Date: Fri, 12 Oct 2007 23:20:16 -0700 (PDT) From: Roberta J Morris To: scievseminar07@lists.stanford.edu Subject: Assignment for 10-17 [NOTE: I wrote a message earlier this evening and my computer crashed when I tried to send it. That message seems to have disappeared but may reappear in your mailbox and mine at a later date. Please DISREGARD any EARLIER TIME-STAMPED message about this week's assignment. I have reconstructed the earlier one, and improved on it here, I hope.] Dear Class: There are two subjects for the assignment this week: a file history from last year's seminar, and the Boston Scientific trial. Please post your responses as replies to the appropriate discussion fora on courseworks. A. READING A FILE HISTORY Please read one of the file histories from the simulations projects of last year's students. If you have already looked over the patents and have a favorite, you can choose that file history. Please just email me if it is not the one I assign you in the list below. Bilayer Patent: Craven, Faulkner, Freed, Pan, Wahlstrand, van Niekerk Ayres, Ganesan, Garcia, Hu, Kachirskaia, Kawahara, Lopez Magnetic Separation: Marshall, Peng, Petrova, Reeslund, Reyes Chang, Conley, Dai, Gamble, Liu, Olcott, Pushkarev (If your name does not appear here, then I believe you have dropped the seminar. If I'm wrong, please email me.) Here are the links for the file histories on courseworks in the Course Materials section: Bilayer Patent 6228326 https://coursework.stanford.edu/access/content/group/F07-LAW-343-01/2006%20Seminar_s%20Simulation%20Projects/https:__coursework-n.stanford.edu_coursework_servlet_ShowFileycontentid_448145 Magnetic Separation Patent 5466574 https://coursework.stanford.edu/access/content/group/F07-LAW-343-01/2006%20Seminar_s%20Simulation%20Projects/http:__Magnetic%20Separation%20File%20History.pdf You do NOT need to look at the patents, unless you are curious about something or because certain things are easier to consider in the issued patent (the specification in final form, the figures, the claims as finally allowed). The patents are separately posted on courseworks, and are of course available on google, if you want to see them. Please respond to the following questions, posting your answers as replies to the appropriate Discussion topic on courseworks. Please change the subject line in your reply to YOUR NAME - THE PATENT WHOSE FILE HISTORY YOU LOOKED AT Before you begin to answer the questions, please go through the file history, number the pages by hand if you print it out or use Adobe's page numbering if you can read from the screen, and make a table of contents with the page numbers, the major documents (original specification, original submission of claims, every office action, every amendment, information disclosure statement, notice of allowance) and the dates. You can make your index by hand using paper and pen, or on your computer. Whichever you do, ** please bring a copy of your index to class on 10/17 to hand in to me** Questions about Your File History In your posting, please start each question on a new line, referencing the number and the topic. 1. SPECIFICATION. What jumps off the page at you about the specification in the original application (the first major document in the file)? Comment in a few sentences. 2. CLAIMS AS FIRST FILED. What strikes you about the claims as filed? Again, discuss in a few sentences. 3. OFFICE ACTION: Comment on ONE prior art rejection in ONE office action. Is this the first office action or what? Is this the ONLY prior art rejection in that action or one of several? What most bothers or impresses you about this rejection? What else would you like to know? Write a couple of paragraphs answering all these questions in a readable narrative. 4. AMENDMENT: Choose ONE phrase in ONE claim that was amended. State what was deleted, added or replaced. Please give both the old version and the new of the relevant part of the claim (not the whole thing, unless you really need it). Comment briefly on that change. 5. YOUR_OTHER_CONCERN_HERE. Write a paragraph or so about another SPECIFIC thing (citing page numbers and line numbers as needed) in this prosecution that would be important for an expert to address in testimony. Explain. B. THE BOSTON SCIENTIFIC TRIAL Refer to the email I sent earlier today (entitled "Field Trip Monday?") where I state what we who went to the trial had a chance to observe. Faulkner, Freed and Ganesan: you only attended part of the trial. You can choose which of the assignments below better fits your experience. Everyone who attended the trial: Write a brief report about what you saw. Explain what impressed you, what bothered you, what surprised you, what bored you, what intrigued you. Write the equivalent of 1 - 2 pages in old fashioned typewriter double spaced font (250-500 words). Good news: you will be exempt from the comment^2 requirement this week.) Everyone who did not attend the trial: Write 5 to 10 question groups for those who did attend. A question group is a basic question plus related follow up questions. Cover at least 3 different people (damages expert, fact witness, technology witness, judge, examining attorney, cross-examining attorney) in your questions. Your question groups should be helpfully labeled and should be 250-500 words. Thanks. RJM