Sci.Ev rjm Week 2 - 9/12/07 1 LAW Scientific Evidence and Expert Testimony: Patent Litigation Today’s Agenda  What We Will Do in this Seminar (again); What You Have Done So Far  Review of Patent Law – why I wanted to know how much you (collectively) know  The object/patent assignment  KSR – and why it matters for the seminar 5 min. break at 5:10. Over at 6:15.

Sci.Ev rjm Week 2 - 9/12/07 2 What You Will Do in this Seminar - I assumed you had read the course description long ago, and hadn’t forgotten too much yet. (next slide)course description - You’ll either perform on the contract or walk.* - Your responses to this week’s assignment were very good. Thank you. - Any questions about the rest of the term?

Sci.Ev rjm Week 2 - 9/12/07 3 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 (next slide)

Sci.Ev rjm Week 2 - 9/12/07 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.

Sci.Ev rjm Week 2 - 9/12/07 5 Your Plans and Biases: PO/AI; also Pros/Lit/Corp Which (one or more?!) are you planning to be? Last Week’s Slide 5

Sci.Ev rjm Week 2 - 9/12/07 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 2 - 9/12/07 7 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 2 - 9/12/07 8 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 2 - 9/12/07 9 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 2 - 9/12/07 10 Your 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 2 - 9/12/07 11 Reading a Patent How many patents have each of you looked at (howver defined) before last week? None? Single digits? Tens of Patents? More?

Sci.Ev rjm Week 2 - 9/12/07 12 Reading a Patent What you looked at first (first through fifth), what you looked at later, what you ignored. (HANDOUT) What about that cover sheet? Your comments on other people’s cover sheets. What I look at…

Sci.Ev rjm Week 2 - 9/12/07 13 Reading a Patent Why choose a patent whose number appears on something you can buy? Your experts may balk at this requirement. Be ready to be firm. How do you read a patent? Always ask: who wants to know? Different perspectives: - PO, PAppl, AI, VC, Curiousity (you, now) - Commonalities and differences in approach

Sci.Ev rjm Week 2 - 9/12/07 14 Reading a Patent PAppl – (looking at prior art patent) –to disclose and maybe to claim around –to see if you should buy/license it Potential Licensee /AI - litigation –to design around – or buy – or merge… –to challenge validity or enforceability [assuming you’re within the claims] –to negotiate a license intelligently M&A (PO or Licensee or AI-lit/settlment) –to evaluate an asset PO - litigation – to evaluate whether you can sue within the bounds of Rule 11

Sci.Ev rjm Week 2 - 9/12/07 15 Who has to look at CLAIMS? Who can IGNORE claims? PAppl (looking at prior art patent) Potential Licensee /AI - litigation M&A (either side) PO – litigation (to sue on the patent)

Sci.Ev rjm Week 2 - 9/12/07 16 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 2 - 9/12/07 17 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 2 - 9/12/07 18 Liability ≈ Validity & Infringement Given what the IT is in a patent case, what affects BOTH validity and infringement? How is that resolved in many patent trials?

Sci.Ev rjm Week 2 - 9/12/07 19 Your Good Instincts, Your Naivete, Your Insights, Your Ignorance, and All of the Above Craven: “Land” ?Marshall?: M+F Faulkner: boiler plate introducing claims & Faulkner: “substantially” Reyes: role of inventor’s other, NOT cited, patent. Why might it NOT matter? v statutestatute(s)s MPEP Peng & ____: references cited are the PTO/Examiner’s finds

Sci.Ev rjm Week 2 - 9/12/07 20 Claim Language – M+F How many of you already know about M+F claims? Means + Function claims are common. They are permitted under Sec. 112 P 6 (quoted on next slide). Looking at the statute, or from prior experience, where will the controversies lie in a M+F claim?

Sci.Ev rjm Week 2 - 9/12/ USC 112 ¶ 6 An element in a claim for a combination may be expressed as a means or step for performing aspecified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. **for LITERAL infringement, not DOE infringement**

Sci.Ev rjm Week 2 - 9/12/07 22 KSR Your Verbs - POS NEG or BOTH SC - thrills JAF - frustrates JDF - engenders ambivalence SM - slightly bothers LP - amuses JP - intrigues HP - charms JR - shocks MR - concerns RvN - surprises JW - appeals to RM – irritates, when it doesn’t make me chortle (arrogantly)

Sci.Ev rjm Week 2 - 9/12/07 23 KSR and the factoid Two-edged sword – the strategic problem of such evidence Simultaneous independent invention: proof of obviousness? or grounds to declare an interference?

Sci.Ev rjm Week 2 - 9/12/07 24 Next Week Meet the graduate students Reading assignment for them and you – TBD.