美國專利訴訟法庭演練(英文授課)

This course will teach the practical operation of a patent litigation at the district court level of the United States by providing mock experiences that are close to what a Taiwanese professional will face when his or her company is involved in a U.S. patent litigation. The course is based on its American counterpart, the Patent Trial Practice course that proceeds in parallel in IU-Maurer. In that class, eight to twelve J.D. students will be divided into a plaintiff’s team and a defendant’s team, which will prepare and take to trial a hypothetical patent infringement case. The hypothetical will be constructed to present generally balanced infringement, validity and/or damages issues. The IU participants will take part in a series of mock hearings, including motion hearings before the judge, taking and defending depositions, a Markman hearing and a jury trial. Students of a team will work together to draft briefs and other documents as well. Prior to each speaking or writing assignment, the class will read and discuss materials and/or hear a lecture or presentation relevant to the task. Legal professionals based in Taiwan, and engineering and management professionals in multinational companies located in Taiwan may all expect to encounter the U.S. patent litigation process in their professional careers. Taiwanese professionals may be requested to interact extensively with U.S. patent counsels to explain the role of the patent in their company’s portfolio, the business goals and strategies of the litigation, and to consult on various decisions at different stages of the lawsuits. Taiwanese professionals may also have to evaluate the performance of U.S. legal counsels in the litigation process. This course will provide Taiwanese participants a unique opportunity to learn and practice these skills. In this class, Taiwanese participants will be assigned typically the role of the in-house legal counsels for either plaintiff or defendant, a multinational company located in Taiwan or other places in the world. Half of the Taiwanese group will be assigned to the plaintiff’s team, and the other half to the defendant’s team. They will work with IU students on the same team, who take on the role of patent litigators representing their companies in the present case, to proceed through the whole process of the hypothetical patent trial. This course will primarily consist of: 1. U.S. patent law fundamentals; 2. Class lectures and discussions on substantive and procedural topics relevant to the hypothetical patent infringement case; 3. Group discussion with IU students in the same team to provide inputs to their writing and speaking exercises, such as brief drafting, mock depositions, claim construction hearing, summary judgment hearing, and trial; 4. Viewing and evaluating the performance of IU students as patent litigators in those exercises. Learning Goals: 1. Understanding the practical operation of a patent litigation and a jury trial at the district court level of the United States. 2. In-depth realization of legal issues and litigation strategies in U.S. patent lawsuits through learning by doing. 3. Developing skills as an in-house counsel to cooperate with U.S. attorneys in patent litigations and supervise their works. Expected Learning Results: 1. By the end of the class, students will develop effective skills to communicate with American patent attorneys through various group discussions. 2. Being capable of making adequate in-house preparation, including document drafting, for patent infringement lawsuits. 3. Possessing practical ability to evaluate and supervise the performance of U.S. patent litigators. 4. Having clear understanding on the procedural posture of various hearings and processes in a typical U.S. patent trail.

This is an English-taught course. Except a short introductory sessions locally taught by Prof. Chiang, the rest of the course will be taught by Prof. Janis, Robert A. Lucas Chair of Law in Indiana University Maurer School of Law (IU-Maurer), and Prof. Knebel, a former partner of Barnes & Thornburg LLP in the Indianapolis office and an adjunct professor at IU Maurer, through videoconferencing in synchronous or asynchronous (pre-recorded) manner. Students need to communicate with U.S. students regularly to provide inputs to their writing and oral moot court exercises. This course is suitable to those who would like to abolish her skills and knowledge in every stage of U.S. patent trial, including second or third-year ITL students, and IP professionals with hands-on experience on U.S. patent law proceedings. 先修科目或先備能力: A prior patent law course is required, and a U.S. patent litigation course or American civil procedure course is recommended. 外文能力: Sufficient ability of English communication is necessary, especially in reading, writing and listening.

Lectures and class discussions in this course would be delivered by videoconference. Some lectures and class discussions will be delivered asynchronously, and the Taiwanese student group will have the opportunity to submit questions electronically or participate in a separate discussion session with an instructor. Other course sessions will be transmitted live using video conferencing facilities and online conferencing software. In-class exercises of IU students will be recorded and the Taiwanese group will typically view and evaluate them asynchronously. For the time being, the course do not offer an online synchronous or asynchronous version.

The grade would be evaluated through the following ways: 1. Participation and performance in group discussion; 2. A set of written memoranda, commenting on the overall performance of IU student counterparts in each stage of the mock trial; 3. A short final report explaining how the case will go if occur in Taiwan Since fewer classroom sessions in this course, only one absence is permitted. Every absence more than two will lead to one point deduction of the final score.

• Pleadings, responsive pleading and challenging motions
• Temporary restraining orders and preliminary injunctions
• Taking and defending depositions
• Claim construction (Markman) hearing
• Summary judgment
• Jury trial

Reference: 1. KIMBERLY A. MOORE, TIMOTHY HOLBROOK & JOHN F. MURPHY, PATENT LITIGATION AND STRATEGY (4th ed. 2013) 2. Peter S. Menell, Lynn H. Pasahow, James H. A. Pooley & Matthew D. Powers, Patent Case Management Judicial Guide (June 1, 2009). UC Berkeley Public Law Research Paper No. 1328659, available at http://ssrn.com/abstract=1328659.

地點

ITL Reading Room

時間

Every week after the class

聯絡方式

rcdwie@gmail.com