1. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 1 SIMULATIONS – The Seminar Seminar Name: Scientific Evidence and Expert Testimony: Patent Litigation Purpose: True Interdisciplinary Education People in other disciplines are [not?] different in how they see things, learn, think, focus, argue, know. First part of quarter: patents, claims, claim charts patent law and expert testimony law live expert trial testimony Final Project: A simulation of expert testimony developed in a collaboration between law students and science grad students working in small groups.

2. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 2 SIMULATIONS – The Seminar Final Project: A simulation of expert testimony on a commercialized but unlitigated patent developed collaboratively between law students and science grad students working in small groups.

3. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 3 SIMULATIONS – What They are NOT This is NOT a trial practice class. That means NO objections NO credentialing of experts NO offering of exhibits into evidence NO other courtroom matters that would take time NO outsiders: witnesses are students, too NO winner – or there shouldn’t be NO strict time-keeping (probably) Time limits: ~22 minutes per expert, divided as the team decides

4. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 4 SIMULATIONS – The Patent (It’s not exactly a patent law course nor a patent prosecution course nor even a patent litigaiton course, either.) The patent in the simulation: is a real patent is commercialized (indeed, the number was found on a piece of equipment in a real seminar student’s lab) has never been litigated (ttbook) has limited file history

5. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 5 SIMULATIONS – The Issue The issue as to which the experts will testify was chosen by the team working collaboratively because it jumped off the page balanced. They formulated the issue so that it would be balanced. They worked together on Q&As and areas for cross- examination. They chose sides only at the end.

6. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 6 SIMULATIONS – The Facts and The Law Infringement problems: The students invented any design arounds. Obviousness problems: The students located real uncited prior art. No invention here. Law: The students researched any points of law they needed to check. No invention here.

7. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 7 SIMULATIONS – 11/29 at 7:00 [Refreshments following the simulation] 6,498,854 Transducer for sensing body sounds Inventor: Clive Smith Issue: Obviousness 6,498,854 Judges: Beamer, Evans, Fan, Higgins Cast in order of Appearance For AI:Attorney - Darrell Expert - Keya For PO:Cross-examination - Shenghan For PO: Attorney - Darrell Expert – Shenghan For AI:Cross-examination - Keya

8. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 8 SIMULATIONS – 11/29 at 7:00 Stipulations: 1.Dermal layers art: NOT RELEVANT 2.Pros. Hist: Dieken Patent only 3.Secondaries: only if related to scientific expertise 4.The ultimate conclusion of law on obviousness: OK

9. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 9 Patent Issues – In Addition Inventorship Date of invention- conception and reduction to practice 101- patentable subject matter, utility Double patenting Other 102 issues: sales and public uses, experimental use by inventor, “derivation,” date of publications and other prior art, whether publication was PUBLIC, invented by another who did not abandon/suppress/conceal Other 103 issues: collaborative work as prior art / “inventive entity” 112 - Enablement – Best Mode – Written Description -- Indefiniteness Inequitable Conduct (withholding prior art, omitting bad test results, lying about good ones, etc., etc.) – materiality and intent Reissue and Reexamination Intervening Rights / Prior User Rights Indirect Infringement – induced, contributory Interferences – with parties in the infringement suit DOE – PHE: Festo presumptions Estoppels: laches and estoppel (delay in filing suit), prosecution laches (purposeful delay in the PTO), assignee estoppel, implied license, patent exhaustion Damages – Reasonable Royalty, Lost Profits, actual profits, market share, etc. Willfulness Injunctions – Preliminary and Permanent Attorney Fees / Exceptional Case (102b bar or similar moral turp. PO arguments, delay tactics during lawsuit, destruction of documents, etc.) Prejudgment Interest Antitrust – if AI wins on the merits See my 2004 coursepack. name and word are 727 and 102b, respectively2004 coursepack

10. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 10 Thank you! Kermits: Please send me the final version of your powerpoints for the PPT directory, for you and posterity. Everyone: I’ll email you when the video is available.

11. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 11 SIMULATIONS – 11/15 at 8:00 5,515,719 Controlled force microscope for operation in liquids Inventor: Stuart Lindsay Issue: Infringement PO: Zubin and Li AI: Zac and Lieven Judges: Bridges, Pai, Reeslund

12. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 12 SIMULATIONS – 11/15 at 5:30 6,628,382 Liquid photometer using surface tension to contain sample Inventor: Charles William Robertson Issue: Infringement PO: Jane and Josh AI: Norm and Miling Judges: Bridges, Goldman, Tyan

13. SIMULATIONS RJM - Sci Ev Seminar - Fall 2010 13 SIMULATIONS – 11/16 at 7:00 6,035,015 Compton backscattered collmated X-ray source Inventors: Ronald D. Ruth et al Issue: Infringement PO: Wyatt and Daniel AI: Will and Jing Judges: Huang, Rost, Sun