1. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 1 IP: Scientific Evidence in Patent Litigation Week 8 Remaining Questions/Subjects not covered Quick Survey about your Simulations What LOTS of past judges mention Next Week’s Schedule What to do by Sunday midnight

2. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 2 Comments from Last Week Eye contact, confidence, personal bits (OK, ahhh, hand in pocket, self-deprecation) What do each of you remember from last week that you’re willing to tell your colleagues?!

3. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 3 Some Old Questions – Week 6 (Bucksbaum) T: Do experts attend each other’s depositions? Yes. J: Benefit to PO of broad claim construction, even if PO loses this case? Sure, if there are other infringers out there. Downside: INVALIDITY. N: “Voir dire.” Applies to (1) open-court interview of jurors to determine qualifications [really lack of], (2) open-court interview (Q&A) of expert to determine qualifications, (3) anything else? AL: Benefit of aggressive questioning? Juggling – decision here, record on appeal, ‘opening (or keeping closed) the door,’ antagonizing/waking up/alerting the judge or the jury, letting opponent know you know, etc.

4. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 4 Some Old Questions – Week 6 (Bucksbaum) D: What is “impeachment”? You’re a liar. AB: Why NOT submit extrinsic evidence? 1.Strategy. Implies weakness of argument based only on intrinsic, perhaps. 2. Money: it costs extra (getting expert testimony, reading all those dictionaries…) 3.Law – now: Fed Cir has dissed it. AB: Confusion over what’s in evidence/not: common? Yup. All that paper. And it all matters for ‘the record on appeal.’ Q for you: What is in that record? How does it get there? Who compiles it?

5. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 5 Patent Issues that Scientific Experts May Care About (but we mostly ignored) Invalidity (35 USC 112) Enablement – because it also depends on the knowledge of the Written Description – ditto Best Mode (subjective: turns on the inventor’s state of mind. What kind of evidence would be introduced?) Invalidity (102(g) under the old statute) Proving the DATE OF INVENTION(priority) Conception Reduction to Practice Diligence Corroboration

6. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 6 Patent Issues that Scientific Experts Don’t Have to Care About – Usually -1 Invalidity The ON SALE BAR where the bar involves a thing sold or offered for sale (as opposed to a written disclosure such as a journal article, manual, advertisement, patent application) EXCEPT REMEMBER: Evaluation of Secondary Considerations (but can rely on other experts…) EXCEPT REMEMBER: It’s the claim, stupid.

7. EQUITY R56 Ineq. Conduct 283 Injunction 284 Multiple Damages 285 Award of atty fees -Patent Misuse -Laches -Estoppel (re delay in suing) FACT 101Lack of Utility 102a Anticipation 102gDiligence 102g Corroboration 103Analogous Art 103 Secondary Considerations 112P2Best Mode 112P1Written Descrip. R56Intent (Ineq. Cond.) R56 Materiality (Ineq. Cond.) 271 Infringe. – literal 271 Infringe. – DOE 285 Exceptional Case -Patent Exhaustion Compiled first in the 1990s, then made into a slide for Adv Pat Seminar 11/15/05, updated for Sci Ev Seminar 9/5/07 and updated again for Sci Ev 2012. See also pdf pages 31-33 of my amicus brief in Microsoft v. i4i. -rjmof my amicus brief in Microsoft v. i4i. 03/01/2012 7 RJM - IP: Sci Ev in Pat Lit - Winter 2012 LAW 101 Patentable Subject Matter 102b Experimental/Public Use 102bOn Sale 102g Priority of Invention 102gConception 102gReduc. to Prac. 103Obviousness 112P1Enablement 112P2Indefiniteness [101, 102, 103,112,271] Claim Construction -Implied license NB: All statute numbers are pre-AIA. Some have changed, with various effective dates. Catch-Up – Law and Fact (and Equity) Rev of 2/2, 2/9 PPTX

8. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 8 Patent Issues that Scientific Experts Don’t Have to Care About – Usually -2 Infringement (Other Defenses) Implied License (except REMEMBER: Not on the substance of the patent but affect LIABILITY Laches and Estoppel “Prosecution Laches” (dead for non-submarines?) DAMAGES It’s the claim, stupid.

9. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 9 What Judges Will Mention (RJM’s formulation) -1 DIRECT: Closer to a Tennis Match than a Lecture REDUCE the time between questions. A back-and-forth dialogue is good. Both L and E should look at judges (and fellow students from time to time…) to check for mystification. L should push E to slow down, explain, etc., even if that is not in the ‘script.’ EXPERT: If the Q doesn’t provide one, state your topic sentence: Saying “I will know explain the blutz” is OK!

10. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 10 What Judges Will Mention (RJM’s formulation) -2 LAWYER: You can lead your witness through the slide. If there is a connection, you can avoid leading: 1. LEADING Q. Dr. X, I see that there’s a giraffe next to the anaconda. How do those two work together? A. Narrative – short – about G+A. 2. NON-LEADING Dr. X, you’ve told us about the giraffe. What other parts of the device does it interact with? A. Only the anaconda. Same narrative as Q1. Improve this question!

11. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 11 What Judges Will Mention (RJM’s formulation) -3 EXPERTS: HOW MUCH TO TALK The rule ‘Just answer the specific question’ applies on CROSS, and not so much on direct. Both Q1 and Q2, if asked on direct, can be answered with a narrative. On cross, Q2 should NOT be answered with a narrative! On cross: don’t fight. Experts, stay brief. Lawyers: stay brief, too! Lawyers should LEAD. Ask yes-no questions. Don’t give the Expert the chance to amplify, argue, or anything else. CONTROL!

12. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 12 What Judges Will Mention (RJM’s formulation) -4 DIAGRAMS – SCHEMATICS – etc. If they ARE from the patent, cite the figure and sheet. If they are BASED ON the patent, but different, SAY SO. If they are NOT ‘from’ the patent, SAY SO. As in all things: honesty is the best policy. Anything that might look underhanded, meet head on! Does this slide have the right amount of words? Too many? Too few? How well designed is it for quick reading?

13. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 13 What Judges Mention (RJM’s formulation) - 5 SCIENTIFIC TERMS: Make sure you EXPLAIN any scientific term the FIRST time you use it. Say it, point to it or have the animation highlight it, explain it, use it in a sentence. Expert and Lawyer BOTH: Do not let a scientific term creep in without explanation. (Don’t bother to explain what is in a high school science class in bio, chem or physics. Do explain what’s in the AP class… What about “bandwidth”? [Dave re Sam]) L can also ask again when the term is used a while later. Q. You mentioned that word rhinoceros again: it’s that whozits that transports the mud toward the whatsis, right?” A. That’s right. SURE that Q is leading. But as long as Lawyer is repeating what Expert said, nobody will object.

14. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 14 What Judges Mention (RJM’s formulation) - 5 EXPERTS: You CAN, or the LAWYER can on your behalf, ask to leave the witness chair and walk up to the screen. (Do we need a laser pointer? ) Often, that is helpful: you engage with the judges better when you are up and you revive yourself by moving around.

15. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 15 By Sunday 3/4/12 at 11:59 pm*, please submit 1. Roles – PO v AI Please CONTINUE to collaborate, however! 2. Any stipulations or other information your judges should be told or the audience should have available in a handout. 3.Names* of the AI and AD (if you use them) 4.Reformatted Claim 1. Dual goals: Enable the reader to = see at a glance the language underlying your issue (and related signficant language elsewhere in the claim, if any) = skim and grasp the whole claim as necessary. In consultation with your team, I may tweak your claim 1 if I think I can make the judges’ lives easier.

16. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 16 Next Week Volunteers needed to help with set-up. Come by about ½ hour before start time. Room 95. Volunteers also needed to stay at the end and help clean up – and take home leftovers. Critique Assignments : What to do and about whom will be posted over the weekend.

17. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 17 Next Week Wednesday 7:30. Introductions and ground rules. ~7:45-8:45: STCK. 8:45-9? 9:15? Comments by judges. Then until ~10: Refreshments and networking. Thursday. 5:30. Introductions and ground rules. ~5:45-6:45: JAC’D. 6:45-7?7:15? Comments by judges Then until 7:45: Refreshments and networking. 7:45. Introductions and ground rules. ~8-9: PAWN 9-9:15?9:30? Comments by judges. Then until ~10: Refreshments and networking.

18. 03/01/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 18 Next Week