2013-05-22 (week 8) rjm - ip: sci ev in pat lit - spring 2013 1 today's agenda any questions?...

2013-05-22 (Week 8) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1

Today's Agenda• Any questions?

• Direct/Cross - Asking/Answering

• Patent issues that lawyers handle without scientific experts

• Preview of Introductory Slides

• Next Week

• ~8:30 Adjourn/meet with your team


Some Questions from 2012

Do experts attend each other’s depositions? Yes.

If PO wins broad claim construction, but loses: up/downside?Downside: Loses on VALIDITY. (Blonder-Tongue)Upside: Other infringers out there.

“Voir dire.” Applies to (1) open-court interview of jurors to determine qualifications [really lack of], (2) open-court interview (Q&A) of expert to determine qualifications, (3) anything else?

Benefit of aggressive questioning? Juggling – decision here, record on appeal, ‘opening (or keeping closed) the door,’ antagonizing/waking up/alerting the judge or the jury, letting opponent know you know/fear, etc.


Some Questions from 2012

What is impeachment ? "Witness, you lie!"

Why NOT submit extrinsic evidence for claim construction? 1. Strategy: Could imply weakness of intrinsic evidence2. Money: Expert testimony/declaration; find/read dictionaries, etc.

3. Law: Fed Cir dissed it in 2005 in Phillips, hasn't changed its mind and hasn't had its mind changed by the Supreme Court.

[At trial] Is there always confusion over what’s in evidence?Yup. All that paper. And it all matters for ‘the record

on appeal.’

Q for you: What is in that record? How does it get there? Who compiles it?

http://scholar.google.com/scholar_case?case=2207195741320793153&hl=en&as_sdt=2&as_vis=1&oi=scholarr


Your Questions?Hello?


2 x 2 MatrixDirect and Cross, Asking and Answering

Who?/What? Direct Cross Both

L: Asking Open-ended Leading Short, frequent

E: Answering Expound Yes/No only* Succinct, Looking at the judges more than the lawyer

Both Polite, Friendly, Credible, Non-argumentative


Direct and Cross: Asking

Direct: Ask OPEN questions. Examples:

What happened next?

Tell us about this slide.

You mentioned X on this slide. What does it do?

{why isn't that LEADING?}

Cross: Ask LEADING questions.

Aim for a question with a Yes/No answer. Example:

Does the widget perform the Z function?

Experts: In the interests of time, answer the question!

Let your lawyer rehabilitate you on re-direct, if ne wants to.


Direct and Cross: Asking

Direct: Ask OPEN questions. Examples:

What happened next?

Tell us about this slide.

You mentioned X on this slide. What does it do?{why isn't that LEADING?}

Cross: Ask LEADING questions.

Aim for a question with a Yes/No answer. Example:

Does the widget perform the Z function?

You can also chooose to ask NO questions at all.

(Sometimes the best cross is NONE. You may construct the problem so that there's something to ask about on cross. But you may also notice something unexpected. If you do neither, don't cross!)


Direct and Cross: AnsweringExperts:

Both Direct and Cross:

LISTEN. Answer JUST the question the lawyer asks.

Direct: If your lawyer is floundering, as a last resort, help ner out (but don't make it obvious).

Cross: In the interests of time, still just answer the question!

Let your lawyer rehabilitate you on re-direct, if ne wants to.

If the other lawyer is floundering, as a last resort, skewer ner, but sweetly and succinctly...


What Judges Will Mention If You Forget -1

DIRECT: Closer to a Tennis Match than a Lecture• REDUCE the time between questions.• A back-and-forth dialogue is good. • Both L and E should look at judges (and fellow

students from time to time…) to check for mystification. • L should push E to slow down, explain, etc., even

if that is not in the ‘script.’

EXPERT: If the Q doesn’t provide a topic sentence, you state it. “I will now explain the blutz” is OK!


What Judges Will Mention (RJM’s formulation) -2

LAWYER: You can lead your witness through the slide. If there is a connection, you can avoid leading.

1. LEADINGQ. Dr. X, I see that there’s a giraffe next to the

anaconda. How do those two work together?A. Narrative – short – about G+A.

2. NON-LEADINGQ. Dr. X, you’ve told us about the giraffe. Does

it interact with anything in that picture?A. Only the anaconda. Same narrative as Q1.

Improve these questions!

Assumes fact not in evidence: that they DO work together!



EXPERTS: HOW MUCH TO TALKThe rule ‘Just answer the specific question’ applies on CROSS, and somewhat (but less) on direct. Both Q1 and Q2, if asked on direct, can be answered with a narrative.On cross, Q2 should NOT be answered with a narrative!

CROSS: don’t fight. Experts, stay brief.Lawyers: stay brief, too!

Lawyers should LEAD. Ask yes-no questions. Don’t give the Expert the chance to amplify, argue, or anything else. CONTROL!



DIAGRAMS – SCHEMATICS – etc.

If they ARE from the patent, cite the figure and sheet.

If they are BASED ON the patent, but different, SAY SO.

If they are NOT ‘from’ the patent, SAY SO.

As in all things: honesty is the best policy. Anything that might look underhanded, meet head on!

Does this slide have the right amount of words? Too many? Too few?

Is it easy to read quickly?

In your slides, remember that a picture is worth 1000 words.


What Judges Mention (RJM’s formulation) - 5SCIENTIFIC TERMS: Make sure you EXPLAIN any scientific term the FIRST time you use it. Say it, point to it or have the animation highlight it, explain it, use it in a sentence.

Expert and Lawyer BOTH: Do not let a scientific term creep in without explanation. (Don’t bother to explain what is in a high school science class in bio, chem or physics. Do explain what’s in the college class…)

Lawyer can also ask again when the term is used a while later. Q. You mentioned that word rhinoceros again: it’s that whozits that transports the mud toward the whatsits, right?” A. That’s right. SURE that Q is leading. But as long as Lawyer is repeating what Expert said, nobody will object, even in a real jury trial.


What Judges Mention (RJM’s formulation) - 5

EXPERTS: You CAN, or the LAWYER can on your behalf, ask to leave the witness chair and walk up to the screen.

Often, walking up to the screen is GOOD:* you engage with the judges better when you are up * you revive yourself by moving around* your lawyer gets a chance to catch a breath

(Do we need a laser pointer? )

(Do we need an easel?)

EVERYBODY: NO NOTES! The slide should be enough.


Patent Issues that Scientific Experts May Care About(but we mostly ignored)

Invalidity (35 USC 112)Enablement – because it also depends on the knowledge of the Written Description – dittoBest Mode (was [incompletely] removed by AIA)

Invalidity under102(g) of the old statute (willcontinue to apply to applications filed before 3/16/13)

Proving the DATE OF INVENTION(priority)ConceptionReduction to PracticeDiligenceCorroboration

HOA-at-TOI

Link to good resource re effective filing dates, first inventor to file, etc. (Duke Patent Law Institute, 5/14/13, Tom Irving of Finnegan (Big Kid Alert))

http://law.duke.edu/sites/default/files/centers/judicialstudies/patentlawintensive/tuesday_Irving-May_14_FITF.pdf




Patent Issues that Scientific Experts

Don’t Have to Care About – Usually -1

InvalidityThe ON SALE BAR where the bar

involves a thing sold or offered for sale (as opposed to a written disclosure such as a journal article, manual, advertisement, patent application) EXCEPT REMEMBER:

Evaluation of Secondary Considerations (but can rely on other experts…) EXCEPT REMEMBER:

It’s the claim, stupid.



Patent Issues that Scientific Experts

Don’t Have to Care About – Usually -2

Infringement (Other Defenses)Implied License (except REMEMBER:

LIABILITY - but not related to the CLAIM issuesLaches and Estoppel“Prosecution Laches” (Exp at Earliest Filing+20

should reduce these arguments)

DAMAGES


Introductory Slides/Commentary


Helio will introduce judges and students (bios based on info

on table you received in week 1; please send corrections/revisions/amplifications to him, cc: me)

present his version of the following slides


SIMULATIONS – The Issue

The issue as to which the experts will testify was chosen by the teamworking collaborativelybased on studying the patent, file history,

prior art, and with the students providing expertise on

the law and the technology)with just a bit of oversight by RJM

The whole team worked together on Q&As and areas for cross-examination.

They chose sides only at the end.


Collaboration and Interdisciplinary Learning

Goal: To devise a BALANCED problem, where both sides have a reasonable position, without noticeable violation of

the law of patents,the law of gravity,the law of energy conservation, etc.

Reached by: Extraordinarily hard work and collaboration.

(They only became adversaries when they arrived this evening.)


The CLASS and The SIMULATIONS – What They are NOT

This is NOT a trial practice class. This is NOT a patent law class.This is NOT the only class/academic responsibility these students have right now.

Time Constraints: see NOT #3Time Constraints: 4 weeks to do the projectTime Constraints: 1 hour to do the simulation


SIMULATIONS – Another NOT

Time limits also mean, the simulation is NOT of a jury trial

The students have prepared their presentation as if for a bench trial before a judge like you

intelligent * interested * patent-savvywho has chosen to hold a single evidentiary hearing on both claim construction and summary judgment.

2013-05-22 (Week 8)RJM - IP: Sci Ev in Pat Lit - Spring 2013 23

SIMULATIONS – More NOs

Therefore: • NO objections (except that judges may sustain an

objection they wish they'd heard)• NO credentialing of experts• NO offering of exhibits into evidence• NO other realities of the courtroom matters that

would cut into the time available for substance• NO outsiders: the witnesses are students, too• NO winner – or there shouldn’t be• NO interruptions by the judges (if possible)


SIMULATIONS – Knowledge of Patent Law

The law students came in knowing some patent law.

The teams met with me to make sure the law was on their side[s].

Earlier in the quarter, the entire class learned (or reviewed) some patent law.

Everyone learned about claims and how to format them to make them readable.Also to say (even if they’ve never heard of George Stephanopolos )



SIMULATIONS – The Facts and The Law

The students invented the design around.

The accused infringer is imaginary.

Handouts: Claim-in-suit (reformatted)* and Patent-in-suit.

*By Local Rules, this must be slide 1. The team must reformat the claim-in-suit to make it easier for you and me to read and comprehend speedily, and to help the team learn it and its secrets.


SIMULATIONS – 5/29/13 at 7 Inventor: Higuchi. 5,994,056. "Homgenous Methods for Nucleic Acid Amplification." Issued Nov. 30, 1999.

Issue: Infringement

Cast in order of AppearanceTutorial Expert: DB (exp PhD, Appl Phys)For PO: Attorney -

Expert - For AI: Attorney -

Expert - Judges:

Goldman (3rd time)Higgins (4th time)Rowland (5th time)Shah (1st time, MI alum, guest speaker)

[Refreshments available between the two simulations.]


SIMULATIONS – 5/29/13 at 9 Inventor: Vassarotti. 5,647,990. "Centrifugal Method for Concentrating Macromolecules from a Solution and device for Carrying Out Said Method." Issued 7/15/97.

Issue: Infringement

Cast in order of AppearanceTutorial Expert: C (exp PhD EE)For PO: Attorney -

Expert - For AI: Attorney -

Expert - Judges:

Allison (3rd time, MI alum)Brown-Marshall (5th time + seminar alum)Cox (1st time + seminar alum)Noh (3rd time, MI alum)


By Sunday, 5/26, at 11:59 pm*, please submit

1. Roles – PO v AIPlease CONTINUE to collaborate, however!

2. Any stipulations or other information your judges should be told or the audience should have available in a handout.

3. Names* of the AI and AD (if you use them)

4. Reformatted Claim 1. Dual goals: Enable the reader to= see at a glance the language underlying your issue (and related

signficant language elsewhere in the claim, if any) = skim and grasp the whole claim as necessary.

In consultation with your team, I may tweak your claim 1 if I think I can make the judges’ lives easier.


Next Week

Volunteers needed to help with set-up. Come by myy office at ~6:15 or Room 95 at ~6:30

Volunteers also needed to stay at the end and help clean up – and take home leftovers.

Roles: If you promise to continue to collaborate, you can choose roles today.

Critique Assignments: What to do and about whom will be posted over the weekend.

2013-05-22 (week 8) rjm - ip: sci ev in pat lit - spring 2013 1 today's agenda any questions?...

Documents

sci ev

rjm ip

open questions

leading questions

best cross

dont cross

todays agendaany questions

yesno answer