1. Sci.Ev. 2007-rjm Week 7 - 10/24/07 1 Today’s Seating Plan (White (Glass BoardWall) Wall) Door Screen Physics Team Biological Imaging {Glucose Monitor?} Team [Chemistry] {Hood Technology?} Team Molecular Biology Team FH on order FH not on order yet Team not created yet 5thTeam ??

2. Sci.Ev. 2007-rjm Week 7 - 10/24/07 2 Today’s Agenda Housekeeping: $1.50; 5 th Team; Assignments (reading and being on time) Juan’s talk Claim Charts [my way or the high way? my way IS the high way?] Reading a File History: Your look at files from the 2006 class

3. Sci.Ev. 2007-rjm Week 7 - 10/24/07 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 gave me a Muni receipt, I will give you your $1.50 Muni fares

4. Sci.Ev. 2007-rjm Week 7 - 10/24/07 4 Teams per email of 10/17email of 10/17 Physics Testifying Experts: Sarah Gamble, Dmitry Pushkarev Backup Expert: Janelle Ayres Attorneys: Marcus Reeslund, Sean Marshall Meeting: Monday 1 pm Biological Imaging Testifying Experts: Russell Hu, Peter Olcott Backup Experts: Gwen Liu, Tal Lavian Attorneys: Joelle Faulkner, Ralph Van Niekerk, Juan Reyes Meeting: Monday 11 am Molecular Biology Testifying Experts: John Garcia, Tiara Kawahara Backup Expert: Manny Lopez Attorneys: Sarah Craven, Jenny Petrova, Julie Wahlstrand Meeting: Wednesday 3:30 Chemistry Testifying Experts: Nick Conley, Prasad Ganesan Backup Expert: Catherine Chang Attorneys: Jake Freed, Lillian Pan, Heyue Peng Meeting: Tuesday 4 pm 5 th Team??? Experts: Prasad. Gwen? Manny? Attorneys: Sarah. Jake? (One of the attorneys may take the role of expert in the simulation, if needed) ? ? Perpendicular hard drive

5. Sci.Ev. 2007-rjm Week 7 - 10/24/07 5 The Claim Chart Assignment From the 10/19 email10/19 email If you have never seen a docket sheet, you might want to take a gander through the one for Boston Scientific, now posted on coursework (see below). I won't assign that for this coming Wednesday because you need to decide on your patent. To do that well, you'd better make a preliminary claim chart, or rather, the left hand side of one, for the claim you think right now (probably claim 1) looks the most promising for the simulation project. YES! YOUR PRELIMINARY CLAIM CHART IS DUE TUESDAY AT 8 AM, EVEN IF YOUR TEAM IS NOT MEETING WITH ME UNTIL LATER. EACH OF YOU SHOULD individually FORMAT YOUR CLAIM 1 AND *EMAIL* IT TO ME as the **TEXT** of the message. YES, PLEASE CONVERT TO TEXT BEFORE YOU SEND. NO ATTACHMENTS. REALLY. NONE. NOT NO HOW. NOT NO WAY. IF YOU WANT TO INDICATE EMPHASIS, USE A PAIR OF *'s OR A PAIR OF _'s SURROUNDING THE TEXT IN QUESTION.

6. Sci.Ev. 2007-rjm Week 7 - 10/24/07 6 Rules for Questioning the Boss’s Instructions (very much like writing argument in a brief) Dear Boss: In [document], you said [QUOTE]. Does the phrase X mean (a) or (b) or something different? Thanks. Why do it this way? 1. When you re-read document, you may find you do not need to ask the question. 2. If re-reading doesn’t help, you’ll clarify in your own mind why the instructions are ambiguous. (I’m assuming you located the document. That’s really step 1.) 3. You’ll impress the boss, and make it less likely that you will be greeted with the immortal words of ________ (a partner I worked for who was reputed to begin every conversation with these very words): YOU IDIOT 4. It’s good practice for brief writing. ALWAYS go back and get the quote, whether it’s from a case, a patent, a transcript, etc. Then pinpoint the problem. You may decide to delete the quote AND the argument once you really examine the quote. If you keep both, your argument will be SOLID.

7. Sci.Ev. 2007-rjm Week 7 - 10/24/07 7 Juan’s Talk Commonalities and differences of patent systems around the world. Click here.here

8. Sci.Ev. 2007-rjm Week 7 - 10/24/07 8 Claim Charts Have the examples been helpful? Do you understand how and why to make lists and parallel constructions start at the same TAB? Do you understand why to indent MORE for certain details? Do you see how inserting the tabs and enters helps you understand the claim?

9. Sci.Ev. 2007-rjm Week 7 - 10/24/07 9 Claim Charts – 5,406,073 (Nick’s patent) means responsive to said means for recognizing for at least one of said detectors for providing an indication of an entity within said selected space.

10. Sci.Ev. 2007-rjm Week 7 - 10/24/07 10 Claim Charts – 5,406,073 (Nick’s patent) means responsive to said means for recognizing for at least one of said detectors for providing an indication of an entity within said selected space. My format says it is the ENTITY in the SPACE, not the INDICATION in the space. But maybe I’m wrong.

11. Sci.Ev. 2007-rjm Week 7 - 10/24/07 11 Looking at a File History What is the CLAIM for? What is the SPECIFICATION for? What is the ART? What is the difference between the ART and an ANALOGOUS art? Use the wrong word and you will be saying things you don’t mean. interferences

12. Sci.Ev. 2007-rjm Week 7 - 10/24/07 12 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 and last week 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, faster and cheaper to analyze the patent of your competitor (potential AI) than to sue and take discovery

13. Sci.Ev. 2007-rjm Week 7 - 10/24/07 13 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 week 5 Two parallel columns, so we can see the language that’s the same, and the language that changed

14. Sci.Ev. 2007-rjm Week 7 - 10/24/07 14 Claim Chart – for amendments CONVENTIONS BRACKETS mark deletions UNDERLINES mark insertions BRACKETS go first LinkLink – can I use ‘marquee zoom’ on my Sony? This is page 148 of the BILAYER patent 6,228,326

15. Sci.Ev. 2007-rjm Week 7 - 10/24/07 15 As initially filed As amended A method for separating magnetic particles from a fluid containing same, said method comprising: A method for separating magnetic particles from a fluid containing same, said method comprising: a) introducing said fluid into a non-magnetic container having a peripheral wall and an open top a) introducing said fluid into a non-magnetic container having a peripheral wall and an open top; and positionedb) positioning said container adjacent to a magnetic means adjacent to a magnetic means capable of applying a magnetic field transverse to the peripheral wall to generate producing a magnetic field gradient in said fluid, a magnetic field gradient in said fluid, MagSep Patent 5,466,574 PDF p. 1305,466,574 PDF Remember: LONGER = NARROWER SHORTER= BROADER {almost always}

16. Sci.Ev. 2007-rjm Week 7 - 10/24/07 16 Prosecution History – The Claims

17. Sci.Ev. 2007-rjm Week 7 - 10/24/07 17 Prosecution History – The Claims A B C

18. Sci.Ev. 2007-rjm Week 7 - 10/24/07 18 Prosecution History – The Claims PDFPDF p. 111

19. Sci.Ev. 2007-rjm Week 7 - 10/24/07 19 Prosecution History – The Claims PDFPDF p. 129

20. Sci.Ev. 2007-rjm Week 7 - 10/24/07 20 NEXT WEEK’s CLASS THE BSC v CORDIS TRANSCRIPTS DAUBERT and DAUBERT in patent cases KSR (law students already did this) ?