Fall 2010 - IP: Scientific Expert Witnesses in Patent Litigation - Prof. Morris

Last modified 11-23-2010 at 01:15 pm
Subdirectories:  Clicking on the link brings up the directory listing.
  • PPT: Powerpoint slides from the weekly class meetings.
  • ASSIGN: Assignments. Note that assignments may be corrected or revised. If substantive changes are made, earlier versions will be in the ARCHIVE directory.
  • DOCS: Documents and back-up.
  • ARCHIVE: Earlier versions of this page (called "index") and anything else posted here.
  • EML_Q_A:  A selection of your excellent questions, and my answers to them, posted with permission of the questioner.
Other Useful Links

Schedule (Subject to Change) - Click here to jump to current week, which will always have a peach background.

(Link is to Detailed Assignment)
Written Assignment
1 09/20
1  Introducing Ourselves
Questionnaire for everyone.    Law Students, please also answer these questions about patent law and practice.
Please submit your questionnaires by Sunday 9/19, at 2 pm, but the earlier the better.
2  How the Seminar Will Work
How the Seminar Will Work
Print out a copy of this document.  Read, annotate and highlight it. Also let me know how many stoppers (typos and other errors) you find.  Whoever finds the most true stoppers will get a reward.
3  What is a patent?  (concrete)
This week's assignment requires you to read your patent (and explains what "read" and "your" mean).

By the way, assignments will always be linked to the class date (see second column) and can also be accessed by going directly to the ASSIGN subdirectory.  
By Sunday night, 9/19, at 2 pm, please complete the assignment and submit your response to me by email.  

Post Class 1:  Scheduling Concerns, Questions and Finishing Up
THIS WEEK:  What is a patent? (concrete, cont'd, plus time-evolution of);  An Introduction to Claim Charts, File Histories,
and the Trial We May Attend
1.   Post Class 1:  Scheduling Simulations;  Questions;  Finishing Up.
As explained in the assignment, please
A.  Provide information about scheduling.
B.  Write questions about things you did not understand in the 9/20 class
C.  Bring to class everything concerning your patented item that you brought on 9/20.
2.  Tyco v Biolitec
(pron:  Bio-LI-tec, LI rhymes with HIGH), the trial we may visit

A.  Decision about Expert Reports and Enablement
      1.   Preliminary:  How I Edit Cases.  This explains formatting and other things you may wonder about. Please read it.  It is only 1 page.
      2.  VNUS v. Biolitec (ND Cal, slip op. 6/29/10)
1. If you agree with what the Court decided, say why.  If you don't, say why not.
2. What mystified you (other than decision itself)?
You will be asked to comment on another student's answers.
B.  One of the patents-in-suit and its File History
      1.  Look over 7,406,970 (known as "the '970 patent") so that you can reformat claim 1 intelligently.  FYI:  Google displays but won't download the pdf so here is a copy from freepatentsonline.
      2.  See assignment for what you should look for in the file history of application 10/900,563 which issued as the '970.  The file history is available at http://portal.uspto.gov/external/portal/pair (see Assignment for more specific instructions about using PAIR). 
1.  Reformat claim 1 in accordance with the assignment and the instructions in FORMAT.DOC
2.  Describe what happened at the Patent Office between 1/04/05 and 4/24/08.  (The Assignment says which documents to consider.)
3.  What is most noteworthy to you about the Office Action (NonFinal Rejection) of 1/4/05? Why?
4.  What is most noteworthy to you about the Applicant's Responsive Remarks of 4/25/05?  Why?
PS to 9/27
re "READING ON": Yes, the Examiner miswrote: see EML_Q_A/READON.TXT
The Law Students have Flyback Break but the rest of the university does not. 
 I will therefore hold classs at the usual time for anyone who wants to attend, whether grad student or not.
There is no reading or writing assignment.  I will  look over previously submitted questions about patent law in preparation for this class. 
If you have any new questions, or old questions you want to modify,
please either email them by Sunday at 11 am or write them on a 3x5 card and hand in the card in class. 
The current organizational Chart for the Department of Commerce, parent of the PTO, is now in DOCS. 
1.  Focus on validity, especially obviousness.

2.  Some real life patent litigation / preparation for the field trip.
3.  Work on finding patents for the simulations.
1.  Everyone:  Read/review KSR

2.  Law Students: Read the Tyco v. biolitec Joint Pretrial Statement and Addenda.

3.  Grad Students:  Read the webform for information about what makes a good simulation patent.
1.  See assignment for written questions (due Sunday at 2 pm) and comment^2 (due Monday at 11 am). 
2.   See assignment for what to look for as you read and what to address in writing (due Sunday at 2 pm)..
3.    Look around your lab and other labs in your department for a good simulation patent.   Fill out the web form by Sunday at 2 pm with details of at least one possible patent.
1.  Begin teamwork.

2.  Focus on infringement, especially by equivalents

3.  Review obviousness and DOE.
1.  Communicate with your team about candidate patents.  Per the assignment, read it/them.

2.  Warner-Jenkinson (Supreme Court 1997).

3. Spine Solutions v. Medtronic (Fed. Cir. Sept. 9, 2010) and refer to the patent in suit, 6,936,071, as needed.  Both obviousness and infringement by equivalents are discussed. 
Everyone:  Look over the PTO's slides for training examiners about KSR and obviousness.
1.  See Assignment.  The Kermit for each team, after consultation with (or delegation to) the other members, can submit a single response.

2 and 3.   See Assignment.  You will only have to answer written questions about one of the two cases, and there will be no comment-on-comment this week.

Law Students:  Patent Law Questionnaires.
6:30-7:15 pm.  We will review the your answers to the law questionnaire (printouts will be provided).  Attendance is optional for grad students.
Jury selection in the case of Tyco v. biolitec [yes, small b] took place on 10/13 in the San Francisco federal courthouse (Courtroom 7, 19th floor).  RJM attended.  (Late breaking news:  1 of the 3 defendants has now settled.)  Trial will begin on 10/18/10 and is scheduled to take 4 to 6 weeks.  Experts will probably testify starting 10/25.  A field trip is planned.  It won't be in lieu of class, it will be entirely optional, and it will be very worthwhile.
Team meetings with RJM begin this week.  Please email with times that your team is available.  See TEAMS.HTM for open times.
1.  Optional:  Attend trial today.  If you can't make it today, you might want to go tomorrow or Wednesday.
2.  Expert testimony law.
1.  If you plan to attend the trial, you may want to look over this Tyco patent, 6,258,084 (which is not the same one as for Week 2) and skim the Joint Pretrial Statement.
2.  Read the Daubert excerpt, and the edited patent cases, MEMC and PharmaStem
1.  No assignment.

2.  See assignment.  (No comment^2s this week.)
Short presentations on chosen patent and issue.

1.  Read your patent, its file history, etc.  to construct your simulation project, draft testimony (Q&A) and compose demonstratives (powerpoints).
2.  Research:  grad students should investigate prior art (cited and uncited), and any other information related to a design around; law students should check the law on issues that have come up with their patent.
3.  Review your notes on previous assigned cases so that you can participate in brainstorming with the other teams about their projects.
Prepare slides to inform the class about your project and its progress to date.
1.  Discuss what happened at the Tyco trial.
2.  Simulations.  Remaining questions and issues.
3.  All the patent infringement litigation issues that scientific experts usually don't encounter.
1.  Read the transcripts for the sessions you did not attend, and skim the rest (if any). 
2.  Continue reading the patent and its history, prior or subsequent art, and relevant law, as you refine your project.
3.  No reading.
1.  See assignment.

2.  Work collaboratively on the slide presentation and the Q&A script (not that anyone is permitted to read from a script, but you oulght to have composed one so you know what you're doing and why).
Simulation Performances
See SIMULAS.HTM for schedule, judges, etc.  Critique assignments are at TEAMS.HTM
11/22 NO CLASS - Happy Thanksgiving!
Simulation Performance
See SIMULAS.HTM for schedule, judges, etc.  Critique assignments are at TEAMS.HTM