Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1289

Statement Apple's Submission Regarding Proposed Design Patent Supplement to the Federal Judicial Center's Patent Video by Apple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6)(Hung, Richard) (Filed on 7/23/2012)

An Introduction to the Patent System
(18 minute video produced by Federal Judicial Center)1

As you probably know by now, this is a patent case. So you may be wondering how can
I sit in judgment on a case like this when I’m not entirely sure what a patent is? We hope to
answer that concern with this brief video, which will give you some of the background needed to
do your job. This case will involve some special issues that the judge and lawyers will explain to
you. But all patent cases involve some basics that you will learn about. This video will discuss
what patents are, why we have them, how people get them, and why there are disputes that
require us to call in a jury like you. We’ll also show you what patents look like.
The United States Constitution give Congress the power to pass laws relating to patents.
It allows Congress to promote the progress of science and useful arts by securing for limited
times to authors and inventors the exclusive right to their respective writings and discoveries. A
patent then is an official grant by the United States government that gives its owner certain rights
to an invention. Those include the right to keep others from making, using, selling or offering
for sale the invention that is described in the patent. A patent lasts for a specific period of time,
usually twenty years. And represents a bargain made between the government and the inventor.
In return for the right to keep others from using the invention, the inventor must enhance the
public knowledge, or what we sometimes call the state of the art by adding something new and
useful to it. An example is Thomas Edison’s invention of the light bulb. During the lifetime of
the patent, its disclosure may inspire new inventions, and after it expires, the invention is free for

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Transcript by Morrison & Foerster-not official.

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anyone to use. It is this giving of something new and valuable to the public that justifies giving a
patent to the inventor.
A patent is in many ways like a deed to a piece of property. It grants the owner the right
to keep people off the property, or to charge them a fee, like rent, for using it. And just as a deed
indicates limitations on the rights of the landowner, a patent sets limits on the rights of an
inventor. The patent system works because the inventor is required to describe the invention in
clear and specific terms so that the public knows what the boundaries of the invention are. Once
a patent is issued by the government it becomes available for public inspection, in that way
anyone who learns of the patent and is interested, can read it and understand exactly what the
inventor has claimed to have invented. Now that we understand what a patent is, let’s take a
closer look at the term “invention.”
An invention is a new way of solving a problem. The patent process begins in the mind
of the inventor, and in particular when the invention is formulated in the mind of the inventor.
Patent lawyers call this “conception.” This is when the idea occurs to the inventor clearly
enough that he or she can write it down and explain it someone. To qualify for a patent the
invention needs to be new and useful. Also, it must not be obvious to one of ordinary skill in the
field. If the inventor believes these requirements are met, he or she will prepare an application
for filing with the United States Patent and Trademark Office in Washington, D.C. The Patent
and Trademark Office, often called the PTO, is the agency of the federal government whose job
it is to examine patent applications to make sure they are in proper form, and comply with the
requirements of the law. The inventor can prepare the application for filing with the PTO, but
usually it’s drafted by an attorney who specialized in this work, or by a patent agent who is not
an attorney. The attorney or agent works with the inventor to be sure the invention is described
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and claimed in a way that complies with the law and the regulations of the PTO. As you can see
the application is basically a typewritten document in which the inventor describes the invention
he or she is trying to protect. When the PTO receives the inventor’s application it assigns a
patent examiner, a staff person with a background in the field or art the invention falls within to
examine the application and decide whether a patent can be granted.
You’ve been given a sample patent to refer to as you watch this video, so you already
have a sense of what a patent looks like. But now let’s take a closer look at the three main parts
to a patent. To begin with there is some basic identifying information on the first page. This
material is highlighted in your handout. On the upper right side of the page is the number
assigned to the patent by the government. And on the left side is the title that describes the
invention, the names of the inventors and sometimes the company they have assigned the patent
to, and the date when the patent application was filed. There is also more detailed information
on the first page, including a list of numbers following the caption field of search. These
numbers identify previously issued patents the examiner looked at or searched to make sure the
applicants claimed invention really is something new, not obvious, and thus patentable. Also
listed on the first page are what we call references. That is previous patents or articles that
describe the technology or prior art known at the time the application was filed. It may seem
strange to you that we call this preexisting technology prior art, even though it has nothing to do
with artists. We use the word art in its broadest sense to include inventions and other subject
matter reasonably related to the claimed invention. We also refer to the latest technology as state
of the art, and we say of someone who can understand and apply the technology that he or she is
skilled in the art. The second major part of the patent is what we call the specification, or written
description.

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As is the case in your sample, it’s usually the longest part of the patent. It includes an
abstract, which is a brief summary of the invention, a background section that describes the
nature of the problem the invention is supposed to solve, one or more drawings called figures
that illustrate various aspects of the invention, and a detailed description of one or more
embodiments of the invention. An embodiment is a specific device or method that uses the
invention, such as a particular form of light bulb.
The third and most important part of the patent is the claims. These are the numbered
paragraphs that appear at the end. The claims are what give the public notice of the boundaries
of the invention. They are similar to the description of property you may have seen in the deed,
referring to precise measurements taken on the ground.
Now that we’ve discussed the main parts of a patent, let’s take a look at how the PTO
processes patent applications. This process, which is called prosecution of a patent application
begins when the inventor’s application arrives at the PTO mailroom. There it receives a stamp
that establishes its filing date. Every year the PTO receives over 300,000 applications and issues
more than 150,000 patents. Applications go from the mailroom to the Office of Initial Patent
Examination, which looks them over to make sure all the required parts are there. This office
also decides what field of technology an application relates to and assigns it to the appropriate
examining group. Soon it is assigned to an individual patent examiner for handling. It then gets
put in a stack to wait its turn for examination. The reason is that examiners have to review the
applications assigned to them in the order in which they have been filed. In time the examiner
turns to our inventor’s application and begins by reading it, especially the specification and
claims. In order to come to a conclusion about whether the inventions described in the claims
are patentable. A patent might contain one claim or many claims, and the examiner must make
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this conclusion about each individual claim. In order to make that decision the patent examiner
usually looks at patents that have been issued previously in the same or very closely related
fields of art. In most areas of technology, the examiner also has computer databases that contain
limited additional information. Another part of the job is to decide if the inventor’s description
of the invention is complete and clear enough to meet the requirements for a patent, including the
requirement that the description enables someone of ordinary skill in the field to actually make
and use it.
It’s important to note that the process of patent examination is private. That is the public
does not know that someone has applied for a patent on an invention until the patent issues, or in
some cases until the application has been pending for at least 18 months. The reason for this
secrecy is to give the inventor a chance to get the examiner’s reaction to the application and
decide whether to withdraw it for whatever reason, and keep the invention as confidential
information. However, because the process occurs mostly in private, and because the job of
examining so many applications is very challenging, the law requires the applicant to tell the
examiner whatever he or she knows about the prior art that might be important to the examiner’s
decision on whether to allow the patent. We call this the applicant’s duty of candor. One way
the applicant can satisfy this duty is by bringing a certain prior art to the attention of the
examiner, either in the original application, or in other submissions called information disclosure
statements. In this way the decisions of the examiner are based on both the information provided
by the applicant and on the information the examiner is able to find during the examination
process.
Sometimes the examiner concludes the application meets all the requirements we’ve
discussed, and allows the patent to issue at this first stage. But more frequently, the examiner
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will reject the application as deficient in some respect. At that point the applicant usually
prepares a written response either agreeing or disagreeing with the examiner. An applicant who
agrees with the examiner can submit amendments to the application designed to overcome the
examiner’s objection. And an applicant who disagrees with the examiner can explain the reasons
for the disagreement. This exchange of office actions and responses goes on until the examiner
issues a final office action which may reject or allow some or all of the applicant’s claims. Once
a final PTO office action has occurred, and one or more claims have been allowed, the applicant
is required to pay an issuance fee, and the patent is granted. Then on the date shown in the upper
right corner of the first page of the patent, it is issued by the PTO and the inventor receives all
the rights of a patent. That date is highlighted on your sample. By the time a patent issues, and
the public can take a look at it, the record of what the examiner did is also made public. This is
the patent’s file, which we call the prosecution history. The file history contains the original
application and all the communications between the applicant and the patent examiner, including
a record of any rejections, the applicant’s responses, and any amendments.
Once a patent has issued, the inventor or the person or company the inventor has assigned
the patent to can enforce the patent against anyone who uses the invention without permission.
We call such unlawful use infringement. But the PTO and its examiners do not decide
infringement issues. If there is a dispute about infringement it is brought to the court to decide.
Sometimes in a court case you are also asked to decide about validity. That is whether the patent
should have been allowed at all by the PTO. A party accused of infringement is entitled to
challenge whether the asserted patent claims are sufficiently new or non-obvious in light of the
prior art, or whether other requirements of patentability have been met. In other words a defense
to an infringement lawsuit is that the patent in question is invalid. You may wonder why it is

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that you would be asked to consider such things when the patent has already been reviewed by a
government examiner. There are several reasons for this. First there may be facts or arguments
that the examiner did not consider, such as prior art that was not located by the PTO or provided
by the applicant. Another reason may be the failure by the applicant to disclose the best way of
making or using the invention, which is another requirement for getting a patent. In addition
there is of course the possibility that mistakes were made, or important information overlooked.
Examiners have a lot of work to do and no process is perfect.
Also, unlike a court proceeding, prosecution of a patent application takes place in private,
without input from people who might later be accused of infringement. So it is important that we
provide a chance for someone who is accused of infringement to challenge the patent in court. In
deciding issues of infringement and validity it is your job to decide the facts of the case. The
judge will instruct you about the law, which may include the meaning of certain words or
phrases contained in the patent. But it is up to you as exclusive judges of the facts to apply the
facts as you find them to the law, and decide the questions of infringement and validity in the
case before you. To prove infringement the patent holder must persuade you that it is more
likely than not, that the patent has been infringed. To prove that a patent is invalid, the law
requires a higher standard of proof since the PTO is presumed to have done its job correctly.
The party accused of infringement must persuade you that it is highly probable that the patent is
invalid.
Good luck with your task and thank you for your services.

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