sci.ev. 2007-rjm week 2 - 9/12/07 1 law 343 - scientific evidence and expert testimony: patent...
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Sci.Ev. 2007-rjm Week 2 - 9/12/07 1
LAW
34
3 -
Sci
en
tific
Evid
en
ce
and
Expert
Test
imon
y:
Pate
nt
Liti
gati
on
Today’s Agenda What We Will Do in this
Seminar (again); What You Have Done So Far
Review of Patent Law – why I wanted to know how much you (collectively) know
The object/patent assignment
KSR – and why it matters for the seminar
5 min. break at 5:10. Over at 6:15.
Sci.Ev. 2007-rjm Week 2 - 9/12/07 2
What You Will Do in this Seminar
- I assumed you had read the course description long ago, and hadn’t forgotten too much yet. (next slide)
- You’ll either perform on the contract or walk.*
- Your responses to this week’s assignment were very good. Thank you.
- Any questions about the rest of the term?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 3
For the first part of the term, the class will review relevant patent law and expert testimony law. After that, the law and graduate students will work together to select patents for their final simulation projects. Working collaboratively, the students will prepare claim charts and devise a design-around, creating a situation that gives each side adequate room for argument. All students will then be assigned a client, either patent owner or accused infringers. As adversaries, they will present short oral arguments (law students) and summaries of expert declarations (grad students) for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be practicing patent litigators and patent professors.
Or, even bigger (next slide)
Sci.Ev. 2007-rjm Week 2 - 9/12/07 4
For the first part of the term, the class will review relevant patent law and expert testimony law. After that, the law and graduate students will work togetherto select patents for their final simulation projects. Working collaboratively, the students will
prepare claim charts and devise a design-around,
creating a situation that gives each side adequate room for argument. All students will then be assigned a client,
either patent owner or accused infringers. As adversaries, they will present
short oral arguments (law students) and summaries of expert declarations (grad students)
for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be practicing patent litigators and patent professors.
Sci.Ev. 2007-rjm Week 2 - 9/12/07 5
Your Plans and Biases:PO/AI; also Pros/Lit/Corp
Sci.Ev. 2007-rjm Week 1 5
prosecutors litigators
best
worst
Hours BillingDeadlinesLevel of Excitement, Intellectual StimulationClient contact, esp. with new companiesNature of work: Science v. Strategizing, Business Team v. SolitaryCooperative v. AdversarialLevel of Compensation
corporatetransactional
Which (one or more?!)
are you planning to be?
Last Week’s Slide 5
Sci.Ev. 2007-rjm Week 2 - 9/12/07 6
Validity
Infringement
AI
Preponderance
C&C
PO
WHO HAS THE
BOP?
WHAT IS THE QOP?
How does this affect you, the litigator, as you work with a scientific expert?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 7
Aro Top1964 – repair v reconstruction
City of Elizabeth1878 – experimental use
Chakrabarty1980 – patentable subject matter
DSU v. JMS *2006 – inducing infringement
eBay2006 – permanent injunctions
Egbert1881 - experimental use
FAM
OU
S C
AS
ES –
Year
- Is
sue All SUPREME except *
Sci.Ev. 2007-rjm Week 2 - 9/12/07 8
Festo2002 – pros.history estoppel
Graver Tank [Graver Mfg v Linde]1950 – doctrine of equivalents
Graham v. Deere1966 – obviousness
Gurley *1994 – teaching away
Harvard Mouse [Canada]2002 - patentable subject matter
Knorr-Bremse*2004 - willfulness
KSR 2007 – obviousness
FAM
OU
S C
AS
ES –
Year
- Is
sue All SUPREME except *
Sci.Ev. 2007-rjm Week 2 - 9/12/07 9
Markman1994 – claim construction
Monsanto (Canadian) *2004 – plants
Parker v Flook1978 – patentable subject matter
Seagate1994 – teaching away
State Street *1998 – patentable subject matter
Westinghouse v Boyden Brake 1898 – reverse DOE
FAM
OU
S C
AS
ES –
Year
- Is
sue All SUPREME except *
Sci.Ev. 2007-rjm Week 2 - 9/12/07 10
Your Patented ObjectsCraven: Pill ContainerFreed: Garbage BagFaulkner: Magnetic Snap Fastener
[Gamble - Applied Physics: Kleenex Box]Marshall: TI Calculator
[Morris: Coffee Sleeve (handout from last week)] Pan: Toothpaste SqueezerPeng: Auto-turn-off Vacuum Cleaner (three patents)Petrova: TI CalculatorReeslund: Disposable ThermometerReyes: Water Filter (two patents)van Niekerk: Bicycle BearingWahlstrand: Tooth Whitening Strip (two patents)
Color/Font KeyHigh techLow techTech not what you expected(last category not incomplete due to CW outages)
Sci.Ev. 2007-rjm Week 2 - 9/12/07 11
Reading a Patent
How many patents have each of you looked at (howver defined) before last week?
• None?
• Single digits?
• Tens of Patents?
• More?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 12
Reading a Patent
What you looked at first (first through fifth), what you looked at later, what you ignored.
(HANDOUT)
What about that cover sheet?
Your comments on other people’s cover sheets.
What I look at…
Sci.Ev. 2007-rjm Week 2 - 9/12/07 13
Reading a Patent
Why choose a patent whose number appears on something you can buy?
Your experts may balk at this requirement. Be ready to be firm.
How do you read a patent?
Always ask: who wants to know?
Different perspectives:
- PO, PAppl, AI, VC, Curiousity (you, now)
- Commonalities and differences in approach
Sci.Ev. 2007-rjm Week 2 - 9/12/07 14
Reading a Patent
• PAppl – (looking at prior art patent)– to disclose and maybe to claim around – to see if you should buy/license it
• Potential Licensee /AI - litigation– to design around – or buy – or merge…– to challenge validity or enforceability [assuming you’re within the
claims]– to negotiate a license intelligently
• M&A (PO or Licensee or AI-lit/settlment)– to evaluate an asset
• PO - litigation– to evaluate whether you can sue within the bounds of Rule 11
Sci.Ev. 2007-rjm Week 2 - 9/12/07 15
Who has to look at CLAIMS? Who can IGNORE claims?
• PAppl (looking at prior art patent)
• Potential Licensee /AI - litigation
• M&A (either side)
• PO – litigation (to sue on the patent)
Sci.Ev. 2007-rjm Week 2 - 9/12/07 16
P-I-S v P.A.Situation A
Patent-in-suit = NEWPrior Art Patent = OLD
Situation BPatent-in-suit = OLDPatent on accused device = NEW
Is the New patent valid over the Old patent?
Is the Old patent infringed by someone practicing the New patent?
New Patent Look at New's CLAIMS Look at New's SPECIFICATION
Old Patent Look at Old's SPECIFICATION (what it "teaches")
Look at Old's CLAIMS
Sci.Ev. 2007-rjm Week 2 - 9/12/07 17
Lawsuit ≈ Liability & Damages
In ANY IP case (copyright, trademark, trade secret), the liability questions are:
IS IT VALID?IS IT INFRINGED?
What the “it” is will vary, of course.What makes an“it” valid is different, too.So: What is the “it” in a patent case?
Liability ≈ Validity & Infringement
Sci.Ev. 2007-rjm Week 2 - 9/12/07 18
Liability ≈ Validity & Infringement
Given what the IT is in a patent case,what affects BOTH validity and infringement?
How is that resolved in many patent trials?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 19
Your Good Instincts, Your Naivete, Your Insights, Your Ignorance, and All of the Above
Craven: “Land”
?Marshall?: M+F
Faulkner: boiler plate introducing claims
& Faulkner: “substantially”
Reyes: role of inventor’s other, NOT cited, patent. Why might it NOT matter? 6103114 v 5882507
statute(s)
MPEP
Peng & ____: references cited are the PTO/Examiner’s finds
Sci.Ev. 2007-rjm Week 2 - 9/12/07 20
Claim Language – M+F
How many of you already know about M+F claims?
Means + Function claims are common.
They are permitted under Sec. 112 P 6 (quoted on next slide).
Looking at the statute, or from prior experience, where will the controversies lie in a M+F claim?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 21
35 U
SC
112
¶ 6
An element in a claim for a combination may be expressed as a means or step
for performinga specified function
without the recital of structure, material, or acts
in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts
described in the specification
and equivalents thereof.
**for LITERAL infringement,
not DOE infringement**
Sci.Ev. 2007-rjm Week 2 - 9/12/07 22
KSR
Your Verbs - POS NEG or BOTHSC - thrillsJAF - frustratesJDF - engenders ambivalenceSM - slightly bothersLP - amusesJP - intriguesHP - charmsJR - shocksMR - concernsRvN - surprisesJW - appeals to
RM – irritates, when it doesn’t make me chortle (arrogantly)
Sci.Ev. 2007-rjm Week 2 - 9/12/07 23
KSR and the factoid
Two-edged sword – the strategic problem of such evidence
Simultaneous independent invention:
proof of obviousness?
or
grounds to declare an interference?
Sci.Ev. 2007-rjm Week 2 - 9/12/07 24
Next Week
Meet the graduate students
Reading assignment for them and you – TBD.
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