| USEFUL
EARLY LINKS Course Description Consent Form A few FAQs about class meetings Acknowledgments |
SUBDIRECTORIES - The POWERPOINT Directory index - The READINGS (other than those on CourseWork) - Assignments - Information about Final Projects (Simulations) |
| Wk |
Date | Stus |
Subject | Readings |
Written Assignment |
|---|---|---|---|---|---|
| 1 |
09/06 | L
only |
1
Introducing Ourselves 2 Review of Patent Law |
)Questionnaire
) |
Please
submit the
questionnaire by 9/6 at noon. |
| 3 How the Course Will Work | How - Work | Click
here
for the questions about these readings that you must answer by email by
9/6 at noon. |
|||
| 4 Expert Testimony in a Real (OLD) Case | Gould v. Schawlow | ||||
| 2 |
09/13 | L
only |
1 Finish Discussion of Gould/Review its patent law | Gould v. Schawlow | Please
re-read what you wrote
last week for the submitted assignment as well as any annotations on
your
copy of the case. |
| 2
Transcript: Ampex v. Mitsubishi |
Luke
Vol. 1 (direct) Luke Vol. 2 (cross) Fig. 4 of the 4,212,027 Patent. Please don't
look at the entire patent
yet, however. See Written Assignment.
Excerpts
from Judge McKelvie's Claim Construction (dated 3/14/97) |
Click
here for the questions
about these readings. Your comments are due 9/12 at noon.
The comment^2 assignment
will be emailed once all the comments have been handed in, and a copy
of the email will be linked here. Comment^2s are due on 9/13 at
noon. |
|||
| 3 |
09/20 |
L
only |
1
Ampex Claim Construction |
Excerpts from Judge McKelvie's Claim Construction (dated 3/14/97) | Review
the Claim Construction opinion, especially the italicized
questions. Each of you will lead the discussion about one of
those points. See assignment. |
| 2
Statutes and Court Rules concerning Patent Cases generally and Expert
Testimony in particular |
Local
Rules for
Patent Cases: NDCal and elsewhere, in whole or in part.. |
Individual
written assignments will
require you
to compare NDCal (link
to the pdf of the rules on the court's website) to either EDTex,
NDGa
or WDPa
(Patent Rules are on pdf pages 103-112), or to research other courts'
rules that mention patent
cases in connection with costs, special masters, consolidation of
cases, and ADR. |
|||
| Federal
Provisions: Federal Rules of Civil Procedure, Federal Rules
of Evidence, a Federal Statute, and the Patent Office rules for expert
testimony before the BPAI |
Check
these out. You've
probably seen some of them before, but it doesn't hurt to read them
again. Key words are in boldface to make it easy to find what you
care about. There's a quick question about them at the end of the
week's assignment. |
||||
| 3
Scientific Experts and the
Issues They Can Address in Patent Infringement Litigation |
Nothing
extra. |
Make a list. Be as specific as you
can. ("Validity" would be too broad.) |
|||
| 4 |
09/27 |
G
only for first 1/2 hour |
1
Introducing Ourselves, and
How the Course Will Work |
Questionnaire How - Work for Grad Students |
Please
complete the questionnaire and email your
answers by
Tuesday, 9/26 at noon. Please also sign the contract. |
| L & G from 4:45 | 2
What does a patent look like? What does an expert do with it in a
patent infringement lawsuit? |
Look
over these two patents: 4,363,877 (patent in suit in UC v. Genentech) 5,440,842 (patent in suit in Sorkin) |
See
assignment. G: Write 3 questions for your lawyers to answer about patents in general or about either one of these patents in particular. L: one of the patents: What issue jumps off the page? (If you choose Sorkin, please answer before reading the case.) |
||
| 3 Scientific Experts in the Courts: Daubert | L
& G: Daubert:
Read
it if you never have read it before; otherwise just refresh your
recollection. |
G
only: Your assignment is to
write 3 questions for
your lawyers to answer about Daubert. |
|||
| 4 Daubert in Patent Cases (Liability Issues Only) | L only: Carnegie Mellon, Sorkin, Pharmastem (excerpts) | L
only: Read the cases (see assignment)
and make some slides to explain the key points to the grad students. |
|||
| 5 |
10/04 |
L
& G |
1
Ampex - Norm Beamer, the
Examining Attorney answers your questions, including the ones you don't
know toask. |
Luke
Vol. 1 (direct) Luke Vol. 2 (cross and re-direct) Fig. 4 of the 4,212,027 Patent. G: Read the transcripts. Plaese defer reading the patent until you really need to (see assignment). L: review the transcripts and patent. |
G:
See assignment. L: See assignment: Please pose 2 questions for Attorney beamer. |
| 2
Finish Daubert Discussion from Week 4 |
L:
Same as Week 4, items 3 and 4 G: Same as Week 4, item 3 |
Nothing
new, but please review your comments and (L only) comment^2s from Week 4 |
|||
| 6 |
10/11 |
G
only |
1
Instant Patent Law; Instant Civil Procedure |
My
2002 PPT
for the Global Product Realization Course (slides 1-36, especially) |
Pick
three things for me to explain further. See assignment. |
| 2
Daubert in Patent Cases |
Carnegie Mellon, Sorkin, Pharmastem (excerpts); review Sorkin patent if needed; law students answers to your questions about Daubert.. | Review
everyone's questions about Daubert, and the law students' answers to
them. Write two more questions about the excerpted patent cases
(see assignment). |
|||
| 3
Finding likely patents |
Briefly
review a patent in your field. |
Choose
a patent whose number
appears on some equipment in your lab, whose inventors are your
colleagues or are in rival research groups, or that is referenced in
a journal article. See assignment. |
|||
| 7 |
10/18 |
L&G |
1 Daubert: itself, in patent cases; on remand | Daubert
(9th Cir. 1995). [Fun(not assigned): Kozinski's
Syufy
Opinion (find the 215 movie titles embedded
in it) and Syufy
Rosetta Stone (1992 BYU LRev 457 (1992)(movie titles underlined).] |
Review the previous assignments on the Supreme Court Daubert decision and the Daubert patent cases, as well as your comments on them. See assignment. |
| 2 Transcripts: UC Berkeley v. Genentech | Subset (see assignment) of testimony by Siegel (PO's tutorial witness) or Campbell (AI's infringement witness). The transcripts are all on courseworks, as are PO's animations (if the library succeeds in uploading them) and the patent in suit, 4,363,877. | Each
of you will read part of one witness's transcript and will look
for two (just two, not three; but not one, either)
things we should learn from those pages about the use of experts in
patent cases. See assignment.
Feel free to look over the rest of the transcripts
(which you may be assigned to read later anyway), as well as the video
and the
patent. |
|||
| 8 |
10/25 |
L & G | No
class on Wednesday; Conferences
All
Week |
Read
your patent. Obtain its file
history (with my assistance), and begin to read it. |
With
your teammates and me. Due Friday, 10/27 (?). |
| pre-9 |
10/31 |
Drop
in - room 95, 3:45 to 5:45 for more instant
patent law, or questions about claim charts and drafts. |
N/A |
N/A |
|
| 9 |
11/01 |
L & G | 1 Summary Judgment Motions, Claim Chart, and Expert Declarations | Read
your patent and its file history. |
For
Wednesday at noon: Working with your
teammates, prepare a first draft of at least the first column of your
claim
chart. for whatever claim you decide to litigate. Also submit a
1-page outline
of [L] your
summary judgment motion brief or [G] your expert
declaration (grad students). See asignment. |
| 2 The Ordinary Artisan v. The Expert | Hot
New Case: Alza v. Mylan
(Fed Cir 9/6/06) |
For
Tuesday at noon: See assignment. |
|||
| 3
Patent Expert Witness
Tells All: Berkeley EECS Prof. Jeff Bokor
describes his experiences in some ten cases. |
None. |
For
Tuesday at noon: Write 1-3 questions or question
sets to send Jeff. See assignment. |
|||
| 10 |
11/08 |
L & G | No class on Wednesday; Conferences if needed, by
appointment
or drop-in Tuesday afternoon, 11/7, room 95, from 3:45 to 6:45. |
Fun (not assigned): Back to the Future - Parody of a Fed Cir decision on the On-Sale Bar | |
| 11 |
11/15 |
L & G | Oral
Arguments and Discussion of Expert
Declarations |
Read
and reread your patent and its file history, especially amendments, and
then look back to the office action that precedes them, and the prior
art cited there. |
No
written assignment, but prepare a 5 minute oral presentation on the
affirmative issue for your side. Law
students: speak about the substance of your summary
judgment motion, with particular reference to the CLAIMED
invention. Please omit the standards for summary judgment and the
law on your issue unless it is significant on YOUR facts. Assume
your audience knows all those things. Graduate students: speak about
the technology of the CLAIMED invention (and see 11/13 email). EVERYONE: tie your discussion
to the words of the claim, whether you are discussing prior
art/invalidity or an accused device/infringement. WHO GOES FIRST, lawyer or
expert? That will depend on your argument. In some cases,
POs especially may want the expert to go first, to help us understand
the claimed invention and the art. In other cases, the technology
and the art may be simple enough, at least as to the claimed invention
and the issue you have chosen, that the expert can go second,
amplifying and supporting what the lawyer says. |
| 12 |
11/22 |
L & G | No
class - Thanksgiving
holiday/alternate schedule for both grad and law schools.
Conferences can be scheduled Mon-Wed as needed.. |
Optional:
Submit a draft of your direct examination script for comment within 24
hours. See assignment:
Please submit drafts beforeWednesday 11/22 at 3 or after Sunday
11/26 at noon. |
|
| 13A |
11/28 |
L & G | Simulations
- '326 Team (Huang
- Barlian v. Rosas - Zhang) Judges: Emily Evans, Esq., Gabrielle Higgins, Esq., Irvin Tyan, Esq. |
Email to judges. |
No
written assignment, but 4 of
you will have to write critiques of the '326 Team, due by 12/06 (see assignment).
Critiquers: Adam (Henry); Jason (Ann Marie); Chrissy
(Alvin); Fernando (Angela) |
| 13B |
11/29 |
L & G | Simulations
- '574 Team (Eltoukhy - Amat v. Fan -
England) |
No
written assignment, but 4
of you will have to write critiques of the '574 Team, due by 12/06 (see
assignment). Critiquers: Ann
Marie (Adam); Henry (Jason); Lisa (Fernando); Angela (Jeremy). |
|
| 14 |
12/06 |
L & G | Simulations
- '786 Team (Perlson/Brown) Party and Debriefing. |
No written assignment, but 2
of you will have to write critiques of the '786 Team, due by 12/08 (see
assignment),
Critiquers: Alvin (Lisa); Jeremy (Chrissy). |