Justin T. Beck Robert B. Morrill Brian E.

Mitchell February 6, 2013

Beck:

Morrill:

(408)938-7900 jbeck@beckross.com (415) 823-8214 morrilladr@gmail.com (415) 766-3514 brian.mitchell@mcolawoffices.com

Mitchell:

Discovery Experts Claim Construction

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 and Scissors on the courthouse steps
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Discovery Experts Claim Construction

Honest

Somewhat

independent Communicator/teacher Battle tested Has time available Willing to write a report Knows the technology

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
}

Undisclosed testimony not allowed at trial

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

Deposition Show your hand at deposition? Save it for trial? Typical Themes Agrees with us on key issues False assumptions Hired gun/professional witness Prior inconsistent positions

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Judge must exclude unreliable expert testimony Expert must have sufficient education or experience Opinions must be based on sound science Opinions must be based on evidence

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Discovery Experts Claim Construction

} "To

coin a phrase, the name of the game is the claim."

Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L., 497, 499 (1990)

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Proving Infringement
First, construe the claims Second, compare the construed claim to the accused product, element by element

Proving Invalidity
First, construe the claims Second, compare the construed claim to the prior art, element by element

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Preamble } Transition
}

Body

Comprising: open ended Consisting of: closed set Consisting essentially of: not completely closed

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1. A car for carrying passengers, comprising:

A steering wheel Four wheels A 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 claim and add further limitations
2. The car of claim 1 further comprising a power train

Independent and dependent claims are presumed to 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 this issue? } What was practice at common law? } Relative skills of judge and jury and relevant policies } Is claim construction solely an issue of law or a mixed issue of fact and law?
}

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After a de novo appeal, the Federal Circuit held that 34.5% of the terms were wrongly construed by the district court. . . . [T]he Federal Circuit held at least one term was wrongly construed in 37.5% of the cases. In the cases in which one or more term was wrongly construed, the erroneous claim construction required the Federal Circuit to reverse or vacate the district courts judgment in 29.7% of the cases.
Moore, Markman Eight Years Later. Is Claim Construction More Predictable, 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 Courts and 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 the accused device.SRI Intl v. Matsushita Knowledge of [accused product] provides meaningful context for the first step of the infringement analysis, claim construction.
Wilson Sporting Goods Co. v. Hillerich & Bradsby

Without a record of the accused products, this appeal assumes many attributes of a proceeding seeking an advisory opinion on the scope 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 on February 24 and proposed supplemental infringement contentions on May 23. } Trial court held contentions were barred and granted summary judgment for Monolithic } Held: Affirmed; O2 failed to show good cause because of lack of diligence
}

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Becks First Law: For every rule of claim construction, there is an equal and 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 narrower should be adopted } A claim is definite if it reasonably apprises one of skill of its scope
}

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Limitations in specification should not be read into claims } The patentee may be his or her own lexicographer } 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 a means for performing a specified function under 112(6) } A means for element shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof

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Claim included a guide wire lumen and an inflation lumen } Accused product had the two lumens side by sides dual lumens } Specification only disclosed coaxial lumens embodiment; described invention as having coaxial lumens; criticized dual lumen prior art } Patentee said coaxial lumens was basic structure for all embodiments contemplated and disclosed herein
}

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} Held:

specification limits scope of claim to coaxial lumens } Doctrine Of Equivalence not available to expand claim because dual lumen configuration specifically excluded from literal scope of claims } Concurrence: Federal Circuit needs to adopt clearer guidance as to when the specification narrows the claims
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Does it bring breathe life and meaning into 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 terminals located at predesignated sites such as consumer stores

In accused web-based product, the terminal was the consumers home computer

} Held:

Preamble not a limitation because not relied upon during prosecution and was unnecessary to define invention
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Identification of disputed terms and proposed 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. Patent No. 6,979,210 1. A thumb drive comprising: a housing enclosure on-board memory within the housing enclosure for storing digital informa<on; a male USB connector coupled to the on-board memory and constrained to translate from a posi<on within the housing enclosure to a posi<on outside the housing enclosure, the USB connector for connec<ng to the female USB port of a computer appliance; a slide buBon coupled through an opening in the housing of the USB connector; and Wherein moving the slide buBon in one direc<on extends the connector from the housing to couple to a female connector; and moving the slide buBon in the opposite direc<on retracts the connector within the housing enclosure.

JiyCam

ChainDrive

Samsung PL90

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U. S. Patent No. 6,979,210 1. A thumb drive comprising: a housing enclosure on-board memory within the housing enclosure for storing digital informa<on; a male USB connector coupled to the on-board memory and constrained to translate from a posi<on within the housing enclosure to a posi<on outside the housing enclosure,

JiyCam Yes ??? Yes Yes, slides linerally

ChainDrive Yes Yes Yes Yes, slides linerally Yes ??? Yes

Samsung PL90 ??? A camera Yes ??? ??? ??? Rotates

??? A camera Thumb drive

the USB connector for connec<ng to the female USB port of Yes a computer appliance; a slide buBon coupled through an opening in the housing of the USB connector; and Wherein moving the slide buBon in one direc<on extends the connector from the housing to couple to a female connector; and moving the slide buBon in the opposite direc<on retracts the connector within the housing enclosure. Yes Yes

Yes ??? ????

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210 Claim Term thumb drive on board memory coupled translate slide button

JiffyCam Camera ??? Coupled Slides linearly Slide button

ChainDrive Thumb drive Yes Coupled Slides linearly Slide with knob

Samsung PL90 Camera ??? ??? Rotates Button releases catch

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} Claim

thumb drive on board memory coupled translate slide button

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Terms in Dispute thumb drive on board memory coupled translate slide button

JiffyCam

ChainGang

Samsung

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U. S. Patent No. 6,979,210 1. A thumb drive comprising: a housing enclosure on-board memory within the housing enclosure for storing digital informa<on; a male USB connector coupled to the on- board memory and constrained to translate from a posi<on within the housing enclosure to a posi<on outside the housing enclosure, the USB connector for connec<ng to the female USB port of a computer appliance; a slide buBon coupled through an opening in the housing of the USB connector; and Wherein moving the slide buBon in one direc<on extends the connector from the housing to couple to a female connector; and moving the slide buBon in the opposite direc<on retracts the connector within the housing enclosure.

U.S. Patent No. D470,499 (Salazar) ??? Yes ??? On board some<mes. Yes Yes

Yes Yes

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