on the link brings up the directory listing.
||Other Useful Links|
(Link is to Detailed Assignment)
|1. Introducing Ourselves
||Please submit the questionnaire by Sunday night, 1/08, at 11:59
pm,* but the earlier
|2 Seminar Terms & Conditions,
and your excellent questions about the course description
||None. Documentation will be
|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.
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.
|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. 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.
|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;
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.|
|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
|2. Validity, especially obviousness.||2. KSR v. Teleflex
(Supreme Court 2007)
||2. See assignment.
||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.|
working in teams.
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.
|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.|
|1. Taking and giving testimony, part A: Guest
H. Bucksbaum, expert witness in Imra v. IPG, EDMich,
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
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
by teams. Chosen patent and possible issues.
||Read as needed for
||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.)
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.
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.
Additional information is HERE.
|Sam, Tim, Corinne and Kevin||For Sunday 3/4 at
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*.
||Chris, Amanda, Dave
||Patrick, Amy, Waqas and Nicolaj