RJM IP Sci Ev in Pat Lit Winter 2012 1 IP Scientific Evidence in Patent Litigation Week 8 Remaining QuestionsSubjects not covered Quick Survey about your Simulations What LOTS of past judges mention ID: 322063
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IP: Scientific Evidence in Patent LitigationWeek 8
Remaining Questions/Subjects not covered
Quick Survey about your Simulations
What LOTS of past judges mention
Next Week’s Schedule
What to do by Sunday midnightSlide2
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Comments from Last Week
Eye contact, confidence, personal bits (OK,
ahhh
, hand in pocket, self-deprecation)What do each of you remember from last week that you’re willing to tell your colleagues?! Slide3
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Some Old Questions – Week 6 (Bucksbaum)
T
: Do experts attend each other’s depositions? Yes.
J: Benefit to PO of broad claim construction, even if PO loses this case? Sure, if there are other infringers out there. Downside: INVALIDITY.N: “Voir dire.” Applies to (1) open-court interview of jurors to determine qualifications [really lack of], (2) open-court interview (Q&A) of expert to determine qualifications, (3) anything else?
AL: Benefit of aggressive questioning? Juggling – decision here, record on appeal, ‘opening
(
or keeping closed) the door,’ antagonizing/waking up/alerting the judge or the jury, letting opponent know you know, etc.Slide4
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Some Old Questions – Week 6 (Bucksbaum)
D: What is “impeachment”? You’re a liar.
AB: Why NOT submit extrinsic evidence?
Strategy. Implies weakness of argument based only on intrinsic, perhaps. Money: it costs extra (getting expert testimony, reading all those dictionaries…)Law – now: Fed Cir has dissed
it.
AB: Confusion over what’s in evidence/not: common? Yup. All that paper. And it all matters for ‘the record on appeal.’ Q for you: What is in that record? How does it get there? Who compiles it?Slide5
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Patent Issues that Scientific Experts May Care About(but we mostly ignored)
Invalidity (35 USC 112)
Enablement – because it also depends on the knowledge of the
Written Description – ditto
Best Mode (subjective: turns on the inventor’s state of mind.
W
hat kind of evidence would be introduced?)
Invalidity (102(g) under the old statute)
Proving the DATE OF INVENTION(priority)
Conception
Reduction to Practice
Diligence
CorroborationSlide6
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Patent Issues that Scientific Experts Don’t Have to Care About – Usually -1
Invalidity
T
he ON SALE BAR where the bar involves a thing sold or offered for sale (as opposed to a written disclosure such as a journal article, manual, advertisement, patent application) EXCEPT REMEMBER:
Evaluation of Secondary Considerations (but can rely on other experts…) EXCEPT REMEMBER:
It’s the
claim
,
stupid.
It’s the
claim
,
stupid.Slide7
EQUITY
R56
Ineq
. Conduct283 Injunction284 Multiple Damages285 Award of atty feesPatent Misuse
LachesEstoppel
(re delay in suing)
FACT101 Lack of Utility102a Anticipation102g Diligence102g Corroboration103 Analogous Art103 Secondary Considerations112P2 Best Mode112P1 Written Descrip
.
R56 Intent
(
Ineq
.
Cond
.)
R56
Materiality
(
Ineq
.
Cond
.)
271
Infringe.
–
literal
271
Infringe.
–
DOE
Exceptional Case
- Patent Exhaustion
Compiled first in the 1990s, then made into a slide for Adv Pat Seminar 11/15/05, updated for
Sci
Ev
Seminar 9/5/07 and updated again for
Sci
Ev
2012.
See also
pdf
pages 31-33
of my amicus brief in Microsoft v. i4i.
-
rjm
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RJM - IP: Sci Ev in Pat Lit - Winter 2012LAW101 Patentable Subject Matter102b Experimental/Public Use102b On Sale 102g Priority of Invention102g Conception 102g Reduc. to Prac.103 Obviousness112P1 Enablement112P2 Indefiniteness[101, 102, 103,112,271] Claim Construction- Implied license
NB: All statute numbers are pre-AIA . Some have changed, with various effective dates.
Catch-Up – Law and Fact (and
Equity)
Rev of 2/2, 2/9 PPTXSlide8
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Patent Issues that Scientific Experts Don’t Have to Care About – Usually -2
Infringement (Other Defenses)
Implied License (except REMEMBER:
Not on the substance of the patent but affect LIABILITY Laches and
Estoppel
“Prosecution
Laches
” (dead for non-submarines?)
DAMAGES
It’s the
claim
,
stupid.Slide9
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What Judges Will Mention (RJM’s formulation) -1
DIRECT: Closer to a Tennis Match than a Lecture
REDUCE the time between questions.
A back-and-forth dialogue is good. Both L and E should look at judges (and fellow students from time to time…) to check for mystification. L should push E to slow down, explain, etc., even if that is not in the ‘script.’
EXPERT: If the Q doesn’t provide one, state your topic sentence: Saying “I will know explain the
blutz
” is OK!Slide10
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What Judges Will Mention (RJM’s formulation) -2
LAWYER
: You can lead your witness through the slide. If there is a connection, you can avoid
leading:1. LEADING Q. Dr. X, I see that there’s a giraffe next to the anaconda. How do those two work together? A. Narrative – short – about G+A.2. NON-LEADING Dr. X, you’ve told us about the giraffe.
What other parts of the device does it interact with?
A. Only the anaconda. Same narrative as Q1.
Improve this question!Slide11
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What Judges Will Mention (RJM’s formulation) -3
EXPERTS: HOW MUCH TO TALK
The rule ‘Just answer the specific question’ applies on CROSS, and not so much on direct.
Both Q1 and Q2, if asked on direct, can be answered with a narrative.On cross, Q2 should NOT be answered with a narrative!On cross: don’t fight. Experts, stay brief. Lawyers: stay brief, too! Lawyers should LEAD. Ask yes-no questions. Don’t give the Expert the chance to amplify, argue, or anything else. CONTROL!Slide12
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What Judges Will Mention (RJM’s formulation) -4
DIAGRAMS – SCHEMATICS – etc.
If they ARE from the patent, cite the figure and sheet. If they are BASED ON the patent, but different, SAY SO. If they are NOT ‘from’ the patent, SAY SO.As in all things: honesty is the best policy. Anything that might look underhanded, meet head on!
Does this slide have the right amount
of words? Too many? Too few?
How well
designed is it for quick reading?Slide13
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What Judges Mention (RJM’s formulation) - 5
SCIENTIFIC TERMS: Make sure you EXPLAIN any scientific term the FIRST time you use it. Say it, point to it or have the animation highlight it, explain it, use it in a sentence.
Expert and Lawyer BOTH: Do not let a scientific term creep in without explanation. (Don’t bother to explain what is in a high school science class in bio,
chem or physics. Do explain what’s in the AP class… What about “bandwidth”? [Dave re Sam])
L can also
ask again
when the term is used a while later.
Q
. You mentioned that word
rhinoceros
again: it’s that
whozits
that transports the mud toward the
whatsis
, right?”
A
. That’s right.
SURE that Q is leading. But as long as Lawyer is repeating what Expert said, nobody will object.
Slide14
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What Judges Mention (RJM’s formulation) - 5
EXPERTS: You CAN, or the LAWYER can on your behalf, ask to leave the witness chair and walk up to the screen.
(Do we need a laser pointer? )
Often, that is helpful: you engage with the judges better when you are up and you revive yourself by moving around.Slide15
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By Sunday 3/4/12 at 11:59 pm*, please submit
1. Roles – PO v AI
Please CONTINUE to collaborate, however!2. Any stipulations or other information your judges should be told or the audience should have available in a handout.
Names* of the AI and AD (if you use them)
4. Reformatted Claim 1. Dual goals: Enable the reader to
= see at a glance the language underlying your issue (and related
signficant
language elsewhere in the claim, if any)
=
skim and grasp
the whole claim as necessary.
In consultation with your team, I may tweak your claim 1 if I think I can make the judges’ lives easier.Slide16
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Next Week
Volunteers needed to help with set-up. Come by about ½ hour before start time. Room 95.
Volunteers also needed to stay at the end and help clean up – and take home leftovers.
Critique Assignments: What to do and about whom will be posted over the weekend.Slide17
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Next Week
Wednesday
7:30. Introductions and ground rules. ~7:45-8:45: STCK. 8:45-9? 9:15? Comments by judges.
Then until ~10: Refreshments and networking.
Thursday.
5:30. Introductions and ground rules.
~5:45-6:45: JAC’D.
6:45-7?7:15? Comments by judges
Then until 7:45:
Refreshments and networking.
7:45. Introductions and ground rules.
~8-9: PAWN
9-9:15?9:30? Comments by judges.
Then until ~10:
Refreshments and networking.Slide18
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Next Week