2013 02 06 gguls pat lit - discovery, experts, and claim construction (class 5)(final)

7/29/2019 2013 02 06 GGULS PAT LIT - Discovery, Experts, and Claim Construction (Class 5)(FINAL)

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Justin T. BeckRobert B. MorrillBrian E. Mitchell

February 6, 2013

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} Beck: (408)[email protected]

} Morrill: (415) 823-8214 [email protected]

} Mitchell:

(415) 766-3514 [email protected]

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Discovery Experts Claim Construction


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} Burden/cost} Privilege} Obstruction} Indifference} Evasion

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} Common sense} Burdensome

procedures

} Sanctions (fines,evidence preclusion,public embarrassment)

} Discovery Masters} Require attorneys to

play Rock, Paper andScissors on thecourthouse steps

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HonestSomewhatindependentCommunicator/teacherBattle testedHas time availableWilling to write a reportKnows the technology

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} Professional Witness?} Academic?} Working in Field?} Inventor or Employee?

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} Disclosure of identity of experts} Written report required if expert retained or

specially employed to give expert testimony All opinions and bases for opinions Information considered by expert Exhibits used as a summary of opinions Qualifications/publications Compensation Prior engagements and testimony

} Undisclosed testimony not allowed at trial

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DepositionShow your hand at deposition?Save it for trial?

Typical ThemesAgrees with us on key issuesFalse assumptionsHired gun/professional witnessPrior inconsistent positions

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Judge must exclude unreliable experttestimony

Expert must have sufficient education orexperience

Opinions must be based on soundscience

Opinions must be based on evidence

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}"To coin aphrase, the

name of thegame is theclaim."

Giles S. Rich, The Extent of theProtection and Interpretation ofClaims-American Perspectives, 21Int'l Rev. Indus. Prop. & CopyrightL., 497, 499 (1990)

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} Proving Infringement First, construe the

claims

Second, compare theconstrued claim to the

accused product,

element by element

} Proving Invalidity First, construe the

claims

Second, compare theconstrued claim to the

prior art, element by

element


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} Preamble} Transition

Comprising: open endedConsisting of: closed setConsisting essentially of: not completely closed

} Body

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1. A car for carrying passengers,

comprising:A steering wheel

Four wheelsA conventional engine

2. The car of claim 1 further comprising a

conventional engine with a power train.

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} Independent claims stand alone 1. A car comprising . . .

} Dependent claims refer back to an earlier claimand add further limitations 2. The car of claim 1 further comprising a power train

} Independent and dependent claims are presumedto have different scope (claim differentiation)

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} Is car for carrying passengers a limitation?} Does it include:

SUV minivan truck RV bus lawn tractor?

} Is a car with six wheels covered?} Must the steering wheel be circular?} Conventional engines?

Electric motor? Diesel engine? Wankel rotary engine?

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} Early in Case Helps focus case But significant claim terms may not be completely known Requires additional time and effort by Court

}After Discovery Issues fully developed But experts must develop alternative theories Dispositive motions more complex Limited time for court

} With Jury Instructions (at close of evidence) Judge understands case and technology Requires lawyers and experts to put on alternative cases May be confusing to jury

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} Judge, not jury, decides} Meaning to person having ordinary skill in the art

(PHOSITA) as of the filing date

} Primarily based on intrinsic evidence The claims themselves The specification The file history

}May resolve ambiguity by reference to treatises,prior art, dictionaries and experts

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} Facts Method for operating dry cleaner Claim included maintain an inventory total

Infringer did not maintain record of clothing Jury found for patentee; trial court granted JMOL

} Issue Does judge or jury decide meaning of claims?

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} Does 7th Amendment require a jury for thisissue?

} What was practice at common law?} Relative skills of judge and jury and relevant

policies

} Is claim construction solely an issue of law or amixed issue of fact and law?

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After a de novo appeal, the Federal Circuit held that34.5% of the terms were wrongly construed by thedistrict court. . . . [T]he Federal Circuit held at least oneterm was wrongly construed in 37.5% of the cases. In

the cases in which one or more term was wronglyconstrued, the erroneous claim construction required theFederal Circuit to reverse or vacate the district courts

judgment in 29.7% of the cases.

Moore, Markman Eight Years Later.Is Claim Construction MorePredictable, 9 Lewis and Clark L. Rev. 231, 239 (2005)

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} Because ITC ALJs are patent specialists,they have great expertise in claim construction

} There is no difference between District Courtsand the ITC in claim construction reversal rates

} Possible explanations: Trial judges cannot master claim construction The Federal Circuit provides insufficient guidance Claim construction is inherently indeterminate The Federal Circuit cannot master claim construction

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} Patentee wants Broad claims that include the accused product But not broad enough to include the prior art

}Accused infringer wants Narrow claims that do not include the accused product,

or

Very broad claims that include the prior art

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Claims should not be construed in light of theaccused device.SRI Intl v. Matsushita

Knowledge of [accused product] providesmeaningful context for the first step of theinfringement analysis, claim construction.Wilson Sporting Goods Co. v. Hillerich & Bradsby

Without a record of the accused products, thisappeal assumes many attributes of a

proceeding seeking an advisory opinion on thescope of the 398 patent.Wilson Sporting Goods Co. v. Hillerich & Bradsby

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} Local Rules ND Cal ED Tex ND IL

} Standing Orders ND Cal Virtually every district

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} O2 learned operation of accused device onFebruary 24 and proposed supplemental

infringement contentions on May 23.

} Trial court held contentions were barred andgranted summary judgment for Monolithic

} Held: Affirmed; O2 failed to show good causebecause of lack of diligence

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Becks First Law:

For every rule of claimconstruction, there is an equaland opposite rule

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} Claims are construed in light of the specification} Words are given their ordinary meaning} Claims should be construed so as to maintain

validity

} Of two equally possible constructions, the narrowershould be adopted

}A claim is definite if it reasonably apprises one ofskill of its scope


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} Limitations in specification should not be readinto claims

} The patentee may be his or her ownlexicographer

} Claims may not be rewritten to preserve validity} Claims should not be read restrictively absent a

clear disclaimer of scope}A claim is indefinite only if it is insolvably

ambiguous


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}A claim element may be expressed as ameans for performing a specified function

under 112(6)

}A means for element shall be construedto cover the corresponding structure . . .

described in the specification and

equivalents thereof

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} Claim included a guide wire lumen and aninflation lumen

}Accused product had the two lumens side by sides

dual lumens

} Specification only disclosed coaxial lumensembodiment; described invention as having coaxiallumens; criticized dual lumen prior art

} Patentee said coaxial lumens was basicstructure for all embodiments contemplated anddisclosed herein

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} Held: specification limits scope of claim tocoaxial lumens

} Doctrine Of Equivalence not available toexpand claim because dual lumenconfiguration specifically excluded fromliteral scope of claims

} Concurrence: Federal Circuit needs toadopt clearer guidance as to when thespecification narrows the claims

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Does it bring breathe life and meaninginto a claim? If so, it is a limitation

Preamble defines element and claim refers back, i.e.said device

Preamble essential to point out the invention

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} Preamble described system terminalslocated at predesignated sites such as

consumer stores

In accused web-based product, the terminal

was the consumers home computer

} Held: Preamble not a limitation becausenot relied upon during prosecution andwas unnecessary to define invention

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Identification of disputed terms andproposed construction

Number of disputed terms Briefing (sequence, number) Discovery on claim meaning Procedures for hearing

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Why? When? How? Who?

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Live presentation Q & A or lecture? Cross-examination? Transcript? Videotaped presentation

Either way, graphics a must

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Expert? Lawyer? Neutral Advisor?

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Left over terms New terms in dispute Construe the construction(metaconstruction)

Is the claim indefinite?

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} Plain meaning vs. context} File history disclaimers} Vague terms

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U.S.PatentNo.6,979,210 JiffyCam ChainDrive SamsungPL90

1. Athumbdrivecomprising:ahousingenclosure

on-boardmemorywithinthehousingenclosureforstoring

digitalinforma


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U.S.PatentNo.6,979,210 JiffyCam ChainDrive SamsungPL90

1. Athumbdrivecomprising: ???Acamera Thumbdrive ???Acameraahousingenclosure Yes Yes Yes

on-boardmemorywithinthehousingenclosureforstoring

digitalinforma


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210 Claim Term JiffyCam ChainDrive Samsung PL90

thumb drive Camera Thumb drive Camera

on board memory ??? Yes ???

coupled Coupled Coupled ???

translate Slides linearly Slides linearly Rotates

slide buttonSlide button Slide with knob Button releases

catch


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} Claim 1thumb driveon board memorycoupledtranslateslide button

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Terms in

Dispute

JiffyCam ChainGang Samsung

thumb drive

on boardmemory

coupled

translate

slide button

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U.S.PatentNo.6,979,210 U.S.PatentNo.D470,499(Salazar)

1. Athumbdrivecomprising: ???ahousingenclosure Yes

on-boardmemorywithinthehousingenclosureforstoringdigital

informa

2013 02 06 gguls pat lit - discovery, experts, and claim construction (class 5)(final)

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