2009 - Sci.Ev. - rjm Week 03 1

Today’s Agenda(Last week we worked on reformatting Hologic claim 1. Guillaume posted the result as a final reply to Week 1’s assignment to reformat this claim.)

• KUDOS• The claim construction order – Class discussion

• Votes: (next slide) Transcript

• DOCTRINE OF EQUIVALENTS • Other Items I posted: Docket Sheet, File Histories

• Assignment#3: what else do you want to know• Comment: what you learned• Next CLASSES: 10/21 and 28 – Infringement and Experts;

Obviousness and Experts; File Histories

Apologies for being so tired today: But please feel free to read my materials for a talk on §101 (patentable subject matter, Bilski) that I’m giving in Michigan on 10/29, and my amicus brief in Ariad v. Eli Lilly on §112p that I filed with the Federal Circuit yesterday.

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Votes on BONDINGAgreed with Original Order[bond>chemical, includes physical]

DmitryAaron

Agreed with Second Order [bond=chemical]

BenBumQTiffanyDavidMatthewRyanProsenRitiEmilyMatt Guillaume

2009 - Sci.Ev. - rjm Week 03 3

Claim Construction Order

Fontirroche patent

Also, for interest, the whole docket for the litigation (to Oct 2008, anyway).

And the jury’s verdict.

And the judge’s order on various post-trial motions, including JMOLs.

2009 - Sci.Ev. - rjm Week 03 4

The 2005 Claim Construction Order

Docket # 298, at page 13.

π = BSC (AI of 594)

Right. Either BSC does not understand the law, or it

hoped Judge Illston didn’t.

2009 - Sci.Ev. - rjm Week 03 5

The 2005 Claim Construction Order

Docket # 298, at 13-15.The court granted Cordis’ motion for declaration of an Interference-in-Fact.

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Post-Trial

I’ve covered up the statement of the verdict, and of who brought which JMOL, p. 3 of Docket 844, 2/19/08.

Re JMOL: see pages 14-17 of the pdf linked above.

2009 - Sci.Ev. - rjm Week 03 7

BSC v. Cordis – sorting it out1. Cordis wanted to show that BSC’s Maverick catheters literally infringed

claim 7.To do that, it needed BONDED to be > chemical.

2. Cordis wanted an interference. [Why?]Was this more important than #1? A makeweight to #1? Was it Cordis’ best defense as AI of Kastenhoffer?

Discuss “senior party” and “junior party”: Fontirroche priority (‘510 application date): 1/31/94. Kastenhoffer ‘477 priority (earliest of 3 continuations in ‘477 family tree): 9/20/94.

To succeed, it needed BONDED to be > chemical.

Trotta first appears in the docket as filing a declaration in support of Cordis’ Reply to BSC’s motion for a declaration of NO intereference. 9/21/04. He later filed a delaration on obviousness of another BSC patent.

Claim Construction Order 1 is dated 2/24/05.Trotta was added as an inventor (certificate 12/13/05) after the Court accepted

the broad BOND argument.Trotta’s testified sometime after Claim Construction #1 (2/24/05).

He gave his CURRENT understanding as well as his understanding “prior to 2002.” Cl. Const. #2 at 6:2b.

2009 - Sci.Ev. - rjm Week 03 8

BSC v. Cordis – sorting it outKeeping the parties straight.

Judge Illston doesn’t help because she uses “plaintiff” and “defendant.”

In a case with patents asserted by both sides, that is particularly confusing.

Make it a habit to note who’s who at the outset, in a way that is visible on your copy of the decision, whether electronic or paper.

Advice: When you write about law, AVOID identifying the parties as plaintiff and defendant (or appellant and appellee) unless you have a very good strategic reason to avoid naming names.

2009 - Sci.Ev. - rjm Week 03 9

Pruitt Testimony

17 to 32 Matt P 33 to 48 BumQ 49 to 65 Ryan, David 66 to 81 Denise, Aaron 82 to 98 Ben, Riti 99 to 116 Tiffany, Matt T 117 to 132 Dmitry 133 to 148 Guillaume, Emily 149 to 163 Matt B

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Court System

• Hierarchy of Non-Case Law:

1 Statutes

2 Regulations

3 MPEP (agency’s internal practice rules)

• Intro. to Civil Procedure

• Intro. to Federal Courts

Court systems have trial courts and appeals courts. In the Federal system, the trial courts are called DISTRICT Courts, e.g, the Northern District of California. Appeals go to the Courts of Appeals. Appeals to all the federal Courts of Appeal are “OF RIGHT.”*Most cases are appealed to the regional circuits, e.g., the Court of Appeals for the NINTH Circuit Since 10/1/1982, patent cases go to a specially-created court of appeals with nation-wide jurisdiction: the Court of Appeals for the Federal Circuit.A losing appellant or appellee can PETITION the SUPREME COURT for review, but the SUPREMES have DISCRETION to hear or not hear cases (with few exceptions).

2009 - Sci.Ev. - rjm Week 03 11

What else you’d like to know

Ben: bondsBumQ: Trotta – loyalty, etc.Dmitry: claim differentiationTiffany: Trotta’s catheterDavid: Two-way test v. one-way Matthew: How to get court to revisit claim

const?Ryan: Litigating multiple patentsProsen: chemical bondsRiti: burden/standard of proof on claim

construction Emily: polymers and bondsTerell: obviousnessAaron: glue is chemical bond?Guillaume: strategic use of non-naming

inventorDenise: Interferences