Subject: Fall 2009 - Scientific Evidence - Patent Litigation
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Date: Sun, 9 Jun 2013 16:54:34 -0700

Fall 2009 - Scientific Evidence and Expert Testimony: Patent Litigation -
Prof. Morris

Last modified 11-30-09 at 11:15 pm

JUDGES AND STUDENTS:
Information concerning the final simulations is at TEAMS.HTM

Subdirectories:  Clicking
on the link brings up the directory listing.

PPT:
Powerpoint slides from the weekly class meetings.

ASSIGN:
Assignments, both initial and comment.  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 of other documents.

Other Useful Links

Course
Description

Blog for Q&A about
assignments

Consent
Form

A
few answers to questions you may have about class meetings, and

Acknowledgments

Google's Patent Search
Page

Deadline
Schedule

Assignment Posted: Friday 5pm

Your Assignment: Tuesday 9am

Your Comment: Wednesday 9am

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

Class

Date
(Linked to Detailed Assignment)

Subject

Readings

Written Assignment

1

09/23
slides

1
Introducing Ourselves

Questionnaire
for everyone.    Law
Students, please also answer these questions
about patent law and practice.

Please
submit your questionnaires by Sunday,
9/20, at noon.

2
How the Course Will Work

How the Course
Will Work.  In class you will have to sign a statement that you
have read and understood this, and agree to be bound by its terms.

Print
out a copy of How the Course Will Work, annotate/highlight it, and bring
it to class for me to collect.

3
Patent-marked Objects; Litigated Patents

The detailed assignment is here.
(From now on, the detailed assignment will be linked to the date, see
second column, and available in the ASSIGN subdirectory.)
The
assignment requires you to read your patent (I explain what I mean by
"read" and "your"; "your" is one thing for law students and a different
thing for grad students) and to do some related work.
You also will
have some tasks related to the
5,913,813 patent, one of three patents in suit in Hologic v.
SenoRx, a case scheduled to be tried in San Jose federal district
court in October.

By
Monday night at 10 pm, please complete the assignment
and submit your response on Coursework in the appropriate topics in
Discussion Forum "0923."

By Wednesday morning at 9 am, please submit your comment on another
student's claim 1 reformatting, in accordance with the comment
instructions.

2

09/30

slides

A.
"Instant Patent Law" (cont'd) and an introduction to Claim Charts and File
Histories

None.

A.
Please submit two questions about patent law that you thought
of  during the previous class that weren't answered. As your comment,
please answer somebody else's question.  Submit everything to the blog, below my new post,
"Assignment for 09/30."

B.
Claim Construction Decision in Hologic
(abridged)

Note on
how I edit cases.
Hologic
Claim Construction Order

B.
Write one question about the law discussed in the case and
one question about the facts of the case. Email your questions to me by
the assignment
deadline.

-

10/7

The Law School is on break but the rest of the university is
not.  Genetics 243 therefore will meet on 10/7.
Anyone
registered in either class is welcome to come.  There will not be any
reading or writing assignment.   Please email me by Monday
morning (9 am) if there is some area of patent law or about your final
projects that  you would like me to address.
(In class, we
reformatted the Hologic claim.  Guillaume posted it to the original
0923 Discussion
Forum on Coursework.)

-

~10/13??

NO OPPORTUNITY TO SEE THE  TRIAL of Hologic v. SenoRx before Judge Ronald M. Whyte
until the last week of class.  The case has been continued to
December 1.

3

10/14
slides

Continue
on claim construction.   Begin consideration of infringement,
especially by equivalents.

READ:  The Second Claim
Construction Order in Boston Scientific v. Cordis, construing the
Fontirroche 594 patent.
LOOK OVER AS
NEEDED:  Fontirroche
et al 5,820,594. The Certificate
of Correction for the 594 patent.

SKIM PER HOMEWORK INSTRUCTIONS:
Counterclaim PO Cordis's technology
expert on the 594 patent  Testimony of
Dr. Lisa Pruitt  The visuals discussed in the testimony
include the patent and both file histories, as well as Dr.Pruitt's
slides, and a trial
exhibit (the Samuelson patent) and deposition
exhibit (claim construction slide), used during
cross-examination.
NOT ASSIGNED, but available
for those who may be curious:
(1) The file
history of the application that issued as the 594 patent, and the
file history of the  parent application (which issued as
5,538,510).
(2) The docket
sheet for the case. The original claim construction order is No. 298,
at DOC page 81 of 119.

See Assignment.

4

10/21
slides

Focus
on the LAW.
For validity:  obviousness.

For
infringement: doctrine of equivalents.  (Lecture only:  The
Festo and W-J
presumptions.)

Leftover from last week:  What is an
interference. (Slides)

The
assignment specifies which case you (personally) have to read
carefully.  Please skim the other three cases.
Obviousness:

KSR v. Teleflex
(Supreme Court 2007) and
Sanofi-Synthelabo
(Fed Cir 2008)

Doctrine of Equivalents:

Graver
Tank (Supreme Court 1950) and
Warner-Jenkinson
(Supreme Court 1997)

For copies of the patents in suit, see the
DOCS subdirectory.

See Assignment.

5

10/28

Finish
obviousness: Sanofi

Skim
to review KSR and Sanofi and remind yourself what,
if anything, you wrote about Sanofi.

Focus
on Expert Testimony Law: Daubert, why Daubert motions against
scientific experts in patent cases are not that common, but when they do
arise they can decide the whole case

Expert
Testimony Law:
1.  Daubert meets patent law:  MEMC and
PharmaStem
2.  It just so happens that the 10/28 meeting will
be observed by Prof. Joe Grundfest, a securities law professor, who
coincidentally filed an
expert affidavit two months ago in the Bank of America/Merrill
settlement.  Please skim it and mentally compare it to that of a
scientific expert in a patent case.  Try to identify both the
differences and the similarities between Prof. Grundfest's affiidavit,and
a typical scientific expert declaration submitted in connection with a
claim construction or a summary judgment motion of invalidity or
infringement.

See Assignment.

Finding a
patent for the simulation project; Picking teams;

Grad
Students:  Identify equipment in your lab with patent numbers; check
out the patents.  (You cannot use what you or anyone else used for
week 1.)
Law Students:  Find things in your friend's labs, or your
home or a store with patent numbers.  (You cannot use what you or
anyone else used for week 1.)

Complete
the form "Patent
Questionnaire". You may want to look over a sample
answer (based on my imagined observation of a Cordis catheter bearing
the Fontiroche patent number, 5,820,594).

Post the required
photographs here
(a link to a Discussion Forum entitled 1028 on Coursework)

6

11/04

Your Patents
and Teams;  Remaining Legal Issues

Confirm that
everyone has a patent.  File histories not on PAIR will need to be
ordered.

7

11/11
slides

Guest
Speaker - real life expert Harry Bims, Ph.D. (EE)

Read
the Bims
Declaration on behalf of the companies adverse to CSIRO (pron. SY-ro
(rhymes with TRY-no)).  Look over the patent in suit, 5,487,069,
as needed.

See
assignment.

Simulations
- Common Problems;  Narrowing the Issue for the
Simulation

Check
out the Discussion forum on coursework about Simulations
Generally.  I will answer your questions as they are
posted.
Read your patent.  Read your file history - either
on PAIR or on the Landon site when Landon posts it.
Sometime between
Sunday, 11/8 and class on 11/11, meet with me as a team.  Kermits:
please organize the time and date.  My office (room 208) can be the
place.

Please
work with your Kermit to set up a time for a team meeting with me.
If you haven't settled on a patent yet, we should still meet   I
can order file histories of patents you are contemplating, if that will
help you decide.

From 11/12 to 11/24 - Additional
Team Meetings with RJM

8

11/18

Preparation
for the Simulation:  Your Claim Chart;   3 minute practice
talks

Read your
patent and its file history and prior art specifically mentioned as
rendering claims anticipated (35 USC 102) or obvious (35 USC 112).
Prepare presentations as described in the 11/11
slides.

By
WEDNESDAY at 9 am, please post on Coursework
on your team's Discussion page (one posting per team is enough):
a
reformatted version of the claim of interest and answers to a
few questions about the prosecution history.

-

11/25

NO CLASS - but Movie Day.   Come by the Swig Room at 3 to
watch Desk Set (1957), the
Hepburn-Tracy movie about the relative merits of computers and
books.
Written long before the internet, Google Books, or the
Kindle, but still full of wisdom for our time.

9.1

12/01

Simulation Performance, Team 1.  7 to 8:30 pm, Room
80 (Moot Court Room)

See TEAMS.HTM for
schedule, links to patents and file histories, etc.
See CRIT.HTM for
critique assignments.

9.2

12/02

Simulation
Performances Teams 2 and 3.  7 to 10 pm, Room 80 (Moot Court
Room)