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

Last modified 3-4-2012 at 21:10 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 (index.htm) and  other documents
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

Activities and Readings

Written Assignment

1

01/12
PPT

1.
Introducing Ourselves

Questionnaire
for everyone.

Please
submit the questionnaire by Sunday night,
1/08, at 11:59 pm,*
but the earlier the better.

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

None.
Documentation will be posted soon.

None.

3
What is a patent?  (concrete)

This week's
assignment requires you to find an ordinary item that bears a patent
number and then to consider the patent. 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
Tuesday night, 1/10, at 11:59
pm*, please do the
assignment  and submit the ordinary patent
webform and photographs.

By
Thursday morning, 1/12, at 10:00
am, please provide your comment on another student's submission, as
explained in the
assignment.

2

01/19
PPTX
as
PDF

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

Optional-
before or after you makeaflake, you may want to
read this
delightful poem about the disconnect between spelling and pronunciation in
English.  I received an email about it today (1/13/12)and hunted for
a link that would provide attribution.  It turns out that the author,
Gerard Nolst Trenité (1870-1949), was Dutch.  (Viewing notes:
it is difficult to remove the scrolling ad on the right, but
word-searching for 'Dearest creature' brings you to the start of the poem,
where the scrolling, though annoying, does not cover the real content.)

Please
bring your own highlighted copy of your ordinary patent to class if you
need it to refresh your recollection.  Also bring the item if you
can.

2.
A real patent infringement lawsuit some seminar students observed in
2007:  Boston Scientific v Cordis.  First:  It's the
CLAIMS.

As
explained in the
assignment, please look over one of the patents in suit,  Fontirroche
et al 5,820,594.Then read an edited judicial
opinion on a pre-trial motion in the case. (If you are curious, read
about how my
edited versions of readings differ from the original.)  Finally
spend no more than about 10 minutes looking at fhe 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).

The assignment
involves, once again, letting something in a patent jump off the page at
you.  Then you read a judicial pre-trial opinion.  If this is
the first time you are reading a case, it may be tough going. I have tired
to make it easier, but am fully open to additional suggestions. (Email
separately from the assignment, please.)  After that, please look at
the file histories to get an idea of what you can find in them.  The
assignment has more specifics about your tasks.

FIELD TRIPS (optional)

Chief
Judge Ware, NDCal, is presiding over Acer v. Tech. Prop. (3:08-cv-877
(JW)), will hold a Tutorial on 1/26 starting at 9 am, and a Claim
Construction Hearing on 1/27, also at 9 am, in the San Francisco
Courthouse, Courtroom 9 - 19th Floor, 450 Golden Gate Avenue, San
Francisco, CA 94102  I am trying to get an estimate of the ending
time.  If there is a lunch break it will be at noon.  There will
probably be a break for the court reporter at 10:30 or so, and another in
the afternoon, if the hearings are lengthy.
As mentioned at the first
class:  On 1/11/12
Judge Ware appointed a court technical advisor, having  notified the
parties of this intent on 12/19/11
(advisor's resume, pdf pages 6-7).  Here also are links to Judge Ware's
calendar, the original
scheduling order, and the order
changing the date of the tutorial.
Students interested in attending
should contact me per the 1/19
assignment.

3

01/26
PPTX
as
PDF

1.
Dealing with claims, for purposes of claim interpretation and
otherwise

1.
Look over Morris's
method of reformatting claims.  (FYI:  As an example I use
claim 1 of Fontirroche '594.) You will not need to reformat claim 1 of the
'336 patent, but you will need to break it down into phrases so you can
prepare a chart that shows where it and claim 1 of one of the other
patents in suit are the same or different.  Later on, you will
reformat the claim in dispute in your simulation.

2.
Preparation for the Acer v. Tech. Properties field trip (whether or not
you are going)

2.
Read about
DJs if you don't know what they are.  Read the Joint
Claim Construction Brief (12 pdf pages) .  Look at the cover
pages of the patents in suit,  5,440,749;
5,530,890;
5,809,336,
and 6,598,148.
Read more as you wish.  The text of each patent's claim 1 is
(suitably named) in the DOCS directory for
your convenience.

See assignment
- no Sunday night due date, nor Thursday morning comments, just a Tuesday
midnight* deadline.  This time some things are to be in the text of
the email and some things are attachments.  Note about
attachments:  Please put your first name both in the document itself
and in the file name.
An
example of a patent family tree is here.

3.
From Last Week

Refresh
your recollection about the BSC v Cordis decision and what you wrote about
it..

If you
marked up printouts of any of the BSC documents, please bring them with
you.

4

02/02
PPT
PDF

1.
Start work on the simulations.

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

1.
For Tuesday at 11:59 pm*, grad
students and (optional) law students with access to labs please complete
webforms
for at least one, and no more than three, potential patents.  For
Thursday at 11:59 pm*, law
students, I will send you a patent number or two for you to determine
litigation status.

2.
Validity, especially obviousness.

2. KSR v.
Teleflex (Supreme Court 2007)

2.
See assignment.

3.
Catch-up

3.
Review your notes from weeks 1-3 and the Acer hearings if you
attended.

3.
See assignment.

Optional:  INSTANT PATENT LAW for grad students,
especially.  Tuesday, 2/8 at 2.

5

02/09
PPT
PDF

1.
Begin working in teams.

1.
Communicate with your team about candidate patents.

See assignment
about what Kermit should email and what the team should do in preparation
for a meeting with me.  Possible times for meetings are Wednesday,
Friday, Saturday and Sunday.

2.
Infringement, especially under the doctrine of equivalents, and review of
obviousness.

2.
Caselaw about infringement, experts and the doctrine of equivalents:
Warner-Jenkinson
and Siemens v
Saint Gobain (cert. petition currently pending before the Supreme
Court).

You
only need read one of the cases:  see assignment.

FIRST  TEAM MEETINGS WITH RJM.  What to do to prepare
is HERE.
Once scheduled, the times/teams will be listed HERE.

6

02/16
PPT
PDF

1.
Taking and giving testimony, part A: Guest Speaker Prof.
Philip H. Bucksbaum, expert witness in Imra v. IPG, EDMich,
2011.

2.  The Federal Rules of Evidence concerning expert
testimony.

1.
The patent-in-suit: 5,818,630
and a text version of its claim
1.  Please look ONLY at the patent at first.  Look at the
other documents as required by the assignment.

2.
Rules
701-705 and a short recent decision on a Daubert motion in a patent
case:  Apeldyn v. AUO.  (If
you want to know more about Daubert, see the edited Supreme
Court decision  and  the decision
on remand, both of which I assigned in 2008.)

See assignment
.

7

02/23

Short
presentations by teams. Chosen patent and possible issues.

Read
as needed for your presentations.

See
last slide of 0216.pptx (0216.PDF). In order to be able to display your
slides in class, please either post them on the web or bring them to class
on a memory stick.  (Bring your reformatted claim 1, and any other
documents you want the class to have.)

ADDITIONAL TEAM MEETINGS WITH
RJM, weeks of 2/20 and 2/27.
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. The schedule will be HERE.

8

03/01
pptx
pdf

Finishing
up with your questions.  Advice on good questions, good answers.
Brief discussion of some of the many patent infringement litigation issues
that scientific experts usually don't encounter.

As
needed for your projects.

None

9

03/07

Simulation Performances.
Additional
information is HERE.

Sam,
Tim, Corinne and Kevin

For Sunday 3/4 at 11:59pm*,
Kermits should email me the information requested in Slide 15 of the 3/01
slides.
Click
here for critique assignments.  I had said these would be due
Thursday, 3/15, at 11:59pm but
because I will be out of town, you will have until Tuesday, 3/20, at 11:59
pm*.

03/08A

Chris,
Amanda, Dave and Jamie

03/08B

Patrick,
Amy, Waqas and Nicolaj