1. Sci.Ev. 2006-rjm Week 5 1 Today’s Agenda  Guest Speaker: Attorney Norm Beamer  The Ampex Litigation(s)-The INSIDE Story  Everyone  Teams? Talk for a few minutes today?  Reading Cases, Reading Daubert  Daubert for Patent Experts on the Technology in Suit  Next Week - no law students.

2. Sci.Ev. 2006-rjm Week 5 2 Questions for Norm BeamerNorm Beamer BS in Eng.Phys from Lehigh, mcl, pbk, etc. MS in Phys from Illinois MBA from Illinois, sie JD from U of M [ go blue, not bears ], mcl, LR Fish & Neave, now known as Ropes & Gray, since law school Tech Director~ of The Pear Avenue Theater Ask him about Reiffin v Microsoft!

3. Sci.Ev. 2006-rjm Week 5 3 Questions for Norm Beamer Jason: + How did you get away with all that leading? + Choosing the claim and the patents to litigate: evolution from Complaint to Trial? Henry: +Tutorial in technology v. What is specifically disputed + Wilmington Abandonment: The UNTOLD Story Adam: + Dealing with Distinguished Prior Art + Choosing an expert Ann Marie: + Organizing the Expert’s Testimony + Difficulties with M+F claims – for the expert, for judge and jury

4. Sci.Ev. 2006-rjm Week 5 4 Questions for Norm Beamer ROBERTA Keeping away from the patent v. waving it at every chance? Making the demonstrations and videos: who, how, when? Was Lemoine alive and available? Discuss why (not) to use the inventor as a witness (expert or fact)

5. Sci.Ev. 2006-rjm Week 5 5 Law Students Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Huang, Henry: ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Grad Students Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec Brown, ChrissyChem Barlian, AlvinMEJakartaPurdue England, JeremyPhys?MA and ?NHHarvard Finkelstein, IlyaChemSan Diego,CABerkeley Perlson, Lisa (abs 11/15) ChemPlainviewNYBarnard Zhang, AngelaImmunBeijingBerkeley Schuller, Jon (Aud) Now we are 4+8+1

6. Sci.Ev. 2006-rjm Week 5 6 Eltoukhy, Adam:EEPOSan Jose,CairoSanta Clara U Fan, Jason: EEAIBethesdaMDHarvard Amat, FernandoEEBarcelonaTechU of Catalonia Antoine, ChristopheEEVersaillesSupelec England, JeremyPhys?MA and ?NHHarvard Perlson, Lisa-abs11/15ChemPlainviewNYBarnard Schuller, Jon (Aud) AppPhys Huang, Henry:ChemPOLos AlamosHarvard Rosas, Ann Marie: ChemE AIPhoenixAriz.S.U. Barlian, AlvinMEJakartaPurdue Brown, ChrissyChem Alexandria,KY Kentucky Finkelstein, IlyaChemSan Diego,CABerkeley Zhang, AngelaImmunBeijingBerkeley Tentative Groups?

7. Sci.Ev. 2006-rjm Week 5 7 Looking at Patents – ISSUES THAT JUMP OFF THE PAGE 1.Your clients A and I bring you the Sorkin patent. 2.A-I Co. makes similar devices. 3. Competition from Sorkin is starting to hurt. A & I say: 4. We’d like to make something similar. 5. We haven’t really come up with a design, but we thought we’d have you look at the patent. 6. Do we have to worry about it (that is: is it VALID?) 7. If so, or if we should ALWAYS worry about patents, even invalid ones, in the hands of competitors, do you see any opportunities for a NON-INFRINGING alternative? 8. We’d like you to meet with our engineers, who are also studying this patent, as soon as you’ve had a chance to look at it. Henry first ponders: How can issues jump off the page, if you don’t have an accused device or the PH in front of you? Answer: It’s your job! Real people face this situation. How can such a thing happen?

8. Sci.Ev. 2006-rjm Week 5 8 Looking at Patents – Law Students Get a Turn ISSUES THAT JUMP OFF THE PAGE and some vocabulary lessons Jason – Sorkin Obviousness Adam – Sorkin Close PA ---> PH narrows claims Henry – Sorkin [How can issues jump off the page, if you don’t have an accused device or the PH in front of you?] Obviousness – Secondary Considerations Ann Marie – Sorkin Obviousness (narrow invention) Enablement re heat sealing, and the PHOSITA Prior Art Prosecution History Terms of Art CLAIMS

9. Sci.Ev. 2006-rjm Week 5 9 Christophe’s DAUBERT Summary (not forwarded) Short summary (to check I understood the case correctly): Daubert and Dow each have experts stating contradictory conclusions. Which expert should the court believe? The District court decided scientific evidence should be based on epidemiological evidence in this case. The Court of Appeals decided it needed published, peer-reviewed evidence. The Supreme Court has to determine what the proper standard for the admission of expert testimony is and suggests answering the following questions: a. Can the theory be tested? b. Is the theory subject to peer review and publication? c. What is the potential rate of error for the theory? Daubert argues that the Frye general acceptance test is outdated by the Federal rules of Evidence and the Supreme Court agrees.

10. Sci.Ev. 2006-rjm Week 5 10 Christophe’s Summary (not forwarded to the class) Lisa/Adam: Why not just give the court the journal articles? Angela/Adam: Why remand? Alvin/Adam: How to pick an expert? Xiling/Henry: Role of jury Christophe/Jason: Amici Ilya:/Ann Marie: Effect and power of dissents Jeremy/Ann Marie: Minority Views in Science Daubert RJM: ?Judicial Notice? FREvid 803(18) RJM: Credibility. The strategic value of excluding v. Letting the jury decide credibility

11. Sci.Ev. 2006-rjm Week 5 11 Why do you NOT move to exclude your average expert in a patent litigation? What can we learn from the cases where motions have been made and have succeeded? Daubert in Patent Cases

12. Sci.Ev. 2006-rjm Week 5 12 Jason – Daubert in Patent Cases -1 Expert testimony must "fit", by preponderance of evidence a. What does this mean? 1. Help jury decide factual questions necessary to the case 2. Rely on scientific expertise - Go beyond common knowledge, common sense, and common experience b. Where to watch out 1. Don't draw any legal conclusions, such as non- infringement 2. Stay within your own scientific expertise

13. Sci.Ev. 2006-rjm Week 5 13 Jason – Daubert in Patent Cases -1 1.Don't draw any legal conclusions, such as non-infringement While FED. R. EVID. 704(a) permits experts to express otherwise admissible opinions concerning an ultimate issue to be decided by a court, the rule "does not allow a witness to give legal conclusions." United States v. Izydore, 167 F.3d 213, 218 (5th Cir. 1999). Sorkin – page 12 of course materials (Daubert in Patent Cases)

14. Sci.Ev. 2006-rjm Week 5 14 Jason – Daubert in Patent Cases-2 c. Where to watch out 1. Support everything you say with references 2. Be especially careful when interpreting results of others 3. Preserve credibility: don't overreach

15. Sci.Ev. 2006-rjm Week 5 15 Adam – Daubert in Patent Cases Factors to Consider for Assessing Scientific Validity -General Acceptability -Peer Review and Publication -Rate of Error/Testability General Acceptability -Pretrial independent research -Objective support -Acceptance/Relevance of methodology employed -Recognized minority at the minimum Peer Review and Publication -Learned treatise -Reputable scientific journal -Clinical studies Rate of Error/Testability -Reliable results -Verifiable evidence -Valid scientific method Give a few concrete examples where a patent technology expert has to worry about one or more of these things. Name the legal issue. Explain the kind of testimony.

16. Sci.Ev. 2006-rjm Week 5 16 Henry – Daubert in Patent Cases -1 Slide 1: Key points from all cases 1. An expert's conclusions must be measured against accepted knowledge of the relevant scientific community. (Carnegie Mellon, p.4) 2. Experts must show that their methodology follows the scientific method as practiced by a "recognized minority" in their field, and does not reinterpret other scientists' data. (Carnegie Mellon, p.7=8) 3. Even highly qualified experts must cite specific, objective evidence supporting their opinions, such as papers or experiments. (Sorkin, p.12) 4. Experts can testify only about their areas of expertise, not about subjects that lay jurors could judge for themselves. (Pharmastem, p.14

17. Sci.Ev. 2006-rjm Week 5 17 Henry – Daubert in Patent Cases -2 Slide 2: Carnegie Mellon emphasizes the importance of the "scientific community" * The patentee's expert, Dr. Brown, testified about plasmids and enzyme activity. * The court excluded Brown's testimony because it contradicted accepted scientific knowledge, and reinterpreted other scientists' papers and data without a recognized methodology. * Specific problems with Brown's testimony: = Brown's conclusions contradicted two treatises and 16 published papers = The patentee's two other experts did not agree with Brown = Brown ignored results that did not support his theory and failed to explain alternative explanations for the data.

18. Sci.Ev. 2006-rjm Week 5 18 Henry – Daubert in Patent Cases -3 Slide 3: Sorkin shows that experts have to rely on more than their own credentials * The court agreed that the patentee's expert, Dr. Trejo, was a reputable engineer. * However, the court noted specific problems with his testimony: - Trejo cited "general literature" without naming specific sources - Trejo did not perform any experiments on the disputed devices - Trejo made unsupported assumptions about the "purpose" of devices

19. Sci.Ev. 2006-rjm Week 5 19 Henry – Daubert in Patent Cases -4 Slide 4: Pharmastem explains that experts can talk only about their fields * The expert, Dr. Hendrix, was a stem cell expert, but instead of testifying about stem cells, she discussed the defendant's marketing materials. * Even though Hendrix's observations were useful, they did not employ her expertise. The court said that a lay juror could judge the marketing materials.

20. Sci.Ev. 2006-rjm Week 5 20 Ann Marie – Daubert in Patent Cases -1 1.. Slide 1: Infringement Argument i. The alleged infringer and Sorkin both make caps used on tendons. Sorkin argues that the difference between these caps does not defeat a finding of literal infringement or infringement through the doctrine of equivalents.

21. Sci.Ev. 2006-rjm Week 5 21 Ann Marie – Daubert in Patent Cases -2 2.. Slide 2: Legal Opinions by Experts i. Under Rule 704(a), experts are not allowed to give legal conclusions but can give opinions concerning an ultimate issue to be decided by court. What is the difference?!

22. Sci.Ev. 2006-rjm Week 5 22 Ann Marie – Daubert in Patent Cases -2 Rule 704. OPINION ON ULTIMATE ISSUE (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact. (b) No expert witness testifying with respect to the mental state or condition of a defendant in a criminal case may state an opinion or inference as to whether the defendant did or did not have the mental state or condition constituting an element of the crime charged or of a defense thereto. Such ultimate issues are matters for the trier of fact alone. Let’s reformat this – as if it were a patent claim, perhaps, and we were writing a claim chart

23. Sci.Ev. 2006-rjm Week 5 23 Rule 704. OPINION ON ULTIMATE ISSUE (a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible because is not objectionable [on the grounds that] because it embraces an ultimate issue to be decided by the trier of fact. (b) No expert witness testifying with respect to the mental state or condition of a defendant in a criminal case may state an opinion or inference as to whether the defendant did or did not have the mental state or condition constituting an element of the crime charged or of a defense thereto. Such ultimate issues are matters for the trier of fact alone. X

24. Sci.Ev. 2006-rjm Week 5 24 Ann Marie – Daubert in Patent Cases -3 3.. Slide 3: Trejo Testimony i. Trejo does not - site references he used in forming his expert opinion, - explain his methods for analyzing the caps, or - conduct scientific testing and therefore [he] fails the Daubert test.

25. Sci.Ev. 2006-rjm Week 5 25 Ann Marie – Daubert in Patent Cases -4 4.. Slide 4: Literal Infringement i. There is no finding of literal infringement because the retaining member was located at 8mm inside the cap and Amsysco's cap retaining member is 1.25mm inside the cap.

26. Sci.Ev. 2006-rjm Week 5 26 Ann Marie – Daubert in Patent Cases - 5 5.. Slide 5: Doctrine of Equivalents Infringement i. Sorkin distinguished his patent from prior art by arguing that the location of the film in his cap is different from that of the prior art. He cannot now argue that a despite a difference in film location [does not defeat?] the caps equivalen[ce] and therefore [its being] infringing under the Doctrine of Equivalents.

27. Sci.Ev. 2006-rjm Week 5 27 Next Week Grad Students ONLY Instant Patent Law? Instant Civil Procedure/Jurisdiction (filing a complaint, motions for summary judgment, discovery, trial, appeal)? Daubert in Patent Cases (read?) Daubert in non-Patent Cases (discuss?)

28. Sci.Ev. 2006-rjm Week 5 28 Jason – Daubert in Patent Cases-2 c. Where to watch out 1. Support everything you say with references 2. Be especially careful when interpreting results of others 3. Preserve credibility: don't overreach