1. 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 1 IP: Scientific Evidence in Patent Litigation Week 6 Agenda Some questions from 2/02 that are relevant today. Prof. Philip H. Bucksbaum talks about being an expert witness in IMRA v. IPG (ED Mich 2011) Break at ~5:20 A bit of catch up Rules of Evidence, Daubert Motions Teams, next week’s presentations, etc.

2. 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 2 Some Questions from 2/02 that Prof. B. may answer Waqas Q1) We have on multiple occasions said that most parties settle after the claim construction. Are their ever any reasons not to settle? and what do the court proceedings look like after claim construction? Q2) What are things to consider when preparing a person for scientific testimony? Q3) How to approach a scientist/engineer for cross examinations? JAMIE 3. Why do most judges not elect to take on a technical advisor as Chief Judge Ware has done in ACER?

3. Reverse Doctrine of Equivalents - 1 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 3 What is the Reverse Doctrine of Equivalents? It is an AI defense: AI concede literal infringement but then makes what I call the ‘duck’ argument. *There are ~ NO reported decisions where RDE has succeeded. That fact does not mean that RDE does not matter. What words in the *’d sentence are the tip-off? “Litigation (reported judicial decisions and jury verdicts that get press coverage) is NOT the tip of the iceberg because,with an iceberg, it is ice all the way down.” –RJM 1991.

4. Reverse Doctrine of Equivalents - 2 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 4 [W]here a device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the [reverse] doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608- 609 (1950) ([underlining by the court; boldface mine- RJM]).Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608- 609 (1950) Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1377-1378 (Fed. Cir. 2008) Graver Tank in turn quotes from Westinghouse (1898). The cited page says, among other things: We are induced to look with more favor upon this device, not only because it is a novel one …but because it solved at once in the simplest manner the problem of quick action, whereas the Westinghouse patent did not prove to be a success until certain additional members had been incorporated into it. … If credit be due to [PO] Mr. Westinghouse for having invented the function, [AI] Mr. Boyden has certainly exhibited great ingenuity … [A]lthough Mr. Boyden may have intended to accomplish the same results, the Westinghouse patent, if he had had it before him, would scarcely have suggested the method he adopted to accomplish these results. Under such circumstances, the law entitles him to the rights of an independent inventor. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 571-573 (U.S. 1898) Alas, the Supreme Court was confusing validity with infringement. But at least in Westinghouse, unlike Siemens, the NEW PO was owned by the OLD AI (not just licensed to it). Q: if Boyden’s patent is so superior that everyone would prefer B’s way to W’s way, does W infringe B?

5. Reverse Doctrine of Equivalents 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 5 Just did a quick search. Found a Fed Cir case called (!) Cordis v. BSC from Sept 2011. Yes, our old friends, but a different patent. The court says “Consequently, we decline to reach … the issue of non-infringement by the reverse doctrine of equivalents.” Typical! (They affirmed no literal infringement, so they did not have to get to RDE.) Here’s another typical response to the assertion of the RDE: We are not persuaded by TKT that this is a case where equity commands a determination of non-infringement despite its product literally falling within the scope of the asserted claims. Amgen Inc. v. Hoechst Marion Roussel, 314 F.3d 1313 (Fed. Cir. 2003) Warner-Jenkinson says DOE is NOT a question of EQUITY. But RDE, perhaps, still is?

6. Federal Rules of Evidence 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 6 Rule 702. Testimony by Expert Witnesses A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case. Rule 703. Bases of an Expert's Opinion Testimony An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted. But if the facts or data would otherwise be inadmissible, the proponent of the opinion may disclose them to the jury only if their probative value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect. Tim, Waqas, Dave Tim, Corinne Waqas, Patrick, Sam, Corinne Waqas, Amanda, Sam Jamie Jamie Nicolaj, Amy, Sam, Kevin Jamie Nicolaj, Patrick, Sam (who also relates it to 701 ‘rationally based”), Kevin, Corinne (reliable/reliably) Nicolaj, Patrick, Amanda, Kevin, Corinne, Dave Amy Dave Corinne

7. Federal Rules of Evidence 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 7 Rule 705. Disclosing the Facts or Data Underlying an Expert's Opinion Unless the court orders otherwise, an expert may state an opinion --and give the reasons for it-- without first testifying to the underlying facts or data. But the expert may be required to disclose those facts or data on cross-examination. Tim Rule 704. Opinion on an Ultimate Issue (a) In General--Not Automatically Objectionable. An opinion is not objectionable just because it embraces an ultimate issue Dave

8. Best Fact / Worst Fact – Who’s Who 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 8 PO – Apeldyn PO’s Expert: - Kmetz AI– AUOAI’s Expert - Dr. Yeh Daubert Motion filed by AI AUO against testimony of Kmetz. What happened in the litigation before the Daubert motion? On further reflection (nobody chose this/them) but consider it/them now: Best or worst fact for anyone?

9. Best Fact / Worst Fact – AUO’s BEST 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 9 TIM: In his testimony, Kmetz went far away from his core area of expertise ("AUO's corporate structure... how AUO obtains market information"). WAQAS: Sales analysis and opinion. As sales is not the specialized “scientific/technical” knowledge (rule 703) of the Kmetz so it seems like a good issue to bring up JAMIE: Dr. Kmetz justified the visible light the accused panels emitted when tested in the eigen-axis configuration as leakage caused by "fringe effects,” which he neglected to fully explain. (¶3) NICOLAJ: That Kmetz's testimony was based on "hearsay". If that plays out the right way it can really undermine the witness' credibility and the testimony as a whole, eventhough if "hearsay" part only concerns a smaller part of the entire testimony. PATRICK: Kmetz's experiments were very limited. He only tested two configurations under 1 voltage condition. The results were not really measured, only captured by a photograph. AMY: AUO identifies and tries to limit the role of the expert, specifically regarding his capabilities to examine AUO’s sales. In a sci. expert’s opinion, why mention sales data? Why might sales records NOT be ‘hearsay’ (under US law)?

10. Best Fact / Worst Fact – AUO’s BEST - 1 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 10 AMANDA: Although Judge Robinson ruled he could testify about sales in a limited capacity, Kmetz's complete lack of qualification in that arena may undermine his credibility if he goes too far. SAM: Targeting Kmetz’s sales testimony, or the strategy of wrapping it together with the science, seems like the best way to cast doubt on the science. KEVIN: The fringe effects that were apparent in the photographs were a solid ground to fight the presence of the eigen-axes. CORINNE: Kmetz's data contradicts his conclusion. Dark regions prove eigen-axes exist. He found light regions, and used a conclusory excuse (fringe effects) to conclude eigen-axes exist. DAVE

11. Best Fact / Worst Fact – AUO’s WORST 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 11 TIM: AUO simply didn't have better measurements to contradict Kmetz's ("Such measurements were not taken by Yeh"). WAQAS: While bringing no relevant data at all, AOU objected to the low amount of data by Kmetz. JAMIE: The only evidence against Dr. Kmetz’s findings was the statement by AUO expert, Dr. Yeh, that there was a more scientific way to conduct the experiment other than photography but “such measurements were not taken by Ye.” (¶7) NICOLAJ: The argument that Kmetz's observations do not provide sufficient data to conclude whether the accused devices have "eigen-axes" under Apeldyn's claim construction, as it becomes apparent from the decision that the court did not embrace Apeldyn's claim construction in the first place. PATRICK: Their expert, Yeh, had not done any transmission measurements himself. AMY: AIs witness suggested that alternative tests exists (regarding polarity) but then provided no examples and data from these alternate tests. AMANDA: Kmetz only has 1 way of rebutting Kmetz‘s eigen-axis decision, and it's a single deposition statement saying there's "probably" a more scientific way to do it. SAM; Criticizing Kmetz’s scientific testimony about the eigen-axes. It seems to me that, although a better experiment could be done, the dark patches are clear evidence. KEVIN: Dr. Yeh’s testimony of a “probably more scientific way to measure” the photographs was unsubstantiated. CORINNE: Its own employees/corporate practices are providing the information Kmetz relies on for secondary consideration arguments, DAVE: That there is no light transmitted at a particular angle shows a high degree of polarization. // Why does Yeh say so little?

12. Best Fact / Worst Fact – Apeldyn’s BEST - 1 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 12 TIM: Kmetz did actual work ("removed the panels... Polarizing microscope") and had hard results (pictures) using methods that seem reasonable. WAQA: Their expert did experiments on the actual TV modules thus has added credibility as a witness. JAMIE: Not a fact but the absence of a fact: “The question of whether the light in the accused products remains linearly polarized ‘independent of the applied voltage’ … remains an issue of fact to be tried.” (¶7). NICOLAJ: The defendant had not submitted or not been able to submit technical evidence supporting their critism of the measurements performed by Kmetz. PATRICK: When the polarizer was rotated, there was a visibly noticeable drop in light in the middle of the pixel, suggesting an eigen-axis AMY: "Kmetz's photograph of the CMO panel results is reproduced [in theoriginal opinion.]“

13. Best Fact / Worst Fact – Apeldyn’s BEST - 2 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 13 AMANDA: Kmetz actually performed experiments and, it sounds like, has lots of useful visuals, which is appealing to a jury and helpful for their comprehension. SAM: Stating Kmetz’s sales testimony is relevant in “secondary considerations of nonobviousness” as this is a nebulous coverall that seems to work well here. KEVIN: The evidence in favor of the presence of eigen-axes appears undisputed outside of the fringe effects which were accepted by the court CORINNE: AUO didn't show there existed a different way to gather "sufficient data"; it just complained that photographs were not "scientific" enough. DAVE: There's a better way to measure polarization than pictures! Kmetz should have used a photodiode measured all of the light transmitted by the filter as a function of angle. A high school physics lab could perform this experiment and it would show the extent to which there's an eigen-axis.

14. Best Fact / Worst Fact – Apeldyn’s WORST - 1 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 14 TIM: Kmetz did actual work ("removed the panels... Polarizing microscope") and had hard results (pictures) using methods that seem reasonable. WAQAS: Fringe effects. Fringe effects are offered as a conclusion to non-ideal performance of LCD polarizers by Kmetz without knowing whether these affected the devices/materials in question. JAMIE: “Light is visible to the naked eye for each of the accused panels tested in the eigen- axis configuration…” (¶7). NICOLAJ: That they try to present Kmetz as an "technical expert" solely while at the same time having him testifying both on technical matters and sales matters and trying to distinguish between these two roles. It may undermine the witness' credibility. PATRICK: The fringe fields showed that even when rotated to the blocking orientation, some light still got through, suggesting that there may not be full linear polarization. AMY: The expert testimony wasn’t that strong when even the judge points out that Kmetz’s sole bases for concluding the AUO’s and CMO’s accused products are his comparative photographs, which is a single test.

15. Best Fact / Worst Fact – Apeldyn’s WORST - 2 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 15 AMANDA: Kmetz has only 1 "sole" basis for his eigen-axis decision and doesn't provide any elaboration on the matter. SAM: Kmetz should have done a better experiment; “taking a picture” is more accessible to explain, but leaves him more open to criticism. KEVIN: The PO’s use of the scientific expert on the commercial marketability of the product was off-base. CORINNE: If fringe effects are "not unexpected," why didn't Kmetz design an experiment that took that into account? DAVE: Secondary considerations are relevant, but is it necessary for Kmetz to testify to them? Is he the right person? Facts and figures would probably fill that void without the heresy. [Pun intended?]

16. Next Week 02/16/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 16 Short Presentations: 3-4 minutes per person (=1-3 slides), ~15 minutes per team. First slide: CLAIM 1, reformatted HANDOUT: Claim 1, reformatted Other slides and handouts as needed. What to cover: the technology how it relates to the CLAIMED invention insight from the specification and file history about the meaning of the key claim term the design-around of the accused device how the DA/AD avoids – or does not avoid – literal infringement or DOE infringement Start later than 4:15 or not?