Sci.Ev. 2006-rjm Week 4 1 Today’s Agenda Grad Students Only: How the Course Will Work; Who We Are Everyone 1: Introductions; Last 2 classes & Simulations.

Sci.Ev. 2006-rjm Week 4 1

Today’s Agenda Grad Students Only:

How the Course Will Work; Who We Are

Everyone 1: Introductions; Last 2 classes & Simulations

Everyone 2 :Law Students Teach Grad Students the Law

Looking at a Patent

Reading Cases, Reading Daubert

Daubert for Patent Experts on the Technology in Suit


How the Seminar Will Work

Questions?Why the contract and the deadlines?Calendar

http://www.stanford.edu/~rjmorris/sciev/#current


Teams?

Grad StudentsAmat, FernandoAntoine, ChristopheBarlian, AlvinEngland, JeremyFinkelstein, IlyaJiang, XirongPerlson, Lisa (Will be absent 11/15)Wachs, MeganSchuller, Jon (Auditing: will miss start of quarter)Shen, XilingZhang, Angela


Wk Dat ReqAtt Topic 4 0927 L & G Who we are / Patents / Experts 5 1004 L & G Transcript and a Real Live Litigator; Choosing

Teams and Patents 6 1011 G only Daubert in non-patent cases; More transcripts 7 1018 L & G Claim Charts, File Histories, Visual Aids 8 1025 Individual team meetings. Progress with patent selection.

Issues that pop out of file histories. (By now, every team should have selected a patent (2 patents?) and have ordered the file history. Drafting an expert declaration.

9 1101 L & G Transcripts; Summary Judgment Motions, Briefs and Supporting Declarations

10 1108 Individual team meetings11 1115 L & G Oral Arguments; Critiques of Expert Declarations

12 1122 Holiday. Individual team meetings Mon & Tues?13 1129 L & G ?Simulations? Or class rescheduled to Monday,

11/27 & Chico Gholz visits?14 1206 L & G ?Simulations? Or Party and Debriefing? Or both?

Tentative and Abbreviated Syllabus


Vote regarding 11/29(27) and 12/06

Can anyone not attend on Monday afternoons?

Other Considerations?


Law StudentsEltoukhy, Adam: EE PO San Jose,Cairo Santa Clara UFan, Jason: EE AI BethesdaMD HarvardHuang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.

Grad StudentsAmat, Fernando EE Barcelona TechU of CataloniaAntoine, Christophe EE Versailles SupelecBarlian, Alvin ME Jakarta PurdueEngland, Jeremy Phys ?MA and ?NH HarvardFinkelstein, Ilya Chem San Diego,CA BerkeleyJiang, Cindy Phys Shaoyang Beijing Normal UPerlson, Lisa (abs 11/15) Chem PlainviewNY BarnardWachs, Megan EE Elkridge,MD BrownSchuller, Jon (Aud) Shen, Xiling EE Shanghai StanfordZhang, Angela Immun Beijing Berkeley

French pronunciation

“shilling” like pounds and pence

“zang” rhymes with sang or gong?

el-TOO-key

“wang” rhymes with sang?

Barley (like the grain) + un??

Woks, as in stirfry

Last syllable rhymes with mine or mean?

“ROE-zahss? ROSE-iss?

“fan” rhymes with man or con?

uh-MOTT? ah (as in and)-MAT??


Law StudentsEltoukhy, Adam: EE PO San Jose,Cairo Santa Clara UFan, Jason: EE AI BethesdaMD HarvardHuang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.

Grad StudentsAmat, Fernando EE Barcelona TechU of CataloniaAntoine, Christophe EE Versailles SupelecBarlian, Alvin ME Jakarta PurdueEngland, Jeremy Phys ?MA and ?NH HarvardFinkelstein, Ilya Chem San Diego,CA BerkeleyJiang, Cindy Phys Shaoyang Beijing Normal UPerlson, Lisa (abs 11/15) Chem PlainviewNY BarnardWachs, Megan EE Elkridge,MD BrownSchuller, Jon (Aud) Shen, Xiling EE Shanghai StanfordZhang, Angela Immun Beijing Berkeley


Eltoukhy, Adam: EE PO San Jose,Cairo Santa Clara UFan, Jason: EE AI BethesdaMD HarvardAmat, Fernando EE Barcelona TechU of CataloniaAntoine, Christophe EE Versailles SupelecWachs, Megan EE Elkridge,MD BrownShen, Xiling EE Shanghai StanfordJiang, Cindy Phys Shaoyang Beijing Normal U

Huang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.Barlian, Alvin ME Jakarta PurdueEngland, Jeremy Phys ?MA and ?NH HarvardFinkelstein, Ilya Chem San Diego,CA BerkeleyPerlson, Lisa-abs11/15 Chem PlainviewNY BarnardSchuller, Jon (Aud) Zhang, Angela Immun Beijing Berkeley

Tentative Groups?


Patents in GeneralMegan/Henry: Who brings the suit? Who has to prove what?Fernando/Jason: Patents v. Papers – as prior artChristophe/Jason: Patents v. Papers – contents: including and

excludingXiling/Jason: Refs in the Spec

Sorkin Patent “The 882* Patent”Lisa/Adam: UsefulnessCindy/Henry: The ClaimsIlya/Ann Marie: Numbering the FiguresJeremy/Ann Marie: infringing a claim to a specific materialAlvin/Ann Marie: why claim a specific material

Goodman Patent “The 877* Patent”Angela/Adam: Infringing the Cited/Referenced Prior ArtXiling/Jason: Refs in the Spec (6:62 et seq.)

Looking at Patents

*And where have all those initial apostrophes gone?

http://www.stanford.edu/~rjmorris/sciev/READINGS/5440842A.pdf




Looking at Patents – Law Students Get a TurnISSUES THAT JUMP OFF THE PAGE

and some vocabulary lessonsJason – Sorkin Obviousness

Adam – Sorkin Close PA ---> PH narrows claims

Henry – Sorkin[How can issues jump off the page, if you don’t have

an accused device or the PH in front of you?]Obviousness – Secondary Considerations

Ann Marie – SorkinObviousness (narrow invention)Enablement re heat sealing, and the PHOSITA

Prior ArtProsecution History

Terms of ArtCLAIMS


Patents - concrete

CP 1prio

r art

CLASS

issue date

filing date

From my patent law 2004 coursepack


Patents - concrete

CP 1.3 right hand

column [2:54-75]

Dependent claim

preamble

body

From my patent law 2004 coursepack


Christophe’s Summary (not forwarded to the class)

Lisa/Adam: Why not just give the court the journal articles?Angela/Adam: Why remand?Alvin/Adam: How to pick an expert?

Xiling/Henry: Role of juryChristophe/Jason: Amici

Ilya:/Ann Marie: Effect and power of dissents Jeremy/Ann Marie: Minority Views in Science

Daubert

RJM: ?Judicial Notice?FREvid 803(18)

RJM: Credibility. The strategic value of excluding v. Letting the

jury decide credibility

http://www.stanford.edu/~rjmorris/sciev/READINGS/fedrules.doc




Why do you NOT move to exclude your average expert in a patent litigation?

What can we learn from the cases where motions have been made and have succeeded?

Daubert in Patent Cases


Jason – Daubert in Patent Cases-2

Expert testimony must be reliable, by preponderance of evidence a. Factors indicating reliability of techniques and conclusions 1. Generally accepted within scientific community 2. Published in refereed journals 3. Low rate of error (original research) 4. Tested (original research) 5. Resulting from independent research b. What if we don't have some of these factors? 1. Explain techniques and conclusions precisely and in detail 2. Provide supporting, published references by recognized minority 3. Address data, results, and conclusions of all studies 4. Support with generally accepted results wherever possible c. Where to watch out 1. Support everything you say with references 2. Be especially careful when interpreting results of others 3. Preserve credibility: don't overreach


Jason – Daubert in Patent Cases -2

Expert testimony must "fit", by preponderance of evidence

a. What does this mean?

1. Help jury decide factual questions necessary to the case

2. Rely on scientific expertise

- Go beyond common knowledge, common sense, and common experience

b. Where to watch out

1. Don't draw any legal conclusions, such as non-infringement

2. Stay within your own scientific expertise


Adam – Daubert in Patent Cases

Factors to Consider for Assessing Scientific Validity-General Acceptability-Peer Review and Publication-Rate of Error/Testability

General Acceptability-Pretrial independent research-Objective support-Acceptance/Relevance of methodology employed-Recognized minority at the minimum

Peer Review and Publication-Learned treatise-Reputable scientific journal-Clinical studies

Rate of Error/Testability-Reliable results

-Verifiable evidence

-Valid scientific method


Henry – Daubert in Patent Cases -1

Slide 1: Key points from all cases

1. An expert's conclusions must be measured against accepted knowledge of

the relevant scientific community. (Carnegie Mellon, p.4)

2. Experts must show that their methodology follows the scientific method as

practiced by a "recognized minority" in their field, and does not

reinterpret other scientists' data. (Carnegie Mellon, p.7=8)

3. Even highly qualified experts must cite specific, objective evidence

supporting their opinions, such as papers or experiments. (Sorkin, p.12)

4. Experts can testify only about their areas of expertise, not about

subjects that lay jurors could judge for themselves. (Pharmastem, p.14



Slide 2: Carnegie Mellon emphasizes the importance of the "scientific

community"

* The patentee's expert, Dr. Brown, testified about plasmids and enzyme

activity.

* The court excluded Brown's testimony because it contradicted accepted

scientific knowledge, and reinterpreted other scientists' papers and data

without a recognized methodology.

* Specific problems with Brown's testimony:

= Brown's conclusions contradicted two treatises and 16 published papers

= The patentee's two other experts did not agree with Brown

= Brown ignored results that did not support his theory and failed to

explain alternative explanations for the data.



Slide 3: Sorkin shows that experts have to rely on more than their own

credentials

* The court agreed that the patentee's expert, Dr. Trejo, was a reputable

engineer.

* However, the court noted specific problems with his testimony:

- Trejo cited "general literature" without naming specific sources

- Trejo did not perform any experiments on the disputed devices

- Trejo made unsupported assumptions about the "purpose" of devices



Slide 4: Pharmastem explains that experts can talk only about their fields

* The expert, Dr. Hendrix, was a stem cell expert, but instead of testifying about stem cells, she discussed the defendant's marketing materials.

* Even though Hendrix's observations were useful, they did not employ her expertise. The court said that a lay juror could judge the marketing materials.


Ann Marie – Daubert in Patent Cases -1

1.. Slide 1: Infringement Argument

i. The alleged infringer and Sorkin both make caps used on tendons. Sorkin argues that the difference between these caps does not defeat a finding of literal infringement or infringement through the doctrine of equivalents.



2.. Slide 2: Legal Opinions by Experts

i. Under Rule

704(a), experts are not allowed to give legal conclusions but can give

opinions concerning an ultimate issue to be decided by court.



3.. Slide 3: Trejo Testimony

i. Trejo does

not site references he used in forming his expert opinion, explain his

methods for analyzing the caps, or conduct scientific testing and therefore

fails the Daubert test.



4.. Slide 4: Literal Infringement

i. There is no

finding of literal infringement because the retaining member was located at

8mm inside the cap and Amsysco's cap retaining member is 1.25mm inside the

cap.


Ann Marie – Daubert in Patent Cases - 5

5.. Slide 5: Doctrine of Equivalents Infringement

i. Sorkin

distinguished his patent from prior art by arguing that the location of the

film in his cap is different from that of the prior art. He cannot now

argue that a despite a difference in film location, the caps equivalent and

therefore infringing under the Doctrine of Equivalents.


Next Week

Ampex v. Mitsubishi Transcripts (Grad Students read, Law Students re-read)

The Examining Attorney (for PO Ampex) will be here to answer your questions.

Discussion (no reading yet) about the PHOSITA and the Expert

Sci.Ev. 2006-rjm Week 4 1 Today’s Agenda Grad Students Only: How the Course Will Work; Who We Are Everyone 1: Introductions; Last 2 classes & Simulations.

Documents

grad studentsamat

eeposan jose

chempolos alamosharvardrosas

cairosanta clara ufan

cheme aiphoenixariz

ann marie

lisa abs

ilyachemsan diego