Sci.Ev. 2006-rjm Week 1 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad 723-9505 [email protected]

Sci.Ev. 2006-rjm Week 1 1

Scientific Evidence and Expert Testimony: Patent Litigation

LAW 343Prof. Roberta J Morris

Room 208 Crown Quad723-9505

[email protected]

Email Group: [email protected] Materials on the Web:http://www.stanford.edu/~rjmorris/sciev/

Some larger files will be stored on CourseWork, with links on my personal page. If you can’t get into

CourseWork, please let me know.

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




Today’s Agenda

Who We Are

What You Will Do in this Seminar

Review of Your Basic Knowledge of Patent Law

Gould v. Schawlow

Next Week: A real transcript, and either some patent law you may have missed, or (if you haven’t missed any), another judicial opinion about a patent expert

http://www.stanford.edu/~rjmorris/sciev/howwork.htm

http://www.stanford.edu/~rjmorris/sciev/qaire_law.htm

http://www.stanford.edu/~rjmorris/sciev/GOULD.2A.doc



Who Are You?

Handout: Questionnaire Answers

What should we know about you that is not apparent from your resume (education and work experience)?

Why are you here?

Whose side are you on: PO or AI?

Other Questions You May Answer- Did you take calculus in high school?- How did you choose the unassigned book you last read?

http://www-personal.umich.edu/~rjmorris/fall05/STU_TBL.DOC


What You Will Do in this Seminar•Terms of Address?

•Prof./Mr./Ms

•Roberta/Adam

•Professor,Counselor, Prof./Dr.

• Grading by Contract• Weekly Comments

Deadlines so that you can comment on a comment?

Assignments available by ____?

• CourseWork? Password on website?

• Schedule for the Term: •Oral Arguments?

•Simulations

• Snack: healthy or not or both?

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


prosecutors litigators

best

worst

licensing, transactional?, opinion?

Personal: Hours, Billing, Excitement, Client contact, Learning the Latest, Strategizing, Cooperative v. Adversarial

Societal: Trolls, Forced Settlements


Validity

Infringement

AI

Preponderance

C&C

PO

WHO HAS THE

BOP?

WHAT IS THE QOP?

How does this affect you, the litigator, as you work with a scientific expert?


Review of Patent Law

In this group of slides,

please do not click ahead.

That would be cheating!


QUESTION OF FACT - SOR: clearly erroneous

(some deference to trier of fact) - Patent law examples:

anticipation, best mode

QUESTION OF LAW- SOR: de novo (no

deference) - Patent law examples: claim

construction, obviousness


An issue presents a QUESTION OF LAW rather than a QUESTION OF FACT or EQUITY.So what (else)?


Prosecution history

PATENT LAW - EQUITABLE ISSUES

Name at least one and no more than four issues

that arise fairly regularly in patent cases that are questions of

_equity_ (as opposed to questions of _law_ or _fact_.)

What is the standard of review on appeal for

questions of equity? Abuse of Discretion

inequitable conduct, laches, estoppel (from suit, and other kinds of estoppels EXCEPT NOT ______________ estoppel ), injunctions


PROSECUTION HISTORY ESTOPPEL

IS A QUESTION OF

law


Glaxo v. Impax (2004, Rader) cites Wang Labs (1997, Rich) which cites LaBounty (1989, Per Curiam, Nies, Bissell, Archer) (see below).

Ranbaxy (Fed.Cir. 2003, Mayer) cites Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc, Archer):

Insituform cites Mark I (1995, Lourie) which cites LaBounty which cites Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861 n.7, 871 (Fed. Cir. 1985, Baldwin).

“Prosecution history estoppel is a legal question subject to de novo review on appeal. See Insituform, 99 F.3d at 1107, 40 U.S.P.Q.2D at 1609 [(Fed.Cir. 1996, Michel)].”

What’s odd about the citations to this apparently well-settled

principle?


“n7 Compare Prodyne [(Fed Cir. 1984, Rich)] and Kinzenbaw [(Fed. Cir, 1984, Friedman)] where the court was unwilling under the facts there presented to "undertake the speculative inquiry" as to the necessity of certain claim amendments and otherwise to enlarge the literal scope of patent claims amended during prosecution. The results reached there only highlight that application of prosecution history estoppel to limit the doctrine of equivalents should be performed as a legal matter on a case-by-case basis, guided by equitable and public policy principles underlying the doctrines involved and by the facts of the particular case.”

Loctite.


Prosecution history estoppel, moreover, is an equitable doctrine. By its very purpose, equity jurisprudence provides a remedy individually tailored to the circumstances of the dispute at hand. As stated by the Supreme Court:

The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims.Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S. Ct. 587, 592, 88 L. Ed. 754 (1944) (emphasis added).

not a patent case – involved an injunction under Emergency Price Control Act

But then there’s Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 617 (Fed. Cir. 2000) (Plager, J., concurring).


"A district court abuses its discretion when its decision - is based on clearly erroneous findings of fact, - is based on erroneous interpretations of the law, or - is clearly unreasonable, arbitrary or fanciful."

Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc). [formatting mine. –RJM]

quoted in, for example, Pharmacia Corp. v. Par Pharm., 417 F.3d 1369 (Fed. Cir. 2005) (Newman, Schall, Dyk)

APPELLATE REVIEW OF EQUITABLE ISSUES


A patent infringement case is called _X v. Y_. Ordinarily X is the patent owner, but sometimes it is not. Who is it? There are two obvious possibilities, at least to me. If you think of more than two, tell me the other(s), too. Describe these plaintiffs in terms of their relationship to the patent alleged to be infringed.

Why can those non-patent-owners initiate suit?

Accused InfringerExclusive Licensee

AI: Right to seek Declaratory Judgment (equitable and statutory);Exclu. Licensee: Caselaw interpreting 35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” ) and § 261 (“…The … patentee … may … convey an exclusive right …”) See, e.g., Prima Tek II, LLC v.

A-Roo Company, 222 F.3d 1372 (Fed. Cir. 2000).


Exclusive Licensee

35 USC § 281 (“A patentee shall have remedy by civil action for infringement of his patent.” )

35 USC § 100(d) The word "patentee" includes

not only the patentee to whom the patent was

issued but also

the successors in title to the patentee. (formatting mine) [WHY? HOW? WHO CARES?]

CLAIM CHARTS


“Section 261 recognizes, and courts have long held, that an exclusive, territorial license is equivalent to an assignment and may therefore confer standing upon the licensee to sue for patent infringement. See, e.g., Waterman v. Mackenzie, 138 U.S. 252, 255, 34 L. Ed. 923, 11 S.Ct. 334 (1891) ….”

Prima Tek II, 222 F.3d at 1377.


Your client, a resident of Palo Alto, would like to sue a resident of San Francisco for patent infringement. In what court do you bring the action? (Be as specific as you need to be.) Why is that the right court?

The trial judge dismisses your case. In whatcourt of appeals do you file your notice of appeal?

Why is that the right court?

NDCal

Federal question. (28 USC 1338.) Personal jurisdiction and venue over defendant in the district. (venue: 28 USC 1391 b and c).

Bonus: what if

this were a suit on a patent license?

Fed. Cir. (because Vornado doesn’t apply on these facts.)

All patent appeals (~~) go to the Fed. Cir. 28 USC. 1295.


§ 1338. Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition (a) The district courts shall have originaljurisdiction of any civil action arising under any Actof Congress relating to patents, plant varietyprotection, copyrights and trademarks. Suchjurisdiction shall be exclusive of the courts of thestates in patent, plant variety protection andcopyright cases. (b) The district courts shall have originaljurisdiction of any civil action asserting a claim ofunfair competition when joined with a substantialand related claim under the copyright, patent, plantvariety protection or trademark laws.

* * *


§ 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- (1) of an appeal from a final decision of a district court of the United States … if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title, except that a case involving a claim arising under any Act of Congress relating to copyrights, exclusive rights in mask works, or trademarks and no other claims under section 1338(a) shall be [appealed to the regional circuits];


§ 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- * * * (3) of an appeal from a final decision of the [United States Court of Federal Claims];

(4) of an appeal from a decision of-- (A) the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office with respect to patent applications and interferences ...


Constitution: Art. I, sec. 8, cl.8

Patent Statute: ___ USC35

Patent Regulations: ___ CFR § 1. ___37

What is the cite for Rule 56?37 CFR § 1.56

Phrase(s) associated with it:the duty of candorinequitable conduct


BONUS! What is Rule 56, F.R.Civ.P.?Summary judgment (aka JMOL.)

PTO’s internal rulebook is called:Manual of Patent Examining

Procedure (MPEP)

What kind of authority is it? De jure? De facto?


Graham v. Deere1966 – obviousness

Chakrabarty1980 – patentable subject

matterMarkman

1996 – claim constructionFesto

2002 – pros.history estoppelMerck

2005 – Hatch/Waxman and experiment as defense to infringementEbay

2006 – permanent injunctions

FAM

OU

S C

AS

ES –

Year

- Is

sue All SUPREME


Phillips v AWH2005 – claim construction-

intrinsic and extrinsic evidencePanduit

1978 – 6 Cir (NOT a predecessor court, but…) damages

Dillon1990 – chemical obviousness

Phillips v AWH2005 – claim construction-

intrinsic and extrinsic evidence

FAM

OU

S C

AS

ES –

Year

- Is

sue CCPA

Ct Cl (not Cl Ct, not Fed Cl)


Gould v. Schawlow

The decision.



Next Week

Reading: Ampex Transcript

Review of patent law related to ?

Documents

Sci.Ev. 2006-rjm Week 1 1 Scientific Evidence and Expert Testimony: Patent Litigation LAW 343 Prof. Roberta J Morris Room 208 Crown Quad 723-9505 [email protected]