1 Scientific Evidence and Expert Testimony Patent Litigation LAW 343 GENETICS 243 Prof Roberta J Morris Room 218 Crown Quad 7239505 rjmorrisstanfordedu On the web httpwwwstanfordedurjmorrissciev12 ID: 785539
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Slide1
01/12/2012
RJM - IP: Sci Ev in Pat Lit - Winter 2012
1
Scientific Evidence and Expert Testimony: Patent LitigationLAW 343 / GENETICS 243
Prof. Roberta J. Morris
Room 218 Crown Quad
723-9505
rjmorris@stanford.edu
On the web:
http://www.stanford.edu/~rjmorris/sciev.12/
and
Not yet but soon: Email Group
sciev.12@lists.stanford.edu
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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 …
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Who Are You? - 1
Seating – Different every week for the first few weeks. Today: Guess the ordering principal. Guess the color codes.
Handout
- Student List
6 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.
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Seating Order – And a Few Preliminary Questions
Tim
Waqas
Amy
Nicolaj
Amanda
Chris
Patrick
Sam
Kevin
---
Kanupriya
Dave
Jamie
Ram
Corinne
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
?
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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/and
is
on your resume?
is
not
on your resume?
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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.
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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.
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Who Are You? Questions about Course Description- 3
The 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.
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Today’s
Assignment - 1
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Today’s
Assignment -
2
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2009 - Sci.Ev. - rjmWeek 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
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NO
required.
Better
Late.
than
Late
That’s
Never?
Better
Never
What You Will Do in this Seminar -4
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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
What You Will Do in this Seminar -5
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How the Seminar Will Work; also Deadlines
How... is posted on the websiteDeadlines
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.
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15
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
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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
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Week 01
17
2009 - Sci.Ev. - rjm
FEEL FREE TO INTERRUPT ABOUT
AS WELL AS ABOUT
I use the Mona Lisa to indicate
TERMS 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
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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, 220,719
In 2009, 167,349
In 2008, 157,772
***
In 1963, 45,679
Source for earlier years:
h
ttp://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm
* Patents are issued once a week on Tuesdays.
219,614
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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?
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2009 - Sci.Ev. - rjmWeek 01
20
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, VC
their commonalities, differences and priorities
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Tim Lau’s Patent 5,313,705 - COVER SHEET
issue date
Earliest US Filing Date
prior art
This patent expires
NOT on
May 13, 2011
but on
May 24. 2011
.
It did not go into effect until May 24. 1994.
class
Applicaton Date (of appl.
that issued as this patent)
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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…
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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
23
Week 01
CLAIM
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End of classRest will be for next week.
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2009 - Sci.Ev. - rjmWeek 01
25
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
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Major Issues of Liability in Patent LawValidity
InfringementThe other part of a patent case, after liability is determined, is
DAMAGES
, or more generally
REMEDIES
Slide27But first: some abbreviations used on the next slide.
AI: Accused Infringer
PO: Patent Owner
BOP: burden of proofQOP: quantum of proofThe Different Quanta of ProofPrep: Preponderance of the Evidence = 50%+Є
C&C: Clear and Convincing Evidence = ~70%??BARD: [evidence] beyond a reasonable doubt =99.99%?
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2009 - Sci.Ev. - rjm
Week 01
27
Major Issues of Liability in Patent Law
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2009 - Sci.Ev. - rjmWeek 01
28
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?
Major Issues of Liability in Patent Law
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P-I-S v P.A.
Situation A
Patent-in-suit = NEW
Prior Art Patent = OLD
Situation B
Patent-in-suit = OLD
Patent 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 ________
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2009 - Sci.Ev. - rjmWeek 01
30
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.
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Next WeekClaim 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