1. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 / GENETICS 243 Prof. Roberta J. Morris Room 218 Crown Quad 723-9505 rjmorris@stanford.edu On the web: http://www.stanford.edu/~rjmorris/sciev.12/ and Not yet but soon: Email Group sciev.12@lists.stanford.edusciev.12@lists.stanford.edu

2. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 2 Today’s Agenda Who We Are What We Will Do in this Seminar Your Comments on the Course Description How the Seminar Will Work Begin Review of / Introduction to Patent Law: P!=C!=T; WHAT IS A PATENT (CONCRETE). 5:25 Break 5:40 Present your patents and comments 6:30 Adjourn Next Week: A litigated patent: NOT one of the patents in suit in KSEA v. Stryker (alas) but …

3. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 3 Who Are You? - 1 Seating – Different every week for the first few weeks. Today: Guess the ordering principal. Guess the color codes. Handout - Student List 6 law students (with or currently pursuing advanced science degrees), 6 science Ph.D. candidates, 2 auditors (1 post-doc, 1 pre-doc) Axess : Bring any problems to my attention. I don’t check it myself until the end of the quarter.

4. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 4 Seating Order – And a Few Preliminary Questions Tim Waqas Amy Nicolaj Amanda Chris Patrick Sam Kevin --- Kanupriya Dave Jamie Ram Corinne Before you did the first assignment, had you ever noticed patent numbers on objects and packaging? looked atWas this the first patent you ever really looked at? Since college, how many classes have you taken that had less than 15 students? How many in law school? Did you take calculus in high school? Have you ever seen The Visual Display of Quantitative Information?The Visual Display of Quantitative Information

5. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 5 Who Are You? - 2 Introduce Yourselves Whose side are you on: PO or AI? What should we know about you that is not on the handout, but/and o is on your resume? o is not on your resume?

6. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 6 Who Are You? Questions about Course Description - 1 {alphabetical by last names; then grouped by topic} Why Patent Cases (and their Scientific Experts) Are/Not Different Nicolaj: I must say that it is not my experience from patent cases that “the parties generally agree in the science”. On the contrary the science is very often disputed and each party will bring their own expert to testify on the science. Very often these testimonies describes the science in very different terms. For instance, in my last case the two professors of chemistry had a completely different opinion on whether or not calcium carbonate has a CH at 20 C above 60%. Waqas: I don't understand how the science is agreed upon in patent cases versus other areas of law where you say that it might not be agreed upon? Ram: I do not understand the part in the course details where you had written “the parties generally agree on the science”. All these days I thought the patent infringer thinks they have done something different in science and so it does not infringe the patent.

7. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 7 Who Are You? Questions about Course Description - 2 *DRAFTING* Patent Applications (specification and claims) Dave: How much does defending a patent (and playing expert witness) have in common with preparing one? Kanupriya: “they also must help the litigators to choose which legal issues to press and which to concede, and to be aware of how the complications of the science might help, hurt, obscure or reveal how the law should be applied to the facts”: This part seems very interesting to me. There might be subtle details in a patent which may also be interpretation based (however succinct scientific language may be, there are always some open ends to it), and which may thus become points of contention. … Interdisciplinary Thinking Sam: One issue I’m wondering about is how law students approach science and technical issues. As a scientist, I’ve worked in groups with MBA students before and found that there can be both tension between disciplines and also fruitful learning on both sides… Patrick: I liked the discussion about how the lawyer and the expert both have to help each other.

8. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 8 Who Are You? Questions about Course Description- 3 The Simulations Amanda: From a logistical standpoint, I would be curious to know if we will be interviewing experts or if we will “act” as the experts for each other in the simulations. Corinne: How are teams chosen? How many people are on a team? What types of written assignments are there? What fields of study will the Ph.D students specialize in? Jamie: How are the teams divided between law students and students pursuing other degrees? Does each law student get to work with at least one grad student with experience in the sciences or engineering? Amy: I think exercises where one can learn from experience are most beneficial to understanding as a whole and what each individual’s roles and responsibilities are. I think that the final projects would be very instructive in that respect, something similar to learning by doing. I participated in the SGSI ‘d.School: Intro into Design Thinking’ course this past summer … Tim : Will the simulations be directed to only one issue, such as invalidity or infringement? Or will the simulations cover every use of scientific evidence? Kevin: I am looking forward to the final simulations, they sound like they will be a lot of fun.

9. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 9 Today’s Assignment - 1Assignment

10. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 10 Today’s Assignment - 2Assignment

11. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 11 2009 - Sci.Ev. - rjm Week 01 11 Do A work and receive a recommendation and networking help any time, for life. See draft of How the Seminar Will WorkHow the Seminar Will Work Weekly Assignments and Comments and final project Critiques: What You Will Do in this Seminar -3

12. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 12 NO required. Better Late. thanLate That’s Never? Better Never What You Will Do in this Seminar -4

13. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 13 Schedule/Syllabus – short form of assignmentsSchedule/Syllabus Only *9* Thursdays in the law school's quarter Attend a trial in San Francisco (KSEA v Stryker) with real live examination and cross-examination of an expert – OPTIONAL Simulations Every week: ~ 5:20: Snack (healthy or not, or both?) Never late. That’s required. Weekly Assignments and Comments Critiquing of other students’ simulations What You Will Do in this Seminar -5

14. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 14 How the Seminar Will Work; also Deadlines 1.How... is posted on the website 2.Deadlines My posting the next week’s assignment? By the Friday before the due date, by 6 pm. Your assignment? Tuesday at 11:59 pm*. Your comment? Thursday at 10 am. Critiques? 3/16 at 11:59 pm * Remember: LATE WORK IS NOT ACCEPTED.

15. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 15 ConceptPatentCopyrightTrademark CoverageInventions (Machines, Things, Processes, Mole-cules, etc.) Creative Expression (Words, Art, Video, Audio) Commercial Identity Stuff (Logos, names, slogans, product appearance,etc.) Agency associated with obtaining it Patent & Trademark Office (Part of the Dept of Commerce) Copyright Office (Part of the Library of CONGRESS) Patent & Trademark Office (Part of the Dept of Commerce) Verb associated with obtaining it APPLYREGISTERAPPLY Can Agency REJECT? YESNot oftenYES When does protection START From ISSUANCEFrom CREATIONFrom use or registration When does protection STOP 20 years from date of filing of application, MOSTLY Life of author + 70 years to the next 12/31, USUALLY Never, MOSTLY PTO Patents != Copyright != Trademarks

16. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 16 Throughout the term, I will use the snowflake to indicate anything that is true, more or less, could be VERY complicated if you went into it deeply, and might melt if you touch it. FEEL FREE TO ASK AFTER CLASS ABOUT SNOWFLAKES (the words they accompany on the slides, or the makeaflake website)makeaflake SUBSTANTIVE LAW

17. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 17 Week 01 17 2009 - Sci.Ev. - rjm FEEL FREE TO INTERRUPT ABOUT AS WELL AS ABOUT I use the Mona Lisa to indicate TERMS OF ART. Use such terms carefully. They don’t always mean what you think they mean. Anyone who DOES know what they mean may misunderstand you if you misuse them. TERMS OF ART

18. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 18 Introduction/ Review of patent law On Tuesday, 1/10/12  the PTO issued 5,292 patents : 4840 utility patents starting with 8,091,144 PLUS 32 reissues (35 USC 251+) [RE+5digits], 10 plant patents (35 USC 161+) [PP+5digits] 410 design patents(35 USC 171+) [D+6digits] On 9/14/10: 4382+50+16+450 (4898 total) On 9/22/09: 3242+ 4+32+450 (3729 total) On 9/17/08: 1989+12+35+400 (2435 total). On 9/18/07: 2992+12+35+499 (3540 total). In 2011, ~225,777 utility patents were issued. [Arithmetic by RJM from hits on uspto search site.] In 2010, 220,719 In 2009, 167,349 In 2008, 157,772 *** In 1963, 45,679 Source for earlier years: h ttp://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm ttp://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm * Patents are issued once a week on Tuesdays. 219,614

19. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 19 The AIA On 9/16/11 an overhaul of the patent statute, the American Invents Act (AIA) was signed into law. Why can we ignore it in this class? Hints: What kind of patents do we deal with? What are the issues about which scientific experts testify?

20. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 20 2009 - Sci.Ev. - rjm Week 01 20 Reading a Patent Why choose a patent whose number appears on something you can buy? Why choose a patent whose number is more than 5,000,000? (Design patents, Reissue patents) How do you read a patent? Always ask: “Who wants to know?” PO, PAppl, AI, VC their commonalities, differences and priorities

21. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 21 Tim Lau’s Patent 5,313,705 - COVER SHEET issue date Earliest US Filing Date prior art This patent expires May 13, 2011 NOT on May 13, 2011 May 24. 2011 but on May 24. 2011. It did not go into effect until May 24. 1994. class Applicaton Date (of appl. that issued as this patent)

22. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 22 To calculate the expiration of a patent, you need to know these dates. Then consult DOCS/TERMCALC.DOC on the course website (or read the statute).DOCS/TERMCALC.DOC The calculated date is not your final answer, however. You must also consider - nonpayment of maintenance fees - extensions due to delays by the government. But there’s good news! This is just FYI. The patents you use for simulations will be assumd to be in full force and effect at all relevant times…

23. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 23 But also (and always) remember, in a variation on famous words from 1992: IT’S THE _______ STUPID. 2009 - Sci.Ev. - rjm Week 01 23 Reading a Patent 2009 - Sci.Ev. - rjm 23 Week 01 CLAIM

24. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 24 End of class Rest will be for next week.

25. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 25 2009 - Sci.Ev. - rjm Week 01 25 Reading a Patent – Who asked you to? AI –to design around it to avoid infringement –to challenge validity or enforceability PAppl – –to see if you need to disclose (and claim around) –to see if you should buy/license it M&A – to evaluate an asset PO – to evaluate whether you can sue within the bounds of Rule 11 Why? AVOID inequitable conduct COMPLY with Rule 56 and your duty of candor Obtain a solid patent

26. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 26 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

27. But first: some abbreviations used on the next slide. AI: Accused Infringer PO: Patent Owner BOP: burden of proof QOP: quantum of proof The Different Quanta of Proof Prep: Preponderance of the Evidence = 50%+Є C&C: Clear and Convincing Evidence = ~70%?? BARD: [evidence] beyond a reasonable doubt =99.99%? 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 27 2009 - Sci.Ev. - rjm Week 01 27 Major Issues of Liability in Patent Law

28. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 28 2009 - Sci.Ev. - rjm Week 01 28 Validity Infringement AI Preponderance C&C PO WHO HAS THE BOP? WHAT IS THE QOP? How do BOP and QOP affect the litigators and scientific experts? Major Issues of Liability in Patent Law

29. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 29 P-I-S v P.A. Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent on accused device = NEW Is the New patent valid over the Old patent? Is the Old patent infringed by someone practicing the New patent? New PatentLook at New's CLAIMSLook at New's SPECIFICATION (to see what people do who would PRACTICE New’s invention) Old PatentLook at Old's SPECIFICATION (to see what it "teaches") Look at Old's CLAIMS Q.When do you look at the CLAIMS? A.When the patent is ________

30. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 30 2009 - Sci.Ev. - rjm Week 01 30 Your Patented Objects -1 If you brought the item, show it off. Discuss your guess or surprise. Discuss what you gained from looking at someone else’s submission.

31. 01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 31 Next Week Claim Interpretation and File Histories. As you look at a patent, especially its claim 1 and its history, think about: - ideas for design arounds and noninfringement arguments - ideas for invalidity arguments - any questions for which YOU need/would be an expert