1. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 1 Today’s Agenda – 9/27/10 Housekeeping Show and Tell of Patented Items Questions from Last Week Scheduling the Simulations This Week Formatting a Claim Becoming familiar with a patent and its file history (and why) Reading a Case Timing – 5:20 break (10 minutes); 6:35 adjourn. Next Week: Optional: Instant Patent Law – what topic(s) or just as much of the can of worms as we can get through ?

2. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 2 Great Editors! I was out of town Tuesday-Sunday and have not yet had a chance to read your annotated How—works carefully. But at a fast skim, I was able to tell that there are some excellent editors in this group. I will announce the stopper-finder prize winner on 10/11 because the 10/4 class is optional. Please see me at the break: Shenghan, Keya, Will, Jane / Josh (Brett? Evan?)

3. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 3 Good Note Taker Needed Zubin won’t be here today and won’t be here next week. I need a volunteer notetaker to go over the slides with him and tell him what the slides don’t. That shouldn’t take more than a few minutes before or after class on 10/11. Li Tian won’t be here today either. Would a good notetaker be willing to talk to her next week before or after class?

4. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 4 Teams, etc. 6 law students: Darrell, Zac, Wyatt, Norm, Will, Jane. Last initials start with A through K. 8 science grad students: Zubin, Tosin, Keya, Daniel, Lieven, Miling, Shenghan, Zhou Last initials start with H, then O-Z. Weird. 4 science auditors Brett, Evan, Li, Josh. Last initials mostly at end of alphabet, too. Simulations: 3 Teams (assuming no dropouts) 2 with 2 lawyers, 2 experts, 1 tutorial expert 1 with 2 lawyers, 2 experts or a 4th team of 2 Ph.D. candidates who can be both lawyers and experts and/or use auditors for extra roles.

5. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 5 Who Are You? Questions about Course Description- cont’d Grad Students - Zubin: Explain the simulation format in more detail. Daniel: Is the goal for PhDs to teach us how to be experts or about the patent process? Shenghan: How much patent law reading will I need to do to follow the discussion? Do the experts in the simulation just answer questions, or do they argue? Is there a verdict? What do you mean by “balanced”? Can I venture out of my own field within Chem Eng for the simulation project?

6. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 6 Questions about last week Norm: validity v. enforceability Daniel: is this how law school is? Jane: law students’ questionnaire Shenghan: fence-sitting; the various meanings of “art”; infringement Miling: Rule 56? Posting date/time? Jing: Infringement; other countries? Will: ‘work-for-hire’

7. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 7 Why I need to know NOW how reliable and serious you are http://lawreg.stanford.edu/sta nford/prereg/CourseDetails.a sp?cClschedid=+24922 1 2

8. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 8 2009 - Sci.Ev. - rjm Week 01 8 Your Patented Objects If you brought the item, show it off. darrellwatch zacstapler wyatttea sac normliquid hand soap zubinultra jet duster willsteam master janekleenex box tosinchlorox container keyaboxer... danielgemini specs zivcrest toothpaste lipineapple slicer lievencolgate toothpaste shenghandandruff shampoo milinganimal waterer jinghair condit

9. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 9 If nobody volunteers... http://stanford.edu/~rjmorris/sciev.10/ASSIGN/0927.HTM Order of Comments on VNUS norm shenghan darrell jing [zubin] keya wyatt miling josh will zac lieven jane [li] jing Random Order 2 darrell norm jane evan lieven tosin wyatt will jing keya zac daniel shenghan josh miling brett Random Order 1 miling shenghan jane tosin josh wyatt lieven zac keya daniel brett will norm jing darrell evan cp Randomized by random.org/listsrandom.org/lists

10. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 10 Reformatting a Claim Li (also Wyatt, Zac and Will, and ~Jing) present [C] so you know you can discuss it as “applying energy... to create a thermal effect...”

11. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 11 2009 - Sci.Ev. - rjm Week 01 11 Reformatting a Patent Claim 2009 - Sci.Ev. - rjm 11 Week 01 We are also not at liberty to DELETE words when we reformat. Later, to facilitate discussion of particular aspects of the claim, we may shorten it. The reformatting will help us figure out what is ignorable. Deleting words when you first quote a claim would be wrong (and possibly dishonest); deleting words when you reformat a claim is wrong (and absolutely foolish). EVERY WORD must be there. Why?

12. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 12 Today’s Assignment - Looking at a Patent http://stanford.edu/~rjmorris/sciev.10/ASSIGN/0927.HTM http://www.stanford.edu/~rjmorri s/sciev.10/DOCS/7406970.PDF not in the Hologic Patent

13. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 13 5,913,813 COVER SHEET issue date filing date prior art This patent expires on Jul. 24, 2017 It did not go into effect until Jun. 22, 1999. class Assignee: Not Hologic?

14. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 14 Today’s Assignment - Looking at a File History http://stanford.edu/~rjmorris/sciev.10/ASSIGN/0927.HTM

15. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 15 Today’s Assignment - Looking at a Case; Looking at Another Student’s Work http://stanford.edu/~rjmorris/sciev.10/ASSIGN/0927.HTM

16. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 16 But also (and always) remember, in a variation on famous words from 1992: IT’S THE _______ STUPID. 2009 - Sci.Ev. - rjm Week 01 16 Reading a Patent 2009 - Sci.Ev. - rjm 16 Week 01 CLAIM

17. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 17 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

18. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 18 Next Week Claim Interpretation and File Histories. As you look at a patent and its history, think about: - ideas for design arounds and noninfringement arguments - ideas for invalidity arguments - questions for which experts would be needed

19. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 19 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

20. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 20 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 ________ Because we have 2 toothpaste patents, let’s use them for NEW and OLD. Do they have to CLAIM similar things, or not?

21. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 21 2009 - Sci.Ev. - rjm Week 01 21 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

22. 09/27/10 RJM - Sci Ev Seminar - Fall 2010 22 2009 - Sci.Ev. - rjm Week 01 22 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