11/08/10 RJM - Sci Ev Seminar - Fall Today’s Agenda Tyco v. biolitec Simulation Projects Substantive Law: This Seminar v. my full 4-credit semester-long Patent Law course Observer: Prof. David Engstrom (Ad. Law)

11/08/10 RJM - Sci Ev Seminar - Fall Tyco v. biolitec Author12 Wyatt LiXX MilingXXXX ShenghanXX NormXXX JingX KeyaXXXXXX DarrellX LievenXX ZacXXXX TosinXX WillX JaneX Zubin JoshX

11/08/10 RJM - Sci Ev Seminar - Fall KEYA 1 B.1. I found considerable structure, finesse and strategy to Rugg's cross- examination approach, especially when contrasted against Buche's. This leads me to wonder if there are frameworks or formal guidelines available to guide practitioners in what seems to me like an art. This might be especially important if court transcripts of trials are not available to the general public to view, study and learn from. Could Prof Morris discuss some common cross-examination (and perhaps corresponding redirect) strategies (dos and donts) in class? Listen. Plan Ahead/Anticipate. Listen. Practice asking succinct questions of your family and friends. Listen. What testimony would you LOVE? Ask for it. Listen.

11/08/10 RJM - Sci Ev Seminar - Fall MILING 1 B.1) Marketing materials for laser opinion It was surprising that the expert admitted that the basis of his opinion on the lasers was based on their marketing program. The Pharmastem ruling suggested that the experts could not base their evaluation on marketing materials. Would this portion need to be stricken out of the testimony or does the Pharmastem decision only matter when the entire testimony is based upon marketing materials? “entire testimony” may be the key. Other Ideas: Here Dr. Andrews explained terminology in marketing materials, and compared claim language to product description. (But both might also have occurred in PharmaStem.) This case is about INDUCING infringement (see later slides). That makes marketing activities directly relevant in a way it would not be if biolitec and TVS were direct infringers.

11/08/10 RJM - Sci Ev Seminar - Fall ZAC 2 2. Is there a more efficient way to have the expert express his opinion about the various patent claims other than reading through each one individually on the record? That took two hours and I don't think anybody was paying any attention. Judge could rule in PTO that only 1 or a few representative claims would be presented to the jury. What is Lehr’s concern here?

11/08/10 RJM - Sci Ev Seminar - Fall LI 2 B2. What is "HEARSAY STATEMENTS"? And why the legend under the pictures taken by Dr. Andrews of "VIEWS OF THE SAPHENOUS VEIN IN THE MID-THIGH" should be "HEARSAY STATEMENTS"? I am also curious on what is in the description that Mr. Rugg is worried about. Maybe some leading/misleading comments about the picture? Hearsay: 1. An out-of-court offered in court as evidence to prove the truth of the matter asserted. 2. The reason the course in Evidence is 3 credits. 3. A case of the exceptions proving [that] the rule [is not how real people decide what to believe or not]. There are MANY exceptions. 4. Something most people analyze incorrectly – especially that bit about ‘the truth of the matter asserted.’ Example: I testify, “And then I said to him, ‘There’s a spider on the wall.’” Only hearsay if offered to prove the location of the spider...

11/08/10 RJM - Sci Ev Seminar - Fall NORM 2 It seems that as a juror, it would be difficult to comprehend and assimilate the facts and legal theories that each side is specifically is proposing. Have there been studies regarding how much jury members actually understand and are able to piece together? How many opportunities throughout the trial does each side have to review and summarize their view of the issues, facts, and relevant legal theoriesfor the jury? Don’t know about studies. Opening Statement and Closing Argument (and speechifying during objections.

11/08/10 RJM - Sci Ev Seminar - Fall Lieven 1 What is the difference in form and rules between direct and cross examination? LEADING! – OK for cross, or direct of adverse witness. Not OK for direct otherwise. OK during depositions.

11/08/10 RJM - Sci Ev Seminar - Fall Tosin 1 B1. What is required to establish indirect infringement on a method patent, and in general? Coming up next!

11/08/10 RJM - Sci Ev Seminar - Fall b and c: INDUCEMENT of infringement CONTRIBUTORY infringement From my 2004 coursepack2004 coursepack CP 108 Indirect Infringement (b) Whoever actively induces infringement of a patent shall be liable as an infringer. (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. both require KNOWLEDGE (of what?) both require PROOF OF DIRECT INFRINGEMENT

11/08/10 RJM - Sci Ev Seminar - Fall (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. CONTRIBUTORY INFRINGEMENT – 271 c CP 108 Which phrases are most heavily litigated?

11/08/10 RJM - Sci Ev Seminar - Fall (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. CONTRIBUTORY INFRINGEMENT – 271 c CP 108 Which phrases are most heavily litigated?

11/08/10 RJM - Sci Ev Seminar - Fall INDIRECT INFRINGEMENT – 271 b and c (b) Whoever actively induces infringement of a patent shall be liable as an infringer. Implications of these words: KNOWLEDGE (of what?) ! INTENT! Requirement: SOMEBODY directly infringes. What kind of conduct would ‘actively induce’ but there’s NO direct infringer? Hint: Direct infringement must be by a single entity. From my 2004 coursepack CP 125 and 126 Knowledge: of the PATENT. Actual or Constructive (i.e., because of marking). Intent can be proven by showing ‘deliberate indifference’ – maybe. SEB v. Montgomery Ward, Fed. Cir.. 2/5/10, cert. granted 10/12/10. Decision will be called Global Tech v. SEB.

11/08/10 RJM - Sci Ev Seminar - Fall INDUCING INFRINGEMENT (b) Whoever actively induces infringement of a patent shall be liable as an infringer. If, as would be the case here, the resulting product, that is the device, is the same as the patented one so that in appearance, form, fact and function, it is identical, it matters not how or in what manner that was brought about. 3 WALKER, PATENTS  453 (DELLER ed. 1937). The person who does that surely infringes, if the term has any meaning at all. But civil culpability need not stop with the dealer who does the final act of making, using or selling. The prohibition of the law, now codified in  271(b), extends to those who induce that infringement. Of course i nducement has connotations of active steps knowingly taken -- knowingly at least in the sense of purposeful, intentional, as distinguished from accidental or inadvertent. But with that qualifying approach, the term is as broad as the range of actions by which one in fact causes, or urges, or encourage, or aids another to infringe a patent. Fromberg. v. Thornhill, 315 F.2d 407 (5 th Cir, 1963) text preceding n.11

11/08/10 RJM - Sci Ev Seminar - Fall (b) Whoever actively induces infringement of a patent shall be liable as an infringer. Before the statute was changed in 1988 (to permit “VENUE” over corporations in any district where there would be “long arm jurisdiction”) patent venue: 28 USC 1400(b) “resides” defined for corporations: 28 USC 1391(c) there were many cases trying to get “venue” in the PO’s home state, or someplace other than the AI’s home state, on the basis of a sales office visited once a week by some traveling salesperson. Thus the “law” of ACTIVE INDUCEMENT was developed almost exclusively in the context of VENUE motions. 271 b

11/08/10 RJM - Sci Ev Seminar - Fall Critique Assignments – TEAMS.HTM rev 8TEAMS.HTM NameCritiqued byCritique of /15 5:30 Norm (L-..)DarrellZac Jane (L-..)KeyaZubin Miling (E-..)TosinLi Josh (E-..)ShenghanLieven 11/15 at 8 Zac (L-AI)NormWyatt Zubin (L-PO)JaneWill Li (E-AI)MilingDaniel Lieven (E-PO)JoshJing 11/16 at 7 Wyatt (L-..)ZacDarrell Will (L-..)ZubinKeya Daniel (E-..)LiTosin Jing (E-..)LievenShenghan 11/29 at 7 Darrell(L-..)WyattNorm Keya(L-..)WillJane Tosin(E-..)DanielMiling Shenghan(E-..)JingJosh Reminder: Earlier versions of all webpages are in the ARCHIVE subdirectory, if you ever need them ARCHIVE

11/08/10 RJM - Sci Ev Seminar - Fall Simulations – SIMULAS. HTM rev 2 SIMULAS. HTM

11/08/10 RJM - Sci Ev Seminar - Fall Next Week; Final Week Simulations! Volunteers needed to help set up tables and food. Performers should arrive ~30 minutes early to set up laptops and slides.

11/08/10 RJM - Sci Ev Seminar - Fall Patent Issues – In Addition Inventorship Date of invention- conception and reduction to practice 101- patentable subject matter, utility Double patenting Other 102 issues: sales and public uses, experimental use by inventor, “derivation,” date of publications and other prior art, whether publication was PUBLIC, invented by another who did not abandon/suppress/conceal Other 103 issues: collaborative work as prior art / “inventive entity” Enablement – Best Mode – Written Description -- Indefiniteness Inequitable Conduct (withholding prior art, omitting bad test results, lying about good ones, etc., etc.) – materiality and intent Reissue and Reexamination Intervening Rights / Prior User Rights Indirect Infringement – induced, contributory Interferences – with parties in the infringement suit DOE – Festo presumptions Estoppels: laches and estoppel (delay in filing suit), prosecution laches (purposeful delay in the PTO), assignee estoppel, implied license, patent exhaustion Damages – Reasonable Royalty, Lost Profits, actual profits, market share, etc. Willfulness Injunctions – Preliminary and Permanent Attorney Fees / Exceptional Case (102b bar or similar moral turp. PO arguments, delay tactics during lawsuit, destruction of documents, etc.) Prejudgment Interest Antitrust – if AI wins on the merits My 2004 coursepack linked above. name and word are 727 and 102b