Sci.Ev rjm Week 4 1 Today’s Agenda  Grad Students Only:  How the Course Will Work; Who We Are  Everyone 1: Introductions; Last 2 classes & Simulations  Everyone 2 : Law Students Teach Grad Students the Law  Looking at a Patent  Reading Cases, Reading Daubert  Daubert for Patent Experts on the Technology in Suit

Sci.Ev rjm Week 4 2 How the Seminar Will Work Questions? Why the contract and the deadlines? Calendar

Sci.Ev rjm Week 4 3 Teams ? Grad Students Amat, Fernando Antoine, Christophe Barlian, Alvin England, Jeremy Finkelstein, Ilya Jiang, Xirong Perlson, Lisa (Will be absent 11/15) Wachs, Megan Schuller, Jon (Auditing: will miss start of quarter) Shen, Xiling Zhang, Angela

Sci.Ev rjm Week 4 4 Wk Dat ReqAttTopic 40927L & GWho we are / Patents / Experts 51004L & GTranscript and a Real Live Litigator; Choosing Teams and Patents 61011G onlyDaubert in non-patent cases; More transcripts 71018L & GClaim Charts, File Histories, Visual Aids 81025Individual team meetings. Progress with patent selection. Issues that pop out of file histories. (By now, every team should have selected a patent (2 patents?) and have ordered the file history. Drafting an expert declaration L & GTranscripts; Summary Judgment Motions, Briefs and Supporting Declarations Individual team meetings L & GOral Arguments; Critiques of Expert Declarations Holiday. Individual team meetings Mon & Tues? L & G?Simulations? Or class rescheduled to Monday, 11/27 & Chico Gholz visits? L & G?Simulations? Or Party and Debriefing? Or both? Tentative and Abbreviated Syllabus

Sci.Ev rjm Week 4 5 Vote regarding 11/29(27) and 12/06 Can anyone not attend on Monday afternoons? Other Considerations?

Sci.Ev rjm Week 4 6 Law Students Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Huang, Henry: ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Grad Students Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec Barlian, AlvinMEJakartaPurdue England, JeremyPhys?MA and ?NHHarvard Finkelstein, IlyaChemSan Diego,CABerkeley Jiang, CindyPhysShaoyangBeijing Normal U Perlson, Lisa (abs 11/15) ChemPlainviewNYBarnard Wachs, MeganEEElkridge,MDBrown Schuller, Jon (Aud) Shen, XilingEEShanghaiStanford Zhang, AngelaImmunBeijingBerkeley French pronunciation “shilling” like pounds and pence “zang” rhymes with sang or gong?el-TOO-key“wang” rhymes with sang? Barley (like the grain) + un?? Woks, as in stirfryLast syllable rhymes with mine or mean?“ROE-zahss? ROSE-iss?“fan” rhymes with man or con?uh-MOTT? ah (as in and)-MAT??

Sci.Ev rjm Week 4 7 Law Students Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Huang, Henry: ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Grad Students Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec Barlian, AlvinMEJakartaPurdue England, JeremyPhys?MA and ?NHHarvard Finkelstein, IlyaChemSan Diego,CABerkeley Jiang, CindyPhysShaoyangBeijing Normal U Perlson, Lisa (abs 11/15) ChemPlainviewNYBarnard Wachs, MeganEEElkridge,MDBrown Schuller, Jon (Aud) Shen, XilingEEShanghaiStanford Zhang, AngelaImmunBeijingBerkeley

Sci.Ev rjm Week 4 8 Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec Wachs, MeganEEElkridge,MDBrown Shen, XilingEEShanghaiStanford Jiang, CindyPhysShaoyangBeijing Normal U Huang, Henry:ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Barlian, AlvinMEJakartaPurdue England, JeremyPhys?MA and ?NHHarvard Finkelstein, IlyaChemSan Diego,CABerkeley Perlson, Lisa-abs11/15ChemPlainviewNYBarnard Schuller, Jon (Aud) Zhang, AngelaImmunBeijingBerkeley Tentative Groups?

Sci.Ev rjm Week 4 9 Patents in General Megan/Henry: Who brings the suit? Who has to prove what? Fernando/Jason: Patents v. Papers – as prior art Christophe/Jason: Patents v. Papers – contents: including and excluding Xiling/Jason: Refs in the Spec Sorkin PatentSorkin Patent “The 882* Patent” Lisa/Adam: Usefulness Cindy/Henry: The Claims Ilya/Ann Marie: Numbering the Figures Jeremy/Ann Marie: infringing a claim to a specific material Alvin/Ann Marie: why claim a specific material Goodman PatentGoodman Patent “The 877* Patent” Angela/Adam: Infringing the Cited/Referenced Prior Art Xiling/Jason: Refs in the Spec (6:62 et seq.) Looking at Patents *And where have all those initial apostrophes gone?

Sci.Ev rjm Week 4 10 Looking at Patents – Law Students Get a Turn ISSUES THAT JUMP OFF THE PAGE and some vocabulary lessons Jason – Sorkin Obviousness Adam – Sorkin Close PA ---> PH narrows claims Henry – Sorkin [How can issues jump off the page, if you don’t have an accused device or the PH in front of you?] Obviousness – Secondary Considerations Ann Marie – Sorkin Obviousness (narrow invention) Enablement re heat sealing, and the PHOSITA Prior Art Prosecution History Terms of Art CLAIMS

Sci.Ev rjm Week 4 11 Patents - concrete CP 1 prior art CLASS issue date filing date From my patent law 2004 coursepack

Sci.Ev rjm Week 4 12 Patents - concrete CP 1.3 right hand column [2:54-75] Dependent claim preamble body From my patent law 2004 coursepack

Sci.Ev rjm Week 4 13 Christophe’s Summary (not forwarded to the class) Lisa/Adam: Why not just give the court the journal articles? Angela/Adam: Why remand? Alvin/Adam: How to pick an expert? Xiling/Henry: Role of jury Christophe/Jason: Amici Ilya:/Ann Marie: Effect and power of dissents Jeremy/Ann Marie: Minority Views in Science Daubert RJM: ?Judicial Notice? FREvid 803(18) RJM: Credibility. The strategic value of excluding v. Letting the jury decide credibility

Sci.Ev rjm Week 4 14 Why do you NOT move to exclude your average expert in a patent litigation? What can we learn from the cases where motions have been made and have succeeded? Daubert in Patent Cases

Sci.Ev rjm Week 4 15 Jason – Daubert in Patent Cases-2 Expert testimony must be reliable, by preponderance of evidence a. Factors indicating reliability of techniques and conclusions 1. Generally accepted within scientific community 2. Published in refereed journals 3. Low rate of error (original research) 4. Tested (original research) 5. Resulting from independent research b. What if we don't have some of these factors? 1. Explain techniques and conclusions precisely and in detail 2. Provide supporting, published references by recognized minority 3. Address data, results, and conclusions of all studies 4. Support with generally accepted results wherever possible c. Where to watch out 1. Support everything you say with references 2. Be especially careful when interpreting results of others 3. Preserve credibility: don't overreach

Sci.Ev rjm Week 4 16 Jason – Daubert in Patent Cases -2 Expert testimony must "fit", by preponderance of evidence a. What does this mean? 1. Help jury decide factual questions necessary to the case 2. Rely on scientific expertise - Go beyond common knowledge, common sense, and common experience b. Where to watch out 1. Don't draw any legal conclusions, such as non- infringement 2. Stay within your own scientific expertise

Sci.Ev rjm Week 4 17 Adam – Daubert in Patent Cases Factors to Consider for Assessing Scientific Validity -General Acceptability -Peer Review and Publication -Rate of Error/Testability General Acceptability -Pretrial independent research -Objective support -Acceptance/Relevance of methodology employed -Recognized minority at the minimum Peer Review and Publication -Learned treatise -Reputable scientific journal -Clinical studies Rate of Error/Testability -Reliable results -Verifiable evidence -Valid scientific method

Sci.Ev rjm Week 4 18 Henry – Daubert in Patent Cases -1 Slide 1: Key points from all cases 1. An expert's conclusions must be measured against accepted knowledge of the relevant scientific community. (Carnegie Mellon, p.4) 2. Experts must show that their methodology follows the scientific method as practiced by a "recognized minority" in their field, and does not reinterpret other scientists' data. (Carnegie Mellon, p.7=8) 3. Even highly qualified experts must cite specific, objective evidence supporting their opinions, such as papers or experiments. (Sorkin, p.12) 4. Experts can testify only about their areas of expertise, not about subjects that lay jurors could judge for themselves. (Pharmastem, p.14

Sci.Ev rjm Week 4 19 Henry – Daubert in Patent Cases -2 Slide 2: Carnegie Mellon emphasizes the importance of the "scientific community" * The patentee's expert, Dr. Brown, testified about plasmids and enzyme activity. * The court excluded Brown's testimony because it contradicted accepted scientific knowledge, and reinterpreted other scientists' papers and data without a recognized methodology. * Specific problems with Brown's testimony: = Brown's conclusions contradicted two treatises and 16 published papers = The patentee's two other experts did not agree with Brown = Brown ignored results that did not support his theory and failed to explain alternative explanations for the data.

Sci.Ev rjm Week 4 20 Henry – Daubert in Patent Cases -3 Slide 3: Sorkin shows that experts have to rely on more than their own credentials * The court agreed that the patentee's expert, Dr. Trejo, was a reputable engineer. * However, the court noted specific problems with his testimony: - Trejo cited "general literature" without naming specific sources - Trejo did not perform any experiments on the disputed devices - Trejo made unsupported assumptions about the "purpose" of devices

Sci.Ev rjm Week 4 21 Henry – Daubert in Patent Cases -4 Slide 4: Pharmastem explains that experts can talk only about their fields * The expert, Dr. Hendrix, was a stem cell expert, but instead of testifying about stem cells, she discussed the defendant's marketing materials. * Even though Hendrix's observations were useful, they did not employ her expertise. The court said that a lay juror could judge the marketing materials.

Sci.Ev rjm Week 4 22 Ann Marie – Daubert in Patent Cases Slide 1: Infringement Argument i. The alleged infringer and Sorkin both make caps used on tendons. Sorkin argues that the difference between these caps does not defeat a finding of literal infringement or infringement through the doctrine of equivalents.

Sci.Ev rjm Week 4 23 Ann Marie – Daubert in Patent Cases Slide 2: Legal Opinions by Experts i. Under Rule 704(a), experts are not allowed to give legal conclusions but can give opinions concerning an ultimate issue to be decided by court.

Sci.Ev rjm Week 4 24 Ann Marie – Daubert in Patent Cases Slide 3: Trejo Testimony i. Trejo does not site references he used in forming his expert opinion, explain his methods for analyzing the caps, or conduct scientific testing and therefore fails the Daubert test.

Sci.Ev rjm Week 4 25 Ann Marie – Daubert in Patent Cases Slide 4: Literal Infringement i. There is no finding of literal infringement because the retaining member was located at 8mm inside the cap and Amsysco's cap retaining member is 1.25mm inside the cap.

Sci.Ev rjm Week 4 26 Ann Marie – Daubert in Patent Cases Slide 5: Doctrine of Equivalents Infringement i. Sorkin distinguished his patent from prior art by arguing that the location of the film in his cap is different from that of the prior art. He cannot now argue that a despite a difference in film location, the caps equivalent and therefore infringing under the Doctrine of Equivalents.

Sci.Ev rjm Week 4 27 Next Week Ampex v. Mitsubishi Transcripts (Grad Students read, Law Students re- read) The Examining Attorney (for PO Ampex) will be here to answer your questions. Discussion (no reading yet) about the PHOSITA and the Expert