IP: Scientific Evidence in Patent Litigation
Winter 2012 Prof. Morris

- Last modified 12-09-11 at 2:00 p.m.

Q. Class is listed as 4:15 to 7:15 pm on Thursdays. Will we
really meet every week for 3 hours straight?

A. No, but there will be at least 27 contact hours during the
quarter as required by federal law.
During weeks 1 through 8, class will last about 2 to 2 1/2
hours, with a brief break in the middle.
Starting with week 4 or 5, I will meet with each team at
least twice. These meetings will be arranged at a mutually
convenient time. We will discuss the team's choice of patent,
the best claim to use for the simulation, the patent's file
history, the most plausible design around, prior art both cited
and not, and the issues that lend themselves best to the
constraints of the simulation. These conferences will last as
long as they need to. Typically that is about an hour.
In week 9, when the simulations are performed, please be
prepared for the following:
1. class may begin later than 4:15 to accommodate the judges,
2. class may last longer than 3 hours, so that two
teams can perform, with a refreshment break in between, and
3. class may meet on one or two additional nights, for up
to 4 hours, depending on how many teams there are.

Please remember that all students must attend every simulation,
whether or not they are performing.

Q. Will the class meet straight through?

A. No. We will have a short break at around 5:30. I will
provide snacks, healthy or otherwise depending on demand.

Q. I understand that we may have the opportunity to attend a
trial or claim construction hearing to observe live expert
testimony in a patent case. Will the field trip be a substitute
for a class meeting?

A. No. Everyone's schedule is different and some students may
not be able to go on the field trip. That is why attendance will
be optional though strongly recommended. (I am happy to
intercede with any professors or employers to enable students to
attend. These opportunities are not to be missed.)
The case schedued for trial this quarter -- if it does not
settle and is not continued (court-speak for postponed)) -- will
be the subject of class discussion, both before and after the
trip. If a homework assignment is based specifically on the
proceedings observed by those who are able to attend, I will
provide a transcript and pose two sets of questions, one for
those who heard the testimony live and one for those who only can
read it.

Q. Whom would Prof. Morris like to thank?

A. Prof. Morris would like to thank:
Deans Kramer and Kelman, for their help in 2006 in creating
and developing the course, and, ever since, in making it happen.
Litigators Norm Beamer, Emily Evans, Ron Shulman, Bob Morgan,
and Rob Isackson (all of whom I first met in my days at Fish & Neave,
now Ropes & Gray) for transcripts and exhibits for possible use in
the seminar.
Bob Morrill of Sidley Austin and William Lee and Nathan Walker
of Wilmer Hale for transcripts and exhibits from BSC v. Cordis, the
trial that some lucky seminar students attended in 2007.
Matt Lehr of Davis Polk and Michael Rader and Alexandra
Hadley of Wolf Greenberg for transcripts from Tyco v. [B]iolitec,
the trial that some lucky seminar students attended in 2010.
The various deans at the University of Michigan Law School,
and Prof. Rebecca Eisenberg, always a brilliant, wise and
gracious colleague, who gave me the chance to teach patent law
and various seminars at Michigan from 1991 to 2005; she enlarges
my knowledge and understanding of patent law whenever we talk,
which is not often enough.
My excellent students at Michigan and Stanford, for
stimulating discussions, insights, and challenges, and who, after
their graduation, continue to correspond and keep me at the
cutting edge.
Prof. Mark Lemley at Stanford, for telling students about
the seminar and for numerous discussions and writings about
the latest controversies.
 Some extraordinary patent lawyers I have been fortunate to
work for and with -- Allen Krass, John Posa, Eric Woglom and
Dan Gantt -- for communicating their joy in patent law,
both prosecution (AK and JP) and litigation (EW and DG), and for
knowing the answer to every question I ever come up with, or at
least being willing to debate it with me.
The members of my bi-monthly patent law lunch group,
Women Meeting on Patent Law -- Heather Mueller, Megan Sugiyama,
Emily Evans, Peggy Powers, Vicki Veenker, and Julie Holloway --
for insights, information, and perpetual enthusiasm about patent
The friends, and friends of friends, who give generously of
their time to serve as judges of the simulations. The course
would not work without their contribution.
And, from the beginning, my mentors at Fish & Neave in the
years 1986 to 1990, including especially
Al Fey who taught me about the old cases, such as
Barbed Wire ("witnesses whose memories ..."), Lyon v. Boh
("antlike persistency") and Tilghman v. Proctor (accidental
and most importantly
Eric Woglom, who with Doug Gilbert's able assistance,
tried to teach me all of patent law in two afternoons during my
first week at Fish. My notes from those marathon sessions
continue to inform everything I think or know (or think I know)
about patent law and patent litigation.