Subject: Fall 2010 - Scientific Evidence - Patent Litigation
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Date: Sun, 9 Jun 2013 16:49:58 -0700

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

Course
Description

Consent
Form

A
few answers to questions you may have about class meetings

Acknowledgments

USPTO's Patent
and Applications
Search Page

Google's Patent Search
Page

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

Class

Date
(Link is to Detailed
Assignment)

Subject

Readings

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.

2

09/27

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.

None.

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

-

10/4

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.

-

PS

The
current organizational Chart for the Department of Commerce, parent of
the PTO, is now in DOCS.

3

10/11

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.

4

10/18

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.

OPTIONAL FIELD TRIP

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

Team meetings with RJM begin this
week.  Please email with times that your team is available.  See
TEAMS.HTM
for open times.

5

10/25

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.)

6

11/01

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.

7

11/08

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).

8

11/15-16

Simulation
Performances

See SIMULAS.HTM
for schedule, judges, etc.  Critique assignments are at TEAMS.HTM

-

11/22

NO CLASS - Happy Thanksgiving!

9

11/29

Simulation Performance

See SIMULAS.HTM
for schedule, judges, etc.  Critique assignments are at TEAMS.HTM