Questionnaire for Scientific Evidence and Expert Testimony: Patent Litigation - Fall 2006                              rjm 8/30/06 rev 083106:1151



LAW STUDENTS ONLY
(Grad student questionnaire will be posted around Sept. 20.)


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First Name (not necessarily your legal name, but rather the name you wish to be called
in the seminar if we use first names)

Last Name

Some of this information already appears on your Consent Form, I know.  I am sorry you have to enter it again,
but it will be helpful for me to have it in a standard electronic format.

Pronunciation of your first and last names (if not obvious)
 ("Rhymes with" for a syllable or group of syllables always helps. Indicating the emphasized syllable by ALL CAPS is good, too.)
 

Undergraduate School Year of Graduation

Undergraduate Major(s)

Other Degree(s) (degree, field, institution, year)

Your Law and Patent Law Work Experience
    Please provide details concerning your clerking experience(s) this summer (2006)
and during or before law school (if any). If you have had more than one relevant employer
(whether summer law jobs, clerking, or pre-law school but patent-related),
please answer separately for each one.  If you have had more than 3 such employers,
please use the big box and write a narrative including the same basic information for all other employers.

    Name of 1st (or only) employer.
    City    
    Dates with this Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment

    Name of 2nd employer.
    City
    Dates with 2nd Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment


    Name of 3rd employer.
    City
    Dates with 3rd Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment

If you had more than 3 employers, please use this box to tell me
about the 4th, 5th, and so on..

If you have not been in school every year between September and May since age 15,
what else have you done and when did you do it?

 

Optional  Questions
Who is your favorite Federal Circuit judge and why?


What unassigned book did you last read, and when did you finish it?


Patent Law, Review of

You _may_ consult anything and anyone (except me) to get the answers for this part.  It should not take you very long to do.  If you have spent 2 hours on it, STOP!

Lawyers Involved with Patents
Patent lawyers are divided into two groups:
     - those who represent inventors in connection with
applications for patent protection filed with the United States Patent and Trademark Office
 and other patent offices throughout the world, and
     - those who provide court representation for people involved in patent infringement cases.
 Name the nouns for these two groups. (Polite words only.)
  and

Prejudices: What are the best and worst aspects of the work each group performs?
Best for Group 1 and Worst
Best for Group 2 and Worst

Nowadays, there may be a sizable third group, or even a fourth. If you balked at having to name only two,
please now name any others and identify the best and worst aspects of their work.

Patent Law - Litigation Issues and Aspects of Proof and Appellate Review
In a patent infringement trial, as in all trials, the question of liability is tried before damages.
Name the two major liability issues. (If you feel you haven't a clue, look at the next two questions
and see if they help. If you think there's a third liability issue, use the next big box to tell me what it is and
where it would be presented in a patent infringement trial.)  

Liability Issue 1 and Liability Issue 2

For each of the two major liability issues you identified, question 1,
 who has the burden of proof (patent owner [=PO] or accused infringer [=AI]), and what is the standard (quantum) of proof?

Liability Issue 1 - Burden of Proof is on PO AI
and Standard of Proof is

Liability Issue 2 - Burden of Proof is on PO AI
and Standard of Proof is

Name at least one and no more than four issues that arise fairly regularly in patent cases
that are questions of equity (as opposed to questions of law or fact.)
 

What is the standard of review on appeal for questions of equity?

Parties   A patent infringement case is called _X v. Y_. Ordinarily X is the patent owner,
but sometimes it is not. Who is it? There are two obvious possibilities, at least to me.
If you think of more than two, tell me the other(s), too. Describe these plaintiffs in terms
of their relationship to the patent alleged to be infringed.
Why can those non-patent-owners initiate suit? If nothing comes to mind, then say on what basis
 the defendants can have the case dismissed.


COURTS AND JURISDICTION
Your client, a resident of Palo Alto, would like to sue a resident of San Francisco for patent infringement.
In what court do you bring the action? (Be as specific as you need to be.)
Why is that the right court? Cite a statute if one comes to mind.
The trial judge dismisses your case on the defendant's motion for summary judgment of noninfringement. In what court of appeals do you file your notice of appeal?
 
Why is that the right court? Laws and Regulations (Patent-speak Cont'd: Knowing the Numbers)
Congress enacts statutes concerning patents. What article/clause/section of the Constitution
allows Congress to do so?
What is the number of the Title (in USC) where you find the patent laws?
What is the number of the Title of the Code of Federal Regulations (CFR) where you find regulations concerning patents?
What is the bluebook citation for what patent lawyers mean when they say Rule 56
(as opposed to Rule 56 of the Code of Civil Procedure)?
Name a phrase (or two) associated with Rule 56.
The patent office has its own internal rules. They are sometimes cited in cases
(although they have less weight than federal regulations), and they are heavily relied on by
lawyers helping inventors apply for patents. What, collectively, are these internal rules called?


Judicial Opinions

Name four famous patent cases (Supreme Court or not), each concerning a different issue in patent infringement litigation. 
Give the name (enough to be recognizable, NOT bluebook), the court, the year, and the author of the opinion
if  the name is important (however you wish to define "important": you can explain that or not, your choice).






This last question may take a few minutes on the computer.  If that's a problem, leave it out.
Name a famous and important Federal Circuit case for which cert. was denied. 
Identify the year and the issue, whether the decision was in banc or not, and the author(s) of the opinion(s).


Difficulty Level of These Questions
Please be absolutely honest here. Your answer will have no effect on your grade or my opinion of you,
but will only help me understand the level of knowledge of the class as a whole.
How long did it take you to answer the review questions?
What or whom did you consult?