Winter 2012 - IP: Scientific Evidence in Patent Litigation

Winter 2012 - IP: Scientific Evidence in Patent Litigation - Prof. Morris

Last modified 3-4-2012 at 21:10 pm

Subdirectories: Clicking on the link brings up the directory listing.

PPT: Powerpoint slides from the weekly class meetings.
ASSIGN: Assignments. Note that assignments may be corrected or revised. If substantive changes are made, earlier versions will be in the ARCHIVE directory.
DOCS: Documents and back-up.
ARCHIVE: Earlier versions of this page (index.htm) and other documents posted here.
EML_Q_A: A selection of your excellent questions, and my answers to them, posted with permission of the questioner.

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	01/12 PPT	1. Introducing Ourselves	Questionnaire for everyone.	Please submit the questionnaire by Sunday night, 1/08, at 11:59 pm,* but the earlier the better.
		2 Seminar Terms & Conditions, and your excellent questions about the course description	None. Documentation will be posted soon.	None.
		3 What is a patent? (concrete)	This week's assignment requires you to find an ordinary item that bears a patent number and then to consider the patent. 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 Tuesday night, 1/10, at 11:59 pm*, please do the assignment and submit the ordinary patent webform and photographs. By Thursday morning, 1/12, at 10:00 am, please provide your comment on another student's submission, as explained in the assignment.
2	01/19 PPTX as PDF	1. Scheduling Simulations; Questions; Finishing any open items from Week 1.	Optional- before or after you makeaflake, you may want to read this delightful poem about the disconnect between spelling and pronunciation in English. I received an email about it today (1/13/12)and hunted for a link that would provide attribution. It turns out that the author, Gerard Nolst Trenité (1870-1949), was Dutch. (Viewing notes: it is difficult to remove the scrolling ad on the right, but word-searching for 'Dearest creature' brings you to the start of the poem, where the scrolling, though annoying, does not cover the real content.)	Please bring your own highlighted copy of your ordinary patent to class if you need it to refresh your recollection. Also bring the item if you can.
2	01/19 PPTX as PDF	2. A real patent infringement lawsuit some seminar students observed in 2007: Boston Scientific v Cordis. First: It's the CLAIMS.	As explained in the assignment, please look over one of the patents in suit, Fontirroche et al 5,820,594.Then read an edited judicial opinion on a pre-trial motion in the case. (If you are curious, read about how my edited versions of readings differ from the original.) Finally spend no more than about 10 minutes looking at fhe 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).	The assignment involves, once again, letting something in a patent jump off the page at you. Then you read a judicial pre-trial opinion. If this is the first time you are reading a case, it may be tough going. I have tired to make it easier, but am fully open to additional suggestions. (Email separately from the assignment, please.) After that, please look at the file histories to get an idea of what you can find in them. The assignment has more specifics about your tasks.
FIELD TRIPS (optional) Chief Judge Ware, NDCal, is presiding over Acer v. Tech. Prop. (3:08-cv-877 (JW)), will hold a Tutorial on 1/26 starting at 9 am, and a Claim Construction Hearing on 1/27, also at 9 am, in the San Francisco Courthouse, Courtroom 9 - 19th Floor, 450 Golden Gate Avenue, San Francisco, CA 94102 I am trying to get an estimate of the ending time. If there is a lunch break it will be at noon. There will probably be a break for the court reporter at 10:30 or so, and another in the afternoon, if the hearings are lengthy. As mentioned at the first class: On 1/11/12 Judge Ware appointed a court technical advisor, having notified the parties of this intent on 12/19/11 (advisor's resume, pdf pages 6-7). Here also are links to Judge Ware's calendar, the original scheduling order, and the order changing the date of the tutorial. Students interested in attending should contact me per the 1/19 assignment.
3	01/26 PPTX as PDF	1. Dealing with claims, for purposes of claim interpretation and otherwise	1. Look over Morris's method of reformatting claims. (FYI: As an example I use claim 1 of Fontirroche '594.) You will not need to reformat claim 1 of the '336 patent, but you will need to break it down into phrases so you can prepare a chart that shows where it and claim 1 of one of the other patents in suit are the same or different. Later on, you will reformat the claim in dispute in your simulation.
		2. Preparation for the Acer v. Tech. Properties field trip (whether or not you are going)	2. Read about DJs if you don't know what they are. Read the Joint Claim Construction Brief (12 pdf pages) . Look at the cover pages of the patents in suit, 5,440,749; 5,530,890; 5,809,336, and 6,598,148. Read more as you wish. The text of each patent's claim 1 is (suitably named) in the DOCS directory for your convenience.	See assignment - no Sunday night due date, nor Thursday morning comments, just a Tuesday midnight* deadline. This time some things are to be in the text of the email and some things are attachments. Note about attachments: Please put your first name both in the document itself and in the file name. An example of a patent family tree is here.
		3. From Last Week	Refresh your recollection about the BSC v Cordis decision and what you wrote about it..	If you marked up printouts of any of the BSC documents, please bring them with you.
4	02/02 PPT PDF	1. Start work on the simulations.	1. Read the webform for information about what makes a good simulation patent.	1. For Tuesday at 11:59 pm, grad students and (optional) law students with access to labs please complete webforms for at least one, and no more than three, potential patents. For Thursday at 11:59 pm, law students, I will send you a patent number or two for you to determine litigation status.
		2. Validity, especially obviousness.	2. KSR v. Teleflex (Supreme Court 2007)	2. See assignment.
		3. Catch-up	3. Review your notes from weeks 1-3 and the Acer hearings if you attended.	3. See assignment.
Optional: INSTANT PATENT LAW for grad students, especially. Tuesday, 2/8 at 2.
5	02/09 PPT PDF	1. Begin working in teams.	1. Communicate with your team about candidate patents.	See assignment about what Kermit should email and what the team should do in preparation for a meeting with me. Possible times for meetings are Wednesday, Friday, Saturday and Sunday.
5	02/09 PPT PDF	2. Infringement, especially under the doctrine of equivalents, and review of obviousness.	2. Caselaw about infringement, experts and the doctrine of equivalents: Warner-Jenkinson and Siemens v Saint Gobain (cert. petition currently pending before the Supreme Court).	You only need read one of the cases: see assignment.
FIRST TEAM MEETINGS WITH RJM. What to do to prepare is HERE. Once scheduled, the times/teams will be listed HERE.
6	02/16 PPT PDF	1. Taking and giving testimony, part A: Guest Speaker Prof. Philip H. Bucksbaum, expert witness in Imra v. IPG, EDMich, 2011. 2. The Federal Rules of Evidence concerning expert testimony.	1. The patent-in-suit: 5,818,630 and a text version of its claim 1. Please look ONLY at the patent at first. Look at the other documents as required by the assignment. 2. Rules 701-705 and a short recent decision on a Daubert motion in a patent case: Apeldyn v. AUO. (If you want to know more about Daubert, see the edited Supreme Court decision and the decision on remand, both of which I assigned in 2008.)	See assignment .
7	02/23	Short presentations by teams. Chosen patent and possible issues.	Read as needed for your presentations.	See last slide of 0216.pptx (0216.PDF). In order to be able to display your slides in class, please either post them on the web or bring them to class on a memory stick. (Bring your reformatted claim 1, and any other documents you want the class to have.)
ADDITIONAL TEAM MEETINGS WITH RJM, weeks of 2/20 and 2/27. 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. The schedule will be HERE.
8	03/01 pptx pdf	Finishing up with your questions. Advice on good questions, good answers. Brief discussion of some of the many patent infringement litigation issues that scientific experts usually don't encounter.	As needed for your projects.	None
9	03/07	Simulation Performances. Additional information is HERE.	Sam, Tim, Corinne and Kevin	For Sunday 3/4 at 11:59pm, Kermits should email me the information requested in Slide 15 of the 3/01 slides. Click here for critique assignments. I had said these would be due Thursday, 3/15, at 11:59pm but because I will be out of town, you will have until Tuesday, 3/20, at 11:59 pm.
	03/08A		Chris, Amanda, Dave and Jamie
	03/08B		Patrick, Amy, Waqas and Nicolaj