Justin T. Beck Robert B. Morrill Brian E.

Mitchell January 30, 2013

PTO Procedures (cont.) Discovery Experts

Ex Parte reexam of network jukebox patent Examiner finds prior art karaoke machine anticipates Board reverses based on

Both arguments could have been rebutted in an inter partes review

Claim construction of jukebox limited to coin operated Impression that karaoke machines are only operated by DJs

Trial Court finds claims for use of vacuum in healing wounds are obvious and grants JMOL Federal Circuit reverses based on construction of healing that requires complete healing, rather than improvement PTOs broadest reasonable interpretation standard applied to healing and reduced burden of proof might lead to a different result.

The grant rate of motions to stay is highly judge-dependent and (somewhat less obviously) district-dependent. Matthew Smith, Foley & Lardner

What if the patentee amends the claims before the PTO? What if the PTO invalidates the claims, but the patentee appeals? What if the PTO confirms the claims, but the accused infringer appeals? What if the PTO adopts a different claim construction from the District Court?

Defendant:

Plaintiff:

Cheaper Efficient (especially for court) PTO has expertise in patent validity No Prejudice

Long delay Case will not go away Untimely

Stay with conditions imposed

Submit all art Agree to estoppel

Stay preferred for inter partes review Long delays still seen as a problem

Essentially a reprosecution of all claims Reasons for filing:

What cant be fixed:

Write new claims to cover competitor Broaden claims (within 2 years) Narrow claims because of prior art New matter/best mode Inequitable conduct Recapture surrendered matter

Reissue?

Who can file a reissue application? Save money New claim limiting the tube to a tapered tube to overcome the enablement issue New method claim to cover sequential use of multiple floats

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Reexamination?

What art can be considered?

Second prior art publication?

Smith reference, since not before the PTO

Also raises the issue of inequitable conduct Section 303 allows the PTO to consider previously cited references

Should the court order a stay for reissue or reexamination?

Infringement not before the PTO Section 102(g) issue not before the PTO
Prior invention by another

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A. B.

Cannot be considered not a patent or printed publication If Snyder was previously considered and the examiner decided the claims were not anticipated, cannot be considered again for anticipation
Tip: Use Snyder in a new obviousness argument

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C.

Cannot be considered not a patent or printed publication Cannot be considered

D.

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PTO Procedures (cont.) Discovery Experts

I have always been a supporter of discovery, and discovery has always supported me.
Anonymous Patent Litigator

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When? What do I want? What do I need? How do I get it? How much will it cost? What will be the response?

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Keep senior lawyers involved Remember what goes around comes around Discovery is a means, not an end

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Must discuss:

Preservation ESI and eDiscovery

Document production format Limits on discovery Privilege

Proportionality and costs Search methods Phasing

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Joint Case Management Conference Statement Rule 26(f) Initial Disclosures Rule 26(a)
Changes based on Local Rules? Based on meet and confer 14 days after Rule 26(f) conference

Case Management Conference Rule 16(b)

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Initial Disclosures Protective order Contention interrogatories

Scope of electronic discovery

Answer at the end of the case? Answer in the expert reports?

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What are the boundaries of discovery?

What can further limit discovery?

Information must be reasonably calculated to lead to admissible evidence Burden/expense Time Federal/Local Rules The Court (standing orders) Attorney/client privilege and work product Protective orders

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Foreign parties Third parties Parent/subsidiary/supplier/contractor Document control Electronic files Confidential material

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Interim coverage Levels of protection In-house counsel and prosecutors Designation procedures Filings of designated materials Handling of disputes Third parties Termination

Competitive decision-making responsibility

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Typical elements:

Good cause required to modify contentions Early claim construction

Disclosure of infringement contentions Production of conception/reduction to practice/first sale documents Disclosure of invalidity contentions Production of accused product documents

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Interrogatories - Rule 33 Document requests Rule 34 Req. for admissions Rule 36 Depositions Rule 30 Third party discovery Rule 45
Document production Depositions 30(b)(6) depositions

Expert Reports - Rule 26

Whats Missing From This List?

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Limits on number and duration Location Videotaped depositions Preparation Defending depositions 30(b)(6) issues Claim terms
General rules Third parties Foreign witness

May give the other side the option of not bringing the witness to trial What if the witness doesnt appear at the trial?

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Think about why you are taking the deposition before you take it:
Find out the facts? Witness likely to appear at trial?
Develop material (sound bites) for cross examination
Develop a coherent story you can play at trial

Witness not likely to appear at trial?

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If the witness will appear at trial, set up the cross:

Start with key issues Short Qs and As sound bites Follow up with rambling witnesses So what youre saying is _________, correct? Play into your case themes Make the witness look (and feel) foolish Ask about the good documents without showing them and if he disagrees, impeach Save some surprises for trial

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If the witness will not appear at trial, develop the story:

Coherent, interesting and snappy one hour video taken as if the jury were there Dont save anything for trial Who? Third party witness out of subpoena range Adversarys employee who helps you Adversarys former employee? Beware! Cross your employee who wont be at trial
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Duty to preserve ESI

Duty to produce ESI

Secure key players electronic documents Meet with client IT personnel Send a litigation hold notice On motion to compel, party from whom discovery is sought must show not reasonably accessible Court may nonetheless order discovery if the requesting party shows good cause, and may specify conditions for the discovery FRCP 26(b)(2)(B)

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Mistaken production of privileged information is inevitable Party claiming inadvertent production may notify receiving party Receiving party:

The producing party must preserve the information until the claim is resolved FRCP 26(b)(5)(B)

Must promptly return, sequester, or destroy the information and not use it until the claim is resolved Must take reasonable steps to retrieve the information if the party disclosed it before being notified May present the information to the court under seal for determination of the privilege claim.

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The Qualcomm Six (Six attorneys culpable in failure to produce may be reported to state bar for sanctions) Micron v. Rambus, 253 F.R.D. 135 (D. Del. 2009) (Patents held unenforceable where evidence destroyed in anticipation of litigation) Clear Value Inc. v. Pearl River Polymers, 2007 U.S. Dist LEXIS 46919 (E.D. Tex 2007) (Case dismissed when expert disclosed at trial that adverse evidence had not been produced)
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Attorney Clientprotects communications between attorney and client for purpose of seeking legal advice Work Product governed by Rule 26
Protects materials prepared by attorney in anticipation of litigation from discovery Mental impressions, conclusions, opinions, or legal theories Includes materials prepared by others

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Burden/cost Privilege Obstruction Indifference Evasion

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Common sense Burdensome procedures Sanctions (fines, evidence preclusion, public embarrassment) Discovery Masters Require attorneys to play Rock, Paper and Scissors on the courthouse steps
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PTO Procedures (cont.) Discovery Experts

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Kucala Enterprises v. Auto Wax Co., 2002 U.S. Dist. LEXIS 13147 (N.D. Ill. July 19, 2002)

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[I]n a case involving complex technology, where the accused infringer offers expert testimony negating infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those who are admittedly not expert in the field. That is what happened here . . ..
Centricut, LLC v. Esab Group, Inc. 390 F3d 1361, 1370 (Fed. Cir. 2004)

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Honest

Somewhat

independent Communicator/teacher Battle tested Has time available Willing to write a report Knows the technology

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Technical Patent law Damages

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Teach the technology in tutorials For the patent owner: explain why the accused products infringe Establish the infringers defenses:
Non-infringement Invalidity Unenforceability

For the patent owner: rebut the defenses

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When should you select an expert? How many experts should you have? In house versus outside experts? What qualifications should the expert have?

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Professional Witness? Academic? Working in Field? Inventor or Employee?

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Beware

the novice expert Explain the real world: Written report who will prepare it? Deposition techniques Knowing when to hold em and when to fold em

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Entitlement or non-entitlement to lost profits

Demand Absence of acceptable non-infringing alternatives Or market share Capacity Profit margin Georgia-Pacific analysis

Reasonable royalty base and rate

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Disclosure of identity of experts Written report required if expert retained or specially employed to give expert testimony
All opinions and bases for opinions Information considered by expert Exhibits used as a summary of opinions Qualifications/publications Compensation Prior engagements and testimony

Undisclosed testimony not allowed at trial

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Rule 26 Consultant v. Witness Providing Information Writing the Report Rebuttal Witness Inventor as Expert

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Expert employed only for trial preparation generally immune from discovery Exception: Discovery allowed on showing exceptional circumstances under which it is impractable for the party to obtain facts or opinions on the same subject by other means FRCP 26(b)(4)(D)

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Expert disclosure limited to facts or data considered by the expert in forming his opinion Facts, not counsels theories or impressions Drafts of expert opinion not discoverable Communications with counsel not discoverable except relating to compensation, considered facts/data provided by counsel, assumptions provided by counsel. (FRCP 26(a)(2)(B))

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Deposition Show your hand at deposition? Save it for trial? Typical Themes Agrees with us on key issues False assumptions Hired gun/professional witness Prior inconsistent positions

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Judge must exclude unreliable expert testimony Expert must have sufficient education or experience Opinions must be based on sound science Opinions must be based on evidence

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[I]f a proposed expert is a quintessential expert for hire, then it seems well within a trial judges discretion to apply the Daubert factors with greater rigor. . . .
433 (6th Cir. 2007)

Johnson v. Manitowoc Boom Trucks Inc., 484 F.3d 426,

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Judges look at the experts specific qualifications to ensure appropriate for the case Damages experts are subject to particularly close scrutiny

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