2008 - sci.ev. - rjm week 07 1 teams and patents simulation schedule and critique assignments...

2008 - Sci.Ev. - rjm Week 07 1

• Teams and Patents• Simulation schedule and critique assignments• Obviousness – Your responses to your colleagues’ comments

• KSR•MuniAuction and O’Neill’s testimony

• DaubertREST OF TERM

• This week: Wed-Fri • Next week any day• 11/10:

Common problems with choosing an issue for experts.Daubert in a patent case: MEMC (calculations to prove infringement).

• 11/17: Experts’ powerpoint and other visual aidsTivo v. Echostar cert. petition arguments about infringement expert talking about validity; 112 (written description) and expert on inherency: ICN Photonics

• Week of 11/17 and 11/24-26 • 12/1 and 2. 7 to 10? Simulations

Today’s Agenda

Team meetings with me

Team meetings with me


Please sit with your team*

ExpertsLawrence KLEINBrett STAAHL

Sondra HELLSTROMLisandra WEST

Sarah JARCHOW-CHOYSamantak GHOSH

Mark MELAHN




Mark MELAHN

AttorneysJen ROBINSONDavid LYDON

Andy PARKTim SAULSBURY

Karni CHAGALJulie KANE

Julia KRIPKEGreg SOBOLSKI

TechnologyT-cell tagger5,635,363

Computer Speaker5,581,626

DNA synthesizer support

6,770,754 orPhosphorylation Method

5,959,090

Computer Mouse7,233,319

FH ordered

FH on PAIR

FH on PAIR

Ready for FH?

Ready for FH?





Mark MELAHN




Mark MELAHN

AttorneysJen ROBINSONDavid LYDON

Andy PARKTim

SAULSBURY

Karni CHAGALJulie KANE

Julia KRIPKEGreg SOBOLSKI

Monday 12/1

or Tuesday 12/2? Starting at 7 (or 6:45?)

or 8:30?Simulations will be held in the Moot Court Room (Room 80, Basement of Classroom Wing).They will be video-recorded.

Scheduling


See How the Seminar Will Work – Part 5 - LINK HERE

You will email me a critique - 3 roses and 3 thorns – of a fellow student’s presentation.

Deadline: 12/8.

After I receive all the critiques, I will forward them to the person critiqued.

See How the Seminar Will Work – Part 5 - LINK HERE

You will email me a critique - 3 roses and 3 thorns – of a fellow student’s presentation.

Deadline: 12/8.

After I receive all the critiques, I will forward them to the person critiqued.

Critiques


Obviousness: 103Section 103 forbids issuance of a patent when"the differences between

the subject matter sought to be patented and

the prior art are such that the subject matter as a whole would have been obvious

at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

Now 103(a)

What the statute actually says:A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if


KSR – The Supreme Court’s Response to the Fed Cir’s Response to the grant of cert. in KSR

We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1367 (2006)

("Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense");

Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (2006)

("There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine . . . .").

Page 9.1m slugged

Denial of JMOL of obviousness (after

jury verdict FOR PO on obviousness)

REVERSED.

Bench trial judgment of obviousness

AFFIRMED (among other things).Did the test change? Or just who won?


KSR – Supreme CourtPage 2.1t slugged [T]he Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the

"teaching, suggestion, or motivation" test

(TSM test),under which a patent claim is only proved obvious if

"some motivation or suggestion to combine the prior art teachings"

can be found in - the prior art, - the nature of the problem, or - the knowledge of a person having

ordinary skill in the art. See, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323‑1324 (CA Fed. 1999). KSR challenges that test, or at least its application in this case. [Fed. Cir.] at 286‑290.


KSR – what the Fed. Cir. actually said (at 285-6)

"The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, 'leading inventors to look to references relating to possible solutions to that problem.' " Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (quoting Pro-Mold, 75 F.3d at 1572). "Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references." Dembiczak, 175 F.3d at 999; see also Ruiz, 234 F.3d at 665 (explaining that the temptation to engage in impermissible hindsight is especially strong with seemingly simple mechanical inventions). This is because "combining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor's disclosure as a blueprint for piecing together the prior art to defeat patentability--the essence of hindsight." [*286] Dembiczak, 175 F.3d at 999.

prosecution;pumpkin bag; rejections reversed for lack of evidence of TSM; back in PTO, examiner did better job: no patent ever issued

litigation; screw anchors for

footings; v&r for Graham findings

litigation; holder for sports cards,

v&r because disputed facts


KSR- Fed. Cir. (cont’d) Therefore, we have consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g., In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) ("Particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed." (emphasis added)); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) ("In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed." (emphasis added)).

In v&r’ing the trial court’s grant of summary judgment, did the Federal Circuit follow or depart from its own rule concerning motivation to combine elements “in the manner claimed”?

2008 - Sci.Ev. - rjm Week 07 10

Obviousness – Your Questions about KSR

Park: Hindsight and “flexible” standardRobinson: Questions of law that can/not go to the juryJarchow-Choy: What has the PTO been doing since?Kane: “obvious to try” [itself] and regarding hindsightWest: 282 v. 103: what is a “PRESUMPTION” [in law];

withholding of Asano from PTO: how to use this fact/omission.

Melahn: ‘too rigid’ TSM was ‘concession to judicial administrability’? What have the courts been doing since?

Chagal: why can’t [how can] secondaries help the AI?Kripke: expert conclusions of obvious v. 702 (save for

Daubert!); secondaries after KSR?

2008 - Sci.Ev. - rjm Week 07 11


Ghosh: consequence of the invention (it improves over Asano) v. objective (inventor’s reason for making the invention); the murkiness of the word “motivation”Sobolski: Does the court want to bring back “flash of genius”? Problems of cutting back on issuance / issuance customsKlein: BPAI (??): 60% cite KSR. (RJM: Why not 100?)

The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. (KSR, 6.1B)

Lydon: “hindsight bias” – big, complicated, worth discussing. Yeah: see http://www.iptoday.com/pdf/2007/4/Morris-Apr2007.pdf

2008 - Sci.Ev. - rjm Week 07 12


Staahl: ordinary skill != ordinary creativityHellstrom: Engelgau should have shown in the spec (??) the

difficulties/unpredictabilities of putting modular sensor on Asano. [or in response to KSR’s motion for SJ??]

Saulsbury: Persuaded by “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (RJM: the UNLESS clause?)

RJM: Did the Supreme Court REJECT TSM or is it still usable?

2008 - Sci.Ev. - rjm Week 07 13

KSR – Bottom Line?B

When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals …

captured a helpful insight…. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will becombinations of what, in some sense, is already known.

Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents.

But wait! “Prior art” includes actual devices, not just patents and publications. Think “existence proof,” Justices. (And dead horse?)

The obviousness analysis cannot be confined by a formalistic conception

of the words ["]teaching, suggestion, and motivation["], or

by overemphasis on the importance of published articles and the explicit content of issued patents.

The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.(KSR 7.2)

Page 7.2 slugged

2008 - Sci.Ev. - rjm Week 07 14

Obviousness: KSR"Under § 103, [1] the scope and content of the prior art

are to be determined; [2] differences between the prior art and

the claims at issue are to be ascertained; and [3] the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or

nonobviousness of the subject matter is determined. Such secondary considerations as

- commercial success, - long felt but unsolved needs, - failure of others, etc.,

might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." [Quoting Graham v. Deere]

Page 1

http://www.stanford.edu/~rjmorris/sciev.08/KSR_TELE.DOC

2008 - Sci.Ev. - rjm Week 07 15

MuniAuction – The Expert’s Testimony-1

Any similarities to Fontirroche litigation?

Quicksand?

Strategy?

Secondaries: Ghosh on Jarchow-Choy

(Melahn on Sobolski and who wants broad, who wants narrow; like obviousness it is a function of time).

Claim construction Order changes the expert’s task

Lydon on Hellstrom: Life is short and then you settle

The Federal Circuit’s [early] subtext: love for the word NOT: All patents should be NOT invalid and NOT infringed.

2008 - Sci.Ev. - rjm Week 07 16

MuniAuction – The Expert’s Testimony-2; Also Primary/Secondary Considerations

Kane+Sobolski/Kripke: Coaching experts on The Law; using testimony where the expert ducks (or quacks)

Jarchow-Choy/Lydon: Ditto; “contributory infringement;” the single actor requireement (if we have time).

Chagal/Lydon, also Sobolski/Hellstrom: {Can AI rely on LACK of certain secondaries to refute presence of others? Probably NOT, as a matter of law…} Klein/West: When are secondaries argued? {There is a right answer to this question. Or rather two. Neither MuniAuction nor KSR is clear on this.}

Kripke/Melahn, also Robinson/Kane: The PRIMARY considerations.

Saulsbury/Lydon and Staahl/Lydon: the {new-ish} requirement that nexus means the product/award/whatever and the claimed features are COEXTENSIVE. An impossible test or a good one?

link to expert testimony

2008 - Sci.Ev. - rjm Week 07 17

MuniAuction – Obviousness; Nexus

Obviousness Analysis: Compared to Teleflex?

Secondary Considerations: What’s “NEXUS”? (MuniAuction page 8)

2008 - Sci.Ev. - rjm Week 07 18

DaubertWhy is Daubert UNimportant for scientific experts in patent cases?

What about patent damages experts, testifying about marketing, market share, licenses, accounting, royalty rates, profits, etc.?

Why did Daubert’s experts state [only] that Bendectin was ‘capable of causing’ the harm?

2008 - Sci.Ev. - rjm Week 07 19

Rules of Evidence – Rules 702, 703 and 704Federal Rules of Evidence

Rule 702. Testimony by Experts

If scientific, technical, or other specialized knowledge

will assist the trier of fact to understand the evidence or to determine a fact in issue,

a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if

(1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

Rule 703. Bases of Opinion Testimony by ExpertsThe facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect.

Rule 704. Opinion on Ultimate Issue(a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact.(b) [Refers to testimony about the mental state of a criminal defendant] From Week 05 slides 14-

16

1. RELIABLE

2. RELEVANT

http://www.law.cornell.edu/rules/fre/rules.htm

2008 - Sci.Ev. - rjm Week 07 20

Rules of Evidence – Rule 702Rule 702. Testimony by Experts

[An expert] witness … may testify … if(1) the testimony is based upon sufficient facts or data,

(2) the testimony is the product of reliable principles and methods, and

(3) the witness has applied the principles and methods reliably to the facts of the case.

Consider the categories of evidence provided by Daubert and Schuller’s expert witnesses:

[1][A] and [B] animal and in vitro studies,[2] pharmacological studies based on chemical structure, and [3] reanalysis studies

in light of Rule 702’s 3 requirements.

Which studies were most easily challenged under which evidentiary requirements?

2008 - Sci.Ev. - rjm Week 07 21

Rules of Evidence – Rules 702, 703 and 704

Federal Rules of EvidenceRule 702. Testimony by ExpertsIf scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

Rule 703. Bases of Opinion Testimony by ExpertsThe facts or data in the particular case

upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon

by experts in the particular field in forming opinions or inferences upon the subject,

the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect.

Rule 704. Opinion on Ultimate Issue(a) Except as provided in subdivision (b), testimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact.(b) [Refers to testimony about the mental state of a criminal defendant]

From Week 05 slides 14-16

http://www.law.cornell.edu/rules/fre/rules.htm

2008 - Sci.Ev. - rjm Week 07 22

Rules of Evidence – Rules 702, 703 and 704

Federal Rules of EvidenceRule 702. Testimony by ExpertsIf scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.

Rule 703. Bases of Opinion Testimony by ExpertsThe facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted. Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value in assisting the jury to evaluate the expert's opinion substantially outweighs their prejudicial effect.

Rule 704. Opinion on Ultimate Issue(a)Except as provided in subdivision (b),

testimony in the form of an opinion or inference otherwise admissible

is not objectionable because [cannot be objected to on the grounds that]it embraces an ultimate issue to be decided by the trier of fact.(b) [Refers to testimony about the mental state of a criminal defendant]

What about an ultimate issue that is a CONCLUSION OF LAW?

From Week 05 slides 14-16

2008 - Sci.Ev. - rjm Week 07 23

Daubert – on Remand

Why do I mention the FINAL JUDGMENT rule for appeals?

Why did Daubert NOT supplement the record?If they had, what additional evidence might they have put in?

2008 - sci.ev. - rjm week 07 1 teams and patents simulation schedule and critique assignments...

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