1Words you are allowed to use once in every 25 pages (standard appellate brief format)

CLEARLYMERELYAnd a note on rules of writing and how and why to break them, and why it is good to know them anyway.

Words you may NEVER EVER SAY: infringe ON or infringe UPON. Patent lawyers view INFRINGE as a transitive verb. It takes a direct object.

Glaxo v. ApotexClaim interpretation – segue to IPD v. TCI


Your answers & the WORD POLICE – 2

When I ask you to ‘make a better argument,’ I do not want half your answer to be boilerplate brief-writing. I want you to use your 100-200 words discussing SUBSTANCE. I assumed (and now know) that all of you can write the introductory paragraph to any part of a brief.

I want to be convinced by the FACTS, cleverly MARSHALLED. (This will be my philosophy all term. Leave off the recycled all-purpose prose and go right to the heart.)

Glaxo v. ApotexClaim interpretation – follow-up to IPD v. TCI


Your answers & the WORD POLICE - 3[aka UWA -- USE WORDS ACCURATELY]

A discussion of literal infringement should NOT include the following terms

- all elements rule- prosecution history estoppel


Those terms are for DOCTRINE OF EQUIVALENTS infringement. What are the equivalent phrases or concepts for LITERAL infringement?


DOE: all elements ruleLit: infringement requires that “each and every element of the claimed invention” be found – literally –in the accused device. Here’s an early Fed Cir formulation, tracing back to a 19th c.Sup Ct case: Literal infringement requires that the accused device embody every element of the claim. Fay v. Cordesman, 109 U.S. 408, 420-21, 27 L. Ed. 979, 3 S. Ct. 236 (1883); Interdent Corp. v. United States, 209 Ct. Cl.301, 531 F.2d 547, 552, 199 U.S.P.Q. (BNA) 191 (1976), adopting 187 U.S.P.Q. (BNA) 523, 526 (Ct. Cl. Tr. Div. 1975). Builders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 1985 U.S. App. LEXIS 14732, 225 U.S.P.Q. (BNA) 240 (1985).

Isn’t that the same thing? Answer: yes, conceptually; no, in the Fed. Cir.

The key to ANY infringement analysis is the CLAIM CHART. (also any VALIDITY analysis). A 1:1 relationship is always necessary.



Glaxo v. ApotexClaim interpretation – segue to IPD v. TCI

DOE: prosecution history ESTOPPEL

Lit: interpret the claims in light of the specification and the PROSECUTION HISTORY. (It’s just INTERPRETATION or CONSTRUCTION. THERE IS NO “ESTOPPEL.”)


35 USC 283

Rule 65, F.R.Civ.P.

Atlas Powder

Glaxo v. Apotex

Preliminary Injunctions


§ 283. Injunction The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as thecourt deems reasonable.

35 USC 283


(c) Security. {aka: a BOND - RJM} No restraining order or preliminary injunction shall issue except upon the giving of security by the applicant, in such sum as the court deems proper, for the payment of such costs and damages as may be incurred or suffered by any party who is found tohave been wrongfully enjoined or restrained. No such security shall be required of the United States or ofan officer or agency thereof.

Rule 65, F.R.Civ.P.


The bond amount is the MAXIMUM a party can recover if on appeal it demonstrates that the injunction was improvidently granted.

[or so I learned. Research?]

Related Situation: What happens in ITC proceedings with Exclusion Orders?

Rule 65, F.R.Civ.P.


“The purpose of an injunction pendente lite is to guard against a change in conditions which will hamper or prevent the granting of such relief as may be found proper after the trial of the issues. Its ordinary function is to preserve the status quo and it is to be issued only upon a showing that there would otherwise be danger of irreparable injury. While it may be granted to restore the status quo ante [litem], it ought not to be used to give final relief before trial.”United States v. Adler's Creamery, Inc., 107 F.2d 987, 990 (2d Cir. 1939) [not a patent case]

Preliminary Injunctions:

What is the PURPOSE?


Judge Rich: In the context of this case, we hold that apreliminary injunction preserves the status quo if it prevents future trespasses but does not undertake to assess the pecuniary or other consequences of past trespasses. If Ireco has allowed itself to become excessively dependent upon infringing sales, the status quo catchword does not necessarily allow it to continue such dependence, apart from other factors.

[continued on nex slide]




Judge Rich continuing: The concept is not inconsistent with stopping trespasses "cold turkey." This does not, of course, mean that the alleged injury done by the injunction to Ireco is not to be carefully considered, only that "status quo" is not a talisman to dispose of thequestion by itself.

Atlas Powder (Fed. Cir. 1985) our page 1




Judge Rich says it better later:“While monetary relief is often the sole remedy for past infringement, it does not follow that a money award is also the sole remedy against future infringement. The patent statute further provides injunctive relief to preserve the legal interests of the parties against future infringement which may have market effects never fully compensable in money. If monetary relief were the sole relief afforded by thepatent statute then injunctions would be unnecessary and infringers could become compulsory licensees for as long as the litigation lasts.”

Atlas Powder (Fed. Cir. 1985) – our page 3


Likelihood of Success on the Merits

Irreparable Harm

Balance of Hardships

Public Interest

Preliminary InjunctionsThe 4 (or is it really just 1?) Factors


Next Week

• How to make your draft packets (select the best materials, edit cases and articles, insert your own words and comments, etc.)

• Preliminary Injunctions - background leading up to an appreciation of Glaxo - finish

• New Reading Material

Is David ready for the pre-draft meeting?tbl

http://www-personal.umich.edu/~rjmorris/fall03/table.html


Next Week – New Reading Material?

• Inherent or Created Rights (history of 1-8-8 and even the Statute of Monopolies (1623)) OR

• Prosecution Article by Kayton+ (figuring out claim interpretation before there are allowed claims!) OR

• Goodson’s View (that the words ‘interference and senior/junior party’ could have relevance to the question of identifying the 2 LIABILITY issues in a PATENT INFRINGEMENT suit). More claim interpretation. And more jurisdiction. Talbert (Fed.Cir.2002)

Documents

Today’s Agenda