Questionnaire for Scientific Evidence and Expert Testimony: Patent Litigation - Fall 2007                           rjm 8/28/07 rev 070828:2330



LAW STUDENTS ONLY
(Grad student questionnaire will be posted in mid September.)

Please enter your e-mail address:
Send a copy of this message to the email address listed above..

First Name (not necessarily your legal name, but rather the name you wish to be called
in the seminar if we use first names)

Last Name

Some of this information already appears on your Consent Form, I know.  I am sorry you have to enter it again,
but it will be helpful for me to have it in a standard electronic format.

Pronunciation of your first and last names (if not obvious)
 ("Rhymes with" for a syllable or group of syllables always helps. Indicating the emphasized syllable by ALL CAPS is good, too.)
 

Undergraduate School Year of Graduation

Undergraduate Major(s)

Other Degree(s) (degree, field, institution, year)

Your Law and Patent Law Work Experience
    Please provide details concerning your clerking experience(s) this summer (2007)
and during or before law school (if any).
    In addition, if you have been employed to do something related to patent law at some
other time (whether in summer jobs, clerking, or pre-law school), please provide information about
these other employers.  Inverse chronological order is best. 
   If you have had more than 3 relevant employers, please use the box below to tell me
about numbers 4 through whatever, including the same basic information as for the first three.

    Name of 1st (or only) employer.
    City    
    Dates with this Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment

    Name of 2nd employer.
    City
    Dates with 2nd Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment


    Name of 3rd employer.
    City
    Dates with 3rd Employer: From To
    IP specialty firm General Practice Firm Court or Administrative Tribunal In-house counsel Other
    If you checked "other," please give details about type of employment

If you had more than 3 employers, please use this box to tell me about the 4th, 5th, and so on..

If you have not been in school every year between September and May since age 15,
what else have you done and when and where did you do it?

 


Patent Law, Review of

You _may_ consult anything and anyone (except me) to get the answers for this part. 
It should not take you very long to do.  If you have spent 2 hours on it, STOP!

Lawyers Involved with Patents
Lawyers involved with patents for the majority of their work day may
     - represent inventors in connection with applications for patent protection
filed with the United States Patent and Trademark Office and other patent offices throughout the world, or
     - provide counseling and court representation for clients nvolved in patent infringement cases, or
     -  advise clients who are merging, aquiring, financing, etc business who have substantial patent assets..
  What are these 3 kinds of attorneys called?
  and and

Prejudices: What are the best and worst aspects of the work each group performs?

Best for Group 1 and Worst
Best for Group 2 and Worst
Best for Group 3 and Worst

If you balked at having to name only three, please now name any others and identify the best and worst aspects of their work.

Patent Law - Litigation Issues and Aspects of Proof and Appellate Review
In a patent infringement trial, as in all trials, the question of liability is tried before damages.
Name the two major liability issues. (If you feel you haven't a clue, look at the next two questions
and see if they help. If you think there's a third liability issue, use the large box below to tell me what it is and
where it would be presented in a patent infringement trial.)  
Liability Issue 1 and
Liability Issue 2 

For each of the two major liability issues you identified, question 1,
 who has the burden of proof (patent owner [=PO] or accused infringer [=AI]), and what is the standard (quantum) of proof?

Liability Issue 1 - Burden of Proof is on PO AI
and Standard of Proof is

Liability Issue 2 - Burden of Proof is on PO AI
and Standard of Proof is

Name at least one and no more than four issues that arise fairly regularly in patent cases
that are questions of equity (as opposed to questions of law or fact.)
 

What is the standard of review on appeal for questions of equity?

Parties   A patent infringement case is called _X v. Y_. Ordinarily X is the patent owner,
but sometimes it is not. Who is it? There are two obvious possibilities, at least to me.
If you think of more than two, tell me the other(s), too.
Describe these plaintiffs in terms of their relationship to the patent alleged to be infringed.
Why can those non-patent-owners initiate suit?  If nothing comes to mind, then say on what basis the defendants can have the case dismissed.


COURTS AND JURISDICTION
Your client, a resident of Palo Alto, would like to sue a resident of San Francisco for patent infringement.
In what court do you bring the action? (Be as specific as you need to be.)
Why is that the right court? Cite a statute if one comes to mind.
The trial judge dismisses your case on the defendant's motion for summary judgment of noninfringement.
In what court of appeals do you file your notice of appeal?
 
Why is that the right court?

Laws and Regulations (Patent-speak Cont'd: Knowing the Numbers)
Congress enacts statutes concerning patents. What article/clause/section of the Constitution
allows Congress to do so?
What is the number of the Title (in USC) where you find the patent laws?
What is the number of the Title of the Code of Federal Regulations (CFR) where you find regulations concerning patents?
With what is 37 CFR Sec. 1.56 (aka Rule 56) concerned?  
With what is  Rule 56 of the Code of Civil Procedure concerned?  
 
The patent office has its own internal rules. They are sometimes cited in cases
(although they have less weight than federal regulations), and they are heavily relied on by
lawyers helping inventors apply for patents and even by litigators and law clerks doing research for litigation.
What, collectively, are these internal rules called?


Judicial Opinions
Name four famous patent cases (Supreme Court or not), each concerning a different issue in patent infringement litigation. 
Give the name (enough to be recognizable, NOT bluebook), the court, the year (or decade or century, for less recent cases),
the issue, and the author(s) of the opinion if  that person's (or persons') name is important  (however you wish to define
"important": you can explain that or not, your choice).




Do you know of any current patent case for which cert. is pending or for which it is expected to be petitioned? 
If so, please name it and its issue(s) here.


Difficulty Level of These Questions
Please be absolutely honest here. Your answer will have no effect on your grade or my opinion of you,
but will only help me understand the level of knowledge of the class as a whole.
How long did it take you to answer the review questions?
What or whom did you consult?

Optional  Questions
Who is your favorite Federal Circuit judge and why?


What unassigned book did you last read, and when did you finish it?