RJM IP Sci Ev in Pat Lit Spring 2013 1 Todays Agenda Any questions DirectCross AskingAnswering Patent issues that lawyers handle without scientific experts Preview of Introductory Slides ID: 226021
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Slide1
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RJM - IP: Sci Ev in Pat Lit - Spring 2013
1
Today's Agenda
Any questions?
Direct/Cross - Asking/Answering
Patent issues that lawyers handle without scientific experts
Preview of Introductory Slides
Next Week
~
8
:30 Adjourn/meet with your teamSlide2
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Some
Questions
from 2012
Do
experts attend each other’s depositions? Yes.
If PO wins
broad claim
construction, but loses: up/downside?
Downside: Loses on VALIDITY. (Blonder-Tongue)
Upside: Other infringers out there.
“
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?
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/fear,
etc.Slide3
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Some Questions from 2012
What
is
impeachment ?
"Witness, y
ou lie!"
Why
NOT submit
extrinsic
evidence for claim construction?
Strategy: Could imply
weakness of intrinsic evidenceMoney: Expert testimony/declaration; find/read dictionaries, etc.Law: Fed Cir dissed it in 2005 in Phillips, hasn't changed its mind and hasn't had its mind changed by the Supreme Court.[At trial] Is there always confusion over what’s in evidence? 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?Slide4
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Your Questions?
Hello?Slide5
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2 x 2 Matrix
Direct and Cross,
Asking and Answering
Who?/What?
Direct
Cross
BothL: AskingOpen-endedLeadingShort, frequentE: AnsweringExpoundYes/No only*Succinct, Looking at the judges more than the lawyerBothPolite, Friendly, Credible, Non-argumentativeSlide6
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Direct and
Cross: Asking
Direct: Ask OPEN questions. Examples:
What happened next?
Tell us about this slide.
You mentioned X on this slide. What does it do? {why isn't that LEADING?}Cross: Ask LEADING questions. Aim for a question with a Yes/No answer. Example: Does the widget perform the Z function?Experts: In the interests of time, answer the question!Let your lawyer rehabilitate you on re-direct, if ne wants to.Slide7
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Direct and
Cross: Asking
Direct: Ask OPEN questions. Examples:
What happened next?
Tell us about this slide.
You mentioned X on this slide. What does it do? {why isn't that LEADING?}Cross: Ask LEADING questions. Aim for a question with a Yes/No answer. Example: Does the widget perform the Z function?You can also chooose to ask NO questions at all. (Sometimes the best cross is NONE. You may construct the problem so that there's something to ask about on cross. But you may also notice something unexpected. If you do neither, don't cross!)Slide8
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Direct and Cross: Answering
Experts:
Both Direct and Cross:
LISTEN
. Answer JUST the question the lawyer asks.
Direct: If your lawyer is floundering, as a last resort, help ner out (but don't make it obvious). Cross: In the interests of time, still just answer the question! Let your lawyer rehabilitate you on re-direct, if ne wants to. If the other lawyer is floundering, as a last resort, skewer ner, but sweetly and succinctly...Slide9
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What Judges Will Mention I
f
Y
ou
F
orget
-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
a topic sentence, you state it. “I will now 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
Q. Dr
. X, you’ve told us about the giraffe.
Do
es
it interact with anything in that picture? A. Only the anaconda. Same narrative as Q1.Improve these questions!Assumes fact not in evidence: that they DO work together!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
somewhat (but less)
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!
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?
Is it easy to
read quickly?
In your slides, remember that a picture is worth 1000 words.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
college
class
…)
Lawyer
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 whatsits, right?” A. That’s right. SURE that Q is leading. But as long as Lawyer is repeating what Expert said, nobody will object, even in a real jury trial. 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.
Often,
walking up to the screen is GOOD:
*
you
engage with the judges better when you are up
*
you
revive yourself by moving
around
* your lawyer gets a chance to catch a breath(Do we need a laser pointer? )(Do we need an easel?)EVERYBODY: NO NOTES! The slide should be enough.Slide15
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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
(was [incompletely] removed by AIA)
Invalidity
under102(g
)
of
the old
statute (will
continue to
apply to applications filed before 3/16/13) Proving the DATE OF INVENTION(priority) Conception Reduction to Practice Diligence Corroboration
HOA-at-TOI
Link to good
resource re effective filing dates, first inventor to file, etc
.
(Duke Patent Law Institute, 5/14/13, Tom Irving of Finnegan (Big Kid
Alert))Slide16
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Patent Issues that Scientific Experts
Don’t Have to Care About – Usually -1
Invalidity
The 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.Slide17
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Patent Issues that Scientific Experts
Don’t Have to Care About – Usually -2
Infringement (Other Defenses)
Implied License (except REMEMBER:
LIABILITY - but not related to the CLAIM issues
Laches
and
Estoppel
“Prosecution
Laches
”
(Exp at Earliest Filing+20 should reduce these arguments)
DAMAGES
It’s the claim, stupid.Slide18
Introductory Slides/Commentary
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Helio
will
introduce judges and students (bios based on info on table you received in week 1; please send corrections/revisions/amplifications to him, cc: me)
present his version of the following slidesSlide19
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SIMULATIONS – The Issue
The issue
as to which the experts will testify
was chosen
by the team
working collaboratively
based on studying the patent, file history, prior art, and with the students providing expertise on the law and the technology) with just a bit of oversight by RJMThe whole team worked together on Q&As and areas for cross-examination.They chose sides only at the end.Slide20
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Collaboration and
Interdisciplinary Learning
Goal: To devise a BALANCED problem, where both sides have a reasonable position,
without noticeable violation of
the law of patents,
the law of gravity,
the law of energy conservation, etc.
Reached by: Extraordinarily hard work and collaboration. (They only became adversaries when they arrived this evening.)Slide21
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The CLASS and The SIMULATIONS
– What They are NOT
This is NOT a trial practice class.
This is NOT a patent law class.
This is NOT the only class/academic responsibility these students have right now.
Time Constraints: see NOT #3
Time Constraints: 4 weeks to do the project
Time Constraints: 1 hour to do the simulationSlide22
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SIMULATIONS –
Another NOT
Time limits also
mean, the
simulation is
NOT
of
a jury trialThe students have prepared their presentation as if for a bench trial before a judge like youintelligent * interested * patent-savvywho has chosen to hold a single evidentiary hearing on both claim construction and summary judgment.Slide23
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SIMULATIONS –
More
NOs
Therefore:
NO
objections (except that judges
may
sustain an objection they wish they'd heard)NO credentialing of expertsNO offering of exhibits into evidenceNO other realities of the courtroom matters that would cut into the time available for substanceNO outsiders: the witnesses are students, tooNO winner – or there shouldn’t be
NO
interruptions by the judges (if possible) Slide24
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SIMULATIONS – Knowledge of Patent Law
The
law students came in knowing
some
patent law.
The
teams met with me to make sure the law was on their side[s].
Earlier in the quarter, the entire class learned (or reviewed) some patent law.Everyone learned about claims and how to format them to make them readable.Also to say (even if they’ve never heard of George Stephanopolos )It’s the
claim
,
stupid.Slide25
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SIMULATIONS – The Facts and The Law
The
students invented
the
design
around.
The
accused infringer is imaginary.Handouts: Claim-in-suit (reformatted)* and Patent-in-suit.*By Local Rules, this must be slide 1. The team must reformat the claim-in-suit to make it easier for you and me to read and comprehend speedily, and to help the team learn it and its secrets. Slide26
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SIMULATIONS –
5/29/13 at 7
Inventor
:
Higuchi.
5,994,056. "
Homgenous Methods for Nucleic Acid Amplification." Issued Nov. 30, 1999. Issue: InfringementCast in order of Appearance Tutorial Expert: DB (exp PhD, Appl Phys) For PO: Attorney - Expert -
For AI:
Attorney -
Expert -
Judges
:
Goldman (3rd time) Higgins (4th time) Rowland (5th time) Shah (1st time, MI alum, guest speaker) [Refreshments available between the two simulations.]Slide27
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SIMULATIONS –
5/29/13 at 9
Inventor
:
Vassarotti
. 5,647,990. "Centrifugal Method for Concentrating Macromolecules from a Solution and device for Carrying Out Said Method." Issued 7/15/97.
Issue: InfringementCast in order of Appearance Tutorial Expert: C (exp PhD EE) For PO: Attorney - Expert - For AI: Attorney -
Expert -
Judges:
Allison (3rd time, MI alum)
Brown-Marshall (5
th
time + seminar alum) Cox (1st time + seminar alum) Noh (3rd time, MI alum)Slide28
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By
Sunday, 5/26,
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.Slide29
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Next Week
Volunteers needed to help with set-up. Come by
myy
office at ~6:15 or Room 95 at ~6:30
Volunteers also needed to stay at the end and help clean up – and take home leftovers
.
Roles: If you promise to continue to collaborate, you can choose roles today.
Critique Assignments
: What to do and about whom will be posted over the weekend.