1. Sci.Ev. 2007-rjm Week 4 - 10/03/07 1 Seating Plan POAI (Glass (White wall)Board Wall) Door Screen Grad Students who submitted a patent AND did the Boston Scientific assignment AND the comment^2 (9) EVERYBODY ELSE Law Students (11)

2. Sci.Ev. 2007-rjm Week 4 - 10/03/07 2 Today’s Agenda Leftovers Olcott 1: Who is a PHOSITA Olcott 2: (remind me) Chang: 5, 6 and 7-digit patent numbers KSR – for law students (deferred) Law students teach patent law (deferred) Field Trip The Grad Students’ Patented Objects and Their Patents Tutorial on Patent Law: Using Boston Scientific to learn... EVERYTHING?

3. Sci.Ev. 2007-rjm Week 4 - 10/03/07 3 Leftovers KSR – for law students (deferred) Law students teach patent law (deferred) Chang: 5, 6 and 7-digit patent numbers Olcott 1: Who is an ordinary artisan? Olcott 2: (remind me ) Housekeeping: Field Trip Today’s Agenda The Grad Students’ Patented Objects and Their Patents Tutorial on Patent Law: Using Boston Scientific to learn... EVERYTHING? Person having /of [ordinary] skill in the art 35 USC 103, 112

4. Sci.Ev. 2007-rjm Week 4 - 10/03/07 4 Trip to SF Best bet for PO’s expert (probably): next Thursday morning, 10/11 Court is in session 8:30 to 3:30 We should arrive by 8:15 at the latest. Getting there from here Alt1: Caltrain 7:05 baby bullet + Muni Bus 47 Alt 2: Blueshuttle (if he can do it) (Not to be confused with Supershuttle)

5. Sci.Ev. 2007-rjm Week 4 - 10/03/07 5 Grad Students’ Patented Objects 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

6. Sci.Ev. 2007-rjm Week 4 - 10/03/07 6 Patent Selection for SIMULATIONS The patent should be in commercial use –The number should be MARKED on something you can buy. a UTILITY patent –Not a DESIGN patent (6 digits) –But could be a REISSUE patent (5 digits) [Why?] NOT in litigation [Why not?]

7. Sci.Ev. 2007-rjm Week 4 - 10/03/07 7 PROSECUTION HISTORY What is it? How do you know it will be interesting just by looking at the patent? –Interesting: How? Why? –Looking at WHAT?

8. Sci.Ev. 2007-rjm Week 4 - 10/03/07 8 AN “INTERESTING” PROSECUTION HISTORY Clues in the patent itself: - Length of time in prosecution - Existence of parent applications - Differences between CLAIM 1 and the Abstract or Summary of Invention - 1 st paragraph [Why?] - Other?

9. Sci.Ev. 2007-rjm Week 4 - 10/03/07 9 CLAIMS Claims - define the legal effect of the patent - are those numbered horribles at the end of the specification - can be independEnt or dependEnt - are evaluated INDIVIDUALLY for validity, and for infringement - rise and fall together if there was INEQUITABLE CONDUCT during prosecution And last week you learned, or heard again, the verb phrase READ ON If a claim READS ON the prior art, the claim is INVALID “over” or “in light of” the prior art If a claim READS ON an accused device, the device INFRINGES the claim

10. Sci.Ev. 2007-rjm Week 4 - 10/03/07 10 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.

11. Sci.Ev. 2007-rjm Week 4 - 10/03/07 11 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’

12. Sci.Ev. 2007-rjm Week 4 - 10/03/07 12 Boston Scientific – Terms of Art - 2 Limitation Construe – construing - construction Literal Infringement Doctrine of Equivalents Question of fact/question of law Possession (of the invention) TSM test [teaching, suggestion or motivation to combine] Secondary Considerations

13. Sci.Ev. 2007-rjm Week 4 - 10/03/07 13 Boston Scientific – Terms of Art - 3 Critical Date “teaching away” [not just omission, but a real NEGATIVE: ‘away’ means AWAY] Patent Exhaustion =====

14. Sci.Ev. 2007-rjm Week 4 - 10/03/07 14 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

15. Sci.Ev. 2007-rjm Week 4 - 10/03/07 15 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

16. Sci.Ev. 2007-rjm Week 4 - 10/03/07 16 Kastenhoffer 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

17. Sci.Ev. 2007-rjm Week 4 - 10/03/07 17 Next Week Law students teach patent law? (Grad students only?) look at one of the patents and the file histories that the students used last year? Everyone: NDCal Local Rules and more prep for Boston Scientific?