Subject: Spring 2013 - IP: Scientific Evidence in Patent Litigation
From: <Saved by Windows Internet Explorer 7>
Date: Sun, 9 Jun 2013 16:38:59 -0700

Spring 2013 - IP: Scientific Evidence in Patent Litigation - Prof. Morris

Last modified 5-23-2013 at 1140
PST

Subdirectories

PPT:
Powerpoint slides from the weekly class meetings.

ASSIGN:
Assignments.

DOCS:
Reading materials.

ARCHIVE:
Previous versions of this page (index.htm) and of slides, assignments
and documents if revised.

Other Useful Links about the
Seminar

Course
Description

Consent
Form

How
to get to the classroom

Information
about class meetings

Acknowledgments

Useful Links for
Assignments

Google's Patent Search
Page

USPTO's search pages for patents
and applications

USPTO's PAIR system for
file histories

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

Activities and Readings

Written Assignment

1

04/03
PPT
TOA
list

1.  Introducing Ourselves

Questionnaire for everyone.

Please submit the questionnaire
as soon as you can.  Deadline is Sunday night, 3/31, at 11:59 pm.*

2  Seminar Terms &
Conditions, and your excellent questions about the course description.

How the Seminar Will Work.

None.

3  What is a patent?  (concrete)

This week's
assignment requires you to find an ordinary item that bears a patent
number, answer some questions about the item, and then find the patent and
answer some questions about it. You must also comment briefly on another
student's submission.  If you can bring your ordinary item to class,
please do that, too.
By the way, assignments are always linked to the
class date (2nd column) and stored in ./ASSIGN.

By Sunday night, 3/31, at
11:59 pm*, please submit answers and photographs
as per the ordinary item
questionnaire.

By Wednesday
morning, 04/03, at 10:30 am, please provide your comment on another
student's submission, as explained in the assignment.

2

04/10
PPT
TOA
list

1.
Questions;  Finishing any open items from Week 1.

Read the handout from last
week, How the Seminar Will Work.

By Monday night, 4/8, at
11:59 pm*, respond
to the questions in the assignment about How...Work.  Also respond to
the email of 4/4 (first, very quick ...) and submit the results of your survey
of boilerplate.

2.  Scheduling:
Field Trip, Instant Patent Law, Simulations

None.

Please bring your calendar
so we can work out who's going when to the trial, and when to schedule
Instant Patent Law.  Also the simulation dates and times.

3.   A real
patent infringement lawsuit or claim construction hearing scheduled for
trial this quarter (see FIELD TRIP
below).

Read the Claim
Construction Order in SSI v TEK.  (Everyone must do this whether
or not attending the field trip.)  As you read it, you may want to
see the patent-in-suit in SSI v. TEK, 6,789,581,
owned by co-plaintiff AMI.

In addition to answering
questions for everyone, different students will have different obligations
with regard to this reading.

ATTENDANCE OPTIONAL - DATES and TIMES
TBA

1. FIELD TRIP.   SSI/AM v.
TEK is scheduled to start on April 15 in San Jose and end April 19.
Presiding is Mag. Grewal (who several years ago was a judge for the
seminar's simulations).  Likeliest times for group attendance:
Tuesday afternoon, Wednesday morning, and Thursday.

2. INSTANT
PATENT LAW. This extra class is especially but not exclusively for
grad students.  It is a chance to learn or to review some basic
patent law vocabulary (aka concepts).  Some other areas of the law,
such as civil procedure and federal courts, will be touched on, too.
5/3/13:  You already knew most of this material by week 3, and I hope
to prove this by running through my 2010 Instant Patent Law slides in
class in week
6.

3

04/17
PPT
TOA
list

1.  Finish with introductory
substantive law slides; arrange Instant Patent Law date.

1.  None.

1.  None.

2.  Our Field Trip Case

2.  We will discuss the claim
construction decision (assigned for 04/10).   Anyone who has
observed any part of the trial will talk about the experience.

2.  Review
the patent and claim construction decision as needed. See
assignment.

3. Validity, especially obviousness.

3. The summary
judgment decision in our field trip case and KSR v.
Teleflex (Supreme Court 2007).

3.  See assignment.

4

04/24
PPT
TOA
list

1.
Start work on the simulations.

1.
Read the questionnaire
about simulation patents for information about what makes a good
simulation patent.

1.
See assignment:  For Monday at 11:59 pm*, grad
students and (optional) law students with access to labs please complete
questionnaires
for at least one, and no more than three, potential patents.  For
Wednesday at 2 pm, law students determine the litigation status of the
patents whose numbers I send you.

2.  The
Federal Rules of Evidence concerning expert testimony.

2.  Rules
701-705

2.  See
assignment.

3.
Guest Speaker:  Alicia Shah,
Kirkland & Ellis.

3.
Transcript,
patent,
SJ/Claim
Construction decision (edited).

3.  See assignment.

5

05/01
PPT

1.  Begin working in teams.

1. Continue evaluating candidate
patents.

1. Team composition is in the assignment.
So are the things you need to do, together and individually.

2. Claims

2. Look over Morris's
method of reformatting claims.

2. As a team, reformat claim 1 of the candidate patents and
collaborate as needed on the other tasks.  See assignment.

3.  Field Trip Case.

3.  Discuss what we saw and what we learned.

3.  Nothing to write.

4.  Review of obviousness.

4.  Review the part of the SSI/AMI summary judgment regarding
obviousness.  Review KSR.  Review what you wrote about
each.

4.  Nothing to write, but do bring your copies of the cases to
class.

5/1 to 5/7: FIRST  TEAM MEETINGS WITH RJM. What to do
to prepare is posted in the assignment
for Week 5. Times/teams are in the Week 5
powerpoint.

6

05/08
PPT

1.  Infringement.

1. Read Warner-Jenkinson
(edited).  Additional case to read in class.

1.  See assignment.

2.  Claims not infringed, claims yes
anticipated.

2.  Last week's PPT
(slides 5-7)  posed questions concerning the jury's special verdict
on certain claims in SSI and AMI v. TEK.

2.  Look at the slides and the '581
patent claims and answer the questions on slides 6 and 7.  See assignment.

3.  Instant Patent
Law (quick review).

3.  Slides from 2010.

3.  None.

4.  Teamwork.
There will be some time during class to meet with your team and to ask me
questions.

4.  Study your
prosecution histories and the patent.  Also read cited and uncited
prior art as needed (experts), caselaw as needed (lawyers).

4.  Before class: take notes(n1) and meet and
confer.(n2)
(n1) This is a reference to the 2010 change to Rule
26,  F.R. Civ. P., mentioned by Ms. Shah:  Experts, fear no more
to write.
( n2) I use the words "meet and confer" in the ordinary
sense but you may be interested to know that it is a term of art for
motion practice in both federal and state courts.

7

05/15
PPT

1. Short presentations by
teams. Your patent's claim 1 and possible issues.

1. Read
as needed for your presentations.

1. A powerpoint
presentation and a reformatted claim 1.  See slides 14 and
15 from last week and the
assignment.

2.  Review of validity and
infringement.

2.  The O2 Micro decision, handed out
in class, is also available in
DOCS.  If you are a lawyer for a team that is contemplating a DOE
argument, you should definitely look over O2 Micro.  For everybody
else it is optional.

2.  Nothing to write, but please bring
your copy of the O2 Micro decision.

3.  What experts can and cannot
address.

3.  Review Rules
701-705 and your notes from Ms. Shah's talk.
Optional:  Look over Apeldyn v. AUO, a November
2011 patent decision about a motion to exclude a patent scientific
expert's testimony.
Even More Optional: The Supreme Court's
decision in Daubert
and the 9th Cir. (Kozinski) decision on
remand, as assigned in the 2008 seminar.  And more-more: Promised
links re Kozinski:   The Syufy
decision I mentioned in class a while ago, and the Syufy Rosetta
Stone.

3.  Nothing to write, but please bring
your copy of the Rules and your notes from the Shah talk.

ADDITIONAL TEAM
MEETINGS WITH RJM, required the week of 5/20 and as needed
5/25-29.
If I want you to prepare something in particular for our
meeting, I will email you.
Kermits:  let me know when I can
meet with your team.

8

05/22
PPT

Your questions.
How to ask and how to
answer.
Brief discussion of some of the many patent infringement
litigation issues that scientific experts usually don't encounter.

As needed for your
projects.

None other than what you assign yourselves
so that you are ready for the simulations.

9

05/29

1.  Simulation Performances.
Additional
information is HERE.

Simulations.

Kermits:  Email me
the necessary information by Sunday, May 26, at 11:59 pm* .
Critique assignments will be linked here.
Critiques will be due on Thursday, June 4, at 11:59pm*.