Sci.Ev. - rjm Week 01 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad Course Materials on the Web: and Group

Sci.Ev. - rjm Week 01 2 Today’s Agenda Who We Are What We Will Do in this Seminar Review of Patent Law Your answers to - law students questionnaire - the object-or-case patent assignment Next Week: Claim charts, File history and transcript, and some recent hot case you may have missed

Sci.Ev. - rjm Week 01 3 Who Are You? Handout - Student and Auditor List Introduce Yourselves What should we know about you that is on your resume? What should we know that is not on your resume? Whose side are you on: PO or AI? Other Questions You May Answer - Why are you here? - Did you take calculus in high school? - How did you choose that unassigned book you last read?

Sci.Ev. - rjm Week 01 4 What You Will Do in this Seminar Grading by Contract Weekly Comments: Schedule/Syllabus – short form of assignments (also next to last tool, lefthand side, on coursework)Schedule/Syllabus coursework Attending real live examination and cross-examination of an expert. Looking less good than I hoped… Simulations 8:15: Looking at another students work; Snack (healthy or not or both?)

Sci.Ev. - rjm Week 01 5 What You Will Do in this Seminar NO required. Better Late. thanLate That’s Never? Better Never

Sci.Ev. - rjm Week 01 6 What You Will Do in this Seminar Grading by Contract Weekly Comments: Never late. That’s required. Schedule/Syllabus – short form of assignments (also next to last tool, lefthand side, on coursework)Schedule/Syllabus coursework Attending real live examination and cross-examination of an expert. Looking less good than I hoped… Simulations 8:15: Looking at another students work; Snack (healthy or not or both?)

Sci.Ev. - rjm Week 01 7 Introduction/ Review of patent law Most recent versionMost recent version: Genetics Department Retreat 9/18/08 Original: early 1990s. On transparencies. Other interesting information: The next patent the PTO will issue will be 7,426,753. Last week the PTO issued 1989 utility patents, 12 Reissues (35 USC 251+), 35 Plant Patents (35 USC 161+) and 400 Design Patents (35 USC 171+) (2435 total) Last year for the same week (9/18/2007) the PTO issued 2992 utility patents, 12 Reissues, 35 Plant Patents, and 499 Design patents (3540 total). In the year ending 9/16/2008, the PTO issued 154,893 utility patents.

Sci.Ev. - rjm Week 01 8 Introduction/ Review of patent law Our Law Students’ Knowledge (admittedly on short notice and without adequate time to do much research) During the break, look over one law student’s answers, even if you’re a grad student. Come up with one question to ask your lawyers.

Sci.Ev. - rjm Week 01 9 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. - rjm Week Your Patented Objects/Cases Our findings, questions and assumptions. During the break, look over someone else’s answer to the find-a-patent assignment.

Sci.Ev. - rjm Week Reading a Patent Why choose a patent whose number appears on something you can buy? How do you read a patent? Always ask: who wants to know? PO, PAppl, AI, VC their commonalities, differences and priorities

Sci.Ev. - rjm Week Reading a Patent AI –to design around –to challenge validity or enforceability PAppl – –to disclose and claim around –to see if you should buy/license it M&A – to evaluate an asset PO – to evaluate whether you can sue within the bounds of Rule 11

Sci.Ev. - rjm Week P-I-S v P.A. Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent 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 PatentLook at New's CLAIMSLook at New's SPECIFICATION Old PatentLook at Old's SPECIFICATION (what it "teaches") Look at Old's CLAIMS

Sci.Ev. - rjm Week Later This Week? The Rambus v. Hynix and 100s of others trial started today in San Jose. If a scientific expert is testifying Thursday or Friday, would you come? I’ll try to find out tomorrow morning. This COULD be the only trial between now and December in San Francisco or San Jose. Applera v. Illumina, scheduled to start next Monday, has been continued by the judge until the end of October or November. Medtronic v. WLGore is also scheduled for mid November. There are claim construction hearings that might include expert testimony, but no other full trials.

Sci.Ev. - rjm Week Next Week Making Claim Charts Reading File Histories for - ideas for design arounds/noninfringement arguments - ideas for invalidity arguments - questions for which experts would be needed Testimony – Reading Transcripts