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Scientific Evidence and Expert Testimony: Patent Litigation LAW 343

Scientific Evidence and Expert Testimony: Patent Litigation LAW 343. Prof. Roberta J Morris Room 208 Crown Quad 723-9505 rjmorris@stanford.edu Course Materials on the Web: course website http://www.stanford.edu/~rjmorris/sciev.08/ And Stanford’s coursework site for posting assignments:

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Scientific Evidence and Expert Testimony: Patent Litigation LAW 343

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  1. Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad 723-9505 rjmorris@stanford.edu Course Materials on the Web: course website http://www.stanford.edu/~rjmorris/sciev.08/ And Stanford’s coursework site for posting assignments: https://coursework.stanford.edu/portal/site/F08-LAW-343-01 Email Group scievseminar08@lists.stanford.edu Week 02

  2. Today’s Agenda • From last week: a few more basic patent law notes. • Making Claim Charts (Assignment 1A) • The Cordis Counterclaim in Boston Scientific v. J&N/Cordis – Fontirroche ‘594 Patent, claim 7 • Design arounds (Assignment 2A) • Making a claim evolution chart (Assignment 2B-Grad) • Your Patents (Assignment 1B): applying your new/renewed knowledge. Discuss after the break. • Law students educating grad students (Assignment 2B-Law): defer to next class. • Next Week: No class. • Next CLASS: 10/13: Claim construction order on Fontirroche claim 7. Transcript of expert testimony from trial. Week 02

  3. Introduction/Review of patent law Other interesting information: The first patent the PTO issued on 9/23/08 was 7,426,753. On 9/16/08 the PTO issued 1989 utility patents, 12 Reissues (35 USC 251+), 35 Plant Patents (35 USC 161+) and 400 Design Patents (35 USC 171+) (2435 total) Last year for the same week (9/18/2007) the PTO issued 2992 utility patents, 12 Reissues, 35 Plant Patents, and 499 Design patents (3540 total). In the year ending 9/16/2008, the PTO issued 154,893 utility patents. Week 02

  4. How does this affect you, the litigator, and you, the scientific expert? Law students: Please explain the questions and the answers to the Grad Students. WHAT IS THE QOP? WHO HAS THE BOP? C&C AI Validity Infringement PO Preponderance Week 02

  5. Reading a Patent Why do I require for the simulation that you choose a patent whose number appears on something you can buy? (Or, if you really, really, can’t find anything suitable, a patent referenced in a peer-reviewed journal article? How do you read a patent? Always ask: who wants to know? PO, PAppl, AI, VC their commonalities, differences and priorities Week 02

  6. Reading a Patent • AI • to design around (to avoid infringement) • to challenge validity or enforceability • PAppl – • 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 Week 02

  7. Clients (temporary assignments) Attorneys Jen ROBINSON David LYDON Tim SAULSBURY* Karni CHAGAL Julie KANE* Mark MELAHN Julia KRIPKE Andy PARK Greg SOBOLSKI Experts Lisandra WEST* Sarah JARCHOW-CHOY Lawrence KLEIN* Andrew HELLMAN Sondra HELLSTROM Brett STAAHL Samantak GHOSH Aqua for ACCUSED INFRINGERS Purple for PATENT OWNERS *Arbitrary assignments for those who hadn’t made up their minds as of last week As you re-read your patent, did you find yourself more sympathetic to the inventor or to apotential infringer? Week 02

  8. P-I-S v P.A. Week 02

  9. Homework • 1A. Your claim charts. What you – and I – learned from this exercise. • 1B. Your essays about the introduction/review of patent law and your patent. To be discussed after break. • 2A. Reading a patent and its file history. The Fontirroche ‘594 patent. • - How would you design around the invention of claim 7 to avoid infringement? • - What words have uncertain or squishy meaning? • - Get into your roles: lawyer or expert for PO or for AI. • -- What statements (and omissions) in the file history make you happy? Why? • -- Anything make you unhappy? • 2B. How Claim 7 Evolved: Grad students’ 3 column charts. • More legal education: Law students’ slides. – Defer to next class. I’ll send you comments on your slides and you’ll revise them. Week 02

  10. Homework – Claim Charts Your claim charts. What did you learn from doing this assignment: - about your patent - about how to read a patent - about what you will look for when you choose a patent for the simulation projects. Let’s discuss the concept and purpose of a CLAIM CHART and improving our skills at making VISUAL DISPLAYS of LINGUISTICALLY COMPLICATED information (with apologies to Edward Tufte). Week 02

  11. Homework – Claim Charts YOU – not the poor judge and the poorer jury – must pick out - what to skip, - what goes with what, - what explains what, - what are alternatives to each other, - etc. Then when you display the claim in the chart, the visual reinforces the conceptual. Meanwhile, claim charts are a great vehicle to learn some basics of patent prosecution. Week 02

  12. Homework – Claim Charts Pick out things that are parallel. Pick out words, phrases and clauses that you might replace with ellipses if you were quoting the claim. Indent what you would omit from the words you would quote. Use this trick at different levels of detail to decide what gets indented and how much. Keep intact the grammatical structure and meaning. Thus, all the phrases that are within x tabs of the margin should make sense grammatically: nothing else should be needed. This should also be the result of the parallel rule + the ellipsis rule. I have devised this procedure for dealing with complicated language – claims, statutes, regulations - over many years. Nobody taught it to me, and you may not find that your bosses or other professors consciously follow it. But you will find that the best trial litigators and strategic counselors do something like it even though they may not be able to articulate why they do what they do. Week 02

  13. Making a Claim Chart – Example 1 Greg Sobolski’s 5,955,422 Production of Erythropoietin A pharmaceutical composition comprising: a therapeutically effective amount of human erythropoietin and a pharmaceutically acceptable diluent, adjuvant or carrier, wherein said erythropoietin is purified from mammalian cells grown in culture. How many items go into the composition? What (how many items) does therapeutically effective amount modify? What (how many items) does pharmaceutically acceptable modify? In the wherein clause, what might be the controversial words? Handout Week 02

  14. Making a Claim Chart – Example 1 (cont’d) Greg Sobolski’s 5,955,422 Production of Erythropoietin A pharmaceutical composition comprising: - a therapeutically effective amount of human erythropoietin and - a pharmaceutically acceptable -- diluent, -- adjuvant or -- carrier, wherein said erythropoietin is purified from mammalian cells grown in culture. wherein said erythropoietin is purified from mammalian cells grown in culture. Why is this better than this ? What’s the difference? Week 02

  15. Making a Claim Chart – Example 2 The indentations are in the original. You can use those, and insert bracketed letters to help you keep track of things. Some patents will have numbers or letters to designate parallel parts of the claim. The numbers in parentheses are the numerals from the figures. Including those numbers used to be prohibited in the US, although it was common in Europe and occasionally a US patent with a foreign counterpart would slip through with numbers in the claims. Now the PTO permits it, and may even encourage it. Jen Robinson’s KSR v Teleflex Patent 6,237,565 An adjustable pedal assembly for a vehicle comprising; a support (18) for mounting to a vehicle structure; an adjustable pedal assembly (22) having a guide member (62) rotatably supported by said support (18) for pivotal movement about a pivot axis (26); and a pedal arm (14) supported on said guide member (62) for rectilinear movement in fore and aft directions relative to said support (18), said guide member (62) and said pivot axis (26) between various adjusted positions; an electronic control (28) supported on said support (18) and responsive to pivotal movement of said pedal arm (14) and said guide member (62) about said pivot axis (26), said electronic control (28) being fixed relative to said support (18) such that said pedal arm (14) moves in fore and aft directions with respect to said electronic control (28), said electronic control (28) being responsive to pivotal movement of said guide member (62) about said pivot axis (26) for providing a signal (32) that corresponds to pedal arm (14) position as said pedal arm (14) pivots said guide member (62) about said pivot axis (26). Week 02

  16. Making a Claim Chart – Example 3 Sondra Hellstrom’s 5,513,562 Patent – Zyliss Garlic Press A garlic press comprising an elongated handle having a drainable press chamber at an end thereto, said press chamber having a top opening, a bottom and an inner surface, a press plate retractably moveable into said press chamber, lever means acting on a fulcrum at said end for retractably urging said press plate into said press chamber through said top opening, said press plated being joined to said lever by a pivot, a low surface friction material enameled onto said inner surface of said press chamber, and a cleaner mounted on said lever and removably secured thereto by interaction with said pivot, whereby when a clove of garlic is placed in said press chamber, its contained liquid can be extracted by said clove being cleanly crushed by said press plated being urged into said chamber by said lever, liquid so expressed drains from said chamber and following said crushing and liquid expression said cleaner can be demounted from said lever and used to dislodge debris of said crushed clove. How many parts does the press have? How many benefits follow when a clove is placed in [the] press chamber? Did they claim the clove? Why was that smart? Handout Week 02

  17. Making a Claim Chart – Example 3 (cont’d) Why explicitly claim ‘an end’? “Whereby” introduces “functional language.” This kind of functional language may not be given “patentable weight.” That is, it can’t [mostly] be used to distinguish over prior art, especially if the benefit is inherent in the claimed structure. See the popcorn case, In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). (but see Judge Newman’s dissent.) A garlic press comprising [1] an elongated handle having [a] a drainable press chamber at [b] an end thereto, said press chamber having a top opening, a bottom and an inner surface, [2] a press plate retractably moveable into said press chamber, [3] lever means acting on a fulcrum at said end for retractably urging said press plate into said press chamber through said top opening, said press plated being joined to said lever by a pivot, [4] a low surface friction material enameled onto said inner surface of said press chamber, and [5] a cleaner mounted on said lever and removably secured thereto by interaction with said pivot, whereby when a clove of garlic is placed in said press chamber, [a] its contained liquid can be extracted by said clove being cleanly crushed by said press plate being urged into said chamber by said lever, [b] liquid so expressed drains from said chamber and [c] following said crushing and liquid expression said cleaner can be demounted from said lever and used to dislodge debris of said crushed clove. Week 02

  18. BREAK TIME: Newly Noticed What did you notice when you looked at the patent again? HANDONE Each student: Please take another student’s essay, and ask the author for the patent in question (or 5 pages of it, if it was a long one). Week 02

  19. Fontirroche 594 - Design Arounds: Impressions based only on the patent Discuss! Week 02

  20. Fontirroche 594 Patent, Claim 7Evolution in Prosecution Handout: http://www.stanford.edu/~rjmorris/sciev.08/rjm_staa.doc This is a claim chart for a different purpose. Breaking out phrases is most relevant to see what phrases were added, deleted or changed. The vertical position of a phrase should stay the same for all columns, even when new language was later added before it. In that case, insert blank lines in the column for the earlier version. For example, explain this evolution: Original Amended Issued A A A A-1 A-2 B B C C C C-1 C-1 C-2 D D Handout Week 02

  21. Next Week – NO CLASS If you want to meet with me to discuss claim charting, that’s GREAT. Please email me with times that are best for you. I am available during the day from around 10 to around 4, most days, both this week and next. This Wednesday I won’t be available at all. I can come in earlier than 10, and I can come in on the weekend, with a little advanced notice. NEXT CLASS: October 13: Law Students’ Lectures A Claim Construction Order and a Transcript of Expert Testimony – The Real Thing: Boston Scientific v. J&J/Cordis Week 02

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