01/12/2012 rjm - ip: sci ev in pat lit - winter 2012 1 scientific evidence and expert testimony:...
TRANSCRIPT
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. MorrisRoom 218 Crown Quad
On the web:http://www.stanford.edu/~rjmorris/sciev.12/
andNot yet but soon: Email Group [email protected]
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 …
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 3
Who Are You? - 1Seating – Different every week for the first few
weeks. Today: Guess the ordering principal. Guess the color codes.
Handout - Student List6 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.
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 4
Seating Order – And a Few Preliminary Questions
TimWaqasAmyNicolajAmandaChrisPatrickSamKevin ---Kanupri
yaDaveJamieRamCorinne
• Before you did the first assignment, had you ever noticed patent numbers on objects and packaging?
• Was 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?
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/ando is on your resume? o is not on your resume?
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.
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.
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 8
Who Are You? Questions about Course Description- 3The 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.
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 9
Today’s Assignment - 1
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 10
Today’s Assignment - 2
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 112009 - 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 Work
• Weekly Assignments and Comments and final project Critiques:
Better Late than Never?
What You Will Do in this Seminar -3
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 12
NOrequired.
Better Late.than Late That’sNever? BetterNever
What You Will Do in this Seminar -4
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 13
• Schedule/Syllabus – short form of assignments • 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
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 website2. 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.
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 1515
Concept Patent Copyright Trademark
Coverage Inventions(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
APPLY REGISTER APPLY
Can Agency REJECT?
YES Not often YES
When does protection START
From ISSUANCE From CREATION From 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 PTO
Patents != Copyright != Trademarks
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)
SUBSTANTIVE LAW
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 17Week 01 17 2009 - Sci.Ev. - rjm
FEEL FREE TO INTERRUPT ABOUT
AS WELL AS ABOUT
I use the Mona Lisa to indicateTERMS 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
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, 220,719In 2009, 167,349 In 2008, 157,772
***In 1963, 45,679 Source for earlier years: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm
* Patents are issued once a week on Tuesdays.
219,614
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?
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 202009 - 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, VCtheir commonalities, differences and priorities
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 21
Tim
Lau
’s P
ate
nt
5,3
13
,70
5 -
CO
VE
R S
HE
ET
issue date
Earliest US Filing Date
prior art
This pate
nt expire
s
NOT on May 13, 2
011
but on M
ay 24. 2011.
It did not g
o into
effect until
May 24. 1994.
class
Applicaton Date (of appl. that issued as this patent)
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).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…
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 23Week 01
CLAIM
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 24
End of classRest will be for next week.
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 252009 - 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
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
But first: some abbreviations used on the next slide.AI: Accused InfringerPO: Patent Owner
BOP: burden of proofQOP: quantum of proof
The Different Quanta of ProofPrep: Preponderance of the Evidence = 50%+ЄC&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 272009 - Sci.Ev. - rjm Week 01 27
Major Issues of Liability in Patent Law
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 282009 - 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
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 29
P-I-S v P.A.Situation A
Patent-in-suit = NEWPrior Art Patent = OLD
Situation BPatent-in-suit = OLDPatent 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 Patent Look at New's CLAIMS Look at New's SPECIFICATION (to see what people do who would PRACTICE New’s invention)
Old Patent Look 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 ________
01/12/2012 RJM - IP: Sci Ev in Pat Lit - Winter 2012 302009 - 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.
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