Willful Infringement: When Patent Piracy Turns Egregious

Willful infringement is a patent law concept that applies when someone infringes a patent knowingly or with reckless disregard for the patent holder’s rights. It goes beyond accidental infringement, often involving a deliberate choice to use protected work despite awareness of the rights holder. With unintentional infringement, the infringer can still be required to pay damages, negotiate a license, or face an injunction to halt the infringing activities. If the infringement is deemed willful, however, this can lead to significantly increased damages, sometimes up to three times the original amount. 

This is something that patent holders need to be keenly aware of – both offensively and defensively. If found for infringement, is simply knowing about the competitor’s patent enough? What if it turned up in search results when examining prior art for your own invention? On the other side, if you’ve discovered that a competitor is infringing on you, what steps should you take to ensure that they’ve been clearly put on notice? The answers to these questions could mean millions. 

** Guest Host **

Tamany Vinson Bentz is our guest co-host today. Tamany is the founder of California IP Law, where she currently focuses on developing customized IP portfolios for businesses of all sizes. Prior to managing her own firm, she spent 20 years as a litigator in big law as a partner at both Venable and DLA Piper. 

** Episode Overview **

Tamany and Dave lead today's discussion with our all-star patent panel, delving deeply into all things willful infringement. Along the way, they discuss:

⦿ Willful infringement prior to two 2016 SCOTUS cases.
⦿ How the SCOTUS cases shaped assessment of willful infringement.
⦿ How this has been playing out in more recent cases, and what has and has not been viewed as willful or egregious.
⦿ And some practical tips on how and where to communicate notices if you feel like your patent rights are being infringed.

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Transcript

Josh: [00:00:00] Good day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about willful infringement.

Willful infringement is a patent law concept that applies when someone infringes a patent knowingly. Or with reckless disregard for the patent holder's rights, it goes beyond accidental infringement, often involving a deliberate choice to use protected work. Despite awareness of the rights holder with unintentional infringement, the infringer can still be required to pay damages, negotiate a license, or face an injunction to halt the infringing activities if the infringement is deemed willful.

However, this can lead to significantly increased damages, sometimes up to three times the original amount. This is something that patent holders need to be keenly aware of. Both offensively and [00:01:00] defensively if found for infringement is simply knowing about the competitor's patent enough. What if it turned up in search results?

When examining prior art for your own invention on the other side, if you've discovered that a competitor is infringing on you, what steps should you take to ensure that they've been clearly put on notice? The answers to these questions could mean millions. Unfortunately, like with a lot of things in the world of patenting, the answers aren't always as obvious as we'd like for them to be.

The black and white statute from the 1952 Patent Act that governs enhancing damages doesn't actually have any limits or conditions on it. Eventually, as the panel will discuss and for any regular listener, this might sound familiar, the Supreme Court came along and added its own conditions, but with the kind of, we're not really going to be helpful level of specificity we've come to expect from the high court looking at you, Alice.

But in fairness, this is an inherently complicated issue and one that, as you'll see today, gets at the heart of one of the fundamental tensions of the patent system. Disclosure for exclusivity. You get exclusive rights by disclosing your invention so [00:02:00] other people can improve upon it. And society benefits not hampering.

Innovation with exclusive rights depends on being aware of the inner workings of the inventions of others, but the patent system is supposed to reward competition, not copying. So designing round is fair Competition, accidental overlap is unfortunate, but civil and has normal remedies. But deliberate disregard is something else entirely.

So understanding when infringement crosses the line from mistake to misconduct and penalizing accordingly is really key to the whole system. While the missteps can happen very early in the process, how they shake out in the wash happens much further down the road and in the courtroom. So we've en listed the help of a litigation expert to co-host this episode alongside Patently strategic regular David Jackal.

This excellent pairing helps to frame the conversation from the perspective of pre prosecution considerations. All the way to how judges and juries have been ruling on cases involving potential willful infringement. Tamny Vincent Bens is our guest co-host today. Tamny is the founder of [00:03:00] California IP Law, where she currently focuses on developing customized IP portfolios for businesses of all sizes.

Prior to managing her own firm, she spent 20 years as a litigator in big law as a partner at both Venable and DLA Piper. Tamani and Dave lead today's discussion with our All-Star patent panel, delving deeply into all things willful infringement. Along the way, they discuss willful infringement prior to two, 2016 Supreme Court cases, how the Supreme Court cases shaped assessment of willful infringement, how this has been playing out in more recent cases and what has and has not been viewed as willful or egregious.

And some practical tips on how and where to communicate notices if you feel like your patent rights are being infringed. Tam and Dave are joined today by our always exceptional group of IP experts, including Dr. Ashley Sloate, president and director of Patent Strategy at Aurora. Kristin Hansen, patent Strategy specialist at Aurora.

Tiffany Miller, patent strategist at Aurora and Marie Smith, patent agent at Break Hughes Erman, [00:04:00] LLP. Now speaking of willful infringement, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute. A monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.

In this month's minute, Adam discusses Apple's predatory infringement practices that have once again been put on full display in the most recent chapter of its long running patent infringement dispute with Pan Optus. 

Adam Mossoff: People think of Apple. We think of the incredible technological innovations led by that genius, Steve Jobs.

The iMac, the iPhone, the iPad. But notice these are all innovations of the past. Today, apple is a massive company with a market value of over a trillion dollars. The first US company to reach that mark, it has over $250 billion in cash in the bank. More money than most companies make in a year in selling products.

And it's law department, it's lawyers. [00:05:00] Have a budget of over a billion dollars. Again, more money than many companies make in an entire year, and it uses this money to defend itself against theft of other people's property rights, of other people's patented technologies. An example of this recently was the Pan Optis litigation, where Apple dragged out the litigation over a period of six to seven years.

Opus originally sued, won a judgment of $500 million for patent infringement against Apple. Apple appealed and on a technicality, got the judgment reversed. The second trial, the damages were reduced to $300 million, and then Apple appealed again and on a minor legal technicality. The third time is the charm, as we say.

Now the jury found zero infringement. Apple got away completely with the theft of the patented technologies. We call this practice predatory infringement. It's arisen precisely because our patent system has become so weakened, exploited by large, massive [00:06:00] companies with more money to spend on lawyers than on new innovations and technologies.

It's a serious problem. It's a threat to the US global tech leadership. And we need to address it. Congress needs to pass the Prevail Act, the Restore Patent Rights Act, and Para Congress and the courts need to focus on patent reform and fix our system so that innovators are secured in their rights.

Again, just like Thomas Edison and Alexander Graham Bell were, and other innovators that made our country so. 

Josh: Thanks Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram reels, YouTube shorts, and TikTok. You can check out these shorts and follow us at Aurora patents on all three platforms.

And now without further ado, take it away Tamani. I.

Tamany: So pre 2016, so pre the Supreme Court weighing in on willfulness pat patent litigators had this two step test from the federal circuit called the Seagate test. And [00:07:00] that's what we all measured willfulness against. And it was the first step of the test was, um, clear and convincing evidence that the infringer had acted despite an objectively high likelihood of infringing a valley patent.

And if a plaintiff in a patent case could prove that, then it went to step two, which was clear and convincing evidence that the risk of infringement was either known or so obvious that it should have been known. What happened is companies would just go get an opinion of counsel on either invalidity or non-infringement or both, and then that would be like their insurance policy, right?

Because then they could go to court and say, look, there was no objectively high likelihood of infringement. My attorney told me, here's why I didn't infringe. And um, companies would spend a lot of money on those opinions of counsel, [00:08:00] and you would have situations where it would be really important and even fights at big law firms between prosecutors and litigators, because a company would never use the same law firm for both, right?

Because if you got your opinion of counsel from one firm. You didn't want that to be the litigation firm because you were gonna have to disclose that opinion and waive some privileges under this standard in order to defeat any argument of willfulness. And so you would always use a different law firm for an opinion of counsel than you would litigation.

And I, as a young lawyer, remember there were at this time lots of constraints against us as to who could do an opinion of counsel and how many attorneys had to review an opinion of counsel and who could sign an opinion of counsel because they were that critical in any li ongoing, any future litigation or expected litigation.

So in 2016, there were two different [00:09:00] cases that brought willfulness to the Supreme Court. The first one was Halo Electronics versus Pulse Electronics, and the second one was Stryker versus Zimmer. The Supreme Court granted cert on both these cases. The facts of them were slightly different. 

So in the Halo case, halo and Pulse had been talking about a license, a patent license before litigation was filed and one of Pulse's engineers had decided that the Halo patents were invalid, and so Pulse decided not to license them.

They had no opinion of counsel. The case went to trial. The jury found that there was a high probability that Pulse had infringed willfully under the Seagate standard, but the trial judge [00:10:00] actually refused to enhance damages for willful infringement because he said that Pulse had a defense that wasn't objectively baseless or sham.

So Halo appealed to the Supreme Court, ha appealed through the federal circuit. They affirmed and went to the Supreme Court 

in the Stryker case. The jury found that Zimmer had infringed Stryker's patents and the trial judge found willful infringement and troubled the damages because, and this is a direct quote from the case, Zimmer had all but instructed its design team to copy Stryker's products and had chosen a high risk, high reward strategy of competing immediately and aggressively in this market, while opting to worry about legal consequences later.

Zimmer also had no opinion of counsel. The only, the, the outcome in these two cases was entirely [00:11:00] different, but the only difference between them really is. How rational or reasonable the defendant was in deciding that they didn't think that they infringed or they weren't going to take a license or they were gonna do it anyway.

So the Supreme Court actually looks at the Seagate actually starts as the Supreme Court always does with the statute and what the Supreme Court points out, which as a practitioner is always surprising to me, but it is in fact true, is that Section 2 84, the part about enhancing damages doesn't actually have any limits or conditions on it.

It just says the court may increase the damages. It does. It just says up to three times. It doesn't actually even say why you could increase the damages under the statute. It'd be any reason. [00:12:00] Could be you just sim the judge simply doesn't like them. What the Supreme Court says is that we've had decades of case law that has refined why a judge would in enhance damages.

And so in order to respect that case, law discretion under 2 84 should be exercised in light of it. And so enhanced damages should be reserved for only the most egregious cases of culpable behavior in that regard, they don't like Seagate.

They think that the Seagate test is too rigid and it actually insulates the worst offenders. Because it requires objective recklessness. Now, I will tell you as a practitioner, and even going back and reading this case this week, I tried to figure out who it was, not the specific company, but what kind of actor it was.

The Supreme was talking about here. [00:13:00] Like who would be the most egregious offender but wouldn't actually be objectively reckless. Tried to think of a context where that would come up. And I couldn't think of one where I thought of conduct that an infringer would take that wouldn't meet the objectively recklessness standard.

It just seems like anybody who intentionally goes out and completely disregards or copies or just completely says, I, I see your patent. I don't care, wouldn't potentially need that objective reckless standard. But the Supreme Court saw it differently. Um, they thought that. The Seagate test allowed for subjective willfulness to, to avoid punishment, and that actually the statute should punish subjective willfulness.

They don't really give you an example of what they think subjective willfulness is. Um, so they also didn't like that the [00:14:00] federal circuit had set up this, um, particular review standard for willfulness. That was three parts. Um, the first part was the objective standard, and that was reviewed de novo. So basically from scratch, the appellate court could review it from scratch.

The second step, um, the subjective step was reviewed for substantial evidence. Then the ultimate decision of willfulness was reviewed for abusive discretion, and the Supreme Court said, this is ridiculous. The entire willfulness thing has one standard and it's abusive discretion. So if you're not a litigator, abusive discretion makes it harder for a appellate court to reverse a trial court because the appellate court will have to find that the trial court actually abused its discretion.

So just basically did something that [00:15:00] was completely baseless and wrong. If it were even possibly rational or reasonable, the appellate court technically should affirm it under an abusive discretion standard. So all in the Supreme Court both made it easier to find willfulness because they took away that two part test, and also harder for appellate courts to reverse it.

Not surprisingly then you have a justice who issues a concurrence that basically said, just so y'all know, well we, and you may think we made it easier to find willfulness. It still should it be something that is regularly awarded, it should still be something that is rare. And Justice Breyer said something in his concurrence that comes up a lot and will continue to come up a lot.

And that is that knowing about the patent and nothing more should not get you a [00:16:00] willfulness finding. He doesn't really say what they, anything more should be, but it, it, he seems to think, just 'cause you know about a patent does, it should not make your infringement willful. Um, and then he has a lot of cautionary statements about, again, how if we get, if the courts go too overboard.

With their willfulness findings, it will actually hamper innovation, right? Because the whole point of the patent system is you disclose your invention so other people can improve upon it. They can't improve upon it if they're not allowed to take some risk, make some changes, and hope that they changed it enough that it's better and it's not infringement.

Um, but if you're really gonna say any kind, any kind of practice like that is willful, you're really gonna curb in innovation. 

Um, so I was [00:17:00] curious after I did this research, because I wanted to know if the Supreme Court actually changed anything. Obviously it changed the standard, but practically speaking, did um, pulse and Zimmer have to pay trouble damages?

Did it stay the same? And in fact, it stayed the same. The cases got remanded back to the trial courts for willfulness findings in light of this new Supreme Court standard, and the judges did exactly the same thing. The district court in Halo versus Pulse denied the trouble damages because it found that Pulse did not act in an egregious manner.

Again, you'll remember the trial court had previously found that they had a reasonable, albeit losing defense. Um, in Zimmer, the trial court awarded trouble damages and basically said that Zimmer had committed egregious piracy. Now, I did a bit of [00:18:00] digging 'cause I really wanted to know what Zimmer did to offend the courts so much, right?

Because clearly at every stage everybody had questioned Zimmer's conduct. Um, I couldn't really find any. Any factual statements in the amount of time that I had about specifically what it is that Zimmer did. If you read the appellate decisions, what Zimmer did was see that pulse was successful in the market and decide to copy them in that market.

What the piece I couldn't find is did them or try to improve upon it or not, or did they straight up copy? Um, and that's a piece that I couldn't find. 

Kristen: Well, I wonder, I mean, just when I think egregious piracy and, and combining it with your prior slide, I think knowing about the patent and then having something with identical features or identical shape and form or something that's [00:19:00] obviously copied or really difficult to come up with in, you know, a vacuum not knowing about other pieces.

Uh, I, I think that's interesting. And I would call that egregious piracy, like knowing about the patent and making copy of some sort of visual aspect or software feature aspect or something like that. But I find it interesting that just knowing about the patent wouldn't be enough. And I, I find myself thinking, is it that it would be discoverable that the patent was listed on one of their patents or that, you know, and that would be knowing about it, but not actually digging.

I don't know. 

Tamany: So, so you raise an interesting question that I think is plagues the Supreme Court standard a bit, which is when does it become egregious? So, um, I've had cases where, you know, [00:20:00] you, especially in industries where there's a lot of patents. Where your client has a patent portfolio, the opposing party has the patent portfolio, and at some point in your client's portfolio, this patent you're litigating over has come up rather, in a prior art search, maybe an examiner cited it against your client's patents.

Like at some point it comes up and it's always this weird discussion about whether that that is, that makes their conduct willful or not. Like you know about it, but it's in the context of your patent, not an infringement discussion and what you are doing and what you are trying to get patented. So you have some, when it comes up, you have some notice that there's a related patent out there.

Right. Um, but does that count? 

Kristen: I don't know. I mean, one way I would shove it into [00:21:00] Egregiousness is to say. Inventor A worked at company A and went to company B, and then company B had a new product come out that would be egregious, right? Yeah. Clearly insider knowledge. 

Tamany: Yeah, and we, I've had cases particularly in the consumer goods space, where the alleged infringer knew it, knew there was a patent, they knew they would be infringing, but they just figured they would pay a royalty down the road.

They'd still make money. To me, that's sort of, that's where you get in. To me, those cases are clearly the egregious cases. Right. You know, you're ripping somebody off, you know you're infringing on their patent. You don't care because you know you're gonna make money off of it no matter what at the end of the day.

Anyway, to me, that's. 

David: Maybe a good example re is like you're on notice. You have a, uh, [00:22:00] you have a cease and desist letter that says these patents are being infringed by these products of yours. So it's very clear. And then the, the, the, you know, offending party ignores it entirely, or, or acts egregiously, but they're, they're not only aware that the pat, because we're about to get into some recent case law where some of these things come up.

Mm-hmm. And it, it, apparently, it's not enough to just be aware of a patent. It, it's like you need to be more aware of exactly what's in it and how it may relate to one of your products so that you're have intent that you're willful. Yeah. 

Tamany: Yeah. I mean, if you're a patent holder and you wanna really give somebody notice so that you could argue willful damages down the road, you should send 'em a claim chart.

Right? I mean, don't just send them a letter that says, Hey, we have this patent, and you're infringing it. You really wanna stick it to them. Send them a claim chart, um, because [00:23:00] then it's like, there's no argument. Like, yeah, but I, I didn't know what they were talking about or Yeah, but I didn't see the infringement.

I don't know why they thought I was infringing. Right. It's like, well, here's the chart. 

Albert: Sure. 

David: You, you would suggest that over texting them or messaging them on Facebook? Is that, is that 

Tamany: so, so David David's raising this issue that came up when he and I talked last week where I said, I actually have seen and have a few instances where, um, somebody at the company has gotten dms, a DM that says, I see this product that you just showed on social media and it infringes my patent.

And like, and 

Kristen: that should be enough. 

Speaker 4: But, but, but I don't, I think other way of giving 

Speaker 7: contact them, you know, I mean, I don't know because, you know, if that's the only way you can get, because you know, we have, uh, clients in the fitness space and they like 

Marie: mm-hmm. 

Ashley: They're very, um, they watch it very closely.

And if that's the only way you know how to contact somebody, [00:24:00] you know, but you see 'em selling it on their Insta, you know, I don't know is it will point, I know, but viable contract method maybe, 

David: maybe less about the method and more like, do you write what patent it is and what product is being infringed and just sort of give enough information, you know?

Mm-hmm. Um, 

Tamany: I think if, I think if you, if all I I, part of the problem is the Supreme Court standard's gonna be a little bit squishy because what the Supreme Court was saying was it's the trial judge to figure it out. It should be egregious, but we're gonna leave it up to the trial judge to decide what's egregious at you.

Federal circuit. Don't get to, don't get to just judge it from the start. All anew, you're gonna have to defer to that judge's discretion. And so, um, part of the issue is that it's gonna be different, right? Some judges might be highly offended that a party got a DM that [00:25:00] said, you're infringing my patent.

And they, and they don't do anything about it. Um, some judges might look at the patent holder and say, why didn't you give 'em the patent number? Why didn't you tell them who to contact in response? Why didn't you tell them why you think they infringe? Um, so that's part of it. Um, as a litigator, another large part of it will probably be your conduct during litigation.

If you are a, an alleged infringer, but you show up all the time and wear the white hat and are reasonable and responsive and do your, your counsel's doing what they're supposed to do in the courtroom, it might be less likely that you get tagged for willfulness.

Now, if you're Zimmer, it might not matter, right, because I don't, again, I don't know specifically what ER did, but it was clearly offensive, 

Kristen: egregious piracy. I just love it. I don't wanna use it somewhere. [00:26:00]

Tamany: People are gonna start, people who listen this podcast are gonna start using that in their cease and desis letters.

I'm, we're gonna start a trend. 

David: Agree, 

Kristen: just piracy. I have it. It's perfect. So Ashley gave everybody at the firm, Ashley and Josh gave everybody at the firm a lovely nuts.com package in the mail and Tiffany's house. Really tried to get in on her stuff and really try to steal her nuts and her fruit and all this stuff.

And she's like, Lee, mine nuts all. So I think that's egregious 

Speaker 7: piratey. I think Tiffany would agree.

David: Well, thank you Tammy. That was a great introduction and it really explains. So we're, I'm gonna to cover a few, uh, cases now that are recent and, you know, this wishy-washy sorta of gray area, um, statute, I think explains kind of why these cases come up. And they're, and they, they seem to be, um, [00:27:00] I don't know, a little bit a, there's a lot of variability in whether willfulness is found by a jury, whether the CAFC upholds that or reverses it.

And so there's some interesting fairly recent cases all kind of from the last year. We want add that, uh, we can talk about, um, the first one is RAV Gen versus Laboratory. Corporation of America. There's a huge award, hundreds of millions of dollars, and just this year the CAFC affirmed those that those patents so that that damages, uh, uh, willfulness damages will, will hold provisors versus Weber.

The jury found that Weber willfully infringed, but then the CAFC reversed and PROVISORS actually petitioned the Supreme Court because we'll get into it, but because that they were saying that that was actually not allowed in, in the statute and actually in the Constitution. Um, so that's kind of an interesting one.

Uh, and then the last case we'll talk about [00:28:00] is maybe the most interesting is Lin's Biotech versus Amgen. Also a huge multi tens of millions of dollars on the line. The jury found willful infringement, but then just last month, the patents were found unenforceable due to inequitable conduct during prosecution on be, uh, on from Lins.

So, uh, they're kind of interesting. And the first one, Rav gen is the most kind of straightforward. The technology here is pretty interesting. These are these non-invasive methods for sampling DNA from a fetus by taking blood from the a pregnant mother. And so this was, you know, really big technology that that was, uh, a lot of money is on the line.

As you could see in 2022, the jurors awarded full royalty demand to RevGen of $270 million in damages, and then [00:29:00] the judge enhanced the jury award by a hundred million because of willfulness. So LabCorp argued that they did not copy the asserted patent. They had a good faith belief in non-infringement and invalidity.

They were saying that, well, we're using old technology and they had no specific intent to infringe. In any case, even with all of that argument, the jury and the CAFC affirmed that it was willful. So this was egregious piracy, uh, in their, in their, in their view.

And I think the, it's a, it's, again, I kind of, as Tammy mentioned, it's hard to find exactly what all the facts were in the case, but a big thing that the CAFC decision relied on was that copying is not required for willfulness. Only that is deliberate or intentional. And this is very, it's gonna be in [00:30:00] contrast with the next case because in this case, the federal circuit gave a lot of deference to the jury.

The, the district court, they said that the jury was free to weigh the evidence. They were entitled to hear expert testimony and decide for itself. Therefore, there's substantial evidence that supports this willful infringement. And the court declined to just overturn it in a, in a, a, a, a, a judgment as a matter of law, just by a, by a judge without a, without a jury.

In contrast, you have the Provisor case. A jury found that Weber willfully infringe provisors patents. The technology here is food processing machinery. This is high speed mechanical slicers used to process meats and cheeses and things. So this is an interesting one 'cause it really gets, I think, to the heart of what is intent, what is knowing about something, what is willful?

So Weber systematically tracked all of Proviso's patents using [00:31:00] software and their software assigned the highest possible relevance score to these particular proviso patents that were in question. However, they did not seek the advice of counsel. So the jury found, hey, Weber knew about these patents and they clearly were infringing and they clearly knew about them.

They was on this watch list, it was willful. The CAFC reversed that, the willfulness part of it. And they, they cited this section 2 98 that says that a failure of an infringer to obtain the advice of counsel with respect to an infringed patent may not be used to prove that the accused infringer willfully infringed.

So this gets directly to the uh, uh, uh, opinion letter. Um, if you don't get an opinion letter, that can't be used against you essentially, right? And so they didn't get an opinion letter. And this federal circuit said, well, the. District court and [00:32:00] the jury was wrong. They were applying the wrong standards and they were just incorrect.

Um, I, and it gets, I I, there's a good quote from the, from the opinion that at most a patent matrix demonstrates Webs, Weber's knowledge of the asserted patents and their relevance to Weber's business in general. The patent matrix and corresponding testimony do not provide any level of specificity as to the relevance of the tracked patents for any of Weber's products.

There's no dispute whether Weber knew of the asserted patents. The issue here is whether Weber knew of its alleged infringement and had specific intent to infringe. So you can kind of, this is like the, the gray area is on full display. In this case, I feel like, you know, they knew of it. That's clear. But is it really willful?

Is it really egregious? Are they pirates? So, um, proviso. Petition the Supreme Court, and there's a couple of it, uh, skip to the [00:33:00] end. It was denied in February this year. So the Supreme Court didn't take it up. But, um, they pointed to a few interesting things. I think the Seventh Amendment has a reexamination clause that says No fact tried by a jury shall be otherwise reexamined in any court of the United States.

So that's kind of weird. It definitely seems at odds with the rules of civil procedure that allow the CAFC to reject jury verdicts, uh, in in jls. Um, so that's, that's kind of one part of it. Proviso in their petition gave a little bit more, I think, uh, context for what Weber did. So Weber had this patent monitoring system, flagged it as highly relevant testimony.

Weber gave, took no steps to avoid infringement. Again, that's kind of a negative. So that really egregious, they didn't, not doing something. Um, they also found this kind of what Tammany was mentioning a minute ago, that proviso's witnesses were dishonest when they testified they had [00:34:00] no knowledge of the patents, so that that might have not sat well with the jury.

That might have kind of made the jury, uh, found that they had reckless disregard, which was sufficient for willfulness under halo. Right. This was like in the, um, in the, in, in the opinions. Um, so that's something that, you know, we've been talking about another side of this, which is something that's come up in other places we haven't talked about yet today, but I think is really interesting.

The petition also argued that there's a recent trend of the federal circuit overturning jury verdicts in patent cases, and they say that this is sort of. Become an exception to the Seventh Amendment that gives wider discretion to reject jury findings when a case is likely too complex for an average juror to comprehend.

So we talk about this, how hard it is to bring highly technical, um, cases, you know, before a jury who may not [00:35:00]understand what's happening and how it's hard to communicate all that stuff, and how it's hard to come out with the, the right on the right side of things. Um, in the, uh, uh, uh, Dennis Crouch, uh, has a nice, um, article about this and Pat Leo and he mentions that, you know, this exception is not found in the Constitution and has not been recognized by the Supreme Court.

So it, I think, you know, proviso had a, had a point, had a, had tried to get the Supreme Court to take it up and they, they denied it. But, um, it is kind of interesting that these gray areas are out there. 

Tamany: Let me just say that I take issue with any argument that a jury can't decide a patent case, that it's too complicated.

Anytime a, anytime that a litigator makes that argument, I wanna say to them, well then you're not very good at your job. Right. Telling a bad story as the litigator. Yes. Your job is to explain it in terms that everybody understands. '

Ashley: cause is for the people. Like, and that's the frustrating part, like, you know, the whole pat system is for, you [00:36:00] know, the average Joe.

And so you should be able to explain it in such a way that the average Joe should be able to understand it. 

Tamany: I have a mentor when I, who was one of the nation's best patent litigators and he used food analogies and he used to say to me, make every, make fi figure out what the food analogy is for this technology.

And that's our story. We had a whole case about jelly beans. It wasn't about jelly beans, it was about vaccine technology. But it, if you ask the jury, they'd be like, oh yeah, that's that jelly bean, and it goes with that jelly bean and maybe you pull out this jelly bean and they got it. That's what it was.

It was jelly beans. Um, but yeah, they should, the patents also are supposed to explain it so people can understand it. So you know, from a starting point, you should have something that people can refer to. That makes sense. 

Kristen: Well, I can tell you this, Marie, who is on this call as well, and I had the, I don't know if [00:37:00] it was the pleasure or just the luck, but difficulty of having mentors who were kind of first litigators, then prosecutors, and really had this style that said.

You need a jury figure. And that jury figure maybe is figure one, and you maybe have the system of some kind and you can point to the invention in that figure because really you need to be able to explain that. And if it's extremely complex, you need to help out whoever's going to actually mm-hmm.

Litigate that case. Um, and I think it just stemmed from them reading so many crappy patents and just saying, I have no idea what's going on here. And, and having to spend so much time in the weeds instead of just put it up front, explain exactly what this is going to entail and then claim it broadly. But put enough description in there, you can get a picture claim in your [00:38:00] head.

You know, even though you're not writing a picture claim, you're writing a picture, a literal picture. Um, so I think that helped me. Even as a prosecutor starting to draft applications to say, 

Tamany: mm-hmm 

Kristen: what does this really mean? What do, what does this boil down to? Because if you don't know that before you start drafting a claim, you're screwed.

That thing is gonna take you forever. You're never gonna make a point. It's going to be all over the place. Um, it just won't end Well.

Marie: I second that, Kristen.

Um, and it's interesting because I, I recently have a small client who is very savvy in, in business, and I mean, even in the, the, i, I think the, the patent area, but having to explain that. You know what, why do you need this from me for the application when what we're claiming is [00:39:00] basically this algorithm.

And I'm like, well, you know, I'm gonna sit, I always look at it as I have to sit across the table from an examiner. Basically. It's on the other end of the phone. Mm-hmm. Right. But, um, if you can start the conversation with, this is what this invention's all about, it's used here, the motivation behind it was to do things faster, better.

Improved user experience by doing X, Y, Z. And then you get into the Nick grips. Right? And having that in the patent has always helped me. And I've been, I've had patents that have been transferred in or written by other people. And I remember one example particular where I had this, this case had been transferred to me and was on like the fifth office action.

And I sat there with the examiner and I explained to him what the invention was. And he says to me, oh, you know, no one ever did this before. Now I get it. And then he said to me, where is that in the spec? And I go, well, that's kind of the problem. It's[00:40:00]

Tamany: Wow. Wow, wow. 

Marie: I do, I do. My disclaimer, and by the way, I didn't write this. Just watch, you know. Four rounds of prosecution, basically, because that little bit was missing. The examiner just had no frame of reference. You know, what are you people trying to do here is what the, the comment was, right? And I knew what was going on and explained it, but yeah, I really couldn't point to anywhere in the spec that gave that support.

So even though that may not be what you're necessarily patenting, because it may be known in the art or may be obvious, it lays that groundwork. And I think it goes back to the jury thing, right? You're sitting in front of people who are, you know, they're not dumb, but they don't necessarily know the area.

What is this invention doing a couple sentences and gimme an overall thing. And then, you know, why are you writing this patent? Well, it's because this algorithm is working in this way, which is unique. Then you're in the weeds. And I, and I get that, but there's a, [00:41:00] there's a context, I guess. I guess. I don't know.

That's how I looked at it. I just had to recently explain that to. A client who I think has finally, he finally got it so 

Kristen: well, and tamini. That's really interesting that mm-hmm. So you take what we do and then you put kind of a story on top of that to abstract it out even more. I, I think that's really interesting that that's a cool part of your job.

I would imagine 

Tamany: It's, and, and you know, when you are the patent litigator, you have the benefit of saying to the client, okay, who's the expert in this, in all the world? Who's the expert in this? Let's go hire them. And then you, and that's your expert. And then you get, I've learned lots of things from the world's experts, right?

Because I get to sit down and talk to them and be like, okay, by the way, I'm gonna put a food analogy around this. So talk to me like I'm 10. Explain it to me like I'm 10. So, you know, I, it, it's [00:42:00] a benefit that, that you get when you're on these cases that the jury may not get right. The jury is constrained to what you put in front of them.

But to, you're in Marie's point, I can only put in front of the, like if I have a strong patent, the enforcement case is that much stronger. So I always tell clients like, it matters. Like, don't think that you get a patent and like check that box and you're golden. Like what's in that patent matters. It matters a lot.

Not like the claims. Mostly yes, because I've seen a lot of instances where clients thought they had something patented and it's not in those claims. Um, and, and that sucks. It sucks to have to tell a client like, I hear you, but guess what? Like, you don't actually have a patent on what you think you have a patent on.

Um, but also what those claims are based on, right? Nothing's gonna be better as a [00:43:00] litigator than being able to stand up and say, look at this specification tells you exactly what it is in plain terms. Here's what we're doing. Um, that's always gonna be better than somebody like me ignoring the specification and then trying to come up with it so it matches the claims.

David: I love that phrase, jury figure. It's like, it's a great, it's a great practice. Mm-hmm. And also gets you thinking, uh, when you're drafting as a, as a, in prosecution, like, how am I gonna make this litigation proof? How am I gonna make this really stand up? And thinking, thinking that way, thinking about the jury figure gets you in that mindset of what, what is this really for?

Where, where are we going to, what is, what does this need to do? Right. Um, so the, that was, uh, an interesting one. It's too bad the Supreme Court didn't take it up to give us some more clarity there, but there was a lot of good. A lot of good, I think things that came out of it. Um, 

the Lins Biotech Amgen case, uh, is the next one, and that one in December of [00:44:00] 24, jury determined that Amgen owed 50 million and that it was willful infringement, uh, to a couple of Linda's patents.

These patents were related to cancer treatments for cancers like lymphoma, where they were using a bispecific, immuno stimulating antibody. This is one of those things where I think a food analogy would've been great for, um, I'm sure the jury has some interesting times figuring out what this was about.

Um, so they were using that IMU immuno stimulating antibody in combination with a corticosteroid. A glucocorticoid, um, and. This is big. This, this was a huge drug for Amgen. Amgen earned $800 million in US sales from this one drug Blincyto last year. It's really big business. And what's kind of interesting is a little background I think will be really helpful that, um, [00:45:00] corticosteroids actually are used to dampen the immune response.

So it's actually working exactly against these immuno stimulants that you're giving the patient. So you have this immuno stimulant, which is trying to stimulate the patient's immune system to attack the cancer cell. But the problem is, is that there are massive side effects with these things and you can get what's called a cytokine release syndrome or a cytokine storm, which can be fatal.

Um, neurological toxicities, uh, when all these things from activating the immune system too strongly. So even though the corticosteroid is dampening down the effect that you're trying to achieve with this immuno stimulant, it's, they give these things together to prevent these really terrible side effects, which can actually kill, kill people.

They're so bad. So that's why it's a little bit, kind of an interesting, that's what the claims are about, is giving an [00:46:00]immune, uh, an um, immuno stimulant antibody in combination with a corticosteroid, which is kind of counterintuitive 'cause they work against each other. So the jury found that Amgen infringed these two Lindas patents and that it was willful.

So that led the court could lead the court to increase the damages three x up to 150 in a decision last month. However, US District and the US District Court, these patents were invalidated due to inequitable conduct related to withholding material information from the patent office during prosecution.

So let's look at those facts a little bit. It goes all the way back to 2002. There were some, some initial quick and dirty tests that showed that this glucocorticoid premedication before giving these immuno stimulants did not significantly reduce the immune activity that you wanted, the one that was against this [00:47:00] tumor cell antigen.

The data that quick and dirty preliminary data was in the application and during prosecution. It was argued as a surprising result to overcome a 1 0 3 rejection. So in April, 2018, based on the applicant's arguments, the examiner withdrew the 1 0 3 and allowed the claims to issue in in one of these patents.

In in issue Here, however, a couple years later, there was a tryon report, which was more detailed, more full, more full investigation that showed that this cortico stimuli, dexamethasone, in this case, did inhibit the tumor cell killing by the immuno stimulant. Two weeks after Lins got this report, they filed the priority patent of the asserted patents, so they knew about this report when they filed it.

So this now is getting into a little bit of a different standard, but it's sort of similar in a way. It's got this like [00:48:00]egregious, you know, quality to it. What is an equitable conduct? An equitable conduct. You have to show that the patentee withheld material information from the PTO and also did so with specific intent to deceive.

So Linda's knew of this report. There's also some, some evidence that they knew it was material because they submitted it to the patent office in a different patent application when that data supported what they were trying to say. Um, so intent to satisfy the intent requirement, the accused infringer must prove that the applicant knew of the reference, knew it was material, and made a deliberate decision to withhold it.

So inequitable conduct requires clear and convincing evidence of that. So, you know, the. Amgen made the assertion that Lins knew of the reference, knew of this withhold report. They clearly did. They made a deliberate decision to withhold it. That was where these other facts came in that they [00:49:00] submitted in a different case, but not this one.

Um, and. Actually what's, I think, you know, maybe sort of the most, um, what hurt them or what put the nail in the coffin, if you will, during litigation, Linda's did not dispute those assertions. Instead, they only argued that they believed that the withheld references were not material. They didn't argue that they, um, uh, that the decision to withhold them was not deliberate.

They, Sarah said, well, we admit it was deliberate, but we're saying it wasn't material. So they did actually dispute one of the assertions that it was material, but they didn't dispute that they knew of them, and they made a deliberate decision to withhold them. So since they were found material, and this was a deliberate decision, I guess, right?

This is a sort of in the gray area still, like, in some ways, but the court accept that the withheld references were, um, were, [00:50:00] were. Material and there was a deliberate decision. So they invalidated them due to inequitable conduct. So this is interesting. I mean, in, in prosecution we're oftentimes talking to our clients and seeing what data do you want to show in this patent?

You know, clients don't want give away trade secrets. They don't wanna show messy data, they don't wanna show lots of data. For some, they have lots of reasons to not want to show data sometimes. And I think this is a good reminder that it's, it's, um, it behooves the client. It behooves the, the patent.

Holder or the, or the person who's trying to get the patent, to just have that conversation to remember that they cannot hold, withhold material information. So you can't cherry pick data. I think that's kind of the, the best, the best overall overarching thing that we wanna make sure of is that whatever data you're showing, it [00:51:00] doesn't have to be every single data point you ever got, but it has to be representative.

You can't have other data somewhere that you know is exactly the opposite of this, but you're cherry picking some report to show the evidence that you want to show that is hiding the ball, that is withholding material information. If you, if you were to do that, 

Kristen: so if their specification had said in some embodiments, this combination with this combination results in, you know, what we want.

And in some embodiments, this combination with this combination was not, uh. Viable. And so in those cases, we had to add this other thing. So if they had disclosed it as an example and worked around it as in embodiments, and then you could lay those embodiments on a claim or lay a claim on one of those embodiments, would that have less inequitable?

David: I think, I think yes. I [00:52:00] think yes, if the patent was still allowed, but I think what happened in this case is they needed the cherry pick data to support the surprising result to get it through. And so it ended up being a But for kind of a kind of a thing. Yeah. 

Ashley: But had they been more specific because like what I'm wondering too, like, I don't know what the accused product was, but you know, we all know that we're in the unpredictable sciences here and I don't know what Glu Glu Glu glucocorticoid they used in the first set of experi experiments versus what they used.

And the second set of experiments. And I also don't know the timing, you know, of the different deliveries and stuff like that. 'cause you could imagine that the methods of the 2002 data versus the methods of the 2005 data were different enough that it elicited, you know, like we as, as a comparison, we did notch inhibition in graft versus host disease when I was in grad school.

And if you delivered the inhibitory antibodies for notch at different time points, you [00:53:00] got drastically different results. Anything from complete inhibition of graft versus host disease to like, the mouse is dead because it raged on. Right. And so you do wonder if they had been more specific. In their claims or something, or include both data sets, but you know, explain those method methodology differences if that would've solved a problem too.

You know what I mean? You know, so then you have data. This is surprising, but this isn't surprising, but maybe it's for a different reason. Right. 

Kristen: Or even used exactly what you said in a materiality argument. Mm-hmm. And say this is why it's not material. 

Ashley: Yeah. 

Tamany: Is it possible, I don't know if this is realistic, but is it possible that Dr.

Lin Hoffer thought the claims covered that more limited circumstance, whatever it was, and but they were broader? 

Ashley: Yeah. 

Tamany: So you get this situation where Lin Hoffer is honestly saying like, I actually didn't think this [00:54:00]mattered, but you have a patent claim where. It probably mattered. 

Albert: Yeah. 

Tamany: All really. Exactly.

Somehow there's a disconnect between what Lin Hoffer thinks the claims are. Again, as somebody who's been in this position before and what the claims actually are. 

Ashley: Yeah. 

Marie: Would it have been as simple as they, they should have just cited it in an IDS? 

Ashley: Well, if their own data, right, it goes against what's 

Albert: being said in the other one.

David: Yeah. I mean, these are all really good questions. Like, was the, was the follow-up report really the same as the quick and dirty test? I think the, what the courts, the court's view and what makes it all sort of make sense is that, you know, the quick and dirty test supported this surprising result. But if they had disclosed the full report, then it would've been rejected.

Like the exact, they wouldn't have had this surprising result anymore to, but to your point, uh, Ashley, and every, [00:55:00] you know, what you said is like. Maybe they could have still had an argument of a surprising result if they had said what was different about the quick and dirty test and that ended up in the, in the claim.

Ashley: Yeah, for sure. 

David: Or it was even in the spec and maybe they, so, uh, it's, there's a lot of ifs, uh, that, uh, that I think are, that are important I to, to, to really know whether it's true or not. Yeah. 

Marie: So I guess I'm, my question is, in this case, I assume that the patent was filed in 2002, is that correct? 

David: Uh, in 2005.

Marie: Oh, it was? So the patent was filed 

David: two weeks after? After the detailed report. 

Marie: After the detailed report. Oh yeah. They screwed up. Sorry. 

David: Yeah, but 

Ashley: I think, you know, I think the big practice question that it raises, you know, just to your point Dave, is making sure that when you do include data, asking the client whether these data are representative.

David: Yep. 

Speaker 7: Um, 

David: I like that word a lot. 

Ashley: Representative or encouraging, [00:56:00] you know, if you show a really surprising image, can they also show you a data spread? So you can see, like, I actually just did a, I updated an application with some data and you know, the conclusions we were drawing I think are real. But you can see the spread of the data, right?

In the, where you could say, okay, well here's the median or mean, or whatever. And they are statistically significant, but clearly not every, whatever it was, not every test was behaving exactly the same. Right? And so, you know, okay, you choose some representative images that maybe are more favorable, but then have your data spread that shows kind of the, the, the inevitable variability that you're going to get in human living systems or living systems, period.

Marie: Well, in some cases was kind of like the perfect storm where they got this report before. They filed, but two weeks before. So I'm sure they had the whole application sort of ready to go. And then the surprising result was used to [00:57:00] get the case allowed. So that was like, to me, two damning marks against them right there.

Um, and then the, and then that report was cited elsewhere, and there was no, if they would've, if they would've made a comment or something on the record saying that they had reviewed that report prior to finding that patent application, and they did find material based on X, Y, Z, could that have been helpful?

At least 

David: maybe, you know, the, the, the initial. Patent they were arguing about, the claims were pretty broad. Claim one was pretty broad. They didn't specify the glucocorticoid that had to be dexamethasone. They didn't, they, they talk about, um, uh, CD markers, um, tumor markers, but they list like seven different ones in the, in the later patent they got more specific to only two different markers and dexamethasone.

But I think that they were trying to support these broad claims and, um, the examiner said, that's obvious. You're gonna get this [00:58:00] cytokine storm and you give someone a corticosteroid to, to stop it. And they said, ah, but it doesn't actually hurt the thing we're trying to do. And that's so unique. And no one ever realized this before, which was untrue.

So, or it was only true in that specific test, maybe with those specific methods, or maybe it was just, uh, you know, statistically insignificant, quick and dirty test that turned out to be wrong. 

Kristen: So there's another ethical piece to this too. And this is medication, this is healthcare, this is medical care.

And so if you begin to invalidate things like this, you put a stop to this research, you put a stop to kind of companies, right? That are trying to get money from this. Um, and I don't know if that's a terrible thing, but it's, it's kind of an ethical thing where you say, well, this may have been helping 5% of the population.

Now it's gone. You know? So it's kind of interesting that this can be invalidated for [00:59:00] something like that, when in reality it might help some, it might be true in some cases, but 

David: then, yeah, that's a good question. I don't know enough about the industry. Does it prevent the drug from reaching more people, or does it make it generic so that the price goes down by a hundred x or something?

Well, I 

Tamany: think nobody's gonna research it, right? Like if you can't get a patent on it. 

David: Yeah. 

Tamany: And there's like, if it's, if it's in the public, nobody's gonna put money behind researching it, right? I mean, it's one of those 

Speaker 3: the 

Tamany: ugly facts of capitalism, right? We put money where we're gonna make money. That's what happens.

Um, um, 

David: the 1 0 1 stuff, which makes that hard to get any patent through 100%, right? It's like discouraging investment, discouraging people from working on it. You know, if like this, I feel like says, don't hide the ball and prosecute, you could still develop things like this. Just do it. You know, just [01:00:00] don't, I don't know it be inequitable about it.

Tamany: I feel like there's an explanation here for why, you know, ev everybody, every case has that decision point where you're like, okay, this is a pivot point, but I have to make a decision one way or the other. There's probably an explanation for why they thought that was the right decision. 

David: Yeah. 

Tamany: I think it's rare that you get a patent prosecutor.

To sit down and go, yeah, let's just lie, let's just totally mislead the SPT, 

Speaker 3: right? 

Kristen: I dunno, that 

Speaker 4: happens 

Kristen: very often. I've met some real sociopaths. I don't know if I did. 

Tamany: I get it. I just think, what so have I, but I just think generally speaking, most of the time, whether they've drank their own Kool-Aid or rationalized it somehow, it's not the, the answer isn't, no, we don't care.

We're gonna, let's mislead them. The answer was some explanation for why this made sense at the time. Um, but [01:01:00] obviously was not the right decision. 'cause you had $150 million and now you don't. So that's a rough one. 

David: So what? Yeah, I mean that this great discussion, uh, all this stuff, I knew there was some interesting twists and turns in these cases that would give us some fun stuff to talk about.

You know, just sort of summarizing or circling back to the willfulness, one of the reasons I wanted to just talk about this and learn more about it is we're always trying to advise our clients on this. Like, we did a search and now you're exposed to these references. Or maybe, we'll, maybe we won't show you the actual reference number.

We'll just show you excerpts until we know you're ready to file something and then it'll, you, it'll be in an idea so you will know about it. But just what does rise to the level of willful. So I think there. A little bit of gray area out there, but I, you know, as practitioners, we can advise our clients, uh, if they what they know and when they know it.

Uh, are you, is it [01:02:00] likely or not that you're sort of in a willfulness, uh, category at this point? I don't know. Tamani, do you, uh, have any thoughts on that? 

Tamany: Um, well first I think it's, it's gonna be hard to give a client any assurances, right? I mean, going back to the language in Avian, I would love for somebody to, to explain to me what is willful, deliberate infringement, but not copying.

David: Yeah. 

Tamany: To give me an example of that. Yeah. Yeah. I, I, I don't get it. Um, but, so I think it's hard, the way that I would usually play it is say to the, like, before I turned over a bunch of references to a client is say like. Are you gonna, are you open to, uh, having this discussion and making changes? Because if a client says to me, no, I'm not changing anything, I mean, turning over a bunch of references to them and explaining to them why they might infringe, puts them in a worse position than [01:03:00] they were into begin with.

Um, as a litigator, I certainly wouldn't put that discussion in writing. Right. Right. Like, yes, it's a privileged discussion for sure, but privileged discussions accidentally make their way out of the privilege all the time. Um, and that's the kind of thing you, you're not, that's the kind of bell you're not gonna be able to unring.

So, um, it's a lot of it depends on the stage the client's at Right. 

David: Yeah. 

Tamany: And what they're doing. 

David: Right. We, I think, yeah, a, 

Tamany: a lot of times what I see is clients who track it are tracking, um, paths that have an issued. Yeah, they're not really tracking issued patents anymore. They're tracking the, the patents that are pending in the industry so they can keep track of, of what's happening with them and if they issue and as they issue so that they know what their [01:04:00]situation is when those patents issue both for their own patents and for, you know, infringement purposes.

And so if that's the context that you're in, then I think the discussion is, is obviously one of, we should keep an eye on this. Here's what's going on. 

David: Yeah, we, we, it did on the, on the first point you mentioned clients ask us pretty regularly, I feel like you know about an FTO. Oh, we wanna do an FTO, we wanna know if we're gonna step on any landmines.

And I a lot often tell my clients that if it's not actionable, if you, if you're not willing to change something, if you find out you are gonna get into trouble, then you're just shooting yourself in the foot. You're spending money on an FTO and you know, but if, if you're evaluating three or four different directions and you wanna know if one of them has patent problems and another one would be free and clear.

Okay. That, that would be actionable. It makes sense or can make sense. Um, yeah, yeah. It's tough. [01:05:00] It is tough. Like also on the watch list side, you know, uh, most often I feel like, you know, if client knows that they have a big competitor, they know that there's somebody out there who. They need to know what they're doing and yeah.

It's a good point of only tracking publications rather than issued patents. That that helps. That would help, yeah. Yeah. That's good advice. 

Tamany: Well, it only helps if, if, if it issues with the claims that you're worried about, you're gonna actually do something about it, right? Yeah. If you're not gonna do anything about it, you're gonna wind up, probably in the same situation as some of these parties that have been found, you might wind up like Zimmer, right?

So you're just gonna track it, but not actually act on it. Right. There is a, there is a concern that you're gonna wind up like summer. Yeah. Um, but if you, you know, especially companies that have robust like engineering departments or innovation departments, right. It's easy. [01:06:00] It's, it, there's much more of a discussion of, okay, here's the issue.

Right? Can we get around it? If we, can, we improve on it? That's the whole, again, back to what the whole point of the system is, is the whole point of the system is that discussion. Here's what they're doing, here's what they claimed. Can we make it better and different?

David: Well, thanks, uh, 

Kristen: that that was great. 

David: Yeah. 

Kristen: Go back anytime you want. Even if you just wanna school a bunch of prosecutors on whatnot to do, we are gay sometimes. 

Tamany: It's so interesting to get your take on it. Um, because I can't tell you how many times I've read a prosecution history and been like, God, I wanna know what were they thinking?

I had a case where there was a footnote from the examiner, and I'm not joking. The footnote from the examiner said, I don't think this is valid, but I don't have the resources to prove it in in. The file wrapper. I was just like, okay, 

David: that's not great. [01:07:00]

Tamany: Never gonna be able to enforce this patent. 

Marie: It could be great depending on what side you're on.

And that one, that must be quite the nugget. 

Tamany: Either way. Either way, 

Albert: we're gonna have to start preempting tam's uh, food metaphors within our own applications. 

Marie: I'm liking the jellybean analogy myself, especially in the medical area. Certainly certain color jelly beans, right? Versus 

Tamany: Yeah, it was, it was how we explained, so the case was about smallpox vaccines.

This is all public. It was about smallpox vaccines and if you know anything about smallpox vaccines, they were passed, the smallpox virus was passed through chickens and they got to pass 5 83. And that was the past where they saw it not have virality in humans, but provide some immunity. So like paths 5 83, 5 84 and 5 85 are [01:08:00] what are pretty much the basis for the smallpox vaccine, but they're not owned by the same people.

So like five, I think it's 5 85 was at NIH 5 83 was owned by the Germans. 5 84 was somewhere else. Um, and so the, they, a company had gotten a patent on a vaccine made from like 5 84. And we were trying to explain to the jury why that wasn't patentable. So it was like this idea, like the different colored jelly beans all in a pool, right?

Every time it passed you got a little, like, let's say the, let's say 5 84 was the red one. Every time you passed it through, you got a few more red, a few more red, a few more red, a few more red, but that red wasn't really any different than blue. They're still jelly beans, right? So it wasn't really patentable because it wasn't, 5 [01:09:00] 84 wasn't really that different than 5 83 or 5 85 that people had been using throughout history for smallpox vaccines.

But you could see like getting them to understand like why 5 84 wasn't that different, was the challenge. If you were gonna start with the genetics, that you were gonna lose them,

Marie: if you were gonna 

Tamany: start putting up genes, it wasn't gonna work. 

Marie: Jelly beans much better idea. 

Kristen: Well, I don't know. Marie had a mechanical invention sometimes. She said to me on the phone, she said, Hey, I, uh, got out my colored pencils for this one, and I, and I colored everything up and I put it up on screen and, and it worked.

Marie: I had a very early web interview with the examiner and I sent it to them. Mm-hmm. I, I honest, it's like going back to kindergarten because black and white, it was really hard to see. So I did colored pencils so we could have a much better [01:10:00] discussion of it. 

Tamany: Yeah. But sometimes it's like, is the science complicated?

Sometimes, but it's always based on something that's not really that complicated. Right. 

Kristen: Sure. 

Tamany: Although I have a biology background, so sometimes when it comes to discussions with people about their immune system, I'm a little bit like, did you not take biology in high school? Did you not understand how the immune system works?

Kristen: No. They understand the political party and that's it. 

Albert: I think that's why some of the best litigators, dunno, they don't have an engineering background. No. Engineering or science background. Yeah, sometimes because they don't, they don't need it 

Tamany: because if, because they, the best ones will be the ones who don't have that and then won't go to the jury till they understand it.

Right. Like they'll spend the time figuring it out and then figuring out how to tell that story. And since they don't have the technical background, they [01:11:00] don't really get hung up on the language or using, do you know what I'm using the, the science word or anything like that? It's more like, what's the point?

Let's explain that.

Kristen: Um, big law usually will hire one or two of those and everyone else will have the tech background. Yes. And it's kinda interesting. Yeah. But, but you notice the people who don't have the tech background tend to be brilliant in several ways. Mm-hmm. Right? You're just like, wow. You know? 

Tamany: Yes. 

Kristen: How do you pick a candidate 

Tamany: and good at speaking?

Kristen: Yes. How do you pick a candidate like that though? How do you know that when they're a first year litigator? Right. Or, I don't know. 

Tamany: You don't, you don't like, I like, it's something that essentially people, the people who are good at speaking end up liking to be in the courtroom. And so it's sort of like this funnel where those people end up on a more active rules on the [01:12:00] trial team because they like it and so they seek it out.

And then of those people, an even smaller number will wind up being like a first chair patent litigator. And it normally will be the really smart ones who can learn it really fast. But to your point, they don't always have a technical background. Or even though I have a biology background, a lot of my cases were in tech.

Right. 

Kristen: You don't have that. 

Tamany: I think I had, I think I had to have an expert explain to me how, um, DVDs were made about 12 times. Like I repeatedly like say to him, okay, go back to the beginning. No, wait. Now you lost me. Go back to the beginning. Do it again. I don't understand. 

Kristen: Knowing this, you're going to use this for about three months of your life and then dump it.

Like never need to know. 

Tamany: Yeah. Well, I know a lot about how, I mean, it doesn't matter anymore. DVDs aren't a thing, but I remember learning a lot about how the [01:13:00] chapters are made, how the, how the reason you have chapters on A DVD and condensing the data to fit it on there, and then all of that. 

Kristen: Yep. It's, it was, I mean it was emerging tech at the time.

It's really neat to know some of that, you know? Yeah. How it happened. But then it, you know, your skills become 102 years old and you have of course 

David: obsolete. Emerging to obsolete. Yeah. Spent a lot of time, 20 years or something. 

Kristen: That was laser disc. Right. Or 10 years for laser disc 

Tamany: with the laser disc.

David: Laser discs. 

Kristen: Well, thank you. It was awesome. I don't know where Ashley just had another call. 

David: Yeah. 

Speaker 4: Awesome. Well, thank 

Tamany: you all. 

David: Yeah. This was fun. Yeah. Yeah. Thanks Tam. It was great. 

Tamany: Yeah. Nice to meet all of you. Thank 

Kristen: you. You too, care. 

David: Bye 

Tamany: bye. Bye 

[01:14:00] bye.

Josh: All right. That's all for today, folks. Thanks for listening, and remember to check us out@aurorapatents.com for more great podcasts, blogs and videos covering all things patents, strategy. And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed.

Email us at podcast@aurorapatents.com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.