Today's Agenda

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 team RJM - IP: Sci Ev in Pat Lit - Spring 2013

2. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

3. Some Questions from 2012 What is impeachment ? "Witness, you lie!" Why NOT submit extrinsicevidence for claim construction? Strategy: Could imply weakness of intrinsic evidence Money: Expert testimony/declaration; find/read dictionaries, etc. Law: Fed Cir dissedit 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? RJM - IP: Sci Ev in Pat Lit - Spring 2013

4. Your Questions? Hello? RJM - IP: Sci Ev in Pat Lit - Spring 2013

5. 2 x 2 MatrixDirect and Cross, Asking and Answering RJM - IP: Sci Ev in Pat Lit - Spring 2013

6. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

7. 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!) RJM - IP: Sci Ev in Pat Lit - Spring 2013

8. 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... RJM - IP: Sci Ev in Pat Lit - Spring 2013

9. What Judges Will Mention If You Forget-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! RJM - IP: Sci Ev in Pat Lit - Spring 2013

10. 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. Does it interact with anything in that picture? A. Only the anaconda. Same narrative as Q1. Assumes fact not in evidence: that they DO work together! Improve these questions! RJM - IP: Sci Ev in Pat Lit - Spring 2013

11. 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! RJM - IP: Sci Ev in Pat Lit - Spring 2013

12. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

13. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

14. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

15. 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)) RJM - IP: Sci Ev in Pat Lit - Spring 2013

16. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

17. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

18. Introductory Slides/Commentary 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 slides RJM - IP: Sci Ev in Pat Lit - Spring 2013

19. SIMULATIONS – The Issue The issue as to which the experts will testifywas 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 RJM The whole team worked together on Q&As and areas for cross-examination. They chose sides only at the end. RJM - IP: Sci Ev in Pat Lit - Spring 2013

20. 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.) RJM - IP: Sci Ev in Pat Lit - Spring 2013

21. 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 simulation RJM - IP: Sci Ev in Pat Lit - Spring 2013

22. SIMULATIONS – Another NOT Time limits also mean, the simulation is NOT of a jurytrial The students have prepared their presentation as if for a bench trial before a judge like you intelligent * interested * patent-savvy who has chosen to hold a single evidentiary hearing on both claim construction and summary judgment. RJM - IP: Sci Ev in Pat Lit - Spring 2013

23. SIMULATIONS – More NOs • Therefore: • NO objections (except that judges may sustain an objection they wish they'd heard) • NO credentialing of experts • NO offering of exhibits into evidence • NO other realities of the courtroom matters that would cut into the time available for substance • NO outsiders: the witnesses are students, too • NO winner – or there shouldn’t be • NO interruptions by the judges (if possible) RJM - IP: Sci Ev in Pat Lit - Spring 2013

24. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

25. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

26. SIMULATIONS – 5/29/13 at 7 Inventor: Higuchi. 5,994,056. "Homgenous Methods for Nucleic Acid Amplification." Issued Nov. 30, 1999. Issue: Infringement Cast 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.] RJM - IP: Sci Ev in Pat Lit - Spring 2013

27. 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: Infringement Cast 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 (5th time + seminar alum) Cox (1st time + seminar alum) Noh (3rd time, MI alum) RJM - IP: Sci Ev in Pat Lit - Spring 2013

28. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013

29. 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. RJM - IP: Sci Ev in Pat Lit - Spring 2013