Mid-Term for Self-Study Course

June 26 (Fri), 2009

Approximate Time to Spend: 2 Hrs to 2.5 Hrs

If there exists some inconsistencies or some errors in the problems, please notify me later and I will review and try to give credits to everyone if proven to be error on my side.

Good luck!

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Your Name: (please print)                         

Signature:                            

Mid-Term of Yabe Self-Study Course:

From Day 1: 

U.S. Federal Judicial System

Prob. 1: (2 Points)

What kind of benefits do Art. III judges have?

Note Art. III is Art. III of U.S. Constitution.

Hint: Judge Rader is Art. III judge.

Prob. 2: (1 Point)

How many justices are there at the U.S. Supreme Court?

Prob. 3: (1 Point)

How many Fed. Cir. (CAFC) is/are there in the U.S. ?

Prob. 4: (2 Points)

Does the Fed Cir. (CAFC) only review intellectual property matter?

Prob. 5: (1 Point)

When was the Fed. Cir. (CAFC) established?

Prob. 6: (2 Points)

What were/was the main objectives for the establishment of the Fed Cir.?

Prob. 7. (1 Point)

Does the U.S. Supreme Court have to review all the patent related cases that were appealed from CAFC?

Prob. 8: (1 Point)

Can a state court review the patent infringement dispute?  In other words, do they have a proper subject matter jurisdiction? 

Prob. 9: (1 Point)

If the above answer is “no”, then to where does the patentee should bring the infringement lawsuit when they find an infringement activity?

Prob. 10: (2 Points)

Explain about 3 degrees of proof?

Hint: civil, criminal case…

Prob. 11: (2 Points)

What is “writ of certiorari”?

Prob. 12: (1 Point)

In a year, the U.S. Sup Court will typically receive about 8,000 petitions for certiorari, and it will agree to hear only about          cases.  Choose one from 1; 10; 100; 1000.

Prob. 13: (3 Points)

Define “common law” in your words.

Prob. 14: (3 Points)

What is the outcome of “In re Bilski (Fed Cir. 2008)” in few words?

From Day 2:

Claim Construction

Prob. 15: (1 Point)

Break down a claim in 3 (three) parts!  Hint: preamble,…

Prob. 16: (1 Point)

Who can construe patent claims under Markman v. Westview ( Sup Ct. 1996)?

Hint: JP benrishi, an ordinary person, judge, lawyer….?

Prob. 17: (2 Points)

Markman Decision holds that “Claim construction is a question of law, not a question of fact”.  What does the decision mean?

Prob. 18: (2 Points)

Under Markman, what should the standard of review be for the claim construction at CAFC when the case is appealed from the lower federal district court?  Hint. Do the judges at CAFC pay some respect to the claim construction decided by the lower court?

Prob. 19: (1 Point)

What about the standard of review at CAFC for “the factual findings” by the federal district court?

Prob. 20: (2 Points)

How does the standard of review for the claim construction affect predictability of claim construction at CAFC when the lower court decision is appealed to CAFC?  In other words, do you think the decision at the lower court will be likely maintained at the higher court?

Prob. 21: (2 Points)

With respect to the Supreme Court Markman Decision, Judge Rader and Judge Mayer (CAFC judges) expressed their view by stating “while the Supreme Court did conclude that claim construction is a matter for the judge, not the jury, however, it did not hold that claim construction was entirely a matter of law”.  In your own words, what do they mean to say?

Prob. 22: (2 Points)

“Interlocutory Appeal”, explain what it means?

Prob. 23: (1 Point)

Under Phillips v. AWH (Fed. Cir. 2005), which evidence should be more prioritized, intrinsic evidence or extrinsic evidence?

Prob. 24: (2 Points)

By the way, what is “intrinsic evidence”?

Prob. 25: (2 Points)

In Phillips v. AWH (Fed. Cir. 2005), how did the “Doctrine of Claim Differentiation” play when interpreting the scope of “baffle plate (‘steel baffles’)” in claim 1?

Claim 1: Building modules….

…steel baffles extending inwardly from the steel shell walls.

Claim 2: Building modules as defined in Claim 1, wherein the steel baffles are oriented with the panel section disposed at angles for deflecting projectiles…

Prob. 26: (2 Points)

Can you broaden a scope of claim after a U.S. Patent was issued?  If ‘Yes’, under what conditions can you broaden the scope of claim?

Prob. 27: (2 Points)

Is there any way you can broaden a scope of claim in the U.S. Patent, which was issued more than 3 years ago?  Hint: It has to do with dependent claim….

From Day 3:

Canons of Claim Interpretation:

Prob. 28: (2 Points)

First canon (‘1^st canon’) says that claims should be interpreted such that the preferred embodiment falls within their scope.  In your words, please explain what it means.

Prob. 29: (2 Points)

Second canon (‘2^nd canon’) says that a patent claim is not necessarily limited to the preferred embodiment/limitations from the written description.  In your words, please explain what it means.

Prob. 30: (2 Points)

In SciMed Life System (Fed Cir. 2001), why was “lumen” in claim interpreted to be of a coaxial annular structure, excluding a side-by-side structure?  Hint: Lumen = a thin tube going into a human body: catheter)

Prob. 31: (1 Point)

In general, is a preamble limitation of claim according to the U.S. patent practice?

Prob. 32: (2 Points)

Claim 1:

A food container comprising A and B.

Claim 2:

A container comprising A and B.

In the above claims, during the Markman hearing, claim 1 was construed to cover only a food container by judge.  Why?

From Day 4:

Prob. 33: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), should the DOE apply to claim as a whole?  Note: DOE = Doctrine of Equivalent

Prob. 34: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), when would be proper time for determination of scope of DOE?  Hint: at a time of infringement or at a time of fling a patent application (Invention)

Prob. 35: (1 Point)

Under Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997), should the “intent” by the accused infringer count?  In other words, if the accused infringer intentionally committed the infringing act, does this intention has any influence on determination of DOE?

Prob. 36: (1 Point)

Did Warner-Jenkinson Case (WJ v. Hilton Davis: Sup Ct 1997) clarify the steps of application of DOE more than Graver Tank Case (function/way/result-test)?

Prob. 37: (1 Point)

Who bears an initial burden to prove infringement when filing a lawsuit against a possible infringer?

Prob. 38: (2 Points)

Can a patentee ‘P’ file a lawsuit against a possible infringing party ‘D’ with an Eastern Texas District Court (federal court) in case P finds infringing products sold in NY?

Prob. 39: (2 Points)

Do you remember anything about Rule 11 (FRCP: Federal Rules of Civil Procedure)?

From Day 5:

35 USC § 271

Prob. 40: (1 Point)

In few words, what is the patent statute, 35USC271, all about?

Prob: 41:  (2 Points)       35 USC §271(a) 

Under 271(a), what kind of acts would constitute infringement?

Hint: making, selling, ….

Prob. 42: (2 Points)         35 USC §271(e)

What is the patent statute 271(e)(1) about? 

Hint: 271(e)(1) is called “safe harbor”.

Prob. 43: (2 Points)         35 USC §271(e)

In few sentences, what was the outcome of the Merck decision (Merck v. Integra Lifesciences: Sup Ct. 2005)?

Hint: using compound; FDA approval

Prob. 44: (2 Points)         35 USC §271(f)(1)

35USC271(f) was enacted in 1984, 12 years after the supreme court decision (Deepsouth Packing Co. v. Laitran Corp: 1972). What does the patent statute 271(f)(1) define?  In other words, what kind of activities does the statute 271(f) say “infringement”?

Hint: 271(f)(1) is about exportation of components of a patented invention.

Prob. 45: (2 Points)         35 USC §271(f)

By the way, do you remember anything about Deepsouth Packing case ( Sup Ct. 1972)?

Hint: Shrimp devenier; U.S. company sends parts abroad…..

Prob. 46: (1 Point)            35 USC §271(f)

Under Microsoft v. AT&T (Sup Ct 2007), is “software (Microsoft’s Windows)” sent electrically qualified as a “component” under 271(f)?

Prob. 47: (2 Points)         35 USC §271(f)

MS (Microsoft) was sending a master disc version of Windows to JP ( Japan ), and a company A in JP ( Japan ) made copies from the master disk sent from MS and installed them onto Fujitsu’s computers.  When installed to the Fujitsu computer, all the claimed elements of AT&T’s patent were met.  Does the activity of MS constitute infringement under 271(f) in light of the Microsoft v. AT&T (2007: Sup Ct )? Why?

Prob. 48: (2 Points)         35 USC §271(g)

If company A in the USA imports goods from Taiwan where the goods were made by processes that were claimed in US patent owned by company B, then president of company B comes to you and seek your advice.  What would you advise to the president of company B?

From Day 6:

35 USC §112(6)

Prob. 49: (2 Points)

In your own words, what does 35USC 112(6) say?

Prob. 50: (3 Points)

Under Chiuminatta (Fed Cir 1998), explain in your own words how to determine the literal infringement when the patent in question has a means plus function element?

Prob. 51: (2 Points)

Do you think presumption of means plus function interpretation (invoking 112(6) interpretation) with respect to a claimed element, “a coil spring means”, can be overcome in the following claim?  Explain why?

A device comprising:

              an element A;

an element B; and

a coil spring means for biasing the element A apart from the element B.

Prob. 52: (2 Points)

We have a claim 1 in USP8,123,43X, as follows:

A device comprising:

              an element A;

              an element B; and

              a bias means for biasing the element A against the element B.

Specification describes a coil spring and Drawing also shows a coil spring.  Then what will be the scope of claimed element, “a bias means” if 112(6) interpretation is to be applied to “a bias means”?

Prob. 53: (2 Points)

Under Graver Tank Decision (Supreme Court Decision), how the DOE (Doctrine of Equivalents) should be applied to the claimed element to determine its scope of protection?

Prob. 54: (1 Point)

Who should determine the equivalents under DOE?

Prob. 55: (1 Point)

When is ‘equivalents’ under DOE determined?

Prob. 56: (2 Points)

Under Chiuminatta ‘Fed Cir 1998) and Dawn Equipment (Fed Cir 1998), how the equivalents under 112(6) should be analyzed?

Hint: Use F/W/R

Prob. 57: (1 Point)

When is ‘equivalents’ under 112(6) determined?

Prob. 58: (1 Point)

Under Down Equipment (fed Cir 1998), should there be DOE for means-plus-function claim limitation?

Prob. 59: (Bonus Question: 2 Points)

How did you prepare for this mid-term?

Prob. 60: (Bonus Question: 2 Points)

Any comment on this mid-term?