2008 - Sci.Ev. - rjm Week 05 1

Scientific Evidence and Expert Testimony: Patent Litigation

LAW 343

Prof. Roberta J MorrisRoom 208 Crown Quad

723-9505rjmorris@stanford.edu

Course Materials on the Web: course website

http://www.stanford.edu/~rjmorris/sciev.08/And Stanford’s coursework site for posting assignments:

https://coursework.stanford.edu/portal/site/F08-LAW-343-01

Email Group scievseminar08@lists.stanford.edu

Let’s go here first!You can also get to

the course website

from courseworks:

Click SYLLABUS

at the left.

2008 - Sci.Ev. - rjm Week 05 2

Today’s Agenda• Law students educating (each other and) grad students

(Week 02-Assignment 2B-Law)• The Hologic v. SenoRX claim construction hearing: Attendee

comments?More Field Trips? No trials, alas, but a few more claim construction hearings and tutorials, including a “Markman tutorial” tomorrow in San Francisco, Judge Jeffrey S White’s courtroom, at 2 pm – at least on the Court’s calendar in McHugh (an individual!) v. Hillerich (a company). Neither party is represented by a firm I have heard of, and there are no reported decisions on this one, but here’s the patent: 5,806,091.

• The Fontirroche Litigation: More on the second Claim Construction Order and the Expert Testimony

• How the DOCTRINE OF EQUIVALENTS became important • The Transcript

• Literal Infringement and Claim Interpretation in light of the Prosectuion History –v.- Infringement under the Doctrine of Equivalents and Prosecution History Estoppel – Graver Tank, Warner-Jenkinson, Festo

• Next CLASS: 10/27

2008 - Sci.Ev. - rjm Week 05 3

P-I-S v P.A.Situation A

Patent-in-suit = NEWPrior Art Patent = OLD

Situation BPatent-in-suit = OLDPatent on accused device = NEW

Is the New patent valid over the Old patent?

Is the Old patent infringed by 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 05 4

Law Students’ Slides 1. confidential stamps in litigation, public nature ofpatent documents -- when they become public, whether that isrelatively new (defined as the last 20 yers): Julia Kripke 2. complete identity of specification in application andissued patent, exceptions, reasons: Andy Park. 3. interference-in-fact: interferences generally,conditions under which district court can determine aninterference (relates to the actual litigation of theFontirroche patent, but is not in the documents you read for9/29): Julie Kane 4. claim construction order: what is it, what is itsrelation to a Markman hearing, why is it called "Markman": JenRobinson 5. counterclaim: what is it, what kinds of issues might anaccused infringer raise in a counterclaim in addition toinfringement of its (AI's) patents, when must you file acounterclaim: Greg Sobolski 6. IDS: what is 19934-19936? Who and how selects thereferences listed? Does their listing constitute an admissionthat they are both prior and [relevant] art? What else should weknow about IDSs? Briefly mention how we can find out more aboutthe proposed changes for them: Mark Melahn. 7. Declaration and Power of Attorney: 19925-19926. Whatdoes this mean the patent prosecutor has to do; How and when andwith whom; what are the most important 2-5 things in these pages:Karni Chagal. 8. Terminal Disclaimer: This patent has a terminaldisclaimer. Why? What does it mean? David Lydon 9. Continuation in part: What does this mean? Why dopeople file CIPs? What are the dangers? What benefits? Tim Saulsbury

1. DONE

2. DONE

3. DONE

4. DONE

5. TO DO

6. TO DO

7. TO DO

8. TO DO

9. TO DO

2008 - Sci.Ev. - rjm Week 05 5

Claim Construction Order

Fontirroche patent

Also, for interest,

the whole docket for the litigation (to date, anyway).

the jury’s verdict.

the judge’s order on various post-trial motions, including JMOLs.

from last w

eek

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The 2005 Claim Construction Order

Docket # 298, at page 13.

π = BSC (AI of ‘594 patent)Reminder. Slide from last week (with two additions)

2008 - Sci.Ev. - rjm Week 05 7

Boston Scientific FallacyApplication says: Rejection based on Prior art

that:

Situation 1 “BONDING” (no adjective)

Discloses ONLY one kind of bonding: CHEMICAL bonding

Situation 2 “CHEMICALLY BONDED” Discloses SEVERAL kinds of bonding

a. Does not use the word “chemical” but shows a bond that is chemical.

b. Only shows physical bonds.

Does the claim READ ON the prior art: in 1, 2, both?

In situation 1, would it help to argue that “bonding” means MORE THAN JUST chemical bonding? Why or why not?

What should applicant do to overcome these rejections?

Fallacy

2008 - Sci.Ev. - rjm Week 05 8

Post-Trial

From p. 3 of Docket 844, 2/19/08.

Re JMOL: see pages 14-17 of the pdf linked above.Reminder. L

ast week’s s

lide

2008 - Sci.Ev. - rjm Week 05 9

BSC v. Cordis – sorting it out1. Cordis [PO] wanted to show that the Maverick catheters of BSC [AI]

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 6:2m.

Reminder. Last week’ slide

2008 - Sci.Ev. - rjm Week 05 10

Pruitt Testimony – Question 2 A.

Julie, Sarah, David: Pruitt’s preparation, and non-.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 05 11

Answering Homework Questions

Make each answer count!

Have a different

idea or point or observation

for each question

even if you COULD

interpret two or more questions

to call for the same answer.

2008 - Sci.Ev. - rjm Week 05 12

Pruitt: Examination and Cross – Question 2 B and C

DIRECT and REDIRECT: Karni, Julia: FRE 702: Experts testifying on “ultimate legal conclusions” and law in general.

(Let’s look at some of those Rules of Evidence, and related caselaw. More of that when we explore Daubert, too.)

Andrew: Attorney Baumgartner’s re-direct.Sarah: 625-626: Lee’s successful objections and the 3 layer problem (Pruitt’s slide 3)Lydon (and others): Pruitt’s credentials.

The LEADING QUESTION problem. (Law students will explain what a LEADING question is.) [See also JULIE and SARAH on 2C]

Saulsbury: Analogies (616-620). Who came up with them? How to prepare for attacks?

CROSS:Mark, Jen/David: Substance! DOE!

Questioning about Asuka (Tr. at 685-6 [see esp. 687:4-11]; Parent File history at 19007 (pdf 99) [see esp. 19004-5 (pdf 96-97) “no chemical bond.” In the parent patent, Asuka = 4th Other Doc P.A. “Brochure…” and ALL the independent claims (1 at 6:44; 8 at 7:12, 17 at 8:20) recite “chemically bonded.”] Questioning about frictional bond and DOE: Fallacy implicit in Question 688:6-9. Objectionable? Why (not)?

2008 - Sci.Ev. - rjm Week 05 13

Pruitt: Examination and Cross – Question 2 B and C

CROSS (cont’d:Julie: Attorney Lee’s concern about who was [not] testifying for Cordis. Effective on the

printed page? Effective in court?Karni, Greg, Lisandra: Pruitt NOT an ordinary artisan in 1994. Effective? Objectionable?

Why (not)? Samantak: Hoppers (at 668). Who is impressed/moved/affected? Jury? Judge? Opposing

counsel?Sarah: The LATER 166 patent that cites the Fontirroche as prior art (at 740). So what?Brett and Lisandra: What Pruitt did, and did not do. Brett: Flexular Analysis: combining

two layers to get two layers-total (at 730). Lisandra: Testing the Mavericks.Practical considerations in dealing with experts? Strategic ones?

Lawrence: Never ask a question you don’t know the answer to?? Asuka delamination.Jen/Mark/Samantak: Using Cordis’ own words to the PTO against it + Preparing the

expert. For example: Tr. At 692:15 et seq. What was the Cordis attorney thinking, hoping, expecting?

BOTH:Hellstrom: Use of hypothetical questions.

2008 - Sci.Ev. - rjm Week 05 14

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]

sometimes a synonym for jury [when isn’t it?]

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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]

2008 - Sci.Ev. - rjm Week 05 16

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 a CONCLUSION OF LAWthat the jury decides on its

way to deciding the verdict?

2008 - Sci.Ev. - rjm Week 05 17

Rules of Evidence – Experts, Conclusions and Case Law

First, defendants argue that Dr Wedig, due to his lack of legal training, is not qualified to opine on the legal issues of conception and reduction to practice. Doc # 343 at 5 (citing Hybritech Inc v Monoclonal Antibodies, Inc, 802 F2d 1367, 1376 (Fed Cir 1986)). The court agrees. An expert's opinion on the ultimate legal conclusion is "neither required nor indeed 'evidence' at all." Mendenhall v Cedarapids, 5 F3d 1557, 1574 (Fed Cir 1993) (quoting Avia Group Int'l, Inc v LA Gear Cal, Inc, 853 F.2d 1557, 1564 (Fed Cir 1988)).

Yet that does not justify a wholesale exclusion of Dr Wedig's testimony on these issues …. [T]o be admissible, the opinion of an expert need not be conclusive proof. Indeed, parties often offer multiple sources of evidence that, in aggregate, prove a proposition even though no source independently suffices.

Accordingly, the court only excludes Dr Wedig's legal conclusions. It is plain from paragraphs 20 and 21 of Dr Wedig's rebuttal report, Doc # 344, Mingrone Decl, Ex 7, that he is attempting to use the legal definitions of conception and reduction to practice.

See, e.g, id at 11 ("I understand that the date of conception is defined as the date at which the inventor has a formulation of the complete means of solving a problem in such a way that a person of ordinary skill in the art could practice the invention without unduly extensive research or experimentation").

In four parts of his rebuttal report, Dr Wedig applies these legal standards to offer legal conclusions regarding the invention's conception and reduction to practice. Dr Wedig may rely on the technical record to estimate when the inventors thought of [*37]  the invention and when the invention became operational, but he may not opine on when the invention was legallylegally conceived and reduced to practice. Accordingly, the court excludes the following parts of Dr Wedig's rebuttal report in which he states legal conclusions about the '273 patent's conception and reduction to practice: (1) the first sentence of paragraph 24, (2) the fifth sentence of paragraph 29, (3) the fourth sentence of paragraph 30, and (4) paragraph 31 in its entirety. Id.

Samsung Elecs. Co v. Quanta Computer, Inc., 2006 U.S. Dist. LEXIS 66447, 35-37 (N.D. Cal. Sept. 15, 2006) (Judge Vaughan R. Walker)

And now: Back to student comments

2008 - Sci.Ev. - rjm Week 05 18

Graver Tank and Warner-Jenkinson

The FWR (triple identity) test

The insubstantial differences test

The role of prosecution history (=file history = file

wrapper)

LITERAL: for claim interpretation. Part of the INTRINSIC evidence.

DOE: for ESTOPPEL (an equitable principle, but hey, it’s still a question of FACT…)

2008 - Sci.Ev. - rjm Week 05 19

For next week: Thinking about Teams

ExpertsLisandra WESTSarah JARCHOW-CHOYLawrence KLEINAndrew HELLMANSondra HELLSTROMBrett STAAHLSamantak GHOSH

3 patents, 6 experts, 9 lawyers?? One ‘swing’ (or tutorial) lawyer?

AttorneysJen ROBINSONDavid LYDONTim SAULSBURYKarni CHAGALJulie KANEMark MELAHNJulia KRIPKEAndy PARKGreg SOBOLSKI

2008 - Sci.Ev. - rjm Week 05 20

Next Week – OBVIOUSNESS, another issue for experts

KSR – because we have to.

A court decision and

either a transcript or

another court decision with excerpts from testimony.