IP: Scientific Evidence in Patent Litigation Week 8

1. IP: Scientific Evidence in Patent Litigation Week 8 Remaining Questions/Subjects not covered Quick Survey about your Simulations What LOTS of past judges mention Next Week’s Schedule What to do by Sunday midnight RJM - IP: Sci Ev in Pat Lit - Winter 2012

2. Comments from Last Week Eye contact, confidence, personal bits (OK, ahhh, hand in pocket, self-deprecation) What do each of you remember from last week that you’re willing to tell your colleagues?! RJM - IP: Sci Ev in Pat Lit - Winter 2012

3. Some Old Questions – Week 6 (Bucksbaum) T: Do experts attend each other’s depositions? Yes. J: Benefit to PO of broad claim construction, even if PO loses this case? Sure, if there are other infringers out there. Downside: INVALIDITY. N: “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? AL: 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, etc. RJM - IP: Sci Ev in Pat Lit - Winter 2012

4. Some Old Questions – Week 6 (Bucksbaum) D: What is “impeachment”? You’re a liar. AB: Why NOT submit extrinsic evidence? Strategy. Implies weakness of argument based only on intrinsic, perhaps. Money: it costs extra (getting expert testimony, reading all those dictionaries…) Law – now: Fed Cir has dissed it. AB: Confusion over what’s in evidence/not: common? 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 - Winter 2012

5. 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 (subjective: turns on the inventor’s state of mind. What kind of evidence would be introduced?) Invalidity (102(g) under the old statute) Proving the DATE OF INVENTION(priority) Conception Reduction to Practice Diligence Corroboration RJM - IP: Sci Ev in Pat Lit - Winter 2012

6. 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 - Winter 2012

7. Catch-Up – Law and Fact (and Equity) NB: All statute numbers are pre-AIA . Some have changed, with various effective dates. Rev of 2/2, 2/9 PPTX • FACT • 101 Lack of Utility • 102a Anticipation • 102g Diligence • 102g Corroboration • 103 Analogous Art • 103 Secondary Considerations • 112P2 Best Mode • 112P1 Written Descrip. • R56 Intent (Ineq. Cond.) • R56 Materiality (Ineq. Cond.) • 271 Infringe. – literal • 271 Infringe.– DOE • Exceptional Case • - Patent Exhaustion LAW 101 Patentable Subject Matter 102b Experimental/Public Use 102b On Sale 102g Priority of Invention 102g Conception 102g Reduc. to Prac. 103 Obviousness 112P1 Enablement 112P2 Indefiniteness [101, 102, 103,112,271] Claim Construction - Implied license • EQUITY • R56 Ineq. Conduct • 283 Injunction • 284 Multiple Damages • 285 Award of atty fees • Patent Misuse • Laches • Estoppel (re delay in suing) Compiled first in the 1990s, then made into a slide for Adv Pat Seminar 11/15/05, updated for SciEv Seminar 9/5/07 and updated again for SciEv 2012. See also pdf pages 31-33 of my amicus brief in Microsoft v. i4i. -rjm RJM - IP: Sci Ev in Pat Lit - Winter 2012

8. Patent Issues that Scientific Experts Don’t Have to Care About – Usually -2 Infringement (Other Defenses) Implied License (except REMEMBER: Not on the substance of the patent but affect LIABILITY Laches and Estoppel “Prosecution Laches” (dead for non-submarines?) DAMAGES It’s the claim, stupid. RJM - IP: Sci Ev in Pat Lit - Winter 2012

9. What Judges Will Mention (RJM’s formulation) -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 one, state your topic sentence: Saying “I will know explain the blutz” is OK! RJM - IP: Sci Ev in Pat Lit - Winter 2012

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 Dr. X, you’ve told us about the giraffe. What other parts of the device does it interact with? A. Only the anaconda. Same narrative as Q1. Improve this question! RJM - IP: Sci Ev in Pat Lit - Winter 2012

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 not so much 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! • On 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 - Winter 2012

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? How welldesigned is it for quick reading? RJM - IP: Sci Ev in Pat Lit - Winter 2012

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 AP class… What about “bandwidth”? [Dave re Sam]) L 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 whatsis, right?” A. That’s right. SURE that Q is leading. But as long as Lawyer is repeating what Expert said, nobody will object. RJM - IP: Sci Ev in Pat Lit - Winter 2012

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. (Do we need a laser pointer? ) Often, that is helpful: you engage with the judges better when you are up and you revive yourself by moving around. RJM - IP: Sci Ev in Pat Lit - Winter 2012

15. By Sunday 3/4/12 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 - Winter 2012

16. Next Week Volunteers needed to help with set-up. Come by about ½ hour before start time. Room 95. Volunteers also needed to stay at the end and help clean up – and take home leftovers. Critique Assignments: What to do and about whom will be posted over the weekend. RJM - IP: Sci Ev in Pat Lit - Winter 2012

17. Next Week Wednesday 7:30. Introductions and ground rules. ~7:45-8:45: STCK. 8:45-9? 9:15? Comments by judges. Then until ~10: Refreshments and networking. Thursday. 5:30. Introductions and ground rules. ~5:45-6:45: JAC’D. 6:45-7?7:15? Comments by judges Then until 7:45: Refreshments and networking. 7:45. Introductions and ground rules. ~8-9: PAWN 9-9:15?9:30? Comments by judges. Then until ~10: Refreshments and networking. RJM - IP: Sci Ev in Pat Lit - Winter 2012

18. Next Week RJM - IP: Sci Ev in Pat Lit - Winter 2012