1. 2008 - Sci.Ev. - rjm Week 05 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad 723-9505 rjmorris@stanford.edu Course Materials on the Web: course website http://www.stanford.edu/~rjmorris/sciev.08/ And Stanford’s coursework site for posting assignments: https://coursework.stanford.edu/portal/site/F08-LAW-343-01 Email Group scievseminar08@lists.stanford.eduscievseminar08@lists.stanford.edu Let’s go here first! You can also get to the course website from courseworks : Click SYLLABUS at the left.

2. 2008 - Sci.Ev. - rjm Week 05 2 Today’s Agenda Law students educating (each other and) grad students (Week 02-Assignment 2B-Law) The Hologic v. SenoRX claim construction hearing: Attendee comments? More Field Trips? No trials, alas, but a few more claim construction hearings and tutorials, including a “Markman tutorial” tomorrow in San Francisco, Judge Jeffrey S White’s courtroom, at 2 pm – at least on the Court’s calendar in McHugh (an individual!) v. Hillerich (a company). Neither party is represented by a firm I have heard of, and there are no reported decisions on this one, but here’s the patent: 5,806,091.5,806,091 The Fontirroche Litigation: More on the second Claim Construction Order and the Expert Testimony How the DOCTRINE OF EQUIVALENTS became important The Transcript Literal Infringement and Claim Interpretation in light of the Prosectuion History –v.- Infringement under the Doctrine of Equivalents and Prosecution History Estoppel – Graver Tank, Warner-Jenkinson, Festo Next CLASS: 10/27

3. 2008 - Sci.Ev. - rjm Week 05 3 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 Old PatentLook at Old's SPECIFICATION (what it "teaches") Look at Old's CLAIMS Reminder. Believe this!

4. 2008 - Sci.Ev. - rjm Week 05 4 Law Students’ Slides 1. confidential stamps in litigation, public nature ofconfidential stamps public nature patent documents -- when they become public, whether that is relatively new (defined as the last 20 yers): Julia Kripke 2. complete identity of specification in application and issued patent, exceptions, reasons: Andy Park.Andy Park 3. interference-in-fact: interferences generally, conditions under which district court can determine an interference (relates to the actual litigation of the Fontirroche patent, but is not in the documents you read for 9/29): Julie KaneJulie Kane 4. claim construction order: what is it, what is its relation to a Markman hearing, why is it called "Markman": JenJen Robinson 5. counterclaim: what is it, what kinds of issues might an accused infringer raise in a counterclaim in addition to infringement of its (AI's) patents, when must you file a counterclaim: Greg SobolskiGreg Sobolski 6. IDS: what is 19934-19936? Who and how selects the references listed? Does their listing constitute an admission that they are both prior and [relevant] art? What else should we know about IDSs? Briefly mention how we can find out more about the proposed changes for them: Mark Melahn.Mark Melahn 7. Declaration and Power of Attorney: 19925-19926. What does this mean the patent prosecutor has to do; How and when and with whom; what are the most important 2-5 things in these pages: Karni ChagalKarni Chagal. 8. Terminal Disclaimer: This patent has a terminal disclaimer. Why? What does it mean? David LydonDavid Lydon 9. Continuation in part: What does this mean? Why do people file CIPs? What are the dangers? What benefits? Tim SaulsburyTim Saulsbury 1. DONE 2.DONE 3.DONE 4.DONE 5.TO DO 6.TO DO 7.TO DO 8.TO DO 9.TO DO

5. 2008 - Sci.Ev. - rjm Week 05 5 Claim Construction Order Fontirroche patent Also, for interest, the whole docket for the litigation (to date, anyway).whole docket the jury’s verdict.verdict. the judge’s order on various post-trial motions, including JMOLs.order from last week

6. 2008 - Sci.Ev. - rjm Week 05 6 The 2005 Claim Construction Order Docket # 298, Docket # 298, at page 13. π = BSC (AI of ‘594 patent) Reminder. Slide from last week (with two additions)

7. 2008 - Sci.Ev. - rjm Week 05 7 Boston Scientific Fallacy Application says:Rejection based on Prior art that: Situation 1 “BONDING” (no adjective) Discloses ONLY one kind of bonding: CHEMICAL bonding Situation 2 “CHEMICALLY BONDED”Discloses SEVERAL kinds of bonding a.Does not use the word “chemical” but shows a bond that is chemical. b.Only shows physical bonds. Does the claim READ ON the prior art: in 1, 2, both? In situation 1, would it help to argue that “bonding” means MORE THAN JUST chemical bonding? Why or why not? What should applicant do to overcome these rejections? Fallacy

8. 2008 - Sci.Ev. - rjm Week 05 8 Post-Trial From p. 3 of Docket 844, 2/19/08. Docket 844, 2/19/08. Re JMOL: see pages 14-17 of the pdf linked above. Reminder. Last week’s slide

9. 2008 - Sci.Ev. - rjm Week 05 9 BSC v. Cordis – sorting it out 1. Cordis [PO] wanted to show that the Maverick catheters of BSC [AI] literally infringed claim 7. To do that, it needed BONDED to be > chemical. 2. Cordis wanted an interference. [Why?] Was this more important than #1? A makeweight to #1? Was it Cordis’ best defense as AI of Kastenhoffer? Discuss “senior party” and “junior party”: Fontirroche priority (‘510 application date): 1/31/94. Kastenhoffer ‘477 priority (earliest of 3 continuations in ‘477 family tree): 9/20/94.FontirrocheKastenhoffer ‘477 To succeed, it needed BONDED to be > chemical. Trotta first appears in the docket as filing a declaration in support of Cordis’ Reply to BSC’s motion for a declaration of NO intereference. 9/21/04. He later filed a delaration on obviousness of another BSC patent. Claim Construction Order 1 is dated 2/24/05. Trotta was added as an inventor (certificate 12/13/05) after the Court accepted the broad BOND argument. Trotta’s testified sometime after Claim Construction #1 (2/24/05). He gave his CURRENT understanding as well as his understanding “prior to 2002.” Cl. Const. #2 at 6:2m. Reminder. Last week’ slide

10. 2008 - Sci.Ev. - rjm Week 05 10 Pruitt Testimony – Question 2 A. Julie, Sarah, David: Pruitt’s preparation, and non-. Karni: So few objections. Julia, Greg: good analogies. Mark, Sondra: bad analogies. A.Park, Lisandra: Pruitt not a PHOSITA? Badly coached? Or? Mark, Jen, Samantak: Lee/Pruitt fencing. Brett, Tim: Trotta again. Preparation? Lawrence: The DOE.

11. 2008 - Sci.Ev. - rjm Week 05 11 Answering Homework Questions Make each answer count! Have a different idea or point or observation for each question even if you COULD interpret two or more questions to call for the same answer.

12. 2008 - Sci.Ev. - rjm Week 05 12 Pruitt: Examination and Cross – Question 2 B and C DIRECT and REDIRECT: Karni, Julia: FRE 702: Experts testifying on “ultimate legal conclusions” and law in general. (Let’s look at some of those Rules of Evidence, and related caselaw. More of that when we explore Daubert, too.)Rules of Evidence Andrew: Attorney Baumgartner’s re-direct. Sarah: 625-626: Lee’s successful objections and the 3 layer problem (Pruitt’s slide 3)(Pruitt’s slide 3) Lydon (and others): Pruitt’s credentials. The LEADING QUESTION problem. (Law students will explain what a LEADING question is.) [See also JULIE and SARAH on 2C] Saulsbury: Analogies (616-620). Who came up with them? How to prepare for attacks? CROSS: Mark, Jen/David: Substance! DOE! Questioning about Asuka (Tr. at 685-6 [see esp. 687:4-11]; Parent File history at 19007 (pdf 99) [see esp. 19004-5 (pdf 96-97) “no chemical bond.” In the parent patent, Asuka = 4 th Other Doc P.A. “Brochure…” and ALL the independent claims (1 at 6:44; 8 at 7:12, 17 at 8:20) recite “chemically bonded.”]Tr. at 685-6Parent File historyparent patent Questioning about frictional bond and DOE: Fallacy implicit in Question 688:6-9. Objectionable? Why (not)?

13. 2008 - Sci.Ev. - rjm Week 05 13 Pruitt: Examination and Cross – Question 2 B and C CROSS (cont’d: Julie: Attorney Lee’s concern about who was [not] testifying for Cordis. Effective on the printed page? Effective in court? Karni, Greg, Lisandra: Pruitt NOT an ordinary artisan in 1994. Effective? Objectionable? Why (not)? Samantak: Hoppers (at 668). Who is impressed/moved/affected? Jury? Judge? Opposing counsel? Sarah: The LATER 166 patent that cites the Fontirroche as prior art (at 740). So what? Brett and Lisandra: What Pruitt did, and did not do. Brett: Flexular Analysis: combining two layers to get two layers-total (at 730). Lisandra: Testing the Mavericks. Practical considerations in dealing with experts? Strategic ones? Lawrence: Never ask a question you don’t know the answer to?? Asuka delamination. Jen/Mark/Samantak: Using Cordis’ own words to the PTO against it + Preparing the expert. For example: Tr. At 692:15 et seq. What was the Cordis attorney thinking, hoping, expecting? BOTH: Hellstrom: Use of hypothetical questions.

14. 2008 - Sci.Ev. - rjm Week 05 14 Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect. Rule 704. Opinion on Ultimate Issue (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant] sometimes a synonym for jury [when isn’t it?]

15. 2008 - Sci.Ev. - rjm Week 05 15 Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect. Rule 704. Opinion on Ultimate Issue (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant]

16. 2008 - Sci.Ev. - rjm Week 05 16 Rules of Evidence – Rules 702, 703 and 704 Federal Rules of Evidence Rule 702. Testimony by Experts If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Rule 703. Bases of Opinion Testimony by Experts The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect. Rule 704. Opinion on Ultimate Issue (a)Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because [cannot be objected to on the grounds that] it embraces an ultimate issue to be decided by the trier of fact. (b) [Refers to testimony about the mental state of a criminal defendant] What about a CONCLUSION OF LAW that the jury decides on its way to deciding the verdict?

17. 2008 - Sci.Ev. - rjm Week 05 17 Rules of Evidence – Experts, Conclusions and Case Law First, defendants argue that Dr Wedig, due to his lack of legal training, is not qualified to opine on the legal issues of conception and reduction to practice. Doc # 343 at 5 (citing Hybritech Inc v Monoclonal Antibodies, Inc, 802 F2d 1367, 1376 (Fed Cir 1986)). The court agrees. An expert's opinion on the ultimate legal conclusion is "neither required nor indeed 'evidence' at all." Mendenhall v Cedarapids, 5 F3d 1557, 1574 (Fed Cir 1993) (quoting Avia Group Int'l, Inc v LA Gear Cal, Inc, 853 F.2d 1557, 1564 (Fed Cir 1988)). Yet that does not justify a wholesale exclusion of Dr Wedig's testimony o n these issues …. [T]o be admissible, the opinion of an expert need not be conclusive proof. Indeed, parties often offer multiple sources of evidence that, in aggregate, prove a proposition even though no source independently suffices. Accordingly, the court only excludes Dr Wedig's legal conclusions. It is plain from paragraphs 20 and 21 of Dr Wedig's rebuttal report, Doc # 344, Mingrone Decl, Ex 7, that he is attempting to use the legal definitions of conception and reduction to practice. See, e.g, id at 11 ("I understand that the date of conception is defined as the date at which the inventor has a formulation of the complete means of solving a problem in such a way that a person of ordinary skill in the art could practice the invention without unduly extensive research or experimentation"). legally In four parts of his rebuttal report, Dr Wedig applies these legal standards to offer legal conclusions regarding the invention's conception and reduction to practice. Dr Wedig may rely on the technical record to estimate when the inventors thought of [*37] the invention and when the invention became operational, but he may not opine on when the invention was legally conceived and reduced to practice. Accordingly, the court excludes the following parts of Dr Wedig's rebuttal report in which he states legal conclusions about the '273 patent's conception and reduction to practice: (1) the first sentence of paragraph 24, (2) the fifth sentence of paragraph 29, (3) the fourth sentence of paragraph 30, and (4) paragraph 31 in its entirety. Id. Samsung Elecs. Co v. Quanta Computer, Inc., 2006 U.S. Dist. LEXIS 66447, 35-37 (N.D. Cal. Sept. 15, 2006) (Judge Vaughan R. Walker) And now: Back to student commentsBack to student comments

18. 2008 - Sci.Ev. - rjm Week 05 18 Graver TankGraver Tank and Warner-JenkinsonWarner-Jenkinson The FWR (triple identity) test The insubstantial differences test The role of prosecution history (=file history = file wrapper) LITERAL: for claim interpretation. Part of the INTRINSIC evidence. DOE: for ESTOPPEL (an equitable principle, but hey, it’s still a question of FACT…)

19. 2008 - Sci.Ev. - rjm Week 05 19 For next week: Thinking about Teams Experts Lisandra WEST Sarah JARCHOW-CHOY Lawrence KLEIN Andrew HELLMAN Sondra HELLSTROM Brett STAAHL Samantak GHOSH 3 patents, 6 experts, 9 lawyers?? One ‘swing’ (or tutorial) lawyer? Attorneys Jen ROBINSON David LYDON Tim SAULSBURY Karni CHAGAL Julie KANE Mark MELAHN Julia KRIPKE Andy PARK Greg SOBOLSKI

20. 2008 - Sci.Ev. - rjm Week 05 20 Next Week – OBVIOUSNESS, another issue for experts KSR – because we have to. A court decision and either a transcript or another court decision with excerpts from testimony.