IP class 6

non obviousness
-- framework for analysis: graham v. john deere

-- combining references: KSR v. teleflex
    * teaching, suggestion, or motivation (TSM) test - critiqued but not discarded
    * the PHOSITA and the need for the patent inducement

claim interpretation
-- procedural laws
    * judge or jury?
    * what effect on litigation costs and outcomes?
-- substantive issues: "ordinary and customary meaning"
    * sources of meaning: intrinsic or extrinsic sources?
    * rely on disinterested sources or on the inventor's duty to enable a PHOSITA?
    * issues of clarity, notice and fairness

35 USC s.271(a) 
"...whoever without authority makes, uses, offers to sell, or sells any patented invention, within the US, or imports into the US any patented invention during the term of the patent therefor, infringes the patent."

larami v. amron


any means that can

recap:
literal infringment - each E must be found in the item (larami)
very strict test, and may be that certain parties may get around parts of the claim but still imbody the patent, due to the imprecision of language for example. court's general principle is under written equivalents.

you can't say you made an object that performs the same function in the same way with the same result that it's something new because not literal: written equivalents

but we don't want the written equivalent to be too broad because it would engulf public domain

(warner-jenkinson) so we apply the all elements must be containing elements identical or equivalent to each claimed element. we break the claim down and look at the accused to see if we can find the exact same or equivalent to that element in the device or process.

this can create some complications, due to the fact that patents last over a perido in which product tech advances. so you can do same function, result but do so with tech that renders the way obsolete (hughes aircraft). is this infring by equivalents? what does it mean to do substantially in the same way? depends. does it change/ const preform in same way if you're doing with computer that didn't exist at time of patent creation?

we measure equivalents at time of infringment and not of patenting. but court said that changes in hughes were not enough to take the airplane tech out of the scope of the patent.

limits: all elements rule. and estoppel (festo). we allow the patentee to make out a claim of infring by equiv to be fair and not cheat them. but at the same time, we want them to be held to exactly what's disclosed. so for example, when the patentee discloses and the response to the rejection, the patentee amends/narrows the claim, they've conceded the examiner had a point that the original claim was unpatentabel and the consesion estops themselves from later claiming that he amended language captures something original not noticed. the patentee then has to prove that they didn't make the amendments in repsonse to the objections.

commercial arbitration class 6

recap:

if the claim went beyond the arbitration clause to the rest of the contract, this was not a matter for the arbitrator.

conflict between the federal and state rule. but SCOTUS says that erie doesn't apply because the roots of FAA are in the commerce clause which authorizes the fed to regulate interstate commerce under the supremacy clause. federal principles govern whenever an arbitration is under interstate commerce.

this begins the idea that in a diversity case, if the federal law of arbitration and state law conflicted the FAA would control, and the state rule would not apply despite Erie.

this still leaves a more fundamental question: given that federal court juris over federal matters involving interstate commerce would only exist in situations wehere a federal stat claim was involved, the practicality is that the vast majority of arbitratble matters involving interstate commerce will wind up in state and not federal court --- what if the state had rules concerning arbitration that are different than the case law principles articulated by the FAA? what if those differences impacted on arbitrability with the state principle being more restrictive than the federal rule? how could the state law be in violation of the federal policy?

2. state law must be applicable to all contracts
because section 2 of the FAA says that the defense must be inapplicable to contracts in general, and not just one that singles out arbitration.
this suggests that if a state legislature provides in a statute that a certain statute and the claims under it would not be subject to arbitration, then this might not be something a state can do. under state case law, if there were restrictions as to arbitrability, this might be something that states can't do. and remember that the vehicle to get before SCOTUS is under 28 USC that would allow them to take a case from the highest court of the state if it believes the court would offend SCOTUS principles.

keating.
not arbitratble if the FAA says so, or if federal determined that the status would be undermined by arbitration. the issue is, should the states have the same latitude that congress would have? the only basis for a negative answer would be that
the state does not have this power -- the idea that there is such a strong federal pro arbitrability, the states can't limit under their statutes! this is almost mind-boggling!!

the argument is that the only reason the congress put interstate into the Act is because otherwise the federal court might not have jurisdiction. is this a good argument?

remember citizen's bank, where scalia/thomas wrote that the FAA application is wrong.

even if you do have preemption in the state courts, you don't have necessarily preemption of public policy and so if the fed can't say (.... ) why can't the states? weiskopf doesn't know either.

what if there's a federal statute that exempts certain franchises from arbitrations, but then a state has a similar law that comports with the federal but that both are opposed to the FAA?

what about the forum shopping concerns? under Erie, you would apply state law if outcome determinative. but in a

see s. 2 -- you can interpret if you're using an enforcement recognized? what about public policy???

doctor's associates --

the tougher it is to waive the right, the more pro arbitratable it is.

but also, the more you can waste court time, it can be a problem, no matter how pro arbitrable you are.

affirmatively pleading arbitrability - you can compel. which is wacky. but the theory is that a motion to dismiss doesn't go to the merits of the case. going for summary judgment is different.

arbitrability also has to do with how the arbitration clause is construed -- the state court uses the FAA proarbitrability to give strange basis for claims. plus, the interpretation of contract is a matter of state law. so the way this turnes out -- the state law principles of contract construction can be used unless you use a result that is anti arbitration.

where are states free to impose thier own rules on arbitrable process without running afowl of preemption?

in many states including NYS, the tendency is to resolve arbitration cases on paper.

as long as it an arbitratbility issue in court, then they're done. that's pretty pro-arbitration.
the federal system doesn't have that in the FAA. if you don't use the CPLR 5-03(c), you run the risk that you proceede and if the opponent is against it, a year after, a challenge to the award can raise the arbitrability issue. a baiss for throwing out the award is that the powers were exceeded.

the parties contractual choice gives way.

the bulk case

see the housing case in the notes
not so broad that the parties couldn't adopt them.

can't award punitive damages garry. the problem?
brokerage firms and employers would say in the contract that disputes were governed by new york law in the hop tht arbitrator could throw out of court. after a while, the

not only is the contract held to new york law, but the courts have held that it's a no-no for a party to attempt to withold the remedies that would be available in court under statutory claims.