Scientific Evidence and Expert Testimony: Patent Litigation  -  Fall 2007                                   Prof. Morris

Last modified 12-04-07 at  3:40 pm
Link to Information about Teams - Members, Patents, Time of Argument, Judges (latest information)
Link to Ground Rules for Simulations..
Stipulations for individual teams will be linked on the TEAMS.HTM page.

Some Useful Links

Schedule (Subject to Change) - Current week has colored background.

(lecture slides)
Subject Readings
Written Assignment
09/05 L only
1  Introducing Ourselves
Please submit your answers to the questionnaire by 9/5 at 10 a.m..
2  Review of Patent Law
3  How the Course Will Work

4  Patent-marked Objects

See email sent on 8/28 from Coursework for instructions about what to look for, what to post on Coursework and what to bring to class.
09/12 L only
1  Your Patented Objects:  How to read a patent, with special reference to how to evaluate it (PO view; AI view; VC view) or design around it (AI view) Your Patent
See email sent on 9/6. The question for your comment is also posted on Coursework as Main Forum - Topic for Week 02 - 1. The patent on your patented object.
For the comment^2 assignment, see email sent on 9/11.
2  Review of Patent Law:  Issues about which an Expert Might Testify

3  KSR and how it might affect your expert's testimony
See email sent on 9/6. The question for your comment is also posted on Coursework as Main Forum - Topic for Week 02 - 2. KSR.
For the comment^2 assignment, see email sent on 9/11.
No Class
[Law School Flyback Week;  Grad Student Quarter not yet begun]
 G only
for first 1/2 hour
1  Introducing Ourselves Questionnaire;
Information about class meetings
Please submit your answers to the questionnaire by 9/26 at 10 a.m. at the latest.
L & G from 4:45 2 Patents and Patent Law:  An Introduction

See email sent on 9/21 to LAW or GRAD students, as the case may be.
Grad students:   please post your photos and patents on Coursework, Main Forum - Week 03 - GRAD STUDENTS ONLY: Patented Objects in the Lab
Law students:  please post your topic selections and slides on Coursework, Main Forum - Week 03 - LAW STUDENTS ONLY: Patent Law Topics.
Law students only:  No comment^2 assignment except slide revisions for the 5 who received comments on their slides in time.  All:  see email sent on 9/25 concerning changes to do in the meantime, even though there is nothing else to submit for this week.
L & G
1  Patent Law Introduction - Cont'd

Grad Students:  Please complete the previously optional assignment  so that you can post a picture and information about patented objects in your labs, and the patents whose numbers appear on them.  See email sent on 9/27.
Law Students:  Revise your slides in accordance with my comments, unless you did that already.  See already sent or [to be sent].
Boston Scientific v. Johnson & Johnson (02-00790 SI)
Those of us who can get away from campus will have the opportunity to attend the trial in this case in San Francisco when scientific expert are testifying.   The precise date has not yet been set, but the first day of the trial (selecting the jury) is 10/9.
The 8/21/07 opinion on summary judgment motions brought by AI Cordis (edited).  Patents in suit:  Kastenhofer '032, '965, '477 and '673Forman '759 . Everybody:  Read the opinion, look at one of the patents (or more, if you want to), and file a comment as required by the email sent 09/29.
Instructions for comment^2 are in the email sent 10-02..
3 Considerations in choosing teams, patents and issues

[Discussion deferred to later  class.]


L & G
1  Patent Law Introduction - Cont'd: 
  Law Students to Lecture

Law Students:  please revise your slides in accordance with my comments and what you have learned or realized in the last few weeks.  Be ready to lecture for up to 5 minutes using your slides.  See email sent 10-05.
2 Grad students to find more patents

Grad Students:  find a first or second patent that covers something used in your lab or those who do experiments in the field in which you do theory.  See email sent 10-05.
3 Finish discussion of Boston Scientific, as a vehicle for learning all of patent law, and as a vehicle for understanding the role of experts in patent cases
See 10/03 entry above.
Everybody:  Please review the August 2007 opinion, the patents, and EVERYBODY's comments and comment^2s (copied into a WORD doc and linked here for ease of use).  See email sent 10-05.  For the short comment^2 assignment, see email sent 10-9.
10/11, 15
Optional Field Trip to San Francisco federal court to see experts testify in Boston Scientific.
L & G 1  Patents and File Histories Patents and File Histories from  2006 Simulation Projects Look over the patent and the file history as assigned in the email sent 10-12 and answer the questions posed there.  The patents and file histories are on Courseworks - Course Materials - 2006 Seminar: Selected Documents.
2 Testifying, Examining, Cross-Examining.  Also:  Visual Aids, especially Claim Charts

Students who went to see the trial:   Write a short (250 words or less) report on this experience.   Students who did not attend trial:  Write two questions to ask those who attended.   See email sent 10-12.
Comment^2 (only for students who did not attend trial):  see email sent 10-16.
3 Picking teams

No reading, just thinking:  What will you look for in fellow team members and in the patent your team chooses?  We will form groups.  Each group will have
    - two grad students who have done the assignments and plan to continue with the seminar, and
    - a proportional number of law students and the remaining grad students,
so that everyone is in a team.
10/19, 22 and 23
L & G
1  Teams for Final Simulation Projects
The Patent(s) you are considering for your simulation project
I will hold individual and team conferences 10/19, 22, 23, in preparation for the 10/24 class. 
L & G 1 Last Student Lecture  - US v Other Countries' Patent Laws

Juan Reyes will speak.  We will spend a few minutes if anyone has questions about any of the student lectures.
2 Getting Serious about the Final Projects The patent(s) you are considering for your simulation project.  Other patents and documents as needed.
Please EMAIL as the TEXT of a message the left-hand side of a claim chart for a claim in one of the patents you are considering for the simulations. See email sent 10-17 for your teams, and email sent 10-19 for the claim chart/comment requirement.
**CLAIM CHART EMAILS** sent in the days preceding class are in the EMAIL subdirectory: 1022clch, 1022clch_n3, 1023clch and 1023clch_2.
          In class, we will explore what everyone needs to do and what everyone needs to know to do it.
3 Reading File Histories Review what you wrote last week concerning the bilayer and magnetic separation file histories. None, other than refreshing your recollection.  We will discuss what you know, wonder about, and misunderstand about patent histories so that you are ready to analyze the file histories for your simulation projects.
L & G 1  Daubert, Itself and in a Patent Case on a Liability Issue
Daubert(Sup. Ct.); Daubert on remand* (not assigned, but there for those interested), and excerpts from 2007 Fed. Cir. decisions MEMC and PHARMASTEM..
* Opinion by Kozinski, J. [Fun(and even less assigned):  Kozinski's Syufy Opinion (find the 215 movie titles embedded in it) and Syufy Rosetta Stone (1992 BYU LRev 457 (1992)(movie titles underlined).]

Read whichever one of these 3 docs you selected in class on 10/24 (see list of names and choices included in the email sent 10/26).  Submit comment as required by email sent 10/27.
2  KSR again/anew - Focus on what happened below:  Summary Judgment Motions and Expert Declarations
3  Transcripts from BSC v Cordis, the trial some students attended for a day Testimony of Dr. Lisa Pruitt, Cordis's technology expert on its counterclaim on the Fontirroche 5,820,594 patent
4  Preparation for Simulations
The cover sheets of at least 3 different patents (you choose).   Kastenhofer family tree (originally presented in week 4 slide 16 or week 5 slide 19) and Kastenhofer patents '477 and '673.
Optional: Rixon family tree, mentioned in 10-28 email.
There will be a one-minute timed quiz about what you can learn from the cover of a patent.  Be sure at least one patent you look at (in addition to Fontirroche and Kastenhofer) has an item [63] and at least one has an item [73].  (Not every patent does.)  Learn WHERE on the cover sheet every bit of  information is. 
In class I willl only give you 60 seconds to answer ten questions about a patent you have very likely never seen before, so you will not have time to hunt for answers. 
To prepare for SOME (but not all) of the questions, you should understand the family tree and its relationship to information on the patent cover sheets.
11/07  L & G No class on Wednesday; Conferences Friday, 11/2, or Wednesday to Friday, 11/7-9.
L & G Summary Judgment Motions Supported by Expert Declarations:  Oral Argument and Testimony/Tutorials in Brief (VERY brief)
Your Team's Patent, Its Prosecution History, and Maybe some Prior Art or Some Law or both
By Tuesday at 8 am, each student must submit an abbreviated OUTLINE for a summary judgment motion or expert declaration in support of that motion on an issue suggested by your patent, its prosecution history, and your experts' views on designing around it, as applicatble.     L:  SJ arguments:  the FACTS that will give rise to your winning on SJ and applying the LAW to them (but no boilerplate law; no law lecturing at all in your talks).  G:  Expert Declaration or testimony (ordinary or tutorial, which is more like a lecture). to support the SJ motion.  Slides for your talks (if any) can be posted any time up until class.  For the 3-minute  practice and TIME YOURSELF.   For more specific instructions about submitting the SJ/Declaration outline, see email sent 11/11.
L & G
No class on Wednesday (Grad School is closed; Law school  is on a Friday Schedule).  Team and individual conferences as needed, Monday to Wednesday
11/27 and 11/28 L & G Simulations

See TEAMS.HTM for the latest information about the simulation projects: participants, patent, dates, judges, etc. 
See RULES.HTM for the latest information about the ground rules for the simulations. 
Specific stipulations for each team will be linked on TEAMS.HTM. Instructions for stipulations will be provided by email..

Critique Assignments:  See email sent 11/20   and 12/03. The web version of the email will be updated if needed.
12/04 and 12/05
L & G Simulations