Headings for email memo

Issue and Answer,  
Summary of Law,
Impact on Client

source: http://sites.utexas.edu/legalwriting/

Writing exercise ss 3.

1)      In March 2000, Gilbert Spaulding applied to the Workforce Commission for extended unemployment benefits.  Because those benefits were not available during the period for which he sought eligibility, the Workforce Commission denied Spaulding’s request and the lower court correctly affirmed the denial.

(    

      M. Answer) In March 2000, Gilbert Spaulding applied to the Workforce Commission for extended unemployment benefits.  The commission denied the request because those benefits were not available during the period for which he sought eligibility. The trial court affirmed.

2)      The plaintiff, Pilsen Corporation, had only requested a partial summary judgment on the discrete issue of fraud.  The intermediate appellate court affirmed the lower court’s grant of the summary judgment.  However, the state supreme court reversed the affirmation.

     M. Answer)  Plaintiff, Pilsen Corporation, moved for a partial summary judgment on the discrete issue of fraud.  The trial court affirmed the motion, and the court of appeals affirmed.  On further appeal, however, the state supreme court reversed.

3)      For three years Davis Energy has had a guard . . .  own property.  Under these circumstances, the issue is whether …

     M. Answer)  Davis Energy owns a fuel-storage yard that can be reached only by a private road.  For seven years, owners of adjacent lots have used the road to reach their property.  For the past three years, Davis has had a guard at the road's entrance but has posted no other notice about private property or permission to enter.  Has Davis, through its actions or silence, granted its neighbors an easement to use the road?

4)      Before 1958, the plaintiff Los Angeles Dodgers, the owner of a professional baseball team, played baseball in Brooklyn, New York, under the name “the Brooklyn Dodgers.”  In 1958, the plaintiff had offices in Los Angles, California, where it has played baseball since then.

      M. Answer)  Plaintiff Los Angeles Dodgers, a corporation owning a professional baseball team, began in New York as the Brooklyn Dodgers.  In 1958, the team moved the site of its home games from New York to California and changed its names to the Los Angeles Dodgers.  The organization's principal corporate offices are now in Los Angeles.

Learner's dictionary

http://www.learnersdictionary.com/

Legible

http://sites.utexas.edu/legalwriting/

Optimizing Microsoft Word for LRW

http://www.persuasiveauthority.com/2013/03/19/optimizing-microsoft-word-for-lrw/

To the extent it is determined to be necessary to include A in B,

Patent No. 6,071,103
Petition For Inter Partes Review

Although not believed to be real-parties-in-interest in the present Petition, out of an abundance of caution, Petitioner notes that it expects that a substantially similar petition is being filed by Nissan North America, Inc. To the extent it is determined to be necessary to include parties interested in that petition in the present Petition, the additional real-parties-in-interest are listed in the contemporaneously filed petition by Nissan North America, Inc. et al.

Northern California IP blog

http://blogs.orrick.com/norcal-ip/

by Orrick.

Legal citation plugin software

https://www.zotero.org/download/

http://lawlibraryguides.bu.edu/c.php?g=14784&p=79878#5776769

http://ica.library.oregonstate.edu/tutorials/631--Advanced-Zotero

Patent word geek

http://patentwordgeek.com/

102 - Anticipation

2131 Anticipation — Application of 35 U.S.C.
102 [R-11.2013]

A claimed invention may be rejected under 35
U.S.C. 102 when the invention is anticipated (or is
“not novel”) over a disclosure that is available as
prior art. To anticipate a claim, the disclosure must
teach every element of the claim.
“A claim is anticipated only if each and every
element as set forth in the claim is found, either
expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631, 2 USPQ2d 1051,
1053 (Fed. Cir. 1987). “When a claim covers several
structures or compositions, either generically or as
alternatives, the claim is deemed anticipated if any
of the structures or compositions within the scope
of the claim is known in the prior art.” Brown v.
3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376
(Fed. Cir. 2001) (claim to a system for setting a
computer clock to an offset time to address the Year
2000 (Y2K) problem, applicable to records with year
date data in “at least one of two-digit, three-digit, or
four-digit” representations, was held anticipated by
a system that offsets year dates in only two-digit
formats). See also MPEP § 2131.02. “The identical
invention must be shown in as complete detail as is
contained in the ... claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
1920 (Fed. Cir. 1989). The elements must be
arranged as required by the claim, but this is not an
ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 15
USPQ2d 1566 (Fed. Cir. 1990). Note that, in some
circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP
§ 2131.01.

2131.05   Nonanalogous or Disparaging Prior Art [R-08.2012]

“Arguments that the alleged anticipatory prior art is ‘nonanalogous art’ or ‘teaches away from the invention’ or is not recognized as solving the problem solved by the claimed invention, [are] not ‘germane’ to a rejection under section 102.” Twin Disc, Inc.v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). See also State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) (The question of whether a reference is analogous art is not relevant to whether that reference anticipates. A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims.).

A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference “teaches away” from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”). See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that expressly excluded an ingredient held anticipated by reference composition that optionally included that same ingredient); see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed composition was anticipated by prior art reference that inherently met claim limitation of “sufficient aeration” even though reference taught away from air entrapment or purposeful aeration.).

PTAB / BPAI data site

http://www.patentboardferret.com/

http://www.ptab.us

Double Patenting

• Types of Double Patenting Rejections

nStatutory (35 U.S.C. 101) Double Patenting:

n Is There an Embodiment that Falls Within the Scope of One Claim, but Not the Other?

n   Could One Claim be Literally Infringed Without Literally Infringing the Other Claim?

--> If Examined claim and claim of potentially conflicting patent or application DO NOT exactly match in scope – DO NOT make a statutory (35 U.S.C. 101) double patenting rejection.

 

nNon-Statutory Double Patenting

nRejection based on obviousness analysis

nAnalogous to 35 U.S.C. 103 Analysis

nDetermine the Scope and Content of the Claims in the Conflicting Patent or Application

nAscertain the Differences Between the Claims in the Conflicting Patent or Application and the Claim in Issue

nResolve the Level of Ordinary Skill in the Art

nEvaluate Evidence of Secondary Considerations

nRejection based on anticipation analysis

nNon-Statutory Double Patenting Based Solely on Improper Timewise Extension of Patent Rights

* 35 U.S.C. 121 does not prohibit the rejection because xxx patent is a CIP of xxx patent.  If it is a divisional, a non-statutory DP rejection would not be proper.

Obviousness Analysis – Written Rejection

nAny Non-Statutory Double Patenting Rejection Based on an Obviousness Analysis Should Make Clear:

nThe differences between a claim in the examined application compared to a claim in the reference patent (or copending application)

nThe reasons for concluding that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent (or copending application)

How to Overcome a Proper Double Patenting Rejection

n Statutory (35 U.S.C. 101) Double Patenting

nAmend the claim(s)

nCancel the claim(s)

nA terminal disclaimer is NOT sufficient to overcome such a rejection

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection

n Non-Statutory Double Patenting (All Types)

nAmend the claim(s)

nCancel the claim(s)

nFile a proper terminal disclaimer

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection

"Based on" vs. "On the basis of"

The phrases based on and on the basis of are often used interchangeably but should not be, because based on is a participle (a verbal adjective), which can define a noun, pronoun and noun phrase (but not a verb) whereas on the basis of is a prepositional phrase, which can define a verb. Examples of the different information transmitted by their correct usage are [The administration sent a document based on your suggestion] and [The administration sent a document on the basis of your suggestion]. In the former, based on rightly describes the nearest noun (a document) and so tells us that you had something to do with the content of the document; in the latter, on the basis of describes the verb (to send) and tells us that the idea of sending the document (rather than perhaps taking it in person) was yours.


http://www.asiaandro.com/ec/EC4.pdf

MS Word shortcut - indent and others

• Ctrl+M / Ctrl+Shift+M :  increase / decrease indent

• Tab: Go to the ‘File’ tab, and click on ‘Options’. From the list on the left, choose ‘Proofing’. Now, under ‘AutoCorrect options’, click on the ‘AutoCorrect Options…’ button. In the window which appears, click on the ‘AutoFormat As You Type’ tab. Select the ‘Set left- and first-indent with tabs and backspaces’ checkbox. Press the ‘OK’ button twice, and you’re done!

•  For anyone who cares, to change list level up, ALT+SHIFT+Right Arrow. To change it down a level, ALT+SHIFT+Left Arrow.

Patent Damages

http://patent-damages.com

Essential Patent Blog

http://www.essentialpatentblog.com/

Admissibility of Settlement-Related Evidence at Trial

FRE 408

Market Share approach

State Industries v. Mor-Flo Indus.  Fed Cir 1989.

The prevailing method for calculating lost profits damages in patent infringement originated with State Industries v. Mor-Flo1 in the late 1980s.

That decision established both the “market share” rule for lost sales and use of the split award.2

 The market share rule considers that portion of the patent holder’s relevant market that has been captured by the infringing firm.3 In the simplest two-firm model the market share rule assumes that the patent holder would capture all the infringing revenue.4

 

When the market also includes non-infringing alternatives, the market share rule divides the infringing sales among the patent holder and the non-infringing firms in proportion to their respective market shares.5

The split award includes a reasonable royalty to the patent holder for the infringing sales allocated to the non-infringing firms (the split award is not used with a two-firm market).6  The logic of State Industries therefore treats each infringing sale in the relevant market as either a lost sale for the patent holder or a basis for a royalty payment.7

Case laws related patent damages calculation

1.  Presidio Components v. Am. Tech.  (Fed Cir)

2. Rite-Hite v. Kelley

3. Wechsler v. Macke Int’l Trade, Inc.

Two limitations on patent damages- Six Year and Notice

Subject: Two limitations on patent damages- Six Year and Notice

* The Six Year limitation

35 U.S.C. §286 provides that "no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."

* The Notice limitation

35 U.S.C. §287(a) provides for notice to the public by marking the patented article. If the patentee fails to mark its patents, it cannot recover damages in any infringement action, unless “the infringer was notified of the infringement and continued to infringe thereafter[.]”  Filing an infringement action is such notice.

1) Process or Method claims

The marking provision of § 287(a) does not apply to patents claiming only processes or methods. See Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).  In cases where the patent claims are directed to only a method or process, there is nothing to mark. Id; see also Loral Fairchild Corp. v. Victor Co. of Japan, 906 F. Supp. 813, 816 (E.D.N.Y. 1995) (citing Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581, 217 U.S.P.Q. 977, 979 (Fed. Cir. 1983)).

2) Apparatus and Method claims

When the patentee asserts both apparatus and method claims and to the extent that there is a tangible item to mark (i.e., a physical device produced by the claimed method), the notice provision applies.  Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993).