Spring 2013 - IP: Scientific Evidence in Patent Litigation

Spring 2013 - IP: Scientific Evidence in Patent Litigation - Prof. Morris

Last modified 5-23-2013 at 1140 PST

Subdirectories

PPT: Powerpoint slides from the weekly class meetings.
ASSIGN: Assignments.
DOCS: Reading materials.
ARCHIVE: Previous versions of this page (index.htm) and of slides, assignments and documents if revised.

Other Useful Links about the Seminar

Useful Links for Assignments

Google's Patent Search Page

USPTO's search pages for patents and applications

USPTO's PAIR system for file histories

Schedule (Subject to Change) - Click here to jump to current week, which will always have a peach background.

Class	Date (Link is to Detailed Assignment)	Subject	Activities and Readings	Written Assignment
1	04/03 PPT TOA list	1. Introducing Ourselves	Questionnaire for everyone.	Please submit the questionnaire as soon as you can. Deadline is Sunday night, 3/31, at 11:59 pm.*
2 Seminar Terms & Conditions, and your excellent questions about the course description.	How the Seminar Will Work.	None.
3 What is a patent? (concrete)	This week's assignment requires you to find an ordinary item that bears a patent number, answer some questions about the item, and then find the patent and answer some questions about it. You must also comment briefly on another student's submission. If you can bring your ordinary item to class, please do that, too. By the way, assignments are always linked to the class date (2nd column) and stored in ./ASSIGN.	By Sunday night, 3/31, at 11:59 pm*, please submit answers and photographs as per the ordinary item questionnaire. By Wednesday morning, 04/03, at 10:30 am, please provide your comment on another student's submission, as explained in the assignment.
2	04/10 PPT TOA list	1. Questions; Finishing any open items from Week 1.	Read the handout from last week, How the Seminar Will Work.	By Monday night, 4/8, at 11:59 pm*, respond to the questions in the assignment about How...Work. Also respond to the email of 4/4 (first, very quick ...) and submit the results of your survey of boilerplate.
2. Scheduling: Field Trip, Instant Patent Law, Simulations	None.	Please bring your calendar so we can work out who's going when to the trial, and when to schedule Instant Patent Law. Also the simulation dates and times.
3. A real patent infringement lawsuit or claim construction hearing scheduled for trial this quarter (see FIELD TRIP below).	Read the Claim Construction Order in SSI v TEK. (Everyone must do this whether or not attending the field trip.) As you read it, you may want to see the patent-in-suit in SSI v. TEK, 6,789,581, owned by co-plaintiff AMI.	In addition to answering questions for everyone, different students will have different obligations with regard to this reading.
ATTENDANCE OPTIONAL - DATES and TIMES TBA 1. FIELD TRIP. SSI/AM v. TEK is scheduled to start on April 15 in San Jose and end April 19. Presiding is Mag. Grewal (who several years ago was a judge for the seminar's simulations). Likeliest times for group attendance: Tuesday afternoon, Wednesday morning, and Thursday. 2. INSTANT PATENT LAW. This extra class is especially but not exclusively for grad students. It is a chance to learn or to review some basic patent law vocabulary (aka concepts). Some other areas of the law, such as civil procedure and federal courts, will be touched on, too. 5/3/13: You already knew most of this material by week 3, and I hope to prove this by running through my 2010 Instant Patent Law slides in class in week 6.
3	04/17 PPT TOA list	1. Finish with introductory substantive law slides; arrange Instant Patent Law date.	1. None.	1. None.
2. Our Field Trip Case	2. We will discuss the claim construction decision (assigned for 04/10). Anyone who has observed any part of the trial will talk about the experience.	2. Review the patent and claim construction decision as needed. See assignment.
3. Validity, especially obviousness.	3. The summary judgment decision in our field trip case and KSR v. Teleflex (Supreme Court 2007).	3. See assignment.
4	04/24 PPT TOA list	1. Start work on the simulations.	1. Read the questionnaire about simulation patents for information about what makes a good simulation patent.	1. See assignment: For Monday at 11:59 pm*, grad students and (optional) law students with access to labs please complete questionnaires for at least one, and no more than three, potential patents. For Wednesday at 2 pm, law students determine the litigation status of the patents whose numbers I send you.
2. The Federal Rules of Evidence concerning expert testimony.	2. Rules 701-705	2. See assignment.
3. Guest Speaker: Alicia Shah, Kirkland & Ellis.	3. Transcript, patent, SJ/Claim Construction decision (edited).	3. See assignment.
5	05/01 PPT	1. Begin working in teams.	1. Continue evaluating candidate patents.	1. Team composition is in the assignment. So are the things you need to do, together and individually.
2. Claims	2. Look over Morris's method of reformatting claims.	2. As a team, reformat claim 1 of the candidate patents and collaborate as needed on the other tasks. See assignment.
3. Field Trip Case.	3. Discuss what we saw and what we learned.	3. Nothing to write.
4. Review of obviousness.	4. Review the part of the SSI/AMI summary judgment regarding obviousness. Review KSR. Review what you wrote about each.	4. Nothing to write, but do bring your copies of the cases to class.
5/1 to 5/7: FIRST TEAM MEETINGS WITH RJM. What to do to prepare is posted in the assignment for Week 5. Times/teams are in the Week 5 powerpoint.
6	05/08 PPT	1. Infringement.	1. Read Warner-Jenkinson (edited). Additional case to read in class.	1. See assignment.
2. Claims not infringed, claims yes anticipated.	2. Last week's PPT (slides 5-7) posed questions concerning the jury's special verdict on certain claims in SSI and AMI v. TEK.	2. Look at the slides and the '581 patent claims and answer the questions on slides 6 and 7. See assignment.
3. Instant Patent Law (quick review).	3. Slides from 2010.	3. None.
4. Teamwork. There will be some time during class to meet with your team and to ask me questions.	4. Study your prosecution histories and the patent. Also read cited and uncited prior art as needed (experts), caselaw as needed (lawyers).	4. Before class: take notes(n1) and meet and confer.(n2) (n1) This is a reference to the 2010 change to Rule 26, F.R. Civ. P., mentioned by Ms. Shah: Experts, fear no more to write. ( n2) I use the words "meet and confer" in the ordinary sense but you may be interested to know that it is a term of art for motion practice in both federal and state courts.
7	05/15 PPT	1. Short presentations by teams. Your patent's claim 1 and possible issues.	1. Read as needed for your presentations.	1. A powerpoint presentation and a reformatted claim 1. See slides 14 and 15 from last week and the assignment.
2. Review of validity and infringement.	2. The O2 Micro decision, handed out in class, is also available in DOCS. If you are a lawyer for a team that is contemplating a DOE argument, you should definitely look over O2 Micro. For everybody else it is optional.	2. Nothing to write, but please bring your copy of the O2 Micro decision.
3. What experts can and cannot address.	3. Review Rules 701-705 and your notes from Ms. Shah's talk. Optional: Look over Apeldyn v. AUO, a November 2011 patent decision about a motion to exclude a patent scientific expert's testimony. Even More Optional: The Supreme Court's decision in Daubert and the 9th Cir. (Kozinski) decision on remand, as assigned in the 2008 seminar. And more-more: Promised links re Kozinski: The Syufy decision I mentioned in class a while ago, and the Syufy Rosetta Stone.	3. Nothing to write, but please bring your copy of the Rules and your notes from the Shah talk.
ADDITIONAL TEAM MEETINGS WITH RJM, required the week of 5/20 and as needed 5/25-29. If I want you to prepare something in particular for our meeting, I will email you. Kermits: let me know when I can meet with your team.
8	05/22 PPT	Your questions. How to ask and how to answer. Brief discussion of some of the many patent infringement litigation issues that scientific experts usually don't encounter.	As needed for your projects.	None other than what you assign yourselves so that you are ready for the simulations.
9	05/29	1. Simulation Performances. Additional information is HERE.	Simulations.	Kermits: Email me the necessary information by Sunday, May 26, at 11:59 pm* . Critique assignments will be linked here. Critiques will be due on Thursday, June 4, at 11:59pm*.

Class

Date (Link is to Detailed Assignment)

Subject

Activities and Readings

Written Assignment

04/03
PPT
TOA list

1. Introducing Ourselves

Questionnaire for everyone.

Please submit the questionnaire as soon as you can. Deadline is Sunday night, 3/31, at 11:59 pm.*

2 Seminar Terms & Conditions, and your excellent questions about the course description.

How the Seminar Will Work.

None.

3 What is a patent? (concrete)

This week's assignment requires you to find an ordinary item that bears a patent number, answer some questions about the item, and then find the patent and answer some questions about it. You must also comment briefly on another student's submission. If you can bring your ordinary item to class, please do that, too.
By the way, assignments are always linked to the class date (2nd column) and stored in ./ASSIGN.

By Sunday night, 3/31, at 11:59 pm*, please submit answers and photographs as per the ordinary item questionnaire.

By Wednesday morning, 04/03, at 10:30 am, please provide your comment on another student's submission, as explained in the assignment.

04/10
PPT
TOA list

1. Questions; Finishing any open items from Week 1.

Read the handout from last week, How the Seminar Will Work.

By Monday night, 4/8, at 11:59 pm*, respond to the questions in the assignment about How...Work. Also respond to the email of 4/4 (first, very quick ...) and submit the results of your survey of boilerplate.

2. Scheduling: Field Trip, Instant Patent Law, Simulations

None.

Please bring your calendar so we can work out who's going when to the trial, and when to schedule Instant Patent Law. Also the simulation dates and times.

3. A real patent infringement lawsuit or claim construction hearing scheduled for trial this quarter (see FIELD TRIP below).

Read the Claim Construction Order in SSI v TEK. (Everyone must do this whether or not attending the field trip.) As you read it, you may want to see the patent-in-suit in SSI v. TEK, 6,789,581, owned by co-plaintiff AMI.

In addition to answering questions for everyone, different students will have different obligations with regard to this reading.

ATTENDANCE OPTIONAL - DATES and TIMES TBA

1. FIELD TRIP. SSI/AM v. TEK is scheduled to start on April 15 in San Jose and end April 19. Presiding is Mag. Grewal (who several years ago was a judge for the seminar's simulations). Likeliest times for group attendance: Tuesday afternoon, Wednesday morning, and Thursday.

2. INSTANT PATENT LAW. This extra class is especially but not exclusively for grad students. It is a chance to learn or to review some basic patent law vocabulary (aka concepts). Some other areas of the law, such as civil procedure and federal courts, will be touched on, too. 5/3/13: You already knew most of this material by week 3, and I hope to prove this by running through my 2010 Instant Patent Law slides in class in week 6.

04/17
PPT
TOA list

1. Finish with introductory substantive law slides; arrange Instant Patent Law date.

1. None.

2. Our Field Trip Case

2. We will discuss the claim construction decision (assigned for 04/10). Anyone who has observed any part of the trial will talk about the experience.

2. Review the patent and claim construction decision as needed. See assignment.

3. Validity, especially obviousness.

3. The summary judgment decision in our field trip case and KSR v. Teleflex (Supreme Court 2007).

3. See assignment.

04/24
PPT
TOA list

1. Start work on the simulations.

1. Read the questionnaire about simulation patents for information about what makes a good simulation patent.

1. See assignment: For Monday at 11:59 pm*, grad students and (optional) law students with access to labs please complete questionnaires for at least one, and no more than three, potential patents. For Wednesday at 2 pm, law students determine the litigation status of the patents whose numbers I send you.

2. The Federal Rules of Evidence concerning expert testimony.

2. Rules 701-705

2. See assignment.

3. Guest Speaker: Alicia Shah, Kirkland & Ellis.

3. Transcript, patent, SJ/Claim Construction decision (edited).

3. See assignment.

05/01
PPT

1. Begin working in teams.

1. Continue evaluating candidate patents.

1. Team composition is in the assignment. So are the things you need to do, together and individually.

2. Claims

2. Look over Morris's method of reformatting claims.

2. As a team, reformat claim 1 of the candidate patents and collaborate as needed on the other tasks. See assignment.

3. Field Trip Case.

3. Discuss what we saw and what we learned.

3. Nothing to write.

4. Review of obviousness.

4. Review the part of the SSI/AMI summary judgment regarding obviousness. Review KSR. Review what you wrote about each.

4. Nothing to write, but do bring your copies of the cases to class.

5/1 to 5/7: FIRST TEAM MEETINGS WITH RJM. What to do to prepare is posted in the assignment for Week 5. Times/teams are in the Week 5 powerpoint.

05/08
PPT

1. Infringement.

1. Read Warner-Jenkinson (edited). Additional case to read in class.

1. See assignment.

2. Claims not infringed, claims yes anticipated.

2. Last week's PPT (slides 5-7) posed questions concerning the jury's special verdict on certain claims in SSI and AMI v. TEK.

2. Look at the slides and the '581 patent claims and answer the questions on slides 6 and 7. See assignment.

3. Instant Patent Law (quick review).

3. Slides from 2010.

3. None.

4. Teamwork. There will be some time during class to meet with your team and to ask me questions.

4. Study your prosecution histories and the patent. Also read cited and uncited prior art as needed (experts), caselaw as needed (lawyers).

4. Before class: take notes(n1) and meet and confer.(n2)
(n1) This is a reference to the 2010 change to Rule 26, F.R. Civ. P., mentioned by Ms. Shah: Experts, fear no more to write.
( n2) I use the words "meet and confer" in the ordinary sense but you may be interested to know that it is a term of art for motion practice in both federal and state courts.

05/15
PPT

1. Short presentations by teams. Your patent's claim 1 and possible issues.

1. Read as needed for your presentations.

1. A powerpoint presentation and a reformatted claim 1. See slides 14 and 15 from last week and the assignment.

2. Review of validity and infringement.

2. The O2 Micro decision, handed out in class, is also available in DOCS. If you are a lawyer for a team that is contemplating a DOE argument, you should definitely look over O2 Micro. For everybody else it is optional.

2. Nothing to write, but please bring your copy of the O2 Micro decision.

3. What experts can and cannot address.

3. Review Rules 701-705 and your notes from Ms. Shah's talk. Optional: Look over Apeldyn v. AUO, a November 2011 patent decision about a motion to exclude a patent scientific expert's testimony.
Even More Optional: The Supreme Court's decision in Daubert and the 9th Cir. (Kozinski) decision on remand, as assigned in the 2008 seminar. And more-more: Promised links re Kozinski: The Syufy decision I mentioned in class a while ago, and the Syufy Rosetta Stone.

3. Nothing to write, but please bring your copy of the Rules and your notes from the Shah talk.

ADDITIONAL TEAM MEETINGS WITH RJM, required the week of 5/20 and as needed 5/25-29.
If I want you to prepare something in particular for our meeting, I will email you.
Kermits: let me know when I can meet with your team.

05/22
PPT

Your questions.
How to ask and how to answer.
Brief discussion of some of the many patent infringement litigation issues that scientific experts usually don't encounter.

As needed for your projects.

None other than what you assign yourselves so that you are ready for the simulations.

05/29

1. Simulation Performances.
Additional information is HERE.

Simulations.

Kermits: Email me the necessary information by Sunday, May 26, at 11:59 pm* . Critique assignments will be linked here. Critiques will be due on Thursday, June 4, at 11:59pm*.