1. Sci.Ev. 2007-rjm Week 6 - 10/17/07 1 Seating Plan (White Board Wall) Door Screen People who attended any part of the trial EVERYBODY ELSE DIFFERENT from last week Please sit facing the CENTER of the room The Center of the Room (Glass Wall) If possible: Mag Sep toward the front(screen), Bilayer toward the back (door)

2. Sci.Ev. 2007-rjm Week 6 - 10/17/07 2 Today’s Agenda Is Catherine Chang here today? Field Trip Post Mortem – And notes on what you WILL not do in your simulations that the BSC and Cordis lawyers did Reading a File History Choosing Teams

3. Sci.Ev. 2007-rjm Week 6 - 10/17/07 3 Field Trip GAyres,Janelle( janelle1 ) GChang,Catherine( ling84 ) GConley,Nick( nrconley ) GDai,Lixin( cosimo ) GGamble,Sara( sjgamble ) GGanesan,Prasad( pganesan ) GGarcia,John( johngarc ) GHu,RUSSELL Qicong( qiconghu ) GKachirskaia,Ioulia( iouliak ) GKawahara,Tiara( tiarak ) GLiu,Gwen( gwenliu ) GLopez,Manny( mel3 ) GOlcott,Peter( pdo ) GPushkarev,Dmitry( umka ) LCraven,Sarah( scraven ) LFaulkner,Joelle( joellef ) LFreed,JAKE John( jfreed1 ) LMarshall,Sean( seanm22 ) LPan,Lillian( ljpan ) LPeng,Heyue( heyuep ) LPetrova,JENNY Evgeniya( epetrova ) LReeslund,Marcus( marcusr ) LReyes,Juan( jfreyes ) LVan Niekerk,RALPH Roy( ralphvn ) LWahlstrand,Julie( juliebw ) NLavian,Tal( NO_SUNet ) NSoffer,Stuart( soffer ) PMorris,Roberta( rjmorris ) going, but not with us going, but leaving early going doesn’t know yet NOT going italics: based on earlier poll answer 10 passengers can meet at Tresidder at 7 am and go in the Blue Shuttle (actually white with blue letters ) Van. If you traveled by yourself, please give me your receipts so I can get you reimbursement. If you traveled with me, I will give you your $1.50 Muni fares next week.

4. Sci.Ev. 2007-rjm Week 6 - 10/17/07 4 What you LAW STUDENTS will NOT do in your simulations that the BSC and Cordis lawyers did [WHY NOT] Testify Make attorney argument in the form of an [objectionable] question Ask the witness about [irrelevant] exhibits so that you can repeat testimony or argument that favors your side’s view Anything else?

5. Sci.Ev. 2007-rjm Week 6 - 10/17/07 5 What you LAW STUDENTS will NOT do in your simulations that the BSC and Cordis lawyers did [WHY NOT] If you waste time on that [nonsense] your witness won’t have time to state the things you want the witness to state.

6. Sci.Ev. 2007-rjm Week 6 - 10/17/07 6 Most Interesting Questions – GENERAL Posted: 16 Oct 2007 12:28 Subject: Ayres ‑ WHAT I WONDER ABOUT PATENT TRIALS CHOSEN BY: Reeslund 3. Opinion of those who went In your opinion how did it go? Which side was more convincing? If you had to rule on the case based on the testimonies you saw who would you chose? Posted: 14 Oct 2007 20:57 Subject: PAN ‑ TECHNICAL SOPHISTICATION AND OTHER THINGS CHOSEN BY: Craven, Olcott, Ganesan 5. SUMMARY JUDGMENT ORDER AS A PREVIEW Did the summary judgment order serve as good a preview of the invalidity issues raised, especially in the technology expert's testimony? Did it sound like any issues received less attention as a result of the judge's ruling in that order? (For example, did the "substantially free of crystallization" issue make an appearance?) Were any new scientific issues raised? Posted: 16 Oct 2007 01:39 Subject: Kawahara ‑ Experts, technical language and other things Questions CHOSEN BY: Olcott, Reeslund 4. Attorneys: How many attorneys were there for the plaintiff and defendants side? Did the same attorneys do the examining or cross ‑ examining? How was the flow of their arguments ‑ did they take a long time to get their questions out? Did they have notes that they had to refer back to, or did they seem to have a lot of questions come out at a constant rate without too much thought (like they do in tv shows)?

7. Sci.Ev. 2007-rjm Week 6 - 10/17/07 7 Posted: 15 Oct 2007 09:28 Subject: Marshall ‑ questions about the different people at trial CHOSEN BY: Reyes, Freed, Liu Question group 1 the judge Did the judge do much talking or interacting with the lawyers and witnesses or did he let the lawyers run the show? When people made objections did he just say whether the objection was sustained or overruled or did he provide analysis on why he was making each decision? Did the judge seem like he understood the technology (if there was any indication either way)? Did the judge have anything interesting to say when you met with her in her chambers? Most Interesting Questions –THE JUDGE Posted: 15 Oct 2007 19:11 Subject: Reeslund ‑ Questions on DAMAGES and other things CHOSEN BY: Wahlstrand JUDGES CHAMBERS What did Judge Illston have to say in her chambers? Did she comment on the trial at all? Did she give any indications of things that attorneys do that are especially effective or especially annoying?

8. Sci.Ev. 2007-rjm Week 6 - 10/17/07 8 scraven Posted: 14 Oct 2007 10:15 CHOSEN BY: Olcott 5. The Jury: I’m assuming there was a jury, or was this a bench trial? Did the jury look interested or bored? Did they get handouts from the parties and/or were they taking notes? Did they seem more interested in the fact witness compared to the expert witnesses? Did they seem more interested in the damages part or the technology part of the proceedings? Most Interesting Questions –THE JURY Posted: 16 Oct 2007 00:10 Subject: WAHLSTRAND ‑ effec tive use of courtroom technology and more CHOSEN BY: Freed JURY Could you tell at all what the jury was interested in? Did you think a jury was equipped to handle the issues in the case? How much guidance did the judge give to the jury? Posted: 15 Oct 2007 19:11 Subject: Reeslund ‑ Questions on DAMAGES and other things CHOSEN BY: Pan TECHNOLOGY FOR THE JURY Did Cordis’s technology expert present in information in a manner that a jury would be able to understand? Did the attorneys often ask the expert to rephrase confusing points, or did the attorney offer his or her own explanations? Overall, was the testimony confusing?

9. Sci.Ev. 2007-rjm Week 6 - 10/17/07 9 Posted: 16 Oct 2007 00:10 Subject: WAHLSTRAND ‑ effective use of courtroom technology and more CHOSEN BY: Marshall, Ganesan ATTORNEYS Did the attorneys make good use of technology in the courtroom? Did they have effective visual aids for the jury? Did they have powerpoint slides or something similar? If so, was use of these aids effective? If the attorneys didn't use technology, do you think it would have helped? Did the attorneys seem very adversarial, or did they appear to have a civil relationship with each other? Were the tones they took effective? Do you think that they would have had a much different tone if they had been before the judge arguing a motion rather than before a jury? Could you tell what their respective theories of the case were? Did they have an obvious story they were trying to tell? Was it convincing? Most Interesting Questions –THE ATTORNEYS Posted: 16 Oct 2007 01:39 Subject: Kawahara ‑ Experts, technical language and other things Questions CHOSEN BY: Olcott, Reeslund 4. Attorneys: How many attorneys were there for the plaintiff and defendants side? Did the same attorneys do the examining or cross ‑ examining? How was the flow of their arguments ‑ did they take a long time to get their questions out? Did they have notes that they had to refer back to, or did they seem to have a lot of questions come out at a constant rate without too much thought (like they do in tv shows)? Posted: 15 Oct 2007 23:25 Subject: GANESAN ‑ PURPOSE OF CROSS ‑ EXAMINATION and other things CHOSEN BY: Ayres, Liu TONE OF CROSS ‑ EXAMINATION What was the tone of the cross ‑ examination? I understand it's aimed largely at disputing or undermining the witness' testimony but how was this done? Was it openly adversarial and combative? Or was it more 'trying to get the most accurate facts before the court'? Was the approach adopted successful, i.e. would an ordinary jury member find it persuasive? What is the appropriate tone for cross ‑ examining expert witnesses? Should it be different from regular witnesses? Are there ever regular witnesses in patent litigation?

10. Sci.Ev. 2007-rjm Week 6 - 10/17/07 10 Most Interesting Questions – “Demonstrative” Exhibits Posted: 16 Oct 2007 00:19 Subject: OLCOTT: PATENT COUNTERCLAIM, Last ditch defence when losing? CHOSEN BY: Petrova Question group 1) Boston Scientific DAMAGES expert What did the Boston Scientific Damages Expert, Stanford Prof. Meyer, use to describe the financial damages of the infringement? A) Did the professor use direct verbal testimony, or where there visual aides? B) In general, what is the most important fact that a damages witness must get across? C) Did the witness bring up any other damages beside purely financial ones, such as lost business opportunities, etc? Posted: 16 Oct 2007 01:39 Subject: Kawahara ‑ Experts, technical language and other things Questions CHOSEN BY: Pan 5. Fact Witnesses and Technical Witnesses: Did they have a lot of charts, pictures or diagrams to illustrate what they were trying to explain? Did it seem like one side had a more reliable witness than the other? If so, what made one witness seem more reliable than the other (i.e. training or demeanor)? How did the attorneys try to make their witness seem extremely reliable? How did the witnesses handle themselves when they were cross ‑ examined? How long were each of the witnesses on the stand?

11. Sci.Ev. 2007-rjm Week 6 - 10/17/07 11 Most Interesting Questions – Tech. Expert seanm22 Posted: 15 Oct 2007 09:28 Subject: Marshall ‑ questions about the different people at trial CHOSEN BY: Reeslund Question group 4 Technology expert witness Was the technology expert testifying about the patent technology, the infringing technology, or both? If talking about the infringing technology did he utilize claim charts? Did she work with the technology in question in her research? Did she herself, have any patents in this field? Had she testified on behalf of Cordis previously? ljpan Posted: 14 Oct 2007 20:57 Subject: PAN ‑ TECHNICAL SOPHISTICATION AND OTHER THINGS CHOSEN BY: Petrova 6. TECHNOLOGY EXPERT'S QUALIFICATIONS How thoroughly did the examining attorney go into Dr. Pruitt's qualifications? Do you think he intentionally tried to make it sound more impressive to the jury? Did you think her qualifications matched well with the subjects on which she testified? Were there certain issues where she seemed less qualified or sounded less persuasive? epetrova Posted: 15 Oct 2007 09:08 Subject: Petrova ‑ Dynamics & roles in a patent trial & other CHOSEN BY: Peng Technology Witness 1. What was the technology the witness testified on? a. What questions did the examining attorney ask him during direct examination? b. How did the witness answer? c. What were his conclusions/ main arguments? d. What supporting evidence did he cite? e. Did he address any of the evidence presented by the adverse party?

12. Sci.Ev. 2007-rjm Week 6 - 10/17/07 12 Most Interesting Questions – Tech Experts ljpan Posted: 14 Oct 2007 20:57 Subject: PAN ‑ TECHNICAL SOPHISTICATION AND OTHER THINGS CHOSEN BY: Reyes 2. EXAMINING ATTORNEY'S QUESTIONS FOR TECHNOLOGY EXPERT Did it sound like the examining attorney's questions for the technology expert were designed to make sense to the jury? Or did the attorney try to be more specific/technical and hope that the expert's explanation would make things clear? Do you think the strategy was effective? Posted: 16 Oct 2007 00:10 Subject: WAHLSTRAND ‑ effective use of courtroom technology and more CHOSEN BY: Liu TECHNOLOGY EXPERT (direct only) How did the scientific expert make her testimony understandable to jury? Do you think she was a PHOSITA? Did she seem over ‑ qualified? Under ‑ qualified? Could you identify any weak points in her testimony?

13. Sci.Ev. 2007-rjm Week 6 - 10/17/07 13 Most Interesting Questions –Role of FACT Witness Mr. Liang Posted: 16 Oct 2007 00:19 Subject: OLCOTT: PATENT COUNTERCLAIM, Last ditch defence when losing? CHOSEN BY: Ayres Question group 4) What was Cordis's fact witness Dr. Lisa Pruitt role in the trial? A) What is a fact witness on technology? B) How did Cordis counterclaim the new patent? Did the fact witness have something to do with it? (It isn't clear from your email) C) Is it common in infringement cases between players to counterclaim new patents when on side is losing? Posted: 16 Oct 2007 06:53 Subject: Heyue Peng ‑ WHAT I WONDER ABOUT PATENT TRIALS CHOSEN BY: Ayres 2. Cordis’s Fact Witness What is the main purpose of the fact witness? Did he only present general concept of the technology or did he witness specific facts? If the latter, had these facts been argued by the parties, orally or in writing, before this court hearing? Did the fact witness cite any documents or statements proffered by Boston Scientific during the discovery process? If yes, what did he cite? Did the cross ‑ examine attorney require the fact witness to make any admission? Why didn't Boston Scientific re ‑ cross ‑ examine the fact witness? Was it because both parties had agreed on the facts presented by the witness, or was it because Boston Scientific had introduced doubt in the witnesss testimony and there was no need of going on? Posted: 16 Oct 2007 12:28 Subject: Ayres ‑ WHAT I WONDER ABOUT PATENT TRIALS CHOSEN BY: Reyes 1. Cordiss Fact Witness Who was the fact witness? What is the background and education of this witness? Did the witness present facts that were general or that were specific to the technology in question? Boston Scientific did not re ‑ cross examine. Why? Did Boston Scientific cast enough doubt during their initial cross examination and they didnt need to question any further?

14. Sci.Ev. 2007-rjm Week 6 - 10/17/07 14 Most Interesting Questions – Fact v Expert Witnesses Posted: 14 Oct 2007 10:15 Subject: CRAVEN ‑ QUESTIONS ON EXPERTS and other things CHOSEN BY: Marshall, Petrova, Pan, Peng, Ganesan, Walhstrand 3. Cordis’s Fact Witness versus Technology Expert Witness: Why did Cordis have a fact witness on the technology and not just an expert witness? How did the testimony of the fact witness differ from that of the expert witness? Who was the fact witness: Was he a scientist at Cordis? Or was the fact witness a doctor who had used Cordiss accused catheters? Who was the technology expert witness? What were the expert technology witnesss credential that made him an expert on catheters? Did any of Cordiss witnesses get up from the stand either to point to slides or show specific parts of the catheters to the jury? Posted: 15 Oct 2007 09:28 Subject: Marshall ‑ questions about the different people at trial CHOSEN BY: Craven Question group 3 Fact witness (I was a bit confused about what the fact witness was testifying about given the description in the email, but these questions are assuming he was a fact witness for cordis on their counter ‑ claim) Who was Cordiss fact witness on the technology (i.e. what was his occupation, etc.)? Did he seem very well trained, like he had been a witness for this before? Was he testifying about the facts of the patent prosecution and the patent in general, or about the facts regarding the potentially infringing device? Posted: 16 Oct 2007 06:53 Subject: Heyue Peng ‑ WHAT I WONDER ABOUT PATENT TRIALS CHOSEN BY: Craven 3. Cordiss Technical Expert Testimony What is the difference between the testimony of Cordiss fact witness and the testimony of the technical expert? Did they made overlap testimony on the background information of the technology? If yes, did they share the same opinion? Was there any conflict between the two testimonies? What did the technical expert focus on during her testimony, Boston Scientific infringement or simply the basic technical information of Cordis patent?

15. Sci.Ev. 2007-rjm Week 6 - 10/17/07 15 These are fine questions for the seminar DAMAGES Evidence and Expert Testimony: Patent Litigation, but not for SCIENTIFIC Evidence Most Interesting but irrelevant Questions – Damages - SUBSTANCE Posted: 16 Oct 2007 01:39 Subject: Kawahara ‑ Experts, technical language and other things Questions CHOSEN BY: Wahlstrand 1. Damages Expert: How did the damages expert for Boston Scientific estimate the damages suffered if their claims were infringed? If the jury decides that the claims were infringed, who determines the amount of damages that will be paid? Did Cordiss attorney cross ‑ examine the damages expert, and try to argue that the damages would be lower (if the jury did find that the claims were infringed)? Who can be a damages expert? What background is required, and must it be proved to the judge that the witness has expertise? Posted: 14 Oct 2007 10:15 Subject: CRAVEN ‑ QUESTIONS ON EXPERTS and other things CHOSEN BY: Marshall, Peng, Freed 1. Boston Scientific's Damages Expert: Did the damages expert testify on Boston Scientifics lost profits or on what a reasonable royalty would have been? Or perhaps he testified on both? How did the expert establish lost profits? Did he testify as to the number of catheters sold by Cordis? Did he testify as to the price the catheters would have been without Cordis in the market? Did he testify that Boston Scientific had the capacity to satisfy the market for the catheters? Did he testify that there were accompanying sales (perhaps of catheter balloons) that were also lost because of the infringement?

16. Sci.Ev. 2007-rjm Week 6 - 10/17/07 16 Looking at a File History Clearing up some misconceptions: You NEVER EVER speak of the CLAIMS of the prior art. OK. There’s an exception. What is it? We will not worry about ______________ in the simulations. What is the CLAIM for? What is the SPECIFICATION for? Use the wrong word and you will be saying things you don’t mean! Next week’s class: An hour or so on your File History comments. interferences

17. Sci.Ev. 2007-rjm Week 6 - 10/17/07 17 One patent does not infringe another. Only real things can infringe. But someone practicing NEW who marks its product with the NEW patent number, will have a very hard time arguing that its marked PRODUCT isn’t the same – for purposes of analyzing infringement of OLD patent –as the NEW PATENT. This happens in real life litigation. It’s easier, cheaper, and doable BEFORE you even write the first letter, to analyze the patent of your competitor (potential AI) than to get discovery P-I-S v P.A. Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent 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 PatentLook at New's CLAIMSLook at New's SPECIFICATION Old PatentLook at Old's SPECIFICATION (what it "teaches") Look at Old's CLAIMS Updated slide from week 3

18. Sci.Ev. 2007-rjm Week 6 - 10/17/07 18 Grad Students’ Patented Objects – Round 1 Janelle AYRES4,996,151Process - EagI Restriction Endonuclease Catherine CHANG3,617,859Bandgap voltage reference patent D304975Experimental Electronics Trainer Nick CONLEY---- Sara GAMBLE5,025,926Flouroware semiconductor wafer box John GARCIA4,781,487Vortex mixer Russell HU 5,457,105Drugs useful for neoplastic diseases Ioulia KACHIRSKAIA5,872,261Method to synthesize a protein crosslinker Tiara KAWAHARA5,722,553SnapStrip PCR Tubes Gwen LIU 6,001,233Invitrogen XCell SureLock Mini-Cell Manny LOPEZ4,981,797Process of producing highly transformable cells* Peter OLCOTT6,196,681UVEX Genesis Safety Glasses Dmitry PUSHKAREV3.681.709Laser resonator, Diffraction coupled Color Code In litigation NOT “MARKED” Design Patent Slide from week 4

19. Sci.Ev. 2007-rjm Week 6 - 10/17/07 19 Grad Students’ Patented Objects – Round 2+ Janelle AYRES5,836,618Labels for Cryogenic Vial (?Marked? Or mfr-based db search?) Nick CONLEY5,406,073Movable Entity Detector Sara GAMBLE6,657,823Perpendicular Disk Drive (searched patent db for hard drive technology) Prasad GANESAN6,884,628Polymer (not marked, but assigned to mfr of material he uses under a confidentiality agreement) John GARCIA5,503,741Dialysis Cassette Russell HU 7,105,130Adjustable Pipette Tiara KAWAHARA5,156,811Pipette Device Gwen LIU 5,442,241miRNA Detection Kit Manny LOPEZ6,818438Culture Flask (not marked, but assigned to mfr of lab flask) “7,045,675Genes for NPC disease (gene he works on) Peter OLCOTT6,908,605Non-invasive in vivo imaging (unlitigated relative of marked patent) Dmitry PUSHKAREV3,834,507Printing Apparatus “various-oldTextronics Oscilloscope Color Code “MARKED” NOT marked Updated slide from week 4

20. Sci.Ev. 2007-rjm Week 6 - 10/17/07 20 Good Patent, Bad Patent Does the patent use your expertise? It probably needs to be fairly recent. Is the patent really commercialized? If you did NOT find it because of MARKING, check that at least one claim READS ON something in your lab. Did the patent sail through the PTO or not? Does it have parent applications or not? Slide from last week

21. Sci.Ev. 2007-rjm Week 6 - 10/17/07 21 Looking at File Histories- Looking for WHAT? See Marcus’s 10/10 comment on Boston Scientific. Was claim 1 amended? What language was ADDED? What was ARGUED about the language that was there already? About the additional language? Did the Examiner say “I’d allow claim 2 if it was rewritten in independent form” and then claim 2 became claim 1? What language was replaced with a variant on the sane theme? Make a CLAIM CHART showing the claim language before and after. This can be EXTREMELY revealing and inspirational. Slide from last week

22. Sci.Ev. 2007-rjm Week 6 - 10/17/07 22 Slide from last week NOTE: To use the links on my sciev.06 webpage, you must manually change ‘sciev’ in the URL to ‘sciev.06’ or you will get PAGE NOT FOUND.sciev.06 webpage The links above all work but links you follow from the parent page itself will not until you fix them. Some day I’ll update the whole page. I promise. No longer true I did it!

23. Sci.Ev. 2007-rjm Week 6 - 10/17/07 23 Friday, Monday, Tuesday, Wednesday, and NEXT WEEK’s CLASS and the week after that Friday, Monday, Tuesday, Wednesday: Meet with me, with all your team or less than all, to discuss your selected patent. Please email me with the preferred time. Wednesday’s Class (if needed) 10/24: General Discussion Immediately after: I order file histories. They should be available on line by the following Monday at the latest. *** Week after that (or any earlier time you want to and have the time), 10/31, READ THE BSC v CORDIS TRANSCRIPTSTHE BSC v CORDIS TRANSCRIPTS

24. Sci.Ev. 2007-rjm Week 6 - 10/17/07 24 Teams Dmitry & Sarah – Physics + Janelle Marcus & Sean Russell & Peter – Imaging + Gwen & Tal Joelle & Ralph & Juan Tiara & John – Molecular Biology + Manny Sarah, Julie & Jenny Nick & Prasad – Chemistry + Catherine Lillian, Jake & Heyue