Sci.Ev rjm Week /10/07 1 Seating Plan POAI (White (Glass BoardWall) Wall) Door Screen Grad Students and Law Students who submitted a comment^2 (4 + 10) EVERYBODY ELSE DIFFERENT from last week Grad Students who submitted an object and a patent this week; Law Student who submitted slides (6 + 1)

Sci.Ev rjm Week /10/07 2 Today’s Agenda Field Trip The Grad Students Lecture on Patent Law and invoke their Patented Objects and their Patents as concrete examples More discussion of Boston Scientific to learn... EVERYTHING?

Sci.Ev rjm Week /10/07 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.

Sci.Ev rjm Week /10/07 4 X #47 stops at this intersection, traveling on Van Ness. TO courthouse it’s going up the page, FROM courthouse it’s going down the page; stopping, if memory serves, betewen McAllister and Grove. COURTHOUSE

Sci.Ev rjm Week /10/07 5 Pad and paper. MAYBE bring the opinion. MAYBE bring a copy of a patent (the Kastenhofer ancestor, if I had to choose one; or arrange with friends for each of you to bring one of the 5 patents BELIEVED STILL TO BE in suit. Money that the bus (or train? Jake?) will accept. The fare is $1.50. I’ll reimburse you, but probably won’t have enough change or singles tomorrow. If you’re returning to campus with me, you won’t need to buy a CalTrain ticket because I’ll put them all on my credit card. If you’re going by yourself, the one-way fare is $5.75. R/T $11.50 MP, PA and Calif Ave are in zone 3. Redwood City is in zone 2 ($4 & $8 respectively)/ Field Trip – What to Bring

Sci.Ev rjm Week /10/07 6 Law Student Lecturers 1. Claim Chart – van NiekerkClaim Chart 2. Prior Art - FaulknerPrior Art There are TWO different definitions of prior 3. CLAIM V. Specification - Peng 4. Statutory Bar (102(b) - MarshallStatutory Bar 5. Anticipation (!= Obviousness) - Pan 6. Obviousness - Petrova 7. Enablement – CravenAnticipationObviousnessEnablement 8. Best Mode - Reeslund 9. Duty of Candor 10. Literal Infringement - Freed 11. Doctrine of Equivalents - Wahlstrand 12. US v. THE WORLD (patent-wise) - ReyesDoctrine of Equivalents US v. THE WORLD

Sci.Ev rjm Week /10/ – the different definitions of PRIOR PRIOR is defined in 35 USC 102 as being EITHER before THE INVENTION BY THE APPLICANT/PATENTEE. 102 a e and g OR MORE THAN ONE YEAR (aka 12MONTHS) before the US application filed by the applicant/patentee. 102 b and d the CRITICAL DATE = Month of appl – day of appl – YEAR OF APPL MINUS ONE Why do I write “applicant/patentee”?

Sci.Ev rjm Week /10/ – the different definitions of PRIOR 35 USC 102. A person shall be entitled to a patent unless - (a)the invention was …before the invention thereof …, or (b)the invention was … more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention, or (d) the invention was … more than twelve months before the filing of the application in the United States, or (e) the invention was described in – (1)an application … before the invention by the applicant … (2)a patent … before the invention by the applicant …, or (f) he did not himself invent the subject matter sought to be patented, or (g) (1) another inventor … before such person's invention thereof..., or (2) before such person's invention thereof …. Confirmation from the statute, in pertinent part

Sci.Ev rjm Week /10/ – the different definitions of PRIOR 35 USC 102. A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention, or (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or (e) the invention was described in – (1)an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent orsection 122(b) (2)(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; orsection 351(a)Article 21(2) All the words – if you need them (1 of 2)

Sci.Ev rjm Week /10/ – the different definitions of PRIOR 35 USC 102. A person shall be entitled to a patent unless - (f) he did not himself invent the subject matter sought to be patented, or (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, orsection 135 section 291 section 104 (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. All the words – if you need them (2 of 2)

Sci.Ev rjm Week /10/ a v. 102 b (handout)

Sci.Ev rjm Week /10/ a and b For our purposes, we will assume that nobody can prove an invention date earlier than the application date. That means that ONLY 102 b matters.

Sci.Ev rjm Week /10/07 13 COMPARE 102 a and b 2004 Patent Law CP 35A.1 § 102. Conditions for patentability; novelty and loss of right to patent. A person … unless … (a)... before the invention thereof (b)...more than one year prior by the applicant for patent, to the date of the application for patent in the United States, TWO POSSIBLE CHRONOLOGIES appl date critical date 102b-BAR PERIOD INV 102a period ends before critical date INV 102a period ends later than critical date

Sci.Ev rjm Week /10/07 14 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 PUSHKAREV Laser resonator, Diffraction coupled Color Code In litigation NOT “MARKED” Design Patent

Sci.Ev rjm Week /10/07 15 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 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

Sci.Ev rjm Week /10/07 16 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?

Sci.Ev rjm Week /10/07 17 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.

Sci.Ev rjm Week /10/07 18 Boston Scientific – Forman Claim 1 A process for forming a fluid tight seal between a polymeric body and a polymeric dilation member surrounding the body, comprising the steps of: - positioning a dilation member of polymeric material along and in surrounding relation to a body of polymeric material, -- with the dilation member and body aligned to place a first surface portion of the dilation member and a second surface portion of the body in a contiguous and confronting relation, --- wherein the polymeric materials forming the body and the dilation member have non-uniform energy absorption spectra that include high absorptivity wavelength bands, and --- wherein at least one of the high absorptivity wavelength bands of the polymeric material forming the body and at least one of the high absorptivity wavelength bands of the polymeric material forming the dilation member overlap one another in at least one range of overlapping wavelengths; - selecting a monochromatic energy wavelength that is contained within at least one of the overlapping wavelength ranges; - generating substantially monochromatic energy at said selected monochromatic energy wavelength; - controllably directing the monochromatic energy onto the body and the dilation member to concentrate the monochromatic energy in a narrow bond site -- circumscribing the body and -- running along the interface of the first and second surface portions, thus to melt the polymeric materials along said bond site and the immediate region thereof; and - allowing the previously melted polymeric material to cool and solidify to form a fusion bond between the body and dilation member.

Sci.Ev rjm Week /10/07 19 Kastenhofer Family Tree time (not to scale) 08/309,234 09/20/94 08/657,004 05/28/96 08/937,110 09/24/97 08/936,352 09/24/97 5,961,765 10/05/99 5,843,032 12/01/98 09/317,293 05/24/99 6,471,673 10/29/02 09/053,969 04/02/98 6,027,477 2/22/00 NO C-I-Ps COLOR KEY parent continuation divisional PATENT

Sci.Ev rjm Week /10/07 20 Boston Scientific – Terms of Art - 1 Summary Judgment; summary adjudication Preferred Embodiment Boilerplate; black letter law “no genuine issue of material fact” / “triable issue” Credibility Hearsay Clear and convincing evidence contrast ‘preponderance of the evidence’

Sci.Ev rjm Week /10/07 21 Boston Scientific – Terms of Art - 2 Limitation Construe – construing - construction Literal Infringement Doctrine of Equivalents START HERE? Question of fact/question of law Possession (of the invention) TSM test [teaching, suggestion or motivation to combine] Secondary Considerations

Sci.Ev rjm Week /10/07 22 Boston Scientific – Terms of Art - 3 Critical Date “teaching away” [not just omission, but a real NEGATIVE: ‘away’ means AWAY] Patent Exhaustion =====

Sci.Ev rjm Week /10/07 23 Boston Scientific – Your questions -1 Differing SCOPE of specification and claims Presumption of Validity (35 USC 282) and DEFERENCE35 USC 282 Goals (better: “OBJECTS of the Invention”) “Preferred Embodiment(s)” v. BEST MODE Interaction of MARKMAN HEARING and dispositive (pre-trial) motions - The killer ‘reading IN’ != reading on - Strategic issues in bringing the SJ motion - NDCal’s local rulesNDCal’s local rules

Sci.Ev rjm Week /10/07 24 Boston Scientific – Your questions - 2 Comprising/consisting/consisting essentially of ~~ open / closed /mostly closed Filing dates / priority dates 35 USC 119 and 120 [and the problem of CONTINUATION I N PART child applications] PROSECUTION HISTORY: for claim interpretation AND “prosecution history estoppel” REFERENCES CITED: #, origin, meaning

Sci.Ev rjm Week /10/07 25 Next Week Look at one of the patents and its file history [coursework link] that the students used last year for their simulationspatents and its file history EITHER BilayersBilayers [my website link] for biotech application OR Magnetic separation Magnetic separation [my website link] device FYI: Here’s the schedule of the simulations from 2006schedule 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.