10/11/10 RJM - Sci Ev Seminar - Fall Today’s Agenda – 10/11/10 Housekeeping Simulations Teams Patent Explorations Finishing up – 9/27 slide, VNUS file history, file histories in general, BREAK at ~5:20 KSR – 40 minutes Tyco – 20 minutes

10/11/10 RJM - Sci Ev Seminar - Fall Housekeeping On 9/27 one slide said “Good Note Taker Needed.” Zubin was excused from class that day and he has the slides, of course, but if someone can tell him what else happened, both of you will benefit! The list should be active The award for stoppers will be announced later this week. Check out the directory EML_Q_A on the course website when you start an assignment.EML_Q_A How many people think they might attend a day or so of trial in Tyco v. biolitec? (link to Judge Chesney’s calendar; amd see Docket and Pretrial Order (Dkt 081) on

10/11/10 RJM - Sci Ev Seminar - Fall Teams Week of 11/15 11/15 M, 5 to 8:30, second team starting at ~7, and either 11/16 T, 6:30 to 8, or 11/17 W, 7:30 to 9* ??Biology??Norm, JaneJosh, Miling Physics?Wyatt, WillDan, Jing Miscellaneous??Zac, ?Zubin?Li, Lieven 11/29, Monday, 6 to 7:30? later? EE: Darrell, KeyaTosin, Shenghan Not necessarily in this order. *Wyatt: see me

10/11/10 RJM - Sci Ev Seminar - Fall Attending/Critiquing Everyone must attend all the simulations. (Lieven excepted, by pre-arrangement, and he will be providing written comments on the powerpoints of the team he will miss.) Everyone must critique someone with the same status (lawyer or expert) in another team. Ordinarily I make the assignments in round-robin fashion: the first team criticizes the second, the last team criticizes the first. If you anticipate a problem with this order, please let me know.

10/11/10 RJM - Sci Ev Seminar - Fall Possible Patents (list randomized by random.org/lists) josh shenghan [ : discuss abandoned applications and term extensions] jing miling zubin dan li tosin lieven keya Ask your lawyers to check LEXIS for litigation (LIT-REEX field in the patent, and also search the patent number in judicial opinions, too)

10/11/10 RJM - Sci Ev Seminar - Fall Shenghan’s Complicated Patent When does/did this patent expire? stanford.edu/~rjmorris/sciev.10/DOCS/TERMCALC.DOC

10/11/10 RJM - Sci Ev Seminar - Fall Shenghan’s Complicated Patent CIP of ,343= 4,621,006 CIP of ,632 Divof ,592 = 4,853, CIP of ,893 = 5,021, none of the later 3 claim priority from 1984? In fact, the 1988 patent is a CIP of the 1986 CIP of the 1984 app. The 1989 is a division of the 1988 CIP of the 1986 CIP of the 1984 app.

10/11/10 RJM - Sci Ev Seminar - Fall Shenghan’s Complicated Patent app 591,932 = 5,154,963 CIP of ,343 = 4,621,006 CIP of ,632 abandoned Div of ,592 = 4,853, CIP of ,893 = 5,021, none of the later 3 claim priority from 1984? In fact, the 1988 patent is a CIP of the 1986 CIP of the 1984 app. The 1989 is a division of the 1988 CIP of the 1986 CIP of the 1984 app. CIP Div CIP

10/11/10 RJM - Sci Ev Seminar - Fall From 9/27: Major Issues of Liability in Patent Law Validity Infringement The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES

10/11/10 RJM - Sci Ev Seminar - Fall Sci.Ev. - rjm Week Validity Infringement AI Preponderance C&C PO WHO HAS THE BOP? WHAT IS THE QOP? How do BOP and QOP affect the litigators and scientific experts? Major Issues of Liability in Patent Law Did we spend much (any) time on this slide on 9/27? It was in the ppt. MILING commented on acronyms that are on slides but not spelled out in writing. Let’s address that now.

10/11/10 RJM - Sci Ev Seminar - Fall How do BOP and QOP affect the litigators and scientific experts? Major Issues of Liability in Patent Law QP Quantum of Proof (sometimes called Standard of Proof) BoP Burden of Proof (sometimes divided into Burden of Going Forward and Burden of Persuasion) The BOP is on the party who affirmatively must prove that a particular issue favors its side. In infringement litigation, I designate the parties PO - PO (patent owner) and AI - AI (accused infringer). In a prosecution case (appeal from action of the PTO), I designate the parties - PA (patent applicant) or Appl, and - PTO a Ex’r (examiner). There are 3 quanta of proof used in US jurisprudence: preponderance preponderance of the evidence (=50%+ε) C&C clear and convincing (“C&C”) evidence = >50% <99% ?~70% beyond a reasonable doubt (criminal law only; maybe = 99%)

10/11/10 RJM - Sci Ev Seminar - Fall Sci.Ev. - rjm Week Validity Infringement AI Preponderance C&C PO WHO HAS THE BOP? WHAT IS THE QOP? How do BOP and QOP affect the litigators and scientific experts? Major Issues of Liability in Patent Law

10/11/10 RJM - Sci Ev Seminar - Fall Why did the applicants add claims when their claims were all rejected? Discuss merits of rejection, prior art, responses. VNUS File History

10/11/10 RJM - Sci Ev Seminar - Fall What happened? We’ll go around the room, starting with the earliest event. Top issues for discussion: value and utility of prior patents KSR

10/11/10 RJM - Sci Ev Seminar - Fall Law students will tell us what we need to know about the case – and about what the parties had to do beforehand. First, general jumpers, then tell us about your assigned pages. Wyatt - cover, contents and pages 1-2 Darrell - pages 7-11 (up to stipulated fact 59) Zac - Factual Issues Remaining, items 1 through 32 (pages 17-19) Will - Factual Issues Remaining, items 33 through 47 (pages 19 to 21) Norm - Expert Witnesses listed at various places on pages Jane - Fact Witnesses listed at various places on pages Tyco – Joint Pretrial Statement and Addenda

10/11/10 RJM - Sci Ev Seminar - Fall USC § USC § 282, third ¶: “In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of - the country, number, date, and name of the patentee of any patent, -the title, date, and page numbers of any publication -to be relied upon as -anticipation of the patent in suit or, -except in actions in the United States Claims Court [United States Court of Federal Claims], as showing the state of the art, -and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires....” Pre-trial Notices in Patent Cases Who asserts those things? What does the list remind you of? What happens if you omit something from the notice?

10/11/10 RJM - Sci Ev Seminar - Fall 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 (to see what people do who would PRACTICE New’s invention) Old PatentLook at Old's SPECIFICATION (to see what it "teaches") Look at Old's CLAIMS Q.When do you look at the CLAIMS? A. When the patent is ________. Q. When can you IGNORE the claims? A. When the patent is ________.

10/11/10 RJM - Sci Ev Seminar - Fall If nobody volunteers... Order of Comments on VNUS norm shenghan darrell jing [zubin] keya wyatt miling josh will zac lieven jane [li] jing Random Order 2 darrell norm jane evan lieven tosin wyatt will jing keya zac daniel shenghan josh miling Random Order 1 miling shenghan jane tosin josh wyatt lieven zac keya daniel will norm jing darrell evan cp Randomized by random.org/listsrandom.org/lists