sci.ev. 2006-rjm week 5 1 today’s agenda guest speaker: attorney norm beamer the ampex...

Sci.Ev. 2006-rjm Week 5 1

Today’s Agenda Guest Speaker: Attorney Norm Beamer

The Ampex Litigation(s)-The INSIDE Story

Everyone

Teams? Talk for a few minutes today?

Reading Cases, Reading Daubert

Daubert for Patent Experts on the Technology in Suit

Next Week - no law students.


Questions for Norm BeamerBS in Eng.Phys from Lehigh, mcl, pbk,

etc.MS in Phys from IllinoisMBA from Illinois, sieJD from U of M [go blue, not bears], mcl,

LRFish & Neave, now known as Ropes &

Gray, since law schoolTech Director~ of The Pear Avenue

TheaterAsk him about Reiffin v Microsoft!

http://www.ropesgray.com/normanbeamer/


Questions for Norm BeamerJason:

+ How did you get away with all that leading?

+ Choosing the claim and the patents to litigate: evolution from Complaint to Trial?

Henry:

+Tutorial in technology v. What is specifically disputed

+ Wilmington Abandonment: The UNTOLD Story

Adam:

+ Dealing with Distinguished Prior Art

+ Choosing an expert

Ann Marie:

+ Organizing the Expert’s Testimony

+ Difficulties with M+F claims – for the expert, for judge and jury


Questions for Norm BeamerROBERTA

Keeping away from the patent v. waving it at every chance?

Making the demonstrations and videos: who, how, when?

Was Lemoine alive and available? Discuss why (not) to use the inventor as a witness (expert or fact)


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 SupelecBrown, Chrissy ChemBarlian, Alvin ME Jakarta PurdueEngland, Jeremy Phys ?MA and ?NH HarvardFinkelstein, Ilya Chem San Diego,CA BerkeleyPerlson, Lisa (abs 11/15) Chem PlainviewNY BarnardZhang, Angela Immun Beijing Berkeley

Schuller, Jon (Aud)

Now we are 4+8+1


Eltoukhy, Adam: EE PO San Jose,CairoSanta Clara UFan, Jason: EE AI BethesdaMD HarvardAmat, Fernando EE Barcelona TechU of CataloniaAntoine, Christophe EE Versailles SupelecEngland, Jeremy Phys ?MA and ?NHHarvardPerlson, Lisa-abs11/15Chem PlainviewNY Barnard

Schuller, Jon (Aud) AppPhys

Huang, Henry: Chem PO Los Alamos HarvardRosas, Ann Marie: ChemE AI Phoenix Ariz.S.U.Barlian, Alvin ME Jakarta PurdueBrown, Chrissy Chem Alexandria,KY KentuckyFinkelstein, Ilya Chem San Diego,CA BerkeleyZhang, Angela Immun Beijing Berkeley

Tentative Groups?


Looking at Patents – ISSUES THAT JUMP OFF THE PAGE1.Your clients A and I bring you the Sorkin patent.

2.A-I Co. makes similar devices. 3. Competition from Sorkin is starting to hurt. A & I say:4. We’d like to make something similar. 5. We haven’t really come up with a design, but we thought we’d have you look at the patent. 6. Do we have to worry about it (that is: is it VALID?) 7. If so, or if we should ALWAYS worry about patents, even invalid ones, in the hands of competitors, do you see any opportunities for a NON-INFRINGING alternative? 8. We’d like you to meet with our engineers, who are also studying this patent, as soon as you’ve had a chance to look at it.

Henry first ponders: How can issues jump off the page, if you don’t have an accused

device or the PH in front of you?

Answer: It’s your job! Real people face this situation.

How can such a thing happen?


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


Christophe’s DAUBERT Summary (not forwarded)Short summary (to check I understood the case correctly):Daubert and Dow each have experts stating contradictory conclusions.Which expert should the court believe?The District court decided scientific evidence should be based onepidemiological evidence in this case.The Court of Appeals decided it needed published, peer-reviewed evidence.The Supreme Court has to determine what the proper standard for theadmission of expert testimony is and suggests answering the followingquestions:a. Can the theory be tested?b. Is the theory subject to peer review and publication?c. What is the potential rate of error for the theory?Daubert argues that the Frye general acceptance test is outdated bythe Federal rules of Evidence and the Supreme Court agrees.


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 -1

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


Jason – Daubert in Patent Cases -1

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

While FED. R. EVID. 704(a) permits experts to express otherwise admissible opinions concerning an ultimate issue to be decided by a court, the rule "does not allow a witness to give legal conclusions."

United States v. Izydore, 167 F.3d 213, 218 (5th Cir. 1999).

Sorkin – page 12 of course materials (Daubert in Patent Cases)


Jason – Daubert in Patent Cases-2

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


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

Give a few concrete examples

where a patent technology

expert has to worry about

one or more of these things.

Name the legal issue. Explain

the kind of testimony.


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.

What is the difference?!



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) No expert witness testifying with respect to the mental state or condition of a defendant in a criminal case may state an opinion or inference as to whether the defendant did or did not have the mental state or condition constituting an element of the crime charged or of a defense thereto. Such ultimate issues are matters for the trier of fact alone.

Let’s reformat th

is – as if

it were a patent claim,

perhaps, and we were writin

g a claim chart


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 [on the grounds that] becausebecause it embraces an ultimate issue to be decided by the trier of fact.

(b) No expert witness

testifying with respect to the mental state or condition of a defendant in a criminal case

may state an opinion or inference

as to whether the defendant did or did not have the mental state or condition constituting an element of the crime charged or of a defense thereto.

Such ultimate issues are matters for the trier of fact alone.

X



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 [he] 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 [does not defeat?] the caps equivalen[ce] and therefore [its being] infringing under the Doctrine of Equivalents.


Next Week

Grad Students ONLY

Instant Patent Law?

Instant Civil Procedure/Jurisdiction (filing a complaint, motions for summary judgment, discovery, trial, appeal)?

Daubert in Patent Cases (read?)

Daubert in non-Patent Cases (discuss?)


Jason – Daubert in Patent Cases-2

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

sci.ev. 2006-rjm week 5 1 today’s agenda guest speaker: attorney norm beamer the ampex...

Documents

rjm week

jury slide

norm beamer jason

patent experts

sorkin patent

expert ann marie

attorney norm beamer

norm beamer roberta