Today’s Agenda – 10/11/10

1. Today’s Agenda – 10/11/10 • Housekeeping • Simulations • Teams • Patent Explorations • Finishing up – 9/27 slide, VNUS file history, file histories in general, • BREAK at ~5:20 • KSR – 40 minutes • Tyco – 20 minutes RJM - Sci Ev Seminar - Fall 2010

2. Housekeeping On 9/27 one slide said “Good Note Taker Needed.” Zubin was excused from class that day and he has the slides, of course, but if someone can tell him what else happened, both of you will benefit! The list scievseminar10@lists.stanford.edu should be active soon. The award for stoppers will be announced later this week. Check out the directory EML_Q_A on the course website when you start an assignment. How many people think they might attend a day or so of trial in Tyco v. biolitec? (link to Judge Chesney’s calendar; amd see Docket and Pretrial Order (Dkt 081) on http://www.stanford.edu/~rjmorris/sciev.10/DOCS) RJM - Sci Ev Seminar - Fall 2010

3. Teams Week of 11/15 11/15 M, 5 to 8:30, second team starting at ~7, and either 11/16 T, 6:30 to 8, or 11/17 W, 7:30 to 9* ??Biology?? Norm, Jane Josh, Miling Physics? Wyatt, Will Dan, Jing Miscellaneous?? Zac, ?Zubin? Li, Lieven 11/29, Monday, 6 to 7:30? later? EE: Darrell, Keya Tosin, Shenghan Not necessarily in this order. *Wyatt: see me RJM - Sci Ev Seminar - Fall 2010

4. Attending/Critiquing • Everyone must attend all the simulations. • (Lieven excepted, by pre-arrangement, and he will be providing written comments on the powerpoints of the team he will miss.) • Everyone must critique someone with the same status (lawyer or expert) in another team. • Ordinarily I make the assignments in round-robin fashion: the first team criticizes the second, the last team criticizes the first. • If you anticipate a problem with this order, please let me know. RJM - Sci Ev Seminar - Fall 2010

5. Possible Patents (list randomized by random.org/lists) josh shenghan [5154963: discuss abandoned applications and term extensions] jing miling zubin dan li tosin lieven keya Ask your lawyers to check LEXIS for litigation (LIT-REEX field in the patent, and also search the patent number in judicial opinions, too) RJM - Sci Ev Seminar - Fall 2010

6. Shenghan’s Complicated Patent When does/did this patent expire? stanford.edu/~rjmorris/sciev.10/DOCS/TERMCALC.DOC RJM - Sci Ev Seminar - Fall 2010

7. Shenghan’s Complicated Patent CIP of 1984 665,343= 4,621,006 CIP of 1986 890,632 Divof 1988 148,592 = 4,853,065 CIP of 1989 336,893 = 5,021,282 none of the later 3 claim priority from 1984? In fact, the 1988 patent is a CIP of the 1986 CIP of the 1984 app. The 1989 is a division of the 1988 CIP of the 1986 CIP of the 1984 app. RJM - Sci Ev Seminar - Fall 2010

8. Shenghan’s Complicated Patent • app 591,932 = 5,154,963 • CIP of 1984 665,343 = 4,621,006 • CIP of 1986 890,632 abandoned • Div of 1988 148,592 = 4,853,065 • CIP of 1989 336,893 = 5,021,282 • none of the later 3 claim priority from 1984? • In fact, the 1988 patent is a CIP of the 1986 CIP of the 1984 app. • The 1989 is a division of the 1988 CIP of the 1986 CIP of the 1984 app. CIP 1984 1988 1986 CIP Div 1989 CIP 1990 RJM - Sci Ev Seminar - Fall 2010

9. From 9/27: Major Issues of Liability in Patent Law • Validity • Infringement The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES RJM - Sci Ev Seminar - Fall 2010

10. Major Issues of Liability in Patent Law How do BOP and QOP affect the litigators and scientific experts? WHAT IS THE QOP? WHO HAS THE BOP? Did we spend much (any) time on this slide on 9/27? It was in the ppt. MILING commented on acronyms that are on slides but not spelled out in writing. Let’s address that now. C&C AI Validity Infringement PO Preponderance Week 01 10 2009 - Sci.Ev. - rjm RJM - Sci Ev Seminar - Fall 2010

11. Major Issues of Liability in Patent Law How do BOP and QOP affect the litigators and scientific experts? Burden of Proof (sometimes divided into Burden of Going Forward and Burden of Persuasion) Quantum of Proof (sometimes called Standard of Proof) • There are 3 quanta of proof used in US jurisprudence: • preponderance of the evidence (=50%+ε) • clear and convincing (“C&C”) evidence = >50% <99% ?~70% • beyond a reasonable doubt (criminal law only; maybe = 99%) The BOP is on the party who affirmatively must prove that a particular issue favors its side. In infringement litigation, I designate the parties - PO (patent owner) and - AI (accused infringer). In a prosecution case (appeal from action of the PTO), I designate the parties - PA (patent applicant) or Appl, and - PTO a Ex’r (examiner). RJM - Sci Ev Seminar - Fall 2010

12. Major Issues of Liability in Patent Law How do BOP and QOP affect the litigators and scientific experts? WHAT IS THE QOP? WHO HAS THE BOP? C&C AI Validity Infringement PO Preponderance Week 01 12 2009 - Sci.Ev. - rjm RJM - Sci Ev Seminar - Fall 2010

13. Why did the applicants add claims when their claims were all rejected? Discuss merits of rejection, prior art, responses. VNUS File History RJM - Sci Ev Seminar - Fall 2010

14. What happened? We’ll go around the room, starting with the earliest event. Top issues for discussion: value and utility of prior patents KSR RJM - Sci Ev Seminar - Fall 2010

15. Law students will tell us what we need to know about the case – and about what the parties had to do beforehand. First, general jumpers, then tell us about your assigned pages. Wyatt - cover, contents and pages 1-2Darrell - pages 7-11 (up to stipulated fact 59)Zac - Factual Issues Remaining, items 1 through 32 (pages 17-19)Will - Factual Issues Remaining, items 33 through 47 (pages 19 to 21)Norm - Expert Witnesses listed at various places on pages 18-36Jane - Fact Witnesses listed at various places on pages 24-37 Tyco – Joint Pretrial Statement and Addenda RJM - Sci Ev Seminar - Fall 2010

16. 35 USC § 282, third ¶: “In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of - the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United States Claims Court [United States Court of Federal Claims],as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires. ...” Pre-trial Notices in Patent Cases Who asserts those things? What does the list remind you of? What happens if you omit something from the notice? RJM - Sci Ev Seminar - Fall 2010

17. P-I-S v P.A. Q.When do you look at the CLAIMS? A. When the patent is ________ . Q. When can you IGNORE the claims? A. When the patent is ________. RJM - Sci Ev Seminar - Fall 2010

18. If nobody volunteers... Order of Comments on VNUS norm shenghan darrell jing [zubin] keya wyatt miling josh will zac lieven jane [li] jing Random Order 1 miling shenghan jane tosin josh wyatt lieven zac keya daniel will norm jing darrell evan cp Random Order 2 darrell norm jane evan lieven tosin wyatt will jing keya zac daniel shenghan josh miling http://stanford.edu/~rjmorris/sciev.10/ASSIGN/0927.HTM Randomized by random.org/lists RJM - Sci Ev Seminar - Fall 2010