Fall 2008 - Scientific Evidence

Fall 2008 - Scientific Evidence and Expert Testimony: Patent Litigation Prof. Morris

Last modified 11-15-08 at 11:30 am

Final Projects
(Simulations).
Please
click here.

Subdirectories: Clicking on the link will get you the directory listing.

PPT: Powerpoint slides from the weekly class meetings.
EMAIL: Emails with assignments. Note that emails may be corrected or revised. If substantive changes are made, earlier versions will be in the ARCHIVE directory.
ARCHIVE: Earlier versions of this page (called "index") and of emails and other documents.

Schedule (Subject to Change) - Current week has colored background.

Wk	Date	Subject	Readings	Written Assignment
1	09/22	1 Introducing Ourselves	Questionnaire for everyone. Law Students, please also answer these questions about patent law and practice.	Please submit your questionnaires by Sunday, 9/21 at noon.
		2 How the Course Will Work	How the Course Will Work	Optional: If you find ambiguities, typographical errors, or anything else, please email me.
		3 Patent-marked Objects; Litigated Patents	Look over your patent. What patent? Grad students: Instructions were emailed on 9/2; a corrected copy is here. Law students: Choose a utility* patent that: is the subject of a recent judicial decision (district court or Federal Circuit) from the last 5 years, preferably in a case you are already familiar with from school or work, AND concerns a liability issue about which scientific expert testimony might have been taken. (If the decision references such testimony, all the better, but it does not need to.) * Unless you are early bird Andy Park.	No later than MONDAY, 9/22 at 9 am, please post the following information in the Courseworks' Discussion Forum for Week_01, accessible from Courseworks - Discussion - Forum Index. (See Courseworks for the partculars of the assignment in more detail.) Grad students: (1) A photo or link to a website showing your patented object. (2) Identifying information for the OBJECT: manufacturer, use of the object, approximate age of your particular machine (or whatever it is) (3) The patent number, title, issue date, and a link to a pdf version of the patent. (4) A short statement about what you noticed on the patent. Law Students: (1) Citation to the judicial decision, a link to a court or other free website (not LEXIS or Westlaw), if any, and the issue it raises that would involve scientific expert testimony. (2) Identifying information for the PATENT: title, issue date, and a link to a pdf version of the patent. (3) A short statement about what you noticed on the patent.
2	09/29	Patents, and Patent Law -- Claim Charts and File Histories 1 Your Patent Claim 1 Claim Chart; looking at your patent again	Look at the patent you found last week. Look at claim 1, and look again at the 5 pages you brought with you to class on 9/22, bearing in mind the information you learned/reviewed during class.	The assignment is here. It was originally emailed to you on Wednesday. Additional information, mailed Friday, is here. It is due Monday, 9/29, at 9 a.m.
2	09/29	2 A real case: the patent and its file history	Boston Scientific v. J&J/Cordis: the balloon catheter patent of defendant/counterclaimant Cordis: Fontirroche et al 5,820,594. The file history of the application that issued as the 594 patent, and the file history of the parent application (which issued as 5,538,510).
3	10/6	NO CLASS Individual meetings scheduled during the weeks of 9/29 and 10/6 by student request.
4	10/13	1 Law and PTO Practice Information	[No class-wide assighment. Individual law students to complete their researches on specific topics] Lecture only.	Law students: please complete revision of your slides in accordance with my personal email to you. Due date is Friday, 10/10, at 9 a.m.
		2 CLAIM CONSTRUCTION and MARKMAN HEARINGS; the art of the claim chart, cont'd	Note on How I Edit Cases. The Second Claim Construction Order in Boston Scientific v. Cordis. The Certificate of Correction for the 594 patent. The patent and file history, as needed. (See 9/29). [Not assigned, but available for reference: the docket sheet for the case. The original claim construction order is No. 298, at DOC page 81 of 119.]	The assignment is here. It was originally emailed to you on Wednesday. It is due Monday, 10/13, at 9 a.m.
		3 INFRINGEMENT, literally and under the doctrine of equivalents. Also Prosecution History Estoppel v. Prosecution History used for Claim Interpretation.	The Doctrine of Equivalents: Excerpts from Graver Tank and Warner-Jenkinson (lecture only)
			Counterclaim PO Cordis's technology expert on the '594 patent Testimony of Dr. Lisa Pruitt The visuals discussed in the testimony include the patent and both file histories, as well as Dr.Pruitt's slides, and a trial exhibit (the Samuelson patent) and deposition exhibit (claim construction slide), used during cross-examination.
	10/15	OPTIONAL: 2 p.m.: Attend Claim Construction Hearing in Hologic v. SenoRX before Judge Ronald M. Whyte Courthouse: 280 South First Street, Courtroom 6, 4th Floor, San Jose, CA 95113 Directions and Parking Information (scroll to bottom of page for parking) (April 2008 Preliminary Injunction Decision(unedited); Patents: 6,413,204 and 6,482,142.
5	10/20	Finish Week 04. No written assignment. OPTIONAL READING: Edited versions of Graver Tank (patent-in-suit) and Warner-Jenkinson (patent-in-suit). Festo will be discussed in class, too. Students who attended the Hologic v. SenoRX claim construction argument will talk about it. Before class, please also review all the BSC v. J&J/Cordis documents, including your own written submissions for Weeks 02 and 04.
6	10/27	1 Finding a patent for the simulation project; picking teams	Grad Students: Identify equipment in your lab with a patent number on it; check out the patent.	The assignment is here. It was originally emailed to you on Thursday. It is due Monday, 10/27, at 9 a.m.
		2. OBVIOUSNESS: KSR	KSR v. Teleflex (Supreme Court 2007) (edited and with extensive comments), or, if you prefer, KSR (edited but with almost no interlineated comments)
		3. Obviousness and expert testimony	MuniAuction (Fed Cir. 2008), patent 6,161,099 and transcript of O'Neill testimony.
7	11/03	1 Your Patents and Teams	Confirm that everyone has a patent. File histories not on PAIR will need to be ordered.	The assignment is here. It was originally emailed to you on Thursday. It is due Monday, 11/03, at 9 a.m.
		2 Obviousnes	Review KSR, MuniAuction, and what you wrote about them last time.
		3 Daubert: Checks on Expert Witnesses	Daubert (Sup. Ct.); Daubert on remand* (not assigned, but there for those interested). * Opinion by Kozinski, J. [Fun(and even less assigned): Kozinski's Syufy Opinion (find 215 movie titles) and Syufy Rosetta Stone (1992 BYU LRev 457 (1992)(movie titles underlined).]
8	11/10	Simulations - Common Problems	Your potential patent(s), their file histories, prior art, etc.	The assignment is here. It was originally emailed to you on Friday. Please respond by EMAIL, no later than Monday, 11/10, at 5 p.m.
Weeks of 11/3 - 11/24 - Team Meetings with RJM
9	11/17	Preparation for the Simulation	Continue to read your patent and related papers.	The assignment is here. It was originally emailed to you on Saturday. Bring your slides on your computer or a memory stick or email them to me by 7:15 pm for class.
10	11/24	NO CLASS	Our classroom, 256B, is available 4 pm to 10:15 pm for team meetings. The message emailed on Friday concerning required slides is here.
11	12/01 and 12/02	Simulation Performances	See TEAMS.HTM for schedule, links to patents and file histories, etc. See CRIT.TXT for critique assignments.