IP: Scientific Evidence in Patent Litigation Week 4

IP: Scientific Evidence in Patent Litigation Week 4 OPEN SEATING TODAY! The first third of the quarter is over. We have now begun the middle third. After tomorrow, we have 4 more weeks of regular classes and then The Simulations. Time to lobby your legislative representatives to make it illegal to run universities on the quarter system? (Just kidding. Sort of.) RJM - IP: Sci Ev in Pat Lit - Winter 2012

Seating Order – Previous Weeks Week 3 –being where you weren’t Week 2 – BSC v. Cordis - columns Corinne Dave Sam Amy Week 1 – Ordinary Patents + comments Kanu Kevin Sam Patrick Chris Ram Tim Jamie Amanda Patrick Nicolaj Tim Waqas Ram Amanda Nicolaj Amy Waqas Tim Dave Jamie Corinne Ram Kevin Jamie Chris Amanda Whiteboard Chris Corinne Kevin Dave Amy Sam Patrick Nicolaj Waqas DOOR RJM RJM RJM RJM - IP: Sci Ev in Pat Lit - Winter 2012

Today’s Agenda The Simulations are At Hand During the break (5:20), look through the potential patents with your teammates. Acer v. TPL – the claim construction hearing. what you learned, what you wondered beforehand Catch-up Questions (selected) KSR – when patents are invalid for obviousness What word belongs there? Next week: Infringement – literal and under the Doctrine of Equivalents Remind me, if I forget. No matter what we’re doing at 6, we’ll start KSR Break ~5:20 RJM - IP: Sci Ev in Pat Lit - Winter 2012

Simulations – Three Teams, Two Nights Simulations will be on: Wednesday, 3/7/12, 7:30 to 9:30 (one team) Thursday, 3/8/12, 5:30 to 10 (two teams) Everyone must attend all the simulations. Everyone must critique the other two teams generally, and one person in one of the other teams specifically. Critiques will be due on Thursday, 3/15 at 11:59 pm*. Amy’s Questions were about the simulation (as were several others’). Do them now? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Simulations – Three Teams, Two Nights Each team can rank its preferences for the 3 slots. Your position on this slide does not – or does not have to – mean the teams will go in that order. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Simulations – Three Teams Teams get 15 minutes x # of teammembers. 4-person teams get 60 minutes. I set aside 2 hours, however, because of set-up, introductions, judges’ comments, and networking/refreshments. COLLABORATION IS THE KEY Teams will create the powerpoint(aka ‘demonstrative’) collaboratively. Teams will create the Qs collaboratively the As collaboratively and an outline of cross-examination collaboratively. Teams will chooseclients (PO or AI) no earlier than 3/2. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Continuations, Etc. File Application Receive Office Action Restriction Requirement: Elect Claims, File Divisional (maybe petition for review of Restriction?) Rejection: Amend/Argue or Abandon File Amendment (the aquiescence to the Restric is also an Amendment?) Receive Final Rejection Course of action Petition to file Amendment after Final Appeal Abandon File a CONTINUATION (before the expiration of the time to respond) and then file a Preliminary Amendment to avoid a Final Rejection in the first office action) RJM - IP: Sci Ev in Pat Lit - Winter 2012

Field Trip Amanda Chris Jamie Nicolaj* and Tim Please ask those who attended both days some incisive questions about the experience 2. What did Amanda Jamie and Nicolaj miss by missing the second day? Th Fri Amanda Y N Amy Y Y Chris N N Corinne Y* Y Dave Y* Y* Jamie Y N Kevin Y* Y* Nicolaj Y N Patrick Y Y Ram Y Y Sam Y Y Tim NYN Waqas Y Y Roberta Y Y Van users 9 7 1.What did Chris and Tim miss by missing both days? Amy Corinne* Dave Kevin* Patrick Ram Sam Waqas * Your catch-up questions involved the field trip. Let’s get to them next. * means does not need a ride. RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS What limits your (yes, I’m talking to YOU, today, sitting in this classroom) ability to answer the question “Which approach is better”? In the hearings last week, did you get the feeling that Judge Ware knew about the accused device? How did he know whatever he knew? RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS Judge Ware said that the claims should be construed as the examiner would have understood them without regard to the accused device because the accused device did not exist at the time the patent issued. But then, neither did the lawsuit. And neither did any dispute about what the claim language meant. $64,000 Question: How does a disputed claim term come to be disputed? Put another way, how do you the lawyers and experts –decide what to dispute in the claim(s)? RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS And see Corinne’s Questions. In this, as in many a discussion about patent law, you can improve your analysis by abandoning abstract words (objective, e.g.) and coming up with a concrete example. Corollary: anyone who speaks without giving a concrete example may not have thought the matter through very well. RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS Kevin writes: Without the benefit of experience I prefer Judge Ware’s approach, because it allows him to approach a plain meaning [understanding] of the claim terms without the outside influence of the technology being disputed. I am sympathetic to the Morris position, because I have had an exceedingly difficult time interpreting what these claims might actually relate to. Nonetheless, Judge Ware’s position is the preferred stance assuming he can interpret the claims without relying on the accused device as a crutch. RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS Waqaswrites: Given Judge Ware’s non technical background, his approach can only suggest that the actual device and real world knowledge doesn’t matter to him in understanding the claims and how technical words are construed. He is only going to rely on the definitions in the specifications/claims as argued by the attorneys. This will be problematic when the the two sides argue if a words common vs. technical meaning should apply. From [1] it appears that there is inefficiency in the patent cases as as many as 30% of decisions are reversed by the federal circuit; maybe such a stance is one factor to consider. [1] page 11 of http://jolt.law.harvard.edu/articles/pdf/v15/15HarvJLTech001.pdf Is that how the 2 sides divide: common v. technical? RJM says if the system worked perfectly the reversal rate would be even closer to 50%. See tinyurl.com/claim-bop and amicus brief in Microsoft v. i4i at pdf 24-25. Loaded NOUNS (well, this one is a compound adjective/noun plus noun) are far more persuasive than loaded adjectives and verbs. RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS Patrick writes: [I]f I were the judge I would like to know why each side is angling for a specific phrasing or interpretation of the language because otherwise the lawyers might seem to be contortingthemselves for no reason and I might speculate (and be wrong). ANGLING and CONTORTING and SPECULATE are far more persuasive than MERELY and CLEARLY. RJM - IP: Sci Ev in Pat Lit - Winter 2012

WARE v MORRIS Sam writes: [I]n the end I can't justify _not_ learning as much as possible about the entire scope of the invention before making a binding decision. claimed RJM - IP: Sci Ev in Pat Lit - Winter 2012

Other Good Questions about the Field Trip Kevin – the reexamination, the lawyers’ styles and techniques. Jaime - RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - TIM ? Question: The plaintiff's attempted to argue that the defendant should be bound to the arguments they made during reexamination. Since these arguments aren't made by the patentee, it doesn't qualify for prosecution history estoppel. But may judicial estoppel apply?Answer: Judicial estoppel is highly fact specific, and there is not enough in the brief to determine whether it will certainly apply in this case. However, the Federal Circuit has held that "[the] doctrine also applies to administrative proceedings in which a party obtains a favorable order by making an argument that it seeks to repudiate in a subsequent judicial proceeding." Lampi Corp. v. Am. Power Prod., Inc., 228 F.3d 1365, 1377 (Fed. Cir. 2000), http://scholar.google.com/scholar_case?case=8492395908678946273. The court continued with the analysis, treating "statements made . . . to the PTO in the trademark registration process" as though they were made in "administrative proceedings." So the answer is likely yes - the defendants may be subject to judicial estoppel based on their statements during reexamination. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Prosecution History ESTOPPEL Prosecution History Estoppel = File History Estoppel = File Wrapper Estoppel And it’s not really an estoppel, which is a question of EQUITY. Whether PHE applies has been decreed to be a Q of fact, like = literal infringement and = anticipation. Obviousness is a question of law. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Prosecution History Estoppel (PHE) v. Interpreting aka Construing the Claims in light of the Prosecution History When you interpret a claim in order to determine literal infringement (or validity), you use the PROSECUTION HISTORY. That is *NOT* the same as PHE. PHE refers to something specific: It is a limitation on the PO’s right to win on infringement when the claim does not LITERALLY cover the accused device, but where the wider scope is within the doctrine of equivalents (DOE). RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - NICOLAJ What is a "ring oscillator system", cf. page 4 of the JCCB (and of course claim 1 of the '339-patent)?"Oscillation is the repetitive variation, typically in time, of some measure about a central value (often a point of equilibrium) or between two or more different states. Familiar examples include a swinging pendulum and AC power. The term vibration is sometimes used more narrowly to mean a mechanical oscillation but sometimes is used to be synonymous with "oscillation". Oscillations occur not only in physical systems but also in biological systems and in human society", cf. Wikipedia, http://en.wikipedia.org/wiki/Oscillation.I am not quite sure I still understand it, but the visualization of the moving spring-mass system helps me a bit to, at least, get a gist of what is going on. What I am not sure about is whether the repition has to be perpetual, as I assume that the spring material at some point looses momentum (due to gravity) and the repititive variation will be smaller.This is where I would like to sit down with the patent agent/the scientific expert and have him explain it to me in complete "baby language" and being able to ask all the stupid questions.See also: http://www.youtube.com/watch?v=Zzq734N3asU. RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - DAVE I wonder what the doctrine of claim differentiation actually dictates. The defendants mention in a footnote, "The doctrine of claim differentiation dictates that different claims with different language have different meaning, and should not be inferred to have the same construction because of some misguided notion of 'parallel terms'." I'd like to unpack this statement a little bit.Claim differentiation simply dictates that different claims should be interpreted to cover different things. In a few minutes of searching, I can't find anything to support the second part of the sentence, in particularly how it relates to parallel terms. I'm guessing that the defendants don't have any case work to support this sentence (since it's not cited) and instead are relying on Big Kid syndrome.I'm also guessing that the defendants are trying to pull a fast one by obfuscating "claims" and "elements". The doctrine of claim differentiation dictates that claims should be construed differently rather than elements. The elements in Row 23, 19, 28 largely DO contain parallel language. There's no reason why truly parallel elements shouldn't be treated as such even if separate claims are given the benefit of the doubt RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - CHRIS 2. I wonder about the history of patents on integrated circuits in general.The first integrated circuit (IC) ( in its original meaning! The devices described in this weeks patents are apparently monolithic integrated circuits ) was patented in 1959 by Jack Kilby (who received the Nobel in 2000) of Texas Instruments (Pat.3,138,743). There was quite a bit of legal trouble involved in the 60's centering around whether Kilby or Robert Noyce of Fairchild Semiconductors invented the IC first. This involved law suits and ultimately cross-licensing of each others patents. RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - AMANDA I started off doing basic research on CPUs and processorsbecause, as I said earlier, I know nothing. I didn't have a discretequestion, however (I didn't know enough to know what I needed toknow), so it was more informative for myself rather than thisassignment. So, the next question I addressed was inspired by yourlast question: Who is Judge Ware? I learned that he's been nominatedby Presidents from both parties (George H.W. Bush and Clinton), andwas embroiled in a scandal that resulted in the withdrawl of hissecond nomination.[http://www.paloaltoonline.com/weekly/morgue/news/1998_Aug_26.JUDGE.html]He is known for handling internet cases, specifically with respect tobusinesses, and also for his participation in the Prop 8 battle.[http://www.sdgln.com/news/2011/06/13/breaking-news-analysis-judge-james-ware-proves-combative-proposition-8-hearing] RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - CORINNE Is one court’s claim construction binding against the patentowner in future suits? It depends. The law of issue preclusion variesbetween circuits, generally requiring an identity of issues that werefully/fairly litigated, actually decided, and necessary to the finaljudgment. District courts split on what situations satisfy the fourthfactor: is a claim construction hearing itself “final” enough, or is aruling on infringement necessary? In TM Patents v. IBM, the court found that a claim constructionfrom a suit that settled before trial was preclusive against thepatent owner in the second suit; after all, a ruling on infringementwould not have changed the claim construction in any way. Conversely,inKollmorgen, the court found that the lack of available review aftera settlement prevented the settled suit's claim construction frombeing binding in a second suit.Website: http://www.mccarter.com/new/showarticlenew.aspx?Show=4277 RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - AMY I wonder how long this case has been in process? We knowthat at some point the three plaintiffs had separate cases. How longwas each involved before it became a joint case?Looking at the link provided to the docket, I can see that Acer firstfiled a complaint for declaratory judgement in Feb 2008. I tried toregister with PACER to get access to other dockets but it seems Icannot register unless I am a court appointed Criminal JusticeAttorney or a US Government Agency (I am probably not looking in theright place) therefore I'm not sure when Barco and HTC first filedcomplaints. Looking at the link provided for us for the Acer case, Ican see that Dec 2008 there is a motion to relate the Barco case.Finally, it is in January 2012 we see that the Claim Constructionhearing will be held. According to this timeline, both Acer and Barcohave been involved for at least two years jointly. Surprisingly, Ididn't see any mention of HTC in the docket but HTC is listed as aplaintiff in the brief for the joint construction hearing. I found thedocket to be very helpful to get a idea of the timeline for claimconstruction and to see all the motions and stipulations that arefiled over time. RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - RAM As far as I know, companies like Acer only buy microprocessors from companies like Intel or AMD. If a microprocessor patent is infringed,I expect the patent case to be fought with microprocessormanufacturing company and not a computer or a cellular phonemanufacturer. After an internet search, I understand that it ispossible to sue anyone who without authority makes, uses, offers to sell, or sells any patented invention. And in this case, the companies have used and have sold their product which had the patent infringed microprocessor. or imports: MUOSI 35 USC 271 RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - KEVIN The easy question is to ask what happened to Judge Fogel, but I already know the answer to that question. A similar question that I am always interested in is who are the experts for each side and what are their qualifications. Dr. VojinOklobzija. As of last January Dr. Oklobzija is the academic department head of the School of Electrical and Computer Engineering at New Mexico State University. http://engr.nmsu.edu/news_items/2011_news/news_1_oklobdzija.shtml RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - WAQAS I wondered about the background of Judge Ware. I had already spent a bit of time on it before reading this question so here goes: Here Judge Ware lays out some of his thoughts on how patent language needs to be understood as how it would have been understood at the time by someone of ordinary skill and that he says weighs even above the testimony of the actual inventor.That’s something I find against the spirit of patent protection from an inventors perspective. http://www.stanfordlawreview.org/2011keynote.pdf In this article Judge Ware discusses some rules that can be used in dealing with patent evidence and also some difficulties in developing more rules due to the differing standards of Circuit and District courts. http://heinonline.org/HOL/Page?handle=hein.journals/sccj23&div=31&g_sent=1&collection=journals On his withdrawn nomination from the federal circuit: http://www.paloaltoonline.com/weekly/morgue/news/1997_Nov_19.WARE.html http://rs9.loc.gov/cgi-bin/query/D?r105:3:./temp/~r105PFiUd3:: A fairly harsh response to the scandal: http://www.rangemagazine.com/archives/stories/spring98/stories_the_infamous_ninth.htm Don’t blame Judge Ware. 1. The statute (that is, Congress) supports this. 2. The Supreme Court and the Fed Cir (his Bosses) have said or at least implied this. 3. The ordinary artisan, being a legal fiction, can’t lie, die, forget, misremember, have an ax to grind, or be confused by opposing counsel. RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - PATRICK Question: Where and when were these cases all filed? How did they getconsolidated?Answer: After playing around with Lexis Courtlink (gotta love thestudent subscription - "Normal Cost $200, Your Cost $0"), it lookslike there were 3 DJ actions filed against Technology Properties et alin ND Cal on the same date, Feb. 8, 2008. The three cases were filedby Acer & Gateway (08-00877 JF), HTC (08-00882 JL) and Asus (08-00884EMC). After Acer and Gateway were assigned to Judge Fogel, theymotioned to consolidate (or 'relate') the three cases, which wasgranted on Apr. 22, 2008. Then another company, Barco N.V. filedanother DJ on Dec. 1, 2008 in ND Cal and subsequently filed a motionto relate its case to the existing three, which was granted on Dec.17, 2008. Interestingly enough though, the Asus case does not appearon the joint claim construction brief, which leads me to believe thatthey might have settled. But in my quick research I could not find outwhen or why they dropped out. RJM - IP: Sci Ev in Pat Lit - Winter 2012

I WONDER - SAM I wondered where the term "Markman brief" came from. After some quick searching, I learned that it refers to the claims construction hearings in general, named after Markman v. Westview Instruments Inc., which set a precedent that terms of art and in particular claims would be construed by the judge, not the jury. Useful websites include:http://www.casebriefs.com/blog/law/civil-procedure/civil-procedure-keyed-to-cound/trial/markman-v-westview-instruments-inc/http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/jlawp5&div=31&id=&page= RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-Up – verb phrase with READ -1. ON Last week we discussed READ ON. Review: If a claim READS ON the prior art, it is INVALID. If a claim READS ON the accused device, it is INFRINGED. Think of a two-column chart. “READING ON” means you read the left and compare it to the right – you read the claim ON the other thing. If there is a 1:1 correspondence, the claim READS ON the other thing. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Verb phrase with READ -2. IN You must not ‘read in’ a limitation from the specification. On the other hand, you construe the meaning of claim terms by interpreting them ‘in light of the specification.’ Is it that if I do it, it is proper claim construction, but if you do it, it is the sin of READING IN? Not quite. This will make sense (a little more) after you have begun to struggle with your simulation patents. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Verb phrase with READ -3. OUT You must not ‘read out’ a limitation that is in the claim. On the other hand, if the limitation, properly construed, adds nothing to the claim, you are just doing proper claim construction. This will make sense (a little more) after you have begun to struggle with your simulation patents. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-Up – Law and Fact (and Equity) FACT 101 Lack of Utility 102a Anticipation 102g Diligence 102g Corroboration 103 Analogous Art 112P2 Best Mode 112 P1Written Descrip. R56 Intent (Ineq. Cond.) R56 Materiality (Ineq. Cond.) 271 Infringe.–literal 271 Infringe.– DOE 285 Exceptional Case EQUITY R56 Ineq. Conduct 283 Injunction 284 Multiple Damages 285 Award of atty fees - Patent Misuse LAW 101 Patentable Subj. Matter 102b Experimental/Public Use 102b On Sale 102g Priority of Inv. 102gConception 102g Reduc. to Prac. 103 Obviousness 112P1 Enablement 112P2 Indefiniteness [101, 102, 103,112,271] Claim Construction NB: All statute numbers are pre-AIA . Some have changed, with various effective dates. 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 SciEv2012. See also pdf pages 31-33 of my amicus brief in Microsoft v. i4i. -rjm RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up – Your Questions Tim: Experts: shaping testimony, attacking them, hiring them Nicolaj: claim construction finality, PHOSITA Corinne: claim construction finality RJM - IP: Sci Ev in Pat Lit - Winter 2012

Tim – shaping expert testimony; attacking the other expert; hiring experts If the above is true, then how should one go about cleanly and respectfully, but brutally and efficiently, tearing down an opposing expert witness's credibility in the eyes of the fact finder? What are typical chinks in an expert witness's armor that can be exploited? (“Individual concern”) I would like to learn more about the practicalities of expert witness battles. It is, of course, difficult to talk about this subject matter in class. But I have known of cases where, for instance, race and "funny names" are successfully used by litigators to undermine opposing scientific testimony. And this is an issue, especially when many scientific experts are foreigners and immigrants (e.g., 40% of all graduate students at MIT). U.S. society is simply not as enlightened as we would hope it to be; and many patent battles take place in areas of the country that are still very backward in thinking. Should that play into my calculations? How and why? My own experience has informed me that I should never allow myself as a litigator to be mired in trivial details and theoretical debates. What's important is constructing a coherent, convincing, and compelling narrative, for the specific case in hand. Is that true? If the above is true, then allowing a patent dispute to degenerate into a "battle of the experts" over scientific details incomprehensible and uninteresting to the fact finder would not be the winning move. How does one maintain narrative when talking to a Ph.D. whose duty is to talk science? An experienced litigator has once told me that the best way to attack an opposing expert witness is to bypass the scientific details and destroy his credibility. Is that true? After all, as Sun Tzu wrote, "If you lay siege to a town, you will exhaust your strength.“ An expert witness's greatest weapon is his knowledge, and challenging him about scientific details is little different from laying siege to a town. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Attacking the other side’s Expert Treating an expert like any old witness in a he-said-she-said contest: making ner sweat and stutter and get angry and… GOOD IDEA? What makes one expert more CREDIBLE than another? How do juries view all the things that make killer litigators excited? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Nicolaj B: Judge Ware talked a bit about the hypothetical "PHOSITA", but during the tutorial we did not hear any of the counsels address the issue of who might be the relevant PHOSITA for this case (maybe for a good reason as this issue might be more relevant to address at the actual claim construction hearing the following day), but I was just wondering (and thought we could discuss) who the PHOSITA might be for this case? C: Will it be possible to appeal Judge Ware's claim construction - or will the parties have to wait until a final decision on the merits has been rendered? I was a bit puzzled by the discussion raised by Plaintiff's counsel in the Acer case re interpretation of the prosecution history (and the patentee's later amendments during prosecution). This led to a short discussion between Plaintiff's counsel and Judge Ware about what point in time the claim construction should take its outset. No clear conclusion came out of that. I know that for validity purposes we construe the claims as the PHOSITA would understand as per date of filing. But what about infringement, I think Lemley taught us that for infringement purposes we construe the claims as the PHOSITA would understand them as per date of the infringement. I just got a bit confused, if you have a claim construction hearing like in the Acer case and both validity and infringement is argued (which I guess is the normal - and we also heard Plaintiff's counsel (the one with "the skirt" say that Judge Ware's construction would have great impact on the infringement issues)), would you not in a way have to have two claim construction hearings - one for validity purposes and one for infringement? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Corinne c. Regarding claim construction: does the Judge _have_ to pick one of the parties' suggested interpretations, or can he make up his own? At the hearing, Judge Ware appeared ready to invent his own constructionfor some of the terms. Is this common?2. Questions about individual concernsa. It seems like we will have very limited time to prepare the simulations—the quarter is already half over. Is our workload suddenly about to mushroom?b. In our simulations, how will we argue infringement without the benefit of claim construction? Overall, motions for reconsideration, like that in _BCS_ _v.__Cordis_, are rare. Are they any more common in the claim construction context? On that note, what kind of review is available for claim constructions, in general? They likely can't be appealed before a final judgment, but it seems courts would be reluctant to grant interlocutory appeals on the issue, despite it's importance. Does this play into the calculation for making a motion for reconsideration? b. Regarding the field trip: What does the class think about the plaintiff's argument that the ring oscillator should be defined as "non-controllable"? Were they convinced? Would knowing about theallegedly infringing product help/hurt their analysis in any way? It‘s already obvious why each party wants the term defined in their respective ways. What more could knowing about the product add? If it would add something, is that something appropriate to consider during claim construction? They’re not reluctant. The Fed Cir made it a policy, right after Markman, of NEVER granting petitions for interlocutory appeal Why pretend (and pat yourself on the back for pretending) that you do NOT know about the product? (The obviousness stems from… what? IGNORANCE of the product?) RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Corinne c. Regarding claim construction: does the Judge _have_ to pick one of the parties' suggested interpretations, or can he make up his own? At the hearing, Judge Ware appeared ready to invent his own constructionfor some of the terms. Is this common?2. Questions about individual concernsa. It seems like we will have very limited time to prepare the simulations—the quarter is already half over. Is our workload suddenly about to mushroom?b. In our simulations, how will we argue infringement without the benefit of claim construction? You *can* make your simulation JUST claim construction. Or argue it along with infringement. Things to remember: 1. From the time that patents had claims until 1994, claim construction was not dealt with separately, not even in bench trials (“bench” = NO jury). 2. Some judges STILL don’t decide claim construction until after trial. 3. Most districts do not have patent Local Rules. Overall, motions for reconsideration, like that in _BCS_ _v.__Cordis_, are rare. Are they any more common in the claim construction context? On that note, what kind of review is available for claim constructions, in general? They likely can't be appealed before a final judgment, but it seems courts would be reluctant to grant interlocutory appeals on the issue, despite it's importance. Does this play into the calculation for making a motion for reconsideration? b. Regarding the field trip: What does the class think about the plaintiff's argument that the ring oscillator should be defined as "non-controllable"? Were they convinced? Would knowing about theallegedly infringing product help/hurt their analysis in any way? It‘s already obvious why each party wants the term defined in their respective ways. What more could knowing about the product add? If it would add something, is that something appropriate to consider during claim construction? Judge Ware can come up with his own construction. On appeal, the Federal Circuit can come up with yet a different one. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Amanda c. If it's true that it's the claims that truly matter, why does adjusting the specification make you lose the filing date? Doesn't this seem like an entirely artificial requirement if it doesn't technically "matter." But then again it has to support the claims for the claims to be valid. So what's the deal? 1. Class Discussion a. Is the tutorial a useful and truly neutral process? It was easy to hear arguments from the attorneys sneak in, so what do we think about that? b. Who has the burden of proof in a DJ dealing with infringement? We know the burden is on the filthy rotten patent owner in a normal infringement action, but it seems the procedural posture requires it be on the plaintiffs (greedy slimy accused infringers) here. Define “matter”! Patents must “TEACH.” That is the quid pro quo for the MONOPOLY. BOP is determined by the issue, not who is plaintiff and who is defendant. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Kevin *Q2: *Are there strategic benefits to raising the RDOE even if it isunlikely to be successful on its own? Does it help to color the case? You’re right. RDE is the last refuge of scoundrels (well, not the original one). Or so I learned from a very big Big Kid who, to the best of my knowledge, never told me something I later found to be untrue. *Q1:* During the claim construction hearing it appeared as though the 336patent covered the concept of putting a second (ring oscillator variablespeed) clock on the microprocessor and was not as fully developed as thelater products that are now alleged to infringe. Is it likely the plaintiffs will claim the reverse doctrine ofequivalents[1]<file:///C:/Users/Kevin/Documents/Scientific%20Evidence%20in%20Patent%20Litigation/2.2/Catchup.docx#_ftn1>(RDOE)at a potential trial as a defense to infringement(?) and, if so, howlikely is it that such a strategy will be successful? (My guess is veryunlikely and less than 5%) RJM - IP: Sci Ev in Pat Lit - Winter 2012

Kevin’s Questions - 2 *Q4:* What are the origins of Agility IP Law? Where did the firm’sattorneys previously work, when did they jump ship, and why? *Q5:* What were people’s thoughts on the use of the various metaphors andpresentation styles we observed in court? Which attorney was most effective and why? Was there anything that surprised you by the proceedings or the way the attorneys handled themselves? *Q3:* The defendant in the case claimed that the 336 patent stood up to 16 ex partereexams and ~900 prior art references. Is this an atypically largenumber of reexam proceedings and references cited? Should much credence be given to these statistics? Wilson, Sonsini. Yes What ‘credence’? What might the statistics prove? Do they? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions -Chris That’s what you’ll do in preparing for the simulation. You’ll have your teammates and me to help you. 1. The cases we have to discussed so far were quite complex. I would like discuss an example claim and a possible design-around to better understand what it takes not to infringe a patent.2. Person of ordinary skill in the art. Would an inventor be a person of extraordinary skill in the art? You also mentioned the 'POSITA' is a myth. What exactly did you mean by that? 3. Whenever a patent gets declared invalid, are the prosecutors of the patent in trouble? Could you sue them for writing you a bad patent? Yup. If you got a patent, you’re not ordinary (until the patent is invalidated for obviousness…) The ordinary artisan is a legal fiction, a way of thinking that should lead to justice. The OAATTOI (my newest acronym: oh-AAH-toy; AAH like the a in map) is like the Reasonably Prudent Person in Tort Law. Invalid, not likely. WHY? Unenforceable (violation of the duty of candor), possibly. I occasionally taught such a case... Not sure it’s in the Winter 2004 materials, though. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Waqas Q1) We have on multiple occasions said that most parties settle after the claim construction. Are their ever any reasons not to settle? and what do the court proceedings look like after claim construction? Q2) What are things to consider when preparing a person for scientific testimony? Q3) How to approach a scientist/engineer for cross examinations? See Tim’s Questions and our answers in class. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions - Ram That’s the universe in the US. There are no other kinds of patents? Drug patents are ‘utility patents.’ What are the different kinds of patents that can be applied for (isthere anything apart from utility, design and plant)? I am interestedin knowing if there is a specific kind of patent that is required forinventions in pharmaceutical industry.Can discoveries also be patented or does it necessarily have to be aninvention. For example, if it is discovered that root or leaf extractof a plant A has anti-cancer properties, can it be patented? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Catch-up: Your Questions -Jamie 1. Do the engineers in the class think that judges are really qualified to interpret the claims of highly-specialized technologies during MARKMAN hearings? If ACER is any indication, how often do you think they get it right? 2. At the Patent Pilot Program presentation two weeks ago, Chief Judge Ware emphasized the favor a party gains when they “concede” certain points during proceedings. Chief Judge Ware explained, “Often counsel for each party will try to take the most extreme positions possible, as opposed to taking a reasonable position to help us get closer to the true meaning of the claims during the claim construction process.” Did either counsel for the litigants in the ACER last week exhibit this “reasonable” approach in their presentation? 3. Do you feel that NDCA Local Rule 4-3, which requires parties to submit joint claim construction briefs, helps foster cooperation between opposing parties (i.e. encouraging them to agree on claim term meanings) or merely encourages them to pick the ten most disputed and case-dispositive claim terms, confining the battlefield and creating a highly contentious environment? 4. Should the patent system allow monetization of patent rights by companies that don’t actually bring a product to market (e.g. non-practicing entities (“NPEs”))? By threatening product-based companies with lawsuits and compelling them to license the patent rights to an invention the NPE neither invented nor plans to make, are non-practicing entities extracting unearned revenues from mid-sized and large companies that could have instead funded more R&D? Or, by providing cash for inventor’s whose product might not otherwise make it to market, are non-practicing entities helping to encourage innovation? Might your answer depend on (i) the amount of money an NPE invests in small inventors (i.e. the amount it expends to purchase patents from small inventors) vs. (ii) the amount of money an NPE spends trolling for royalties (i.e. the amount of money it extracts from bigger companies like Apple, Lenovo, or Samsung through its lawsuits and license agreements)? RJM - IP: Sci Ev in Pat Lit - Winter 2012

Jamie’s Questions -2 QUESTIONS ABOUT INDIVIDUAL CONCERNS1. Based on Chief Judge Ware’s comment that file wrappers should be better organized to facilitate claim construction, is the patent office undertaking any efforts to improve the organization of existing or newly filed documents to assist judges in understanding and accessing the information concerning a patent’s prosecution history? 2. I was hoping to get further clarification on one of Chief Judge Ware’s questions regarding claim construction for a patent that has undergone reexamination. He asked, “does the judge at a MARKMAN hearing read the clams as a PHOSITA would have read them at the time of reexamination or when the patent application was originally filed?” Plaintiff’s counsel seemed unsure whereas his co-counsel from Cooley (Heidi Keefe) seemed to be nodding her head in the affirmative. 3. Why do most judges not elect to take on a technical advisor as Chief Judge Ware has done in ACER? Depending on the complexity of the technology, it seems incredibly inefficient not to bring on someone to at least assist the judge. Why would a judge expend the kind of resources a district court does and then risk misinterpreting the science behind the invention? Moreover, in a jurisdiction like NDCA where the court requires the parties to identify the most case-dispositive claim terms in the case (Rule 4-3), how can a judge ensure the parties have really honed in on the pressure points of a claim without understanding the technology objectively with the assistance of a technical advisor? Also about Acer: q 1, previously slide RJM - IP: Sci Ev in Pat Lit - Winter 2012

Amy’s Questions 1) We haven't really discussed the role of the technical expert inpatent litigation yet. Will we have time to go over this before westart working on the simulations? Does the technical expert help the litigator come up with arguments for court/trial? Is the role of theexpert just to be examined and cross-examined in trial?2) How are groups for the simulation going to be formed/decided?Suggestions:For the future, you could have an optional additional section forgraduate students to go over some legal terms and the legal system (relating to patent law and litigation) so that they can be 'caught up' before the class starts. I’ve done that every other year. You can look for the Instant Patent Law slides on previous sciev.YRwebpages. I open it to law students, too. How about Tuesday afternoon? I’ll look for a room, or we can do it in my office. BYOC and I’ll post the slides. RJM - IP: Sci Ev in Pat Lit - Winter 2012

Sam’s Questions 1) Questions.a) What does "substantially" mean in patents? I've come across phrases like "substantially the same material" and "with time betweenexcitation and detection being substantially equal to the fluorescencelifetime." Is this quantifiable or is it similar to the 99.9%certainty of "beyond reasonable doubt"? The two examples I gave seemlike different uses, as at first glance I would say "substantially thesame material" would mean the same except for color or some cosmeticdifference, whereas for a time interval, it must involve someprecision.b) I'd be curious to know an example of the dream suit you mentioned in which the PO would be caught both ways on either winning infringement but losing validity or winning validity but losing infringement. It seems that looking at the court decisions and history of a suit like this would be a great exercise, at least for non-law students.c) I'm intrigued (and maybe a bit concerned) that in the claimsconstruction hearing, the complexity seems to be simply in the wordgames. The word "asynchronous" is not difficult to define clearly forsomeone skilled in the art, but for a judge and lawyers (and probablyjury) it proved elusive. On the other hand, a scientist or engineerwould likely be biased based on his/her experience in ways that ajudge would not. This seems like an unfortunate situation: aspecialist-arbiter may be biased whereas a lay person is supposedlyless biased, even though a specialist would immediately understand thecrucial concepts and definitions (and be honest about them, or atleast they should be in scientific fields) while the lay person mightget them wrong or distort them deliberately (resulting in appeals andmore uncertainty). Am I right in thinking of the PHOSITA idea as someinexact way to bridge this gap?. d) Will we talk much about the AIA and its predicted effects, either now or later in the class? 2) Individual questions:a) Can you recommend any primer of legal terms, such as a short book or maybe a website that could serve as a crash course in all law and legal procedures (not just patent law). I'd like a better broad knowledge, and the vocabulary/jargon seems like a barrier to "joining the club" that I'd like to get through. Surely your joking? Ask a law student about books and websites! Yes! RJM - IP: Sci Ev in Pat Lit - Winter 2012

Sam’s Questions 1) Questions.a) What does "substantially" mean in patents? I've come across phrases like "substantially the same material" and "with time betweenexcitation and detection being substantially equal to the fluorescencelifetime." Is this quantifiable or is it similar to the 99.9%certainty of "beyond reasonable doubt"? The two examples I gave seemlike different uses, as at first glance I would say "substantially thesame material" would mean the same except for color or some cosmeticdifference, whereas for a time interval, it must involve someprecision.b) I'd be curious to know an example of the dream suit you mentioned in which the PO would be caught both ways on either winning infringement but losing validity or winning validity but losing infringement. It seems that looking at the court decisions and history of a suit like this would be a great exercise, at least for non-law students.c) I'm intrigued (and maybe a bit concerned) that in the claimsconstruction hearing, the complexity seems to be simply in the wordgames. The word "asynchronous" is not difficult to define clearly forsomeone skilled in the art, but for a judge and lawyers (and probablyjury) it proved elusive. On the other hand, a scientist or engineerwould likely be biased based on his/her experience in ways that ajudge would not. This seems like an unfortunate situation: aspecialist-arbiter may be biased whereas a lay person is supposedlyless biased, even though a specialist would immediately understand thecrucial concepts and definitions (and be honest about them, or atleast they should be in scientific fields) while the lay person mightget them wrong or distort them deliberately (resulting in appeals andmore uncertainty). Am I right in thinking of the PHOSITA idea as someinexact way to bridge this gap?. d) Will we talk much about the AIA and its predicted effects, either now or later in the class? 2) Individual questions:a) Can you recommend any primer of legal terms, such as a short book or maybe a website that could serve as a crash course in all law and legal procedures (not just patent law). I'd like a better broad knowledge, and the vocabulary/jargon seems like a barrier to "joining the club" that I'd like to get through. Surely your joking? We can have a reunion in the spring or summer quarter, though, and talk about it. That would be fun! Ask a law student about books and websites! Yes! Exactly right! RJM - IP: Sci Ev in Pat Lit - Winter 2012

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

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

Major Issues of Liability in Patent Law How do BOP and QOP affect the litigators and scientific experts? WHAT IS THE QOP? WHO HAS THE BOP? C&C AI Validity Infringement PO Preponderance Week 01 55 2009 - Sci.Ev. - rjm RJM - IP: Sci Ev in Pat Lit - Winter 2012

IP: Scientific Evidence in Patent Litigation Week 4