RJM - IP: Sci Ev in Pat Lit - Spring Please take your seat Rob Emily Scott Hernan Helio Andy [Reddy] Jenn {via Skype: Jennifer} Asa Chinyere Patrick David RJM DOOR Whiteboard

RJM - IP: Sci Ev in Pat Lit - Spring

RJM - IP: Sci Ev in Pat Lit - Spring Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 / GENETICS 243 Prof. Roberta J. Morris Room 218 Crown Quad On the web: and Group

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Agenda Who We Are What We Will Do in this Seminar Your Comments on the Course Description How the Seminar Will Work Your Patents and Your Comments 8:30 Break (timekeeper needed) 8:40 Resume Begin Review of / Introduction to Patent Law: P!=C!=T; WHAT IS A PATENT (CONCRETE). ~9:45 Adjourn

RJM - IP: Sci Ev in Pat Lit - Spring Housekeeping Helio, Jenn, Rob, Andy, Chinyere, David, or Asa: If you don't know how to remove the HTML copies from your messages, please ask Patrick, Jennifer, Emily, Scott, or Hernan because they seem to know! (based on your personal questionnaires)

RJM - IP: Sci Ev in Pat Lit - Spring Week Sci.Ev. - rjm FEEL FREE TO INTERRUPT ABOUT In the slides I will use the Mona Lisa to indicate TERMS OF ART. Use such terms carefully. They don’t always mean what you think they mean. Anyone who DOES know what they mean may misunderstand you if you misuse them. TERMS OF ART

RJM - IP: Sci Ev in Pat Lit - Spring Week Sci.Ev. - rjm 2 students will keep a list of the day's Terms of Art (you don't have to define them, but your colleagues may ask you about them) 1 student will keep a list of "professor's homework" and of any promises made by students to be PIs Volunteers? Lists should be ed to me by Thursday midnight* Rotating Jobs - New This Year!

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? - 1 Seating – Different every week for the first few weeks. Today: Ordering principal? Two different fonts? Today Handout - Student List 3 law students 8 science Ph.D. candidates 1 auditing post-post doc Axess : Bring any problems to my attention. I don’t usually check it myself until the end of the quarter.

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? - 1 (pronunciation) "Dearest creature in creation..." The Chaos (with the original font variations, or here, without) was written and revised in the 1920s and 30s by a Dutch linguist and teacher of English, Gerard Nolst Trenité ( ).The Chaos here

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? - 2 Introduce Yourselves Whose side are you on: patent owner (PO) or accused infringer (AI)? Answer with your attitude TODAY. This will not affect simulation assignments. What should we know about you that is not on the handout, and 1. that is on your resume? 2. that is not on your resume? You have time to think about your answers because I'll go first, and then I'll poll you about a few things.

RJM - IP: Sci Ev in Pat Lit - Spring Who Am I? The 5 Movies in my top 3 List, in no particular order except for the first The Princess Bride Casablanca (chosen by someone in class) Annie Hall The Shawshank Redemption (ditto, and it's why I ask this question) The Naked City (old B/W film noir: really good) Adam's Rib (& the whole category 'courtroom movies'...) It Should Happen to You Fargo may be there, but maybe it's one of the 20 in the top 10. I might add ARGO, but it's too soon to tell

RJM - IP: Sci Ev in Pat Lit - Spring Patented Coffee Sleeve

RJM - IP: Sci Ev in Pat Lit - Spring Poll rob emily scott hernan jenn reddy andy helio david chinyere asa jennifer Before you did the first assignment, had you ever noticed patent numbers on objects and packaging? Afterwards, did you see them everywhere? {4 of you were looking at a patent for the first time} Since college, how many classes have you taken that had less than 15 students? How many in law school? Did you take calculus in high school? Have you ever seen The Visual Display of Quantitative Information?The Visual Display of Quantitative Information Volunteer needed to record the results.

RJM - IP: Sci Ev in Pat Lit - Spring Now: Who are You? rob emily scott hernan jenn reddy andy helio david chinyere asa jennifer 1. PO or AI 2. What should we know about you that's on your resume? 3. What should we know about you that's NOT? 4. Anything else you'd like to add?

RJM - IP: Sci Ev in Pat Lit - Spring Questions about Course Description - 1 (order of comments is random within groupings) Simulations Patrick: How do we find balanced issues regarding patent infringement? Are the accused infringers always simulated or are there opportunities to find actual examples? Rob: What will be happening in class in the latter part of the course, “devoted to work on the final projects?” Will it be a space for meeting with our teammates, or will there be lecture and other discussion? Asa: How are the teams for the final project chosen? Do we get to pick the type of patent case/experts we’re using? Are the lawyers going to play lawyers? Chinyere: The class seems very engaging. I like the fact that it is very collaborative and that students will get the chance to meet regularly with the instructor. I also like the realworld application through simulation with practicing patent lawyers. From the course description, I believe I will learn a lot. David: I like that the trial documents involving scientific evidence in patent litigation will be considered in the class and that I will have a chance to participate in the simulations of expert testimony in a patent case.

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? Questions about Course Description - 2 Course Coverage - Prosecution Jennifer: Will we only be learning about patent litigation in this seminar, or will we also touch on patent prosecution? Also, I am intrigued with the up-coming change from “first-to-invent” to “first-to-file” and wonder how it will impact US research and future patent jobs. Will we talk about this at all? Hernan: Something I would find particularly interesting would be to discuss/look into the intersection between publication and patent writing. My understanding is that nothing that is published in a peer review journal can be included in a patent, but I have seen many cases where devices “deeply inspired by” published work have been turned into patents. I think this would be of particular interest for the future due to the explosion of research/patents coming from the nanotechnology field, which has skyrocketed over the last five years and it will only continue to increase.

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? Questions about Course Description - 3 Skills for Crossing Disciplines / Are patent cases different? - part 1 Emily: I wonder what sort of scientific background most lawyers or law students involved in patent law have, and what skills are the most important for getting information or constructing an argument about a topic outside one’s realm of expertise. Jenn: I was intrigued by the following quote: In other areas of the law where scientific experts are used -- medical malpractice, environmental law, criminal law -- the science itself is often in dispute. In patent cases, however, the parties generally agree on the science.” In experimental science, one crafts arguments for one particular thesis or another based on one’s own data and previous data, perhaps not unlike how in law one crafts arguments based on precedent. However, one’s thesis may change over time, so one must work hard on both defining the goal of the argument and developing a structure that supports it. I am interested in understanding how that process works in the patent setting described above, when one starts with a defined goal, and then works to find a structure that supports this goal. Scott: I’m excited to see how knowledge and understanding of scientific issues will help to inform legal strategy. I’m also curious to hear about the different role scientific evidence plays in patent law suits as opposed to other types of lawsuits.

RJM - IP: Sci Ev in Pat Lit - Spring Who Are You? Questions about Course Description- 4 Skills for Crossing Disciplines / Are patent cases different? - part 2 Andy: I am particularly intrigued by the course announcement’s description that graduate students “will also encounter the differences and similarities in the scientist's and the lawyer's perspectives about truth and proof” and that they will “help the litigators to choose which legal issues to press and which to concede, and to be aware of how the complications of the science might help, hurt, obscure or reveal how the law should be applied to the facts.” Exposure to different methods of analysis and thought is a motivating factor in my desire to take this course. I am looking forward to learning how to apply a complementary, legal reasoning method to my scientific one. Helio: In addition to simulations of expert testimony, will we learn about how scientists can get involved in the legal process and help inform lawyers/judges/etc on the relevance/implications/-significance of various laws and processes (outside of witness testimony in court cases)?

RJM - IP: Sci Ev in Pat Lit - Spring Do A work and receive a recommendation and networking help any time, for life. See draft of How the Seminar Will Work (handout)How the Seminar Will Work Weekly Assignments and Comments and final project Critiques: What You Will Do in this Seminar -1

01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter NO required. Better Late. thanLate That’s Never? Better Never What You Will Do in this Seminar -2

RJM - IP: Sci Ev in Pat Lit - Spring Schedule/Syllabus – short form of assignmentsSchedule/Syllabus Only *9* Wednesdays in the quarter Attend a trial in San Jose - we hope - with real live examination and cross-examination of an expert – OPTIONAL Instant Patent Law? Next week? Week 3? Simulations Every week: ~ 8:30: Snack (healthy or not, or both?) Never late. That’s required. Weekly Assignments and (sometimes) Comments Critiquing of other students’ simulations What You Will Do in this Seminar -3

RJM - IP: Sci Ev in Pat Lit - Spring Deadlines:Mine as well as Yours My posting the next week’s assignment Will you do them on Fridays? Friday nights? Your assignment? Monday at 11:59 pm*. Your comment? Wednesday at 10:30 am. Critiques? 6/7 at 11:59 pm * Remember: LATE WORK IS NOT ACCEPTED.

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 1Assignment ON IT SOMETHING WITH A PATENT NUMBER ON IT NB: The patent marking statute, 35 USC 287, was amended in the American Invents Act. See next slide. I may have to abandon this assignment in a few years!

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 2Assignment 35 USC 287(a) Limitation on damages and other remedies; marking and notice Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word "patent" or the abbreviation "pat." together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice. Effective for lawsuits pending on or filed after 9/16/11. Thanks to Jenn for inspiring me to find the amendment. HANDOUT

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 2Assignment Why?

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 3Assignment If you used the more illuminating method, what did you learn?

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 4Assignment Read claim 1. Select two words or phrases you think may be important. A single word may be fine. A phrase should be a maximum of 5 consecutive words. The two selections should address different concepts. *** Q Still using the html/text version of the patent, use word- search to find your selections in the specification, that is, the part of the patent between the end of the drawings and the start of the claims. Do NOT include the Abstract or the other claims in your search. (If you are a terrific skimmer, you can use your eyes alone on the pdf, but you should probably check yourself with word-search.) Highlight the occurrences of your selections on the printout that you will bring to class. Q If either of your selections does not appear word-for-word in the specification, does something similar appear? Discuss, with citations. sciev.13/ORD_PAT.HTM

RJM - IP: Sci Ev in Pat Lit - Spring Today’s Assignment - 5Assignment HANDOUT: Table of your ordinary item patents. SHOW AND TELL: Show us your ordinary item! Some of you - or maybe all - did some independent investigating in connection with this assignment. What did you find? What surprised you about the patent? That boilerplate right above "What we claim is" What did you think YOU could have improved? What should I have asked that I didn't? *

RJM - IP: Sci Ev in Pat Lit - Spring ConceptPatentCopyrightTrademark CoverageInventions (Machines, Things, Processes, Mole-cules, etc.) Creative Expression (Words, Art, Video, Audio) Commercial Identity Stuff (Logos, names, slogans, product appearance,etc.) Agency associated with obtaining it Patent & Trademark Office (Part of the Dept of Commerce) Copyright Office (Part of the Library of CONGRESS) Patent & Trademark Office (Part of the Dept of Commerce) Verb associated with obtaining it APPLYREGISTERAPPLY Can Agency REJECT? YESNot oftenYES When does protection START From ISSUANCEFrom CREATIONFrom use or registration When does protection STOP 20 years from date of filing of application, MOSTLY Life of author + 70 years to the next 12/31, USUALLY Never, MOSTLY PTO Patents != Copyright != Trademarks

RJM - IP: Sci Ev in Pat Lit - Spring Throughout the term, I will use the snowflake to indicate anything that is true, more or less, could be VERY complicated if you went into it deeply, and might melt if you touch it. FEEL FREE TO INTERRUPT ABOUT SNOWFLAKES (the words they accompany on the slides, or the makeaflake website)makeaflake SUBSTANTIVE LAW

RJM - IP: Sci Ev in Pat Lit - Spring The AIA On 9/16/11 an overhaul of the patent statute, the American Invents Act (AIA) was signed into law. Why can we ignore it in this class? Hints: What kind of patents do we deal with? What are the issues about which scientific experts testify?

RJM - IP: Sci Ev in Pat Lit - Spring Reading a Patent Why choose a patent whose number appears on something you can buy? Why choose a patent whose number is more than 5,200,000? (Design patents, Reissue patents, and ??) How do you read a patent? Always ask: “Who wants to know?” PO, PAppl, AI, VC their commonalities, differences and priorities

RJM - IP: Sci Ev in Pat Lit - Spring But also (and always) remember, in a variation on famous words from 1992: IT’S THE _______ STUPID. Reading a Patent CLAIM

RJM - IP: Sci Ev in Pat Lit - Spring Next Week Next Week: A litigated patent: the patent in suit in SSI/AMI v TEK As you look at any patent, especially its claim 1 and its history, think about: - ideas for design arounds and noninfringement arguments - ideas for invalidity arguments - any questions for which YOU need/would be an expert