Sci.Ev rjm Week 3 - 9/26/07 1 LAW Scientific Evidence and Expert Testimony: Patent Litigation Today’s Agenda  The Arrival of the Graduate Students  Who You Are, What You’ll Dp  The Grad Students’ Patented Objects and Their Patents  Tutorial on Patent Law: Basic Concepts the Lawyers can teach their Experts 5 min. break at 5:10. Over at 6:15.

Sci.Ev rjm Week 3 - 9/26/07 2 Who You Are - Handout about Grad Students - Handout about Law Students

Sci.Ev rjm Week 3 - 9/26/07 3 What You Will Do in this Seminar - Recall what the course description said. (See next slide)course description - If you are taking the course for a grade, you must agree to the contract or walk.* - Please state your BIAS – PO or AI – now. You can change later.

Sci.Ev rjm Week 3 - 9/26/07 4 For the first part of the term, the class will review relevant patent law and expert testimony law. After that, the law and graduate students will work together to select patents for their final simulation projects. Working collaboratively, the students will prepare claim charts and devise a design-around, creating a situation that gives each side adequate room for argument. All students will then be assigned a client, either patent owner or accused infringers. As adversaries, they will present short oral arguments (law students) and summaries of expert declarations (grad students) for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be practicing patent litigators and patent professors. Or, even bigger, slower, AND reformatted (next slide)

Sci.Ev rjm Week 3 - 9/26/07 5 For the first part of the term, the class will review - relevant patent law and - expert testimony law. After that, the law and graduate students will work together to select patents for their final simulation projects. Working collaboratively, the students will - prepare claim charts and - devise a design-around, creating a situation that gives each side adequate room for argument. All students will then be assigned a client, either - patent owner or - accused infringer. As adversaries, they will present - short oral arguments (law students) and - summaries of expert declarations (grad students) for a Markman claim construction hearing. In the final weeks of the term, the students will play the roles of litigators and witnesses in simulations of expert testimony. The judges will be - practicing patent litigators and - patent professors. TERM OF ART

Sci.Ev rjm Week 3 - 9/26/07 6 Grad Students’ Patented Objects Ayres Chang Conley Dai Gamble Ganesan Garcia Ha Hu Kachirskaia Kawahara Liu Lopez Meltzer Olcott

Sci.Ev rjm Week 3 - 9/26/07 7 Law Students’ Patented Objects Craven: Pill Container Freed: Garbage Bag Faulkner: Magnetic Snap Fastener [Gamble - Applied Physics: Kleenex Box] Marshall: TI Calculator [Morris: Coffee Sleeve (handout from last week)] Pan: Toothpaste Squeezer Peng: Auto-turn-off Vacuum Cleaner (three patents) Petrova: TI Calculator Reeslund: Disposable Thermometer Reyes: Water Filter (two patents) van Niekerk: Bicycle Bearing Wahlstrand: Tooth Whitening Strip (two patents) Color/Font Key High tech Low tech Tech not what you expected (last category not incomplete due to CW outages)

Sci.Ev rjm Week 3 - 9/26/07 8 Reading a Patent How many patents have each of you looked at (howver defined) before last week? None? Single digits? Tens of Patents? More? For your simulations, I require you to choose a patent whose number appears on something you can buy. WHY?

Sci.Ev rjm Week 3 - 9/26/07 9 Marking The legal effect of marking is governed by STATUTE as interpreted by the COURTS in written opinions.

Sci.Ev rjm Week 3 - 9/26/07 10 Reading a Patent Parts of a Patent:Patent Cover Sheet (it has many parts, too: stay tuned) Figures Specification (no S, please) (This word can mean all the pages except the cover sheet and the claims, in which case it includes the figures. OR it can mean only the text on those pages. OR it won’t matter.) CLAIMS

Sci.Ev rjm Week 3 - 9/26/07 11 CLAIMS Claims - define the legal effect of the patent - new VERB: READ ON if a claim READS ON the prior art they are INVALID if a claim READS ON an accused device, the device INFRINGES the claim

Sci.Ev rjm Week 3 - 9/26/07 12 CLAIMS Claims define the legal effect of the patent Learn a new VERB: READ ON - if a claim READS ON the prior art, the claim is INVALID - if a claim READS ON an accused device, the device INFRINGES the claim

Sci.Ev rjm Week 3 - 9/26/07 13 Lawsuit ≈ Liability & Damages In ANY IP case (copyright, trademark, trade secret), the liability questions are: IS IT VALID? IS IT INFRINGED? What the “it” is will vary, of course. What makes an“it” valid is different, too. So: What is the “it” in a patent case? Liability ≈ Validity & Infringement

Sci.Ev rjm Week 3 - 9/26/07 14 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 One patent does not infringe another. Only real things can infringe. But someone practicing NEW who marks its product with the NEW patent number, will have a very hard time arguing that its marked PRODUCT isn’t the same – for purposes of analyzing infringement of OLD patent –as the NEW PATENT. This happens in real life litigation. It’s easier, cheaper, and doable BEFORE you even write the first letter, to analyze the patent of your competitor (potential AI) than to get discovery

Sci.Ev rjm Week 3 - 9/26/07 15 Liability ≈ Validity & Infringement Given what the IT is in a patent case, what is the key to deciding BOTH validity and infringement? How is resolved in many patent trials? It’s the CLAIMS, stupid. A Markman hearing. For the JUDGE alone, even if there will later be a JURY trial. CLAIM CONSTRUCTION

Sci.Ev rjm Week 3 - 9/26/07 16 Validity – or rather INVALIDITY Vocabulary READ ON Prior Art Ways to Demonstrate Invalidity ~ ISSUES Anticipation Obviousness Indefiniteness failing to provide an adequate Written Description Enablement / failure to Enable Best Mode / failure to disclose the Best Mode Red = terms of art or ISSUES Black = correct wording for the phrase: the claim was found invalid for _________

Sci.Ev rjm Week 3 - 9/26/07 17 (In)Validity Which issues involve the CLAIMS, which the SPECIFICATION? Anticipation Obviousness Indefiniteness Written Description Enablement Best Mode primarily

Sci.Ev rjm Week 3 - 9/26/07 18 Anticipation and Obviousness Depends on what is in the PRIOR ART. How do those 2 differ? 1.HOW MUCH ART? 2.What other things matter, besides the art and what it DISCLOSES? The STATUTE defines the kinds of things that can be PRIOR ART. It does that in Title 35of the United States Code, Section 102. (35 USC 102)

Sci.Ev rjm Week 3 - 9/26/07 19 Anticipation and Obviousness 1. How much art? Anticipation: A single piece of prior art is ON ALL FOURS. The claim READS ON this single reference. Obviousness: Usually more than one reference, but could be one reference PLUS the knowledge of the PERSON OF ORDINARY SKILL IN THE ART.

Sci.Ev rjm Week 3 - 9/26/07 20 Anticipation and Obviousness 2. What else matters besides ? Anticipation: NOTHING. Except that the single piece of P.A. must ENABLE at least as well as the patent does. Obviousness: LOTS. The PRIMARY CONSIDERATIONS. (really not much beyond the p.a., but there’s a formula for them, from the statute and from court decisions) The SECONDARY CONSIDERATIONS Guess which one AIs prefer to use to challenge a patent? What about POs?

Sci.Ev rjm Week 3 - 9/26/07 21 Next Week More of the tutorial. Preparation for attending the Boston Scientific Trial.