PM01 Presenting a Tutorial to a Judge in a Patent Case Involving Complex Technologies Austin IP American Inn of Court Group 5 Presentation

PM02 Background Patent litigation often involves complex technology.

PM03 The standard for claim construction is what one of ordinary skill in the art would understand a limitation to mean. Background

PM04 Judges often request a technology tutorial as part of claim construction. But they are not alone. Background

PM05 Decisions that must be addressed in creating and presenting a technology tutorial Panel discussion of experiences and preferences Handout of statistics Our Goal

PM06 Tutorial Decision Tree Live or Prerecorded Live Prerecorded Expert or Attorney Slide or Animation Expert Q&A or Narrative

PM07 Who is the intended audience? How long should the presentation be? How much does it cost? Where is the line between argument and objective tutorial? Additional Considerations

PM08 Tutorial Decision Tree Live or Prerecorded Live Prerecorded Expert or Attorney Slide or Animation Expert Q&A or Narrative

PM09 Often this decision is made by the Court If not, some considerations include: –Prerecorded can be viewed as many times as the Court wishes may be less engaging will not be interactive –Live interactive – can answer questions Live or Prerecorded Tutorial

PM010 Tutorial Decision Tree Live or Prerecorded Live Prerecorded Expert or Attorney Slide or Animation Expert Q&A or Narrative

PM011 Slide or animation –Cost Slide presentation with voiceover relatively inexpensive Animation can be quite expensive if done professionally –Time Slide presentation with voiceover relatively quick Animation can take some time to build and perfect Prerecorded Tutorial

PM012 Slide or animation –Presentation Slide presentation with voiceover can be pretty dull Animation can be very engaging and instructive Prerecorded Tutorial

PM013 Tutorial Decision Tree Live or Prerecorded Live Prerecorded Expert or Attorney Slide or Animation Expert Q&A or Narrative

PM014 Some Courts require expert If not, some considerations include: –Expert Can be more convincing and authoritative Better at answering questions from a technical perspective –Attorney Can be better at avoiding pitfalls when answering questions Expert or Attorney Live Presentation

PM015 Tutorial Decision Tree Live or Prerecorded Live Prerecorded Expert or Attorney Slide or Animation Expert Q&A or Narrative

PM016 Generally should use narrative if the Court allows it Detriments to Q&A –Breaks up flow of presentation –Unnecessarily increases time –Professors are often accustomed to presenting in narrative Expert Q&A or Narrative

PM017 Who is the intended audience? How long should the presentation be? How much does it cost? Where is the line between argument and objective tutorial? Additional Considerations

PM018 Who is the intended audience? –Judge –Judge’s clerk(s) –Technical adviser Additional Considerations

PM019 How long should the presentation be? –Appropriate level of detail for the audience –Attention span –Cost Length Animation Level of detail Additional Considerations

PM020 Where is the line between argument and objective tutorial? –One instruction Courts generally give is to avoid argument in a tutorial –How far away from advancing your proposed constructions is far enough can be very difficult to determine Quoting a specification passage that arguably contains an express definition Quoting a technical dictionary definition that supports your construction Additional Considerations

PM021 Panel Discussion And Finally...

PM022 Technology Tutorial Example Coalbed Methane Case Austin IP American Inn of Court Group 5 Presentation

PM023 DJ Patent Infringement Case involving oil field technology 108 Asserted Claims from five patents Patents all involve “coal bed methane degasification.” The extraction of coalbed methane involves a process known as hydraulic fracturing (aka "fracking"). Background

PM024 The ‘523 Patent

PM025 The ‘523 Patent

PM026 Accused Infringer’s construction is narrower than patentee’s The Term “Articulated Well Bore”

PM027 Accused Infringer Argument

PM028 Patentee Argument

PM029 Tutorial Section #1 (Intro Section) Panel Question –Are these the types of topics that you generally like to see addressed by the tutorial? –Any likes / dislikes

PM030 Tutorial Section #2 (Articulated Well Bore) Panel Questions –What did you think of this portion of the tutorial? –What did you think of the casual use of terms from the Accused Infringer’s proposed construction? –Was the use of graphics / animation effective?

PM031 Markman Order

PM032 Technology Tutorial Example LCD Technology Austin IP American Inn of Court Group 5 Presentation

PM033 Technology: methods for manufacturing LCD (Liquid Crystal Diode) technology using a novel method to inkjet print the RGB color filter LCD screens are constructed as a "sandwich" of color filter, liquid crystal, and electronics layered between two glass sheets LCD Tutorial - Background

PM034 The claims recited methods for depositing the various layers and constructing the completed sandwich LCD Tutorial – The Patent-at-Issue

PM035 A key dispute was the meaning of "layer of transparent, conductive material atop said insulating layer" –Patentee: the conductive layer and insulating layer must be separate and distinct –Accused Infringer: these layers may blend at the boundaries LCD Tutorial – The Dispute

PM036 Following is a portion of the Accused Infringer's tech tutorial LCD Tutorial

37 How LCDs Work Glass 2. Electronics 3. Liquid crystal 4. Conductive layer 5. Insulating layer 6. Color filter 7. Glass

One Embodiment of the Patented Method for LCD Fabrication

39 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side

40 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material

41 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material INTERFACE ZONE

42 Glass Sheet Opaque Material Insulating Layer Transparent Conductive Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material

PM043 Did the plaintiff improperly advocate its "blended layers" claim construction? LCD Tutorial – Panel Question

PM044 Would your answer change if you knew that: –Sputtering to deposit conductive layers was well-known in the art, but not specifically disclosed or claimed in the patent? LCD Tutorial – Panel Question

PM045 Would your answer change if you knew that: –Although an accurate description of the science, the term "interface zone" appears nowhere in the patent? LCD Tutorial – Panel Question

PM046 Technology: methods for manufacturing LCD (Liquid Crystal Diode) technology using a novel method to inkjet print the RGB color filter LCD screens are constructed as a "sandwich" of color filter, liquid crystal, and electronics layered between two glass sheets LCD Tutorial - Background

PM047 The claims recited methods for depositing the various layers and constructing the completed sandwich LCD Tutorial – The Patent-at-Issue

PM048 A key dispute was the meaning of "layer of transparent, conductive material atop said insulating layer" –Patentee: the conductive layer and insulating layer must be separate and distinct –Accused Infringer: these layers may blend at the boundaries LCD Tutorial – The Dispute

PM049 Following is a portion of the Accused Infringer's tech tutorial LCD Tutorial

50 How LCDs Work Glass 2. Electronics 3. Liquid crystal 4. Conductive layer 5. Insulating layer 6. Color filter 7. Glass

One Embodiment of the Patented Method for LCD Fabrication

52 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side

53 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material

54 Glass Sheet Opaque Material Insulating Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material INTERFACE ZONE

55 Glass Sheet Opaque Material Insulating Layer Transparent Conductive Layer Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material

PM056 Question for the panel: Would your answer change if you knew that: –Sputtering to deposit conductive layers was well-known in the art, but not specifically disclosed or claimed in the patent? LCD Tutorial - Questions

PM057 Question for the panel: Did the plaintiff improperly advocate its "blended layers" claim construction? LCD Tutorial - Questions

PM058 Question for the panel: Would your answer change if you knew that: –Although an accurate description of the science, the term "interface zone" appears nowhere in the patent? LCD Tutorial - Questions