Sci.Ev. - rjm Week 05 1 Seating Assignments Door Screen One more MATT Sanofi Matthew, Dmitry, (Denise), Prosen Obviousness

Sci.Ev. - rjm Week 05 2 Today’s Agenda – Over by 6 Leftovers: Obviousness Sanofi Law of Expert Testimony Daubert Why Daubert doesn’t matter that often in patent cases MEMC Pharmastem Observer/Expert Witness: Prof. Joe Grundfest: Compared his affidavit to written testimony of a scientific expert in a patent case Possible Patents for your simulations; Teams? Teams/Next Week (no additional reading) 11/25: Movie Day?

Sci.Ev. - rjm Week 05 3 Obviousness Sanofi (Denise), Matthew, Dmitry, Prosen Compare KSR to Sanofi: what’s different? Technology Number of pieces of prior art Identity of the creator of the prior art Theory as to why the prior art might NOT invalidate Other factors P.S. Apotex has petitioned for cert. A decision is expected 11/2. Will the Supreme Court grant or deny? Why do you think so? “Whether, if an experiment was ‘obvious to try,’ a prima facie case of obviousness is automatically rebutted by a showing that the outcome of the experiment was not entirely predictable.”

Sci.Ev. - rjm Week 05 4 MEMC The Patent in Suit describes a method but claim 1 is to a wafer? The Issue the Expert Addressed Daubert Issue: Relevance or Reliability or both? What Happened Lessons for Prosecutors What events/omissions during prosecution affected the litigation? Could the problem(s) have been avoided? Lessons for Litigators Finding experts Internal v. External experts

Sci.Ev. - rjm Week 05 5 Pharmastem The Issue the Expert Addressed What Happened Pharmastem’s Problem(s) Proofs for Summary Judgment v. Proofs at Trial Daubert Issue: Relevance or Reliability or both? Interplay of Liability and Damages Votes Newman: 8, Bryson: 5 Newman: BumQ, Dmitry, David, Prosen, Ben, Emily, Guillaume, Denise Bryson: Tiffany, Riti, Aaron, Ryan, Matt (Not voting: Matthew)

Sci.Ev. - rjm Week 05 6 SEC Settlement – Grundfest Aff. Two areas for testimony - Custom and Practice in settling enforcement actions - Merits: Misrepresentation and Materiality Kinds of evidentiary support for the expert’s opinion - Personal experience - Public documents Law students: Have you taken a course on Evidence? Grad students: Any knowledge, other than from t.v. and movies, and now these 2 cases? Why would (not) the logic of Pharmastem apply to Prof. G.’s presenting what anyone could read in The New York Times? Why was Dr. Hedricks challenged but Prof. Grundfest not?

Sci.Ev. - rjm Week 05 7 Comments Who was commented on most? What was commented on most? BumQ – MEMC(lit) Ben - Pharm Matt - Pharm Ryan – Pharm x2 MEMC(pros) Denise - Pharm Tiffany – MEMC(pros)x2 Pharm David - Pharm Prosen - Pharm

Sci.Ev. - rjm Week 05 8 Teams and Patents 3 teams – 2 lawyers and 2 experts 1 each for PO, 1 each for AI That means 2 grad students play lawyer in each of 2 teams PO: Ryan, Aaron, Ben, Dmitry, Prosen AI: Terrel, BumQ, Tiffany No preference: Guillaume, Denise