Sci.Ev rjm Week 3 1 Today’s Agenda  Housekeeping  Words, words, words  Ampex  Markman Decision  Local Rules  NDCal  Other Jurisdictions WITH Local Rules  Other Jurisdictions WITHOUT Local Rules  Next Week – THE GRAD STUDENTS

Sci.Ev rjm Week 3 2 Housekeeping *Words, words words We can blame Adam, especially since he’s not here, but EVERYONE is suddenly writing TOO MANY WORDS. - Bullet points aren’t sentences. (HA.) - Brevity != a screen-long paragraph. True, succinctness often takes more time than verbosity, but if you master the skill, you get faster. *Answer the question! Please AVOID - showing off - playing law professor and - doing much more than you need to. If the question is specific, answer specifically. Follow the very rules you will tell your witnesses to remember when they take the stand!

Sci.Ev rjm Week 3 3 PO, AI PO Adam Eltoukhy Henry Huang AI Jason Fan Ann Marie Rosas

Sci.Ev rjm Week 3 4 Side note: Testimony in Interferences (37 CFR )Testimony in Interferences (before 8/2004, the rules for interferences were in 37 CFR , Subpart E of Part I).37 CFR , Subpart E of Part I Chico Gholz, Oblon Spivack – The biggest of the big kids, when it comes to Interference Practice (but cf. Big Kid Error) points out that interference practice PERMITS live testimony when appropriate.* (The rules and statutes and MPEP will never tell you this, but you can find proof in reported decisions. I found RC v TI, 1999 PatAppLexis 16; Chico says there are others. What happens is that the witness STILL testifies at a deposition, but the deposition takes place in front of APJs.) *This means: [give a concept, and then two examples. RC v TI presented a third.]two examples Gholz is unaware of any occasion when LIVE testimony was taken from experts, however. Administrative patent judge

Sci.Ev rjm Week 3 5 Ampex v. Mitsubishi Claim Construction Order Page 2: Single Clock Signal – LEADER: Adam + … * Enablement o Specification only discusses the use of one single clock to drive the circuit * Prior Art/Prosecution History Estoppel o Ampex specifically distinguished the prior art (Inaba Patent) by requiring that their invention have a single clock signal * Claim Interpretation - Antecedent Basis? o Second element requires storage times "determined by a clock signal” o "a" could mean one or more o BUT third element requires retrieval based on "said clock signal" + Implies that only one (the same) clock signal may be used * Ampex has a much stronger argument that their invention still allows for different frequencies to be used in conjunction with one clock signal

Sci.Ev rjm Week 3 6 Ampex v. Mitsubishi Claim Construction Order Page 2: Single Clock Signal – LEADER: Adam + … Ann Marie adds: Mitsubishi not practicing Inaba, and if they were, Inaba would be suing them… Jason adds: Lechner’s concession on block diagrams [Does it make a difference? Why might Lechner have conceded that?] Henry adds: Experts’ agreement on block diagrams + spec does not address RATE of r/w operations = ?? Who wins? [Who wins what???]

Sci.Ev rjm Week 3 7 Ampex v. Mitsubishi Claim Construction Order Page 3: Attorney argument v. Testimony and the READ Address as a magic box. LEADER: Ann Marie a. Should an expert remain silent on an area that would concede a point to the opposing side? b. If an expert cannot say what you desire, should you look for an expert that can or are there ethical considerations? c. Does arguing a point without supporting expert testimony look weak and draw attention to the lack of counter testimony?

Sci.Ev rjm Week 3 8 Ampex v. Mitsubishi Claim Construction Order Page 3: Attorney argument v. Testimony and the READ Address as a magic box. LEADER: Ann Marie a. Should an expert remain silent on an area that would concede a point to the opposing side? b. If an expert cannot say what you desire, should you look for an expert that can or are there ethical considerations? c. Does arguing a point without supporting expert testimony look weak and draw attention to the lack of counter testimony?

Sci.Ev rjm Week 3 9 Ampex v. Mitsubishi Claim Construction Order Page 3: Divide by Two Observation by Court LEADER: Jason a. Person of ordinary skill in the art defined by agreement of experts b. Plaintiff strategy: get agreement from Lechner c. Defense strategy: focus on what ELSE is missing besides divide-by-two

Sci.Ev rjm Week 3 10 Ampex v. Mitsubishi Claim Construction Order Page 5: The 4 th claim element [control signal for time difference] Why didn’t Lechner testify? – LEADER: Henry * Why doesn't Lechner contradict Luke's claim about expanded memory? * Should McKelvie have accepted the possibility of larger memory even though they were "prohibitively expensive" at the time? * Should the specification have mentioned that the read-write method would become more practical as memory became less expensive? * What's Mitsubishi's best argument against Luke's interpretation, even without Lechner's help? * Even if Lechner challenged Luke's reasoning, how should the court have resolved the dispute based only on the recorded testimony? PO bias??

Sci.Ev rjm Week 3 11 Patent Local Rules Side note: Big Kid Syndrome ND Cal v. WDPa - Adam v. EDTex - Ann Marie v. NDGa – Henry Courts without local patent rules – Jason Costs? Consolidating? Special Masters? ADR? Discuss: * Why no revision since 1/1/01? 3-1(f): “right to rely” on your own commercial embodiment. Why do that? What does it NOT help with?! 3-3(d): Why not best mode?

Sci.Ev rjm Week 3 12 Patent Local Rules - NDCal v WDPa - Adam For the most part, the NDCA local rules are very similar to the local rules for the WDPA. For example, the local rules governing the release of infringement and non infringement contentions are practically identical, including the requirements for what needs to appear in the contentions. Additionally, the rules leading up to the claim construction hearing are also very similar. As the WDPA local patent rules were enacted long after those of the NDCA, it would not be surprising if the drafters for the local rules in the WDPA in fact used the NDCA's local patent rules as a guideline * Nevertheless, there are a few interesting differences between the two bodies of law. For instance, there is a big distinction in the manner in which discovery is conducted regarding documents relating to a finding of willful infringement. In the NDCA a party may object to discovery requests that seek to elicit information regarding opinions from counsel that may be used as a defense to willful infringement (see Rule 2 ‑ 5(d) and Rule 3 ‑ 8). The local rules for the WDPA do not seem to have any similar protection. Moreover, the local rules for the WDPA differ from those of the NDCA in their treatment of final contentions and amendments to contentions. In the WDPA amendments are allowed if they are made in a timely fashion, in good faith, and without a purpose of delay (see Rule LPR 3.7). In the NDCA, a party may make final contentions if they believe that the claim construction ruling so requires and amendments to contentions may only be made by order of the court upon a showing a good cause (see Rule 3 ‑ 6 and Rule 3 ‑ 7). CONTENTIONS: ~Identical PRE-MARKMAN HEARING: ~Very similar BIG DIFFERENCE #1: WILLFULNESS: NDCal – AI can object to requests re opinions of counsel (see Rule 2 ‑ 5(d) and Rule 3 ‑ 8). But only if those requests are premature in light of the TIMETABLE. WDPa – Nothing similar. BIG DIFFERENCE #2 Final Contentions: WDPa: permissive about amendment: Rule LPR 3.7 NDCal: Dependent on claim construction ruling, otherwise you’re stuck? Plus you have to seek a court Order (see Rule 3 ‑ 6 and Rule 3 ‑ 7). Check the Rules: there are TWO sets of contentions – validity and infringement, and TWO kinds – PRELIMINARY and FINAL. PO can update your contentions on INFRINGEMENT (3-1 c and d) if documents AI produces regarding VALIDITY require it. Leave of court NOT necessary.

Sci.Ev rjm Week 3 13 Patent Local Rules - NDCal v EDTex – Ann Marie 2. NDCal and EDTex: There are five areas in which the rules vary. First, in Scope, only EDTex rules allow for modifications to deadlines by an issued Docket Control Order. Second, in Governing Procedure, EDTex has an additional section 6 which has to be covered in the Case Management Statement filed under 26(f). Third, in Final Contentions, only NDCal allows a party to rely on the documents produced pursuant to Patent L. R. 3 ‑ 4 as a basis for serving "Final Infringement Contentions." Fourth, in Willfulness, the time limit for production is different. Finally, in Claim Construction Briefs, EDTex has an additional section (d) which requires the parties to jointly submit a claim construction chart. 1.Modifying deadlines ED Tex: by a Dkt Cntrl Order ND Cal: How? Not at all? What 2.Case Management Statement of 26(f): additional section 6(page 4e of document)Case Management Statement of 26(f) ED Tex: Rule 2-1(a)(6) re under seal docs ND Cal: Nothing similar in 2-1(a). (What does NDCal have about filing “under seal” aka protective orders?) 3.Final Contentions [and so on] 4.Willfulness 5.Claim Construction Briefs

Sci.Ev rjm Week 3 14 Patent Local Rules - NDCal v NDGa – Henry Similarities: similar overall organization; same exceptions for discovery responses; similar provisions for preliminary infringement and invalidity contentions; similar language governing parties' exchange of claim construction information. Differences: GA explicitly says that confidentiality of technical information does not affect burdens of proof; GA has no provision governing PO's "right to rely" on its own products as embodiments of the invention; GA does not have a "good cause" provision for amending infringement contentions; GA has more details about discovery relating to willfulness and disqualification of lawyers who rendered opinions or prosecuted patents in suit; the days allotted for joint claim construction differs a lot (GA generally allows more time for each round). As with the previous examples, think about making your list helpful to someone who is familiar with NDCal Rules, and perhaps someone who wants to check your work. E.g., include rule numbers.

Sci.Ev rjm Week 3 15 Rules of Evidence What you knew and what surprised you.

Sci.Ev rjm Week 3 16 On What Issues Could Your Expert Provide Testimony? Global: CLAIM CONSTRUCTION Global: Skill in the Art and the prior art Validity Infringement Inequitable Conduct Infringement

Sci.Ev rjm Week Validity 1.1 Explain Prior Art Specific killer P.A Problems overcome by inventor Objects of Invention Other Problems

Sci.Ev rjm Week 3 18 The Grad Students Are Coming You can leave them in peace for the first half hour and just show up at 4:45. Or not. What will happen once they arrive?