Presenting a Tutorial to a Judge in a Patent Case Involving Complex Technologies Austin IP American Inn of Court Group 5

1. Presenting a Tutorial to a Judge in a Patent Case Involving Complex Technologies Austin IP American Inn of Court Group 5 Presentation

2. Background • Patent litigation often involves complex technology.

3. The standard for claim construction is what one of ordinary skill in the art would understand a limitation to mean. Background

4. Judges often request a technology tutorial as part of claim construction. But they are not alone. Background

5. Decisions that must be addressed in creating and presenting a technology tutorial Panel discussion of experiences and preferences Handout of statistics Our Goal

6. Tutorial Decision Tree Live Live or Prerecorded Expert or Attorney Prerecorded Expert Slide or Animation Q&A or Narrative

7. Who is the intended audience? How long should the presentation be? How much does it cost? Where is the line between argument and objective tutorial? Additional Considerations

8. Tutorial Decision Tree Live Live or Prerecorded Expert or Attorney Prerecorded Expert Slide or Animation Q&A or Narrative

9. Often this decision is made by the Court If not, some considerations include: Prerecorded can be viewed as many times as the Court wishes may be less engaging will not be interactive Live interactive – can answer questions Live or Prerecorded Tutorial

10. Tutorial Decision Tree Live Live or Prerecorded Expert or Attorney Prerecorded Expert Slide or Animation Q&A or Narrative

11. Slide or animation Cost Slide presentation with voiceover relatively inexpensive Animation can be quite expensive if done professionally Time Slide presentation with voiceover relatively quick Animation can take some time to build and perfect Prerecorded Tutorial

12. Slide or animation Presentation Slide presentation with voiceover can be pretty dull Animation can be very engaging and instructive Prerecorded Tutorial

13. Tutorial Decision Tree Live Live or Prerecorded Expert or Attorney Prerecorded Expert Slide or Animation Q&A or Narrative

14. Some Courts require expert If not, some considerations include: Expert Can be more convincing and authoritative Better at answering questions from a technical perspective Attorney Can be better at avoiding pitfalls when answering questions Expert or Attorney Live Presentation

15. Tutorial Decision Tree Live Live or Prerecorded Expert or Attorney Prerecorded Expert Slide or Animation Q&A or Narrative

16. Generally should use narrative if the Court allows it Detriments to Q&A Breaks up flow of presentation Unnecessarily increases time Professors are often accustomed to presenting in narrative Expert Q&A or Narrative

17. Who is the intended audience? How long should the presentation be? How much does it cost? Where is the line between argument and objective tutorial? Additional Considerations

18. Who is the intended audience? Judge Judge’s clerk(s) Technical adviser Additional Considerations

19. How long should the presentation be? Appropriate level of detail for the audience Attention span Cost Length Animation Level of detail Additional Considerations

20. Where is the line between argument and objective tutorial? One instruction Courts generally give is to avoid argument in a tutorial How far away from advancing your proposed constructions is far enough can be very difficult to determine Quoting a specification passage that arguably contains an express definition Quoting a technical dictionary definition that supports your construction Additional Considerations

21. Panel Discussion And Finally . . .

22. Technology Tutorial Example Coalbed Methane Case Austin IP American Inn of Court Group 5 Presentation

23. DJ Patent Infringement Case involving oil field technology 108 Asserted Claims from five patents Patents all involve “coal bed methane degasification.” The extraction of coalbed methane involves a process known as hydraulic fracturing (aka "fracking"). Background

24. The ‘523 Patent

25. The ‘523 Patent

26. Accused Infringer’s construction is narrower than patentee’s The Term “Articulated Well Bore”

27. Accused Infringer Argument

28. Patentee Argument

29. Tutorial Section #1 (Intro Section) • Panel Question • Are these the types of topics that you generally like to see addressed by the tutorial? • Any likes / dislikes

30. Tutorial Section #2 (Articulated Well Bore) • Panel Questions • What did you think of this portion of the tutorial? • What did you think of the casual use of terms from the Accused Infringer’s proposed construction? • Was the use of graphics / animation effective?

31. Markman Order

32. Technology Tutorial Example LCD Technology Austin IP American Inn of Court Group 5 Presentation

33. Technology: methods for manufacturing LCD (Liquid Crystal Diode) technology using a novel method to inkjet print the RGB color filter LCD screens are constructed as a "sandwich" of color filter, liquid crystal, and electronics layered between two glass sheets LCD Tutorial - Background

34. The claims recited methods for depositing the various layers and constructing the completed sandwich LCD Tutorial – The Patent-at-Issue PM034

35. A key dispute was the meaning of "layer of transparent, conductive material atop said insulating layer" Patentee: the conductive layer and insulating layer must be separate and distinct Accused Infringer: these layers may blend at the boundaries LCD Tutorial – The Dispute PM035

36. Following is a portion of the Accused Infringer's tech tutorial LCD Tutorial PM036

37. How LCDs Work 1. Glass 2. Electronics 3. Liquid crystal 4. Conductive layer 5. Insulating layer 6. Color filter 7. Glass 2 5 4 6 7 1 3

38. One Embodiment of the Patented Method for LCD Fabrication

39. Patented Method for LCD Fabrication: Color Filter Side Insulating Layer Opaque Material Glass Sheet

40. Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material Insulating Layer Opaque Material Glass Sheet

41. INTERFACE ZONE Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material Insulating Layer Opaque Material Glass Sheet

42. Patented Method for LCD Fabrication: Color Filter Side Transparent Conductive Material Transparent Conductive Layer Insulating Layer Opaque Material Glass Sheet

43. LCD Tutorial – Panel Question • Did the plaintiff improperly advocate its "blended layers" claim construction? PM043

44. Would your answer change if you knew that: Sputtering to deposit conductive layers was well-known in the art, but not specifically disclosed or claimed in the patent? LCD Tutorial – Panel Question PM044

45. Would your answer change if you knew that: Although an accurate description of the science, the term "interface zone" appears nowhere in the patent? LCD Tutorial – Panel Question PM045

46. Technology: methods for manufacturing LCD (Liquid Crystal Diode) technology using a novel method to inkjet print the RGB color filter LCD screens are constructed as a "sandwich" of color filter, liquid crystal, and electronics layered between two glass sheets LCD Tutorial - Background

47. The claims recited methods for depositing the various layers and constructing the completed sandwich LCD Tutorial – The Patent-at-Issue PM047

48. A key dispute was the meaning of "layer of transparent, conductive material atop said insulating layer" Patentee: the conductive layer and insulating layer must be separate and distinct Accused Infringer: these layers may blend at the boundaries LCD Tutorial – The Dispute PM048

49. Following is a portion of the Accused Infringer's tech tutorial LCD Tutorial PM049

50. How LCDs Work 1. Glass 2. Electronics 3. Liquid crystal 4. Conductive layer 5. Insulating layer 6. Color filter 7. Glass 2 5 4 6 7 1 3