01/12/2012 rjm - ip: sci ev in pat lit - winter 2012 1 scientific evidence and expert testimony:...

01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 1

Scientific Evidence and Expert Testimony: Patent Litigation

LAW 343 / GENETICS 243

Prof. Roberta J. MorrisRoom 218 Crown Quad

[email protected]

On the web:http://www.stanford.edu/~rjmorris/sciev.12/

andNot yet but soon: Email Group [email protected]

mailto:[email protected]

http://www.stanford.edu/~rjmorris/sciev.12/

mailto:[email protected]


Today’s Agenda

• Who We Are • What We Will Do in this Seminar

• Your Comments on the Course Description• How the Seminar Will Work

• Begin Review of / Introduction to Patent Law: P!=C!=T; WHAT IS A PATENT (CONCRETE).

• 5:25 Break • 5:40 Present your patents and comments• 6:30 Adjourn

Next Week: A litigated patent: NOT one of the patents in suit in KSEA v. Stryker (alas) but …


Who Are You? - 1Seating – Different every week for the first few

weeks. Today: Guess the ordering principal. Guess the color codes.

Handout - Student List6 law students (with or currently pursuing advanced science degrees), 6 science Ph.D. candidates, 2 auditors (1 post-doc, 1 pre-doc)

Axess: Bring any problems to my attention. I don’t check it myself until the end of the quarter.


Seating Order – And a Few Preliminary Questions

TimWaqasAmyNicolajAmandaChrisPatrickSamKevin ---Kanupri

yaDaveJamieRamCorinne

• Before you did the first assignment, had you ever noticed patent numbers on objects and packaging?

• Was this the first patent you ever really looked at?

• Since college, how many classes have you taken that had less than 15 students? How many in law school?

• Did you take calculus in high school?

• Have you ever seen The Visual Display of Quantitative Information?

http://www.edwardtufte.com/tufte/books_vdqi

http://www.edwardtufte.com/tufte/books_vdqi


Who Are You? - 2

Introduce Yourselves• Whose side are you on: PO or AI?• What should we know about you that is not on the handout, but/ando is on your resume? o is not on your resume?


Who Are You? Questions about Course Description - 1

{alphabetical by last names; then grouped by topic}

Why Patent Cases (and their Scientific Experts) Are/Not Different

Nicolaj: I must say that it is not my experience from patent cases that “the parties generally agree in the science”. On the contrary the science is very often disputed and each party will bring their own expert to testify on the science. Very often these testimonies describes the science in very different terms. For instance, in my last case the two professors of chemistry had a completely different opinion on whether or not calcium carbonate has a CH at 20 C above 60%.

Waqas: I don't understand how the science is agreed upon in patent cases versus other areas of law where you say that it might not be agreed upon?

Ram: I do not understand the part in the course details where you had written “the parties generally agree on the science”. All these days I thought the patent infringer thinks they have done something different in science and so it does not infringe the patent.


Who Are You? Questions about Course Description - 2

*DRAFTING* Patent Applications (specification and claims)

Dave: How much does defending a patent (and playing expert witness) have in common with preparing one?Kanupriya:

“they also must help the litigators to choose which legal issues to press and which to concede, and to be aware of how the complications of the science might help, hurt, obscure or reveal how the law should be applied to the facts”: This part seems very interesting to me. There might be subtle details in a patent which may also be interpretation based (however succinct scientific language may be, there are always some open ends to it), and which may thus become points of contention. …

Interdisciplinary Thinking

Sam: One issue I’m wondering about is how law students approach science and technical issues. As a scientist, I’ve worked in groups with MBA students before and found that there can be both tension between disciplines and also fruitful learning on both sides…

Patrick: I liked the discussion about how the lawyer and the expert both have to help each other.


Who Are You? Questions about Course Description- 3The Simulations

Amanda: From a logistical standpoint, I would be curious to know if we will be interviewing experts or if we will “act” as the experts for each other in the simulations.

Corinne: How are teams chosen? How many people are on a team? What types of written assignments are there? What fields of study will the Ph.D students specialize in?

Jamie: How are the teams divided between law students and students pursuing other degrees? Does each law student get to work with at least one grad student with experience in the sciences or engineering?

Amy: I think exercises where one can learn from experience are most beneficial to understanding as a whole and what each individual’s roles and responsibilities are. I think that the final projects would be very instructive in that respect, something similar to learning by doing. I participated in the SGSI ‘d.School: Intro into Design Thinking’ course this past summer …

Tim: Will the simulations be directed to only one issue, such as invalidity or infringement? Or will the simulations cover every use of scientific evidence?

Kevin: I am looking forward to the final simulations, they sound like they will

be a lot of fun.


Today’s Assignment - 1

http://www.stanford.edu/~rjmorris/sciev.12/ASSIGN/0112.HTM


Today’s Assignment - 2

http://www.stanford.edu/~rjmorris/sciev.12/ASSIGN/0112.HTM

01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 112009 - Sci.Ev. - rjm Week 01 11

• Do A work and receive a recommendation and networking help any time, for life. See draft of How the Seminar Will Work

• Weekly Assignments and Comments and final project Critiques:

Better Late than Never?

What You Will Do in this Seminar -3

http://www.stanford.edu/~rjmorris/sciev.12/HOWWORK.HTM


NOrequired.

Better Late.than Late That’sNever? BetterNever



• Schedule/Syllabus – short form of assignments • Only *9* Thursdays in the law school's quarter• Attend a trial in San Francisco (KSEA v Stryker) with real

live examination and cross-examination of an expert – OPTIONAL

• Simulations• Every week: ~ 5:20: Snack (healthy or not, or both?)

Never late. That’s required.

• Weekly Assignments and Comments• Critiquing of other students’ simulations


http://www.stanford.edu/~rjmorris/sciev.09/index.htm


How the Seminar Will Work; also Deadlines

1. How... is posted on the website2. Deadlines

My posting the next week’s assignment? By the Friday before the due date, by 6 pm.

Your assignment? Tuesday at 11:59 pm*.

Your comment?Thursday at 10 am.

Critiques?3/16 at 11:59 pm *

Remember: LATE WORK IS NOT ACCEPTED.


Concept Patent Copyright Trademark

Coverage Inventions(Machines, Things, Processes, Mole-cules, etc.)

Creative Expression(Words, Art, Video, Audio)

Commercial Identity Stuff (Logos, names, slogans, product appearance,etc.)

Agency associated with obtaining it

Patent & Trademark Office (Part of the Dept of Commerce)

Copyright Office(Part of the Library of CONGRESS)

Patent & Trademark Office (Part of the Dept of Commerce)

Verb associated with obtaining it

APPLY REGISTER APPLY

Can Agency REJECT?

YES Not often YES

When does protection START

From ISSUANCE From CREATION From use or registration

When does protection STOP

20 years from date of filing of application, MOSTLY

Life of author + 70 years to the next 12/31, USUALLY

Never, MOSTLY

PTO PTO

Patents != Copyright != Trademarks


Throughout the term, I will use the snowflake to indicate anything that

is true, more or less,could be VERY complicated if you went into it deeply, and might melt if you touch it.

FEEL FREE TO ASK AFTER CLASS ABOUT SNOWFLAKES (the words they accompany on the slides, or the makeaflake website)

SUBSTANTIVE LAW

http://snowflakes.barkleyus.com/index.html

01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 17Week 01 17 2009 - Sci.Ev. - rjm

FEEL FREE TO INTERRUPT ABOUT

AS WELL AS ABOUT

I use the Mona Lisa to indicateTERMS OF ART.

Use such terms carefully. They don’t always mean what you think they mean.Anyone who DOES know what they mean may misunderstand you if you misuse them.

TERMS OF ART


Introduction/Review of patent law

On Tuesday, 1/10/12 the PTO issued 5,292 patents : 4840 utility patents starting with 8,091,144

PLUS 32 reissues (35 USC 251+) [RE+5digits],

10 plant patents (35 USC 161+) [PP+5digits] 410 design patents(35 USC 171+) [D+6digits]

On 9/14/10: 4382+50+16+450 (4898 total)On 9/22/09: 3242+ 4+32+450 (3729 total)On 9/17/08: 1989+12+35+400 (2435 total).On 9/18/07: 2992+12+35+499 (3540 total).In 2011, ~225,777 utility patents were issued. [Arithmetic by RJM from hits on uspto search site.]In 2010, 220,719In 2009, 167,349 In 2008, 157,772

***In 1963, 45,679 Source for earlier years: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm

* Patents are issued once a week on Tuesdays.

219,614

http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm


The AIA

On 9/16/11 an overhaul of the patent statute, the American Invents Act (AIA) was signed into law.

Why can we ignore it in this class?

Hints:What kind of patents do we deal with?

What are the issues about which scientific experts testify?


Reading a Patent

Why choose a patent whose number appears on something you can buy?

Why choose a patent whose number is more than 5,000,000? (Design patents, Reissue patents)

How do you read a patent?

Always ask: “Who wants to know?”

PO, PAppl, AI, VCtheir commonalities, differences and priorities


Tim

Lau

’s P

ate

nt

5,3

13

,70

5 -

CO

VE

R S

HE

ET

issue date

Earliest US Filing Date

prior art

This pate

nt expire

s

NOT on May 13, 2

011

but on M

ay 24. 2011.

It did not g

o into

effect until

May 24. 1994.

class

Applicaton Date (of appl. that issued as this patent)


To calculate the expiration of a patent, you need to know these dates. Then consult DOCS/TERMCALC.DOC on the course website (or read the statute).The calculated date is not your final answer, however. You must also consider - nonpayment of maintenance fees - extensions due to delays by the government.

But there’s good news! This is just FYI.

The patents you use for simulations will be assumd to be in full force and effect at all relevant times…

http://www.stanford.edu/~rjmorris/sciev.12/DOCS/TERMCALC.DOC


But also (and always) remember, in a variation on famous words from 1992:

IT’S THE _______

STUPID.2009 - Sci.Ev. - rjm Week 01 23

Reading a Patent

2009 - Sci.Ev. - rjm 23Week 01

CLAIM


End of classRest will be for next week.


Reading a Patent – Who asked you to?

• AI – to design around it to avoid infringement– to challenge validity or enforceability

• PAppl – – to see if you need to disclose (and claim around)– to see if you should buy/license it

• M&A – to evaluate an asset• PO – to evaluate whether you can sue within the bounds

of Rule 11

Why? • AVOID inequitable conduct• COMPLY with

Rule 56 and your duty of candor

• Obtain a solid patent


Major Issues of Liability in Patent Law

•Validity•Infringement

The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES

But first: some abbreviations used on the next slide.AI: Accused InfringerPO: Patent Owner

BOP: burden of proofQOP: quantum of proof

The Different Quanta of ProofPrep: Preponderance of the Evidence = 50%+ЄC&C: Clear and Convincing Evidence = ~70%??BARD: [evidence] beyond a reasonable doubt =99.99%?




Validity

Infringement

AI

Preponderance

C&C

PO

WHO HAS THE

BOP?

WHAT IS THE QOP?

How do BOP and QOP affect the litigators and scientific experts?



P-I-S v P.A.Situation A

Patent-in-suit = NEWPrior Art Patent = OLD

Situation BPatent-in-suit = OLDPatent on accused device = NEW

Is the New patent valid over the Old patent?

Is the Old patent infringed by someone practicing the New patent?

New Patent Look at New's CLAIMS Look at New's SPECIFICATION (to see what people do who would PRACTICE New’s invention)

Old Patent Look at Old's SPECIFICATION (to see what it "teaches")

Look at Old's CLAIMS

Q.When do you look at the CLAIMS? A.When the patent is ________


Your Patented Objects -1

If you brought the item, show it off.

Discuss your guess or surprise.

Discuss what you gained from looking at someone else’s submission.


Next Week

Claim Interpretation and File Histories.

As you look at a patent, especially its claim 1 and its history, think about:

- ideas for design arounds and noninfringement arguments

- ideas for invalidity arguments

- any questions for which YOU need/would be an expert

01/12/2012 rjm - ip: sci ev in pat lit - winter 2012 1 scientific evidence and expert testimony:...

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