Scientific Evidence and Expert Testimony Patent Litigation LAW

Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad o t t e g also site n a c 723 -9505 You urse web rks: the co coursewo S rjmorris@stanford. edu U m fro SYLLAB Click left. Course Materials on the Web: at the Let’s go here first! course website http: //www. stanford. edu/~rjmorris/sciev. 08/ And Stanford’s coursework site for posting assignments: https: //coursework. stanford. edu/portal/site/F 08 -LAW-343 -01 Email Group scievseminar 08@lists. stanford. edu 2008 - Sci. Ev. - rjm Week 04 1

Today’s Agenda • Navigating the course website. • The claim construction order, and Assignment 1 A. (It should go AFTER the law slides, but your comments were so interesting, I want to start with it. Everyone shout at once, please. Andy Hellman, Lawrence Klein and Sondra Hellstrom: please make sure to ask your questions of the law students!) • Law students educating (each other and) grad students (Week 02 -Assignment 2 B-Law) • The Fontirroche Litigation: Reading an Order (judicial decision), reading a transcript. • How the DOCTRINE OF EQUIVALENTS became important • The Transcript • Next CLASS: 10/20. Possible Field Trip Wednesday? Check your email for news. 2008 - Sci. Ev. - rjm Week 04 2

Claim Construction Order Fontirroche patent Also, for interest, the whole docket for the litigation (to date, anyway). And the jury’s verdict. And the judge’s order on various post-trial motions, including JMOLs. 2008 - Sci. Ev. - rjm Week 04 3

π = BSC (AI of 594) The 2005 Claim Construction Order Docket # 298, at page 13. 2008 - Sci. Ev. - rjm Right. Either BSC does not understand the law, or it hoped Judge Illston didn’t. Week 04 4

The 2005 Claim Construction Order 2008 - Sci. Ev. - rjm Week 04 Docket # 298, at 13 -15. The court granted Cordis’ motion for declaration of an Interference-in-Fact. 5

Post-Trial I’ve covered up the statement of the verdict, and of who brought which JMOL, p. 3 of Docket 844, 2/19/08. Re JMOL: see pages 14 -17 of the pdf linked above. 2008 - Sci. Ev. - rjm Week 04 6

BSC v. Cordis – sorting it out 1. Cordis wanted to show that BSC’s Maverick catheters literally infringed claim 7. To do that, it needed BONDED to be > chemical. 2. Cordis wanted an interference. [Why? ] Was this more important than #1? A makeweight to #1? Was it Cordis’ best defense as AI of Kastenhoffer? Discuss “senior party” and “junior party”: Fontirroche priority (‘ 510 application date): 1/31/94. Kastenhoffer ‘ 477 priority (earliest of 3 continuations in ‘ 477 family tree): 9/20/94. To succeed, it needed BONDED to be > chemical. Trotta first appears in the docket as filing a declaration in support of Cordis’ Reply to BSC’s motion for a declaration of NO intereference. 9/21/04. He later filed a delaration on obviousness of another BSC patent. Claim Construction Order 1 is dated 2/24/05. Trotta was added as an inventor (certificate 12/13/05) after the Court accepted the broad BOND argument. Trotta’s testified sometime after Claim Construction #1 (2/24/05). He gave his CURRENT understanding as well as his understanding “prior to 2002. ” Cl. Const. #2 at 6: 2 m. “What else” submissions Discuss many (Julia’s, Julie’s, etc. ) comments about adding Trotta as inventor. Discuss Mark’s and Tim’s Phillips. Defer Samantak and Sondra, incorporating Pruitt testimony until we get to the transcript, later today or next week. 2008 - Sci. Ev. - rjm Week 04 7

BSC v. Cordis – sorting it out But first: Thank you for LABELING your submissions in a helpful way, in accordance with the instructions. Keep the parties straight. Judge Illston doesn’t help because she uses “plaintiff” and “defendant. ” In a case with patents asserted by both sides, that is particularly confusing. (Some of you wrote BSC for PO Cordis and Cordis for AI BSC. ) Make it a habit to note who’s who at the outset, in a way that is visible on your copy of the decision, whether electronic or paper. And when you write, AVOID identifying the parties as plaintiff and defendant (or appellant and appellee) unless you have a very good strategic reason to avoid naming names. 2008 - Sci. Ev. - rjm Week 04 8

Before We Get to the Law Students’ Slides • Hierarchy of Non-Case Law: 1 Statutes 2 Regulations 3 MPEP (agency’s internal practice rules) • Intro. to Civil Procedure (in Sobolski’s talk) • Intro. to Federal Courts 2008 - Sci. Ev. - rjm Court systems have trial courts and appeals courts. In the Federal system, the trial courts are called DISTRICT Courts, e. g, the Northern District of California. Appeals go to the Courts of Appeals to all the federal Courts of Appeal are “OF RIGHT. ”* Most cases are appealed to the regional circuits, e. g. , the Court of Appeals for the NINTH Circuit Since 10/1/1982, patent cases go to a specially-created court of appeals with nation-wide jurisdiction: the Court of Appeals for the Federal Circuit. A losing appellant or appellee can PETITION the SUPREME COURT for review, but the SUPREMES have DISCRETION to hear or not hear cases (with few exceptions). Week 04 9

Law Students’ Slides 1. confidential stamps in litigation, public nature of patent documents -- when they become public, whether that is relatively new (defined as the last 20 yers): Julia Kripke 2. complete identity of specification in application and issued patent, exceptions, reasons: Andy Park. 3. interference-in-fact: interferences generally, conditions under which district court can determine an interference (relates to the actual litigation of the Fontirroche patent, but is not in the documents you read for 9/29): Julie Kane 4. claim construction order: what is it, what is its relation to a Markman hearing, why is it called "Markman": Jen Robinson 5. counterclaim: what is it, what kinds of issues might an accused infringer raise in a counterclaim in addition to infringement of its (AI's) patents, when must you file a counterclaim: Greg Sobolski 6. IDS: what is 19934 -19936? Who and how selects the references listed? Does their listing constitute an admission that they are both prior and [relevant] art? What else should we know about IDSs? Briefly mention how we can find out more about the proposed changes for them: Mark Melahn. 7. Declaration and Power of Attorney: 19925 -19926. What does this mean the patent prosecutor has to do; How and when and with whom; what are the most important 2 -5 things in these pages: Karni Chagal. 8. Terminal Disclaimer: This patent has a terminal disclaimer. Why? What does it mean? David Lydon 9. Continuation in part: What does this mean? Why do people file CIPs? What are the dangers? What benefits? Tim Saulsbury 2008 - Sci. Ev. - rjm Week 04 10

Pruitt Testimony Julie, Sarah, David: Pruitt’s preparation, and non-. A, Hellman: expert credentials. Karni: So few objections. Julia, Greg: good analogies. Mark, Sondra: bad analogies. A. Park, Lisandra: Pruitt not a PHOSITA? Badly coached? Or? Mark, Jen, Samantak: Lee/Pruitt fencing. Brett, Tim: Trotta again. Preparation? Lawrence: The DOE. 2008 - Sci. Ev. - rjm Week 04 11

Clients (temporary assignments) Experts Lisandra WEST* Sarah JARCHOWCHOY 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 2008 - Sci. Ev. - rjm Attorneys Jen ROBINSON David LYDON Tim SAULSBURY* Karni CHAGAL Julie KANE* Mark MELAHN Julia KRIPKE Andy PARK Greg SOBOLSKI Week 04 Anybody changing a mind? Any law student interested in being an expert in the simulations? 12

P-I-S v P. A. Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent on accused device = NEW Is the New patent valid Is the Old patent infringed by over the Old patent? someone practicing the New patent? New Patent Look at New's CLAIMS Look at New's SPECIFICATION Old Patent Look at Old's SPECIFICATION (what it "teaches") Look at Old's CLAIMS Reminder. Believe this! 2008 - Sci. Ev. - rjm Week 04 13

Next Week – Finish BSC v. Cordis, DOE Wednesday, 10/15, at 2 pm in San Jose, Judge Whyte’s Courtroom: claim construction HEARING. I am told that it will only be attorney argument, no expert testimony, but it WILL involve claim charts. Anyone interested? I hope we can go to an actual trial before too long. 2008 - Sci. Ev. - rjm Week 04 14