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					                              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
  Adv.Pat.Law Seminar - rjm                    Week 2 - 9/9/03   1
         Markman Hearings: What You
         Should Know That You’d Never
         Learn From Just Reading Cases
The story of the CUTLER Patent
(4,135,202)http://www-personal.umich.edu/~rjmorris/fall03/4135202.pdf
And IPD v. TCI [Cablevision]
    filed 1994
    Fed Cir decision July 2003
http://www-personal.umich.edu/~rjmorris/fall03/ipd.doc

And dictionaries in the Fed Cir…

Adv.Pat.Law Seminar - rjm                                     Week 2 - 9/9/03   2
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)
 Adv.Pat.Law Seminar - rjm                             Week 2 - 9/9/03   3
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
  Adv.Pat.Law
meanings Seminar - rjmconsistent with the use of the words byWeek 2 - 9/9/03
              is most                                         the              4
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
  Adv.Pat.Law
              the Washington, D.C., office of Jones, Day, Reavis -&
partner in Seminar - rjm                                     Week 2 9/9/03   5
                    IPD v. Cablevision
   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) - rjm
    Adv.Pat.Law Seminar                               Week 2 - 9/9/03 6
                            IPD v. Cablevision

Some links

History of cable television
    google search
    cable industry non-profit
         CABLECENTER.ORG




Adv.Pat.Law Seminar - rjm                        Week 2 - 9/9/03   7
             IPD v. Cablevision
•Claim interpretation
•Strategy
     TCI’s reconsideration motion
     The multidistricting, and remanding
     102f (“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….)
  Adv.Pat.Law Seminar rjm                  Week 2 - 9/9/03   8
               Glaxo v. Apotex
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
 Adv.Pat.Law Seminar - rjm          Week 2 - 9/9/03   9
                              Glaxo v. Apotex
  Claim interpretation – segue to IPD v. TCI
       Your answers & the WORD POLICE – 1
Words you are allowed to use once in every 25 pages
(standard appellate brief format)
      CLEARLY
      MERELY
       And 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.
  Adv.Pat.Law Seminar - rjm                     Week 2 - 9/9/03   10
                              Glaxo v. Apotex
Claim interpretation – follow-up 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.)
  Adv.Pat.Law Seminar - rjm                     Week 2 - 9/9/03   11
                              Glaxo v. Apotex
 Claim interpretation – follow-up to IPD v. TCI
      Your answers & the WORD POLICE - 3
            A
   [aka UW -- 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?
  Adv.Pat.Law Seminar - rjm                     Week 2 - 9/9/03   12
                               Glaxo v. Apotex
 Claim interpretation – follow-up to IPD v. TCI

DOE: all elements rule
Lit: infringement requires that “each and every
element of the claimed invention” be found – literally
–in the accused device. Here’s an early Fed Cir
                 Isn’t that the same thing? Answer:
                 yes, back to a 19 in the Fed. Cir.
formulation, tracingconceptually; no, th c.Sup Ct case:
   Literal infringement requires that the accused device embody every
                       The key to ANY infringement analysis
element of the claim. Fay v. Cordesman, 109 U.S. 408, 420-21, 27 L.
                       is the Interdent Corp. (also any
Ed. 979, 3 S. Ct. 236 (1883);CLAIM CHART. v. United States, 209 Ct.
                       VALIDITY analysis). A 191
Cl.301, 531 F.2d 547, 552, 199 U.S.P.Q. (BNA)1:1 (1976), adopting
                       relationship Cl. Tr. Div. 1975). Builders Concrete,
187 U.S.P.Q. (BNA) 523, 526 (Ct. is always necessary.
Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 1985 U.S. App.
LEXIS 14732, 225 U.S.P.Q. (BNA) 240 (1985).
   Adv.Pat.Law Seminar - rjm                               Week 2 - 9/9/03   13
                              Glaxo v. Apotex
  Claim 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.”)




  Adv.Pat.Law Seminar - rjm                     Week 2 - 9/9/03   14
                Preliminary Injunctions

35 USC 283

Rule 65, F.R.Civ.P.

Atlas Powder

Glaxo v. Apotex



Adv.Pat.Law Seminar - rjm                 Week 2 - 9/9/03   15
                             35 USC 283
§ 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 the
court deems reasonable.



 Adv.Pat.Law Seminar - rjm                Week 2 - 9/9/03   16
           Rule 65, F.R.Civ.P.
(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 to
have been wrongfully enjoined or
restrained. No such security shall be
required of the United States or of
  Adv.Pat.Law Seminar or
an officer- rjm agency thereof.       Week 2 - 9/9/03 17
                 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?

Adv.Pat.Law Seminar - rjm              Week 2 - 9/9/03   18
         Preliminary Injunctions:
         What is the PURPOSE?
  “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] Week 2 - 9/9/03 19
Adv.Pat.Law Seminar - rjm
                  Preliminary Injunctions:
                  What is the PURPOSE?
  Judge Rich:
    In the context of this case, we hold that a
preliminary 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]
Adv.Pat.Law Seminar - rjm                    Week 2 - 9/9/03   20
                  Preliminary Injunctions:
                  What is the PURPOSE?
 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



Adv.Pat.Law Seminar - rjm                    Week 2 - 9/9/03   21
  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 the
patent statute then injunctions would be
unnecessary and infringers could become
compulsory licensees for as long as the litigation
lasts.”
           Atlas- rjm
 Adv.Pat.Law Seminar
                                                            3
                     Powder (Fed. Cir. 1985) – our page9/9/03
                                                   Week 2 -     22
       Preliminary Injunctions
The 4 (or is it really just 1?) Factors

Likelihood of Success on the Merits

Irreparable Harm

Balance of Hardships

Public Interest


Adv.Pat.Law Seminar - rjm          Week 2 - 9/9/03   23
                             Next Week
• How to make your draft packets
   (select the best materials, edit cases
   and articles, insert your own words and
   comments, etc.)           Is David ready for the
                                     pre-draft meeting?tbl
• Preliminary Injunctions - background
   leading up to an appreciation of Glaxo - finish
• New Reading Material


 Adv.Pat.Law Seminar - rjm                        Week 2 - 9/9/03   24
      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)

    Adv.Pat.Law Seminar - rjm                    Week 2 - 9/9/03   25

				
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