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

Sci.Ev rjm Week 1 2 Today’s Agenda  Who We Are – and your answers to the questionnaire and the object/patent assignment questionnaire  Handouts: List of Law Students; List of Patented Objects and Noted Cases  What We Will Do in this Seminar  Review of Patent Law  Next Week: A real transcript, and some recent hot case you may have missed

Sci.Ev rjm Week 1 3 Who Are You? Handouts: Law Student List; Patented Objects and Important Cases What should we know about you that is not apparent from your resume (education and work experience)? Why are you here? Whose side are you on: PO or AI? Other Questions You May Answer - Did you take calculus in high school? - How did you choose the unassigned book you last read?

Sci.Ev rjm Week 1 4 What You Will Do in this Seminar Terms of Address? Prof./Mr./Ms./Dr. Roberta/Adam Professor/Counselor (Prof./Dr. for the graduate students) Grading by Contract Weekly Comments Deadlines so that you can comment on a comment? Assignments available by ____? Schedule for the Term (also on coursework – last left )Schedule for the Term Attending real live examination and cross-examination of an expert Oral Arguments? Simulations Snack : healthy or not or both?

Sci.Ev rjm Week 1 5 prosecutors litigators best worst Hours Billing Deadlines Level of Excitement, Intellectual Stimulation Client contact, esp. with new companies Nature of work: Science v. Strategizing, Business Team v. Solitary Cooperative v. Adversarial Level of Compensation corporate transactional

Sci.Ev rjm Week 1 6 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 1 7 LIABILITY ISSUES From the Questionnaire: In a patent infringement trial, as in all trials, the question of liability is tried before damages. Name the two major liability issues. (If you feel you haven't a clue, look at the next two questions and see if they help. If you think there's a third liability issue, use the large box below to tell me what it is and where it would be presented in a patent infringement trial.) What else is in a civil action besides liability? If a court separates those two matters, what is the verb for its action? How do you convince a court to [verb]? What statute/rule/regulation governs [noun form of verb]?statute/rule/regulation

Sci.Ev rjm Week 1 8 LIABILITY ISSUES What else is in a civil action besides liability? If a court separates those two matters, what is the verb for its action? How do you convince a court to [verb]? What statute/rule/regulation governs [noun form of verb]?statute/rule/regulation

Sci.Ev rjm Week 1 9 PATENT LAW - EQUITABLE ISSUES What is the standard of review on appeal for questions of equity? injunctions inequitable conduct, laches, estoppel (from suit, and other kinds of estoppels EXCEPT NOT ______________ estoppel ), patent misuse enhancing damages (multiplier >1 and < 3) but NOT whether case is “EXCEPTIONAL” (Q of F); awarding attorney fees awarding attorney fees (once the FACT of exceptionalness has been found) Prosecution history Abuse of Discretion

Sci.Ev rjm Week 1 10 PROSECUTION HISTORY ESTOPPEL IS A QUESTION OF law

Sci.Ev rjm Week 1 11 "A district court abuses its discretion when its decision - is based on clearly erroneous findings of fact, - is based on erroneous interpretations of the law, or - is clearly unreasonable, arbitrary or fanciful." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). [formatting mine. –RJM] quoted most recently (9/5/07) in Pharmacia Corp. v. Par Pharm., 417 F.3d 1369 (Fed. Cir. 2005) (Newman, Schall, Dyk) APPELLATE REVIEW OF EQUITABLE ISSUES

Sci.Ev rjm Week 1 12 Accused Infringer Exclusive Licensee AI: Right to seek Declaratory Judgment (equitable and statutory); Exclu. Licensee: Caselaw interpreting 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) and § 261 (“…The … patentee … may … convey an exclusive right …”) See, e.g., Prima Tek II, LLC v. A-Roo Company, 222 F.3d 1372 (Fed. Cir. 2000).

Sci.Ev rjm Week 1 13 Exclusive Licensee 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) 35 USC § 100(d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee. (formatting mine) [WHY? HOW? WHO CARES?] CLAIM CHARTS

Sci.Ev rjm Week 1 14 “Section 261 recognizes, and courts have long held, that an exclusive, territorial license is equivalent to an assignment and may therefore confer standing upon the licensee to sue for patent infringement. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255, 34 L. Ed. 923, 11 S.Ct. 334 (1891) ….” Prima Tek II, 222 F.3d at (formatting mine)

Sci.Ev rjm Week 1 15 Your client, a resident of Palo Alto, would like to sue a resident of San Francisco for patent infringement. In what court do you bring the action? (Be as specific as you need to be.) Why is that the right court? The trial judge dismisses your case. In what court of appeals do you file your notice of appeal? Why is that the right court? NDC al Federal question. (28 USC 1338.) Personal jurisdiction and venue over defendant in the district. (venue: 28 USC 1391 b and c).28 USC USC 1391 b and c Bonus: what if this were a suit on a patent license? Fed. Cir. (because Vornado doesn’t apply on these facts.) All patent appeals (~~) go to the Fed. Cir. 28 USC USC 1295

Sci.Ev rjm Week 1 16 § Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition (a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases. (b) The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws. * * *

Sci.Ev rjm Week 1 17 § Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- (1) of an appeal from a final decision of a district court of the United States … if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title, except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section 1338(a) shall be [appealed to the regional circuits];

Sci.Ev rjm Week 1 18 § Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- * * * (3) of an appeal from a final decision of the [United States Court of Federal Claims]; (4) of an appeal from a decision of-- (A) the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with respect to patent applications and interferences...

Sci.Ev rjm Week 1 19 Constitution: Art. I, sec. 8, cl.8 Patent Statute: ___ USC 35 Patent Regulations: ___ CFR § 1. ___ 37 With what is 37 CFR § 1.56 concerned? the duty of candor With what is Rule 56 of the Rules of Civil Procedure concerned?: summary judgment

Sci.Ev rjm Week 1 20 PTO’s internal rulebook is called: Manual of Patent Examining Procedure (MPEP) Bonus: What kind of authority are those rules?

Sci.Ev rjm Week 1 21 Aro Top 1964 – repair v reconstruction City of Elizabeth 1878 – experimental use Chakrabarty 1980 – patentable subject matter DSU v. JMS * 2006 – inducing infringement eBay 2006 – permanent injunctions Egbert experimental use FAMOUS CASES – Year - Issue All SUPREME except *

Sci.Ev rjm Week 1 22 Festo 2002 – pros.history estoppel Graver Tank [Graver Mfg v Linde] 1950 – doctrine of equivalents Graham v. Deere 1966 – obviousness Gurley * 1994 – teaching away Harvard Mouse [Canada] patentable subject matter Knorr-Bremse* willfulness KSR 2007 – obviousness FAMOUS CASES – Year - Issue All SUPREME except *

Sci.Ev rjm Week 1 23 Markman 1994 – claim construction Monsanto (Canadian) * 2004 – plants Parker v Flook 1978 – patentable subject matter Seagate 1994 – teaching away State Street * 1998 – patentable subject matter Westinghouse v Boyden Brake 1898 – reverse DOE FAMOUS CASES – Year - Issue All SUPREME except *

Sci.Ev rjm Week 1 24 Your Patented Objects Craven: Pill Container Freed: Garbage Bag [Gamble - Applied Physics: Kleenex Box] Marshall: TI Calculator [Morris: Coffee Sleeve] Pan: Toothpaste Squeezer Peng: Auto-turn-off Vacuum Cleaner Petrova: TI Calculator Reeslund: Disposable Thermometer van Niekerk: Bicycle Bearing Wahlstrand: Tooth Whitening Strip (two patents)

Sci.Ev rjm Week 1 25 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? Different perspectives: PO, PAppl, AI, VC commonalities and differences in approach

Sci.Ev rjm Week 1 26 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 1 27 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 1 28 Next Week Reading: UCBerkeley v GenentechTranscripts Review of patent law related to ??