UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA ANTICANCER, INC., ) Case No. 05CV0448-B(AJB) ) Plaintiff, ) San Diego, California ) vs. ) Wednesday, ) June 14, 2006 XENOGEN CORPORATION, ) 9:00 a.m. ) Defendant. ) ) TRANSCRIPT OF MARKMAN HEARING BEFORE THE HONORABLE RUDI M. BREWSTER UNITED STATES DISTRICT JUDGE APPEARANCES: For the Plaintiff: DANIEL A. LAWTON, ESQ. JOSEPH C. KRACHT, ESQ. Lawton Law Firm 550 West C Street Suite 1350 San Diego, California 92101 (619) 595-1370 HAL W. GIBSON, ESQ. M. REZA SAVARI, ESQ. 12625 High Bluff Drive Suite 205 San Diego, California 92130 (858) 724-0375 Proceedings recorded by electronic sound recording; transcript produced by transcription service.

APPEARANCES: (Cont'd.) For the Defendant: JAMIE A. DIBOISE, ESQ. F.T. ALEXANDRA MAHANEY, ESQ. HUONG THIEN NGUYEN, ESQ. RUSSELL T. BOGGS, ESQ. ERIK J. MATALA, ESQ. DAVID W. JOHNSON, ESQ. JASON BRADY, ESQ.A Wilson, Sonsini, Goodrich & Rosadi One Market Spear Tower Suite 3300 San Francisco, California 94105 (415) 947-2000 Transcript Ordered by: WENDY STEIN, ESQ. Court Recorder: Jennie Hinkle United States District Court 940 Front Street San Diego, California 92101 Transcriber: Shonna D. Mowrer/Carol Abbott Echo Reporting, Inc. 6336 Greenwich Drive Suite B San Diego, California 92122 (858) 453-7590 -i-

1 SAN DIEGO, CALIFORNIA WEDNESDAY, JUNE 14, 2006 9:00 AM 2 --oOo-- 3 (Call to the order of the Court.) 4 THE COURT: Good morning, ladies and gentlemen. 5 ALL: Good morning, your Honor. 6 THE COURT: All right. Where we left off, we were 7 trying to get through this page five in which we're going to 8 define "green fluorescent protein," GFP, and then we're 9 going to try and define "mutants." 10 I tentatively had come up with -- for "green 11 fluorescent protein," a protein which fluoresces green when 12 excited by light. Then the big issue is whether that 13 definition should include the source that is identified in 14 the patent. I think the source is identified in Column 3. 15 The jellyfish is identified, I think, first in Column 3, is 16 it not? 17 MS. MAHANEY: Yes. The specific jellyfish 18 aequorea Victoria. 19 THE COURT: Now, the Defendant's position is that 20 that identification that appears in Column 3, which is in 21 the section of modes of carrying out the invention is part 22 of the definition of the term "green fluorescent protein." 23 And I've been thinking about this. And of course, both 24 sides have been discussing it, and we've discussed it at 25 some length. -1-

1 I'm still -- frankly, I'm still not persuaded that 2 the -- the jellyfish is part of our case here. I'm reminded 3 by my law clerk that green fluorescent protein is not the 4 subject of this patent. It's something that's been in the 5 art for years, decades. Maybe not decades, but years. This 6 patent is a patent on a marker, using a green fluorescent 7 protein as a marker for a diseased tumor to watch it. 8 The more I have been thinking about this, the more 9 I think that, number one, the statement of the -- it says 10 the label used to follow the metastasis is green fluorescent 11 protein, period. That's the label. And this patent, if I'm 12 not mistaken, is a patent on using this label to watch it 13 and to watch its metastasis. It says, metastasis models 14 using green fluorescent protein as a marker. 15 So it's the use of the protein that is the patent, 16 not the protein itself. And it says, the gene encoding this 17 protein has been cloned from the bio-luminescent jellyfish 18 aequorea Victoria. That's true. And it also describes 19 where mutants of the GFP have been found. But the patent 20 uses GFP. It doesn't use jellyfish to label the tumors. 21 So the more I think about it, the more I'm 22 comfortable with the -- what we came up with yesterday, that 23 GFP green protein is a protein which fluoresces green when 24 excited by light. And I don't think that this patent needs 25 to be -- should be narrowed by describing where you must -2-

1 obtain this protein. I just don't feel so. 2 In the first place -- well, not in the first 3 place, but I think that also we should keep in mind that the 4 particular one used in this mode, which is the subject of 5 Columns 2 and 3, may have been coming from a jellyfish, but 6 that's -- that's another reason why I feel that it shouldn't 7 be part of the definition, because a particular gene that's 8 used in the mode doesn't limit the scope of the claim. 9 So I'm still -- I'm still comfortable with saying, 10 a protein which fluoresces green when excited by light. And 11 as far as "mutants" is concerned, I don't have it written 12 down. I thought we came up with a conclusion on that. 13 Do you have "mutants" on your -- 14 THE LAW CLERK: Yes, your Honor. 15 THE COURT: What is it? 16 THE LAW CLERK: Modifications of the GFP gene -- 17 THE COURT: Modifications, plural? 18 THE LAW CLERK: Yes. 19 THE COURT: Modifications of GFP gene. 20 THE LAW CLERK: Which may enhance expression, 21 modify excitation -- 22 THE COURT: Which what? 23 THE LAW CLERK: Which may enhance expression, 24 comma, modify excitation, comma, and/or modify fluorescence. 25 THE COURT: Modify -- which may enhance -3-

1 expression, modify -- 2 THE LAW CLERK: Excitation and/or modify 3 fluorescence. 4 THE COURT: And/or -- or what? 5 THE LAW CLERK: Modify fluorescence. 6 THE COURT: Okay. Well, I'm still comfortable 7 with that as well. I'm comfortable with that as well. 8 MS. MAHANEY: Your Honor, could I be heard on the 9 GFP issue? 10 THE COURT: Well, if you have something new to 11 offer. We've got about an hour and a half logged on it. 12 MS. MAHANEY: I'd just like to make one point. 13 THE COURT: All right. 14 MS. MAHANEY: Okay. Because you made the 15 statement that GFPs have been around for a long time. They 16 have. But this was the only one -- this particular protein 17 was the only one that had been cloned as of the date of this 18 patent. That is why they are talking about this specific 19 protein. This was the only one that could be mutated by 20 people. Because this was the only one which the sequence 21 had been figured out as of this time. 22 THE COURT: That may be true, but I don't think 23 that should bar them from claiming -- since they discovered 24 that one of them could be claimed, they claim them in 25 general, what if tomorrow another one is cloned? Wouldn't -4-

1 that be claimed by the patent? 2 MS. MAHANEY: Not this patent, your Honor. 3 THE COURT: The fact that it couldn't be cloned at 4 that time, I don't think that means they can't claim it. 5 MS. MAHANEY: No. I suppose -- 6 THE COURT: They know it can be cloned if they did 7 it in one instance. What if they can do it in another 8 instance? 9 MS. MAHANEY: But the point is that they do define 10 what GFP is in the specification. And you are allowed to do 11 that. You are allowed to put a definition in a patent of 12 what a claim term means. And they say it is this specific 13 protein. The other -- 14 THE COURT: No, they don't. I don't think so. 15 That's -- and we discussed this yesterday. That's not -- I 16 don't think that's a new point. I heard that yesterday, and 17 I thought about it last night. 18 I'm just not persuaded by that. I think that 19 they're using a known product. They say the label used is 20 green fluorescent protein, period. They don't say the label 21 used is a particular one. They just say the label used to 22 follow the metastasis is green fluorescent protein. Then 23 they describe how you can find it in the Victoria. That's 24 enabling. No doubt about that. And it's in their specific 25 embodiment. But I'm just not persuaded that the claim -5-

1 should be limited to that particular source of GFP. It just 2 says it contains nucleotide sequence encoding green 3 fluorescent protein, GFP, or mutants thereof. 4 So I'm going to go with, open bracket, a protein 5 which fluoresces green when excited by light, and back to 6 the language, or mutants, open bracket, modifications of 7 GFP -- of the GFP gene which may enhance expression, modify 8 excitation and/or modify fluorescence, closed bracket. And 9 then the word "thereof" is next. 10 Now, I think with that, I think we can move on to 11 the next -- 12 MS. MAHANEY: Your Honor -- 13 THE COURT: Yeah. 14 MS. MAHANEY: -- can I just clarify one thing? On 15 the last day when we filed the charts, AntiCancer added an 16 argument that "mutant" should cover evolutionary-related 17 mutants, and I just want to make sure that you're not 18 including that in the definition, that we're only talking 19 about manmade modification. 20 THE COURT: No. I wouldn't -- I wouldn't see why 21 I should do that. I mean, mutant -- a mutant can occur over 22 nature. Evolution is a form of -- in fact, that book, I 23 think the definition of "mutation" is evolution. 24 MS. MAHANEY: Your Honor, there is absolutely no 25 support to cover mutations that occurred a million years ago -6-

1 into the specification. It is not even clear what mutations 2 those would be. Nobody knows. All people have is 3 hypotheses of how this developed a million years ago. 4 MR. LAWTON: Your Honor -- 5 MS. MAHANEY: I wasn't done. 6 THE COURT: Finish your point. 7 MS. MAHANEY: I mean, to say that this covers 8 unknown fluorescent proteins, I mean, that would just 9 derogate the public function of claims. I'll give you an 10 example. Fluorescent proteins are related at the phylum 11 level. The way animals, plants are classified is the first 12 level is kingdom. There is a kingdom of all animals. Under 13 that, there is a class. There is a class that covers all 14 mammals, reptiles and fish. That's called cordata. 15 THE COURT: Cordata? 16 MS. MAHANEY: Cordata. There is another class -- 17 THE COURT: And that class is called what, phylum? 18 MS. MAHANEY: That's the phylum level. So you 19 have kingdom is all animals, and then if you go down on the 20 evolutionary scale, you would have phylums. And fluorescent 21 proteins are only related on the phylum level. So what 22 we're saying is, they're only related as much as mammals, 23 birds and fish are related to each other. Okay. So you 24 can't take a claim to green fluorescent proteins and say 25 that it covers evolutionary-related stuff. I mean, what -7-

1 you'd be saying is a claim to a mouse covers all birds, fish 2 and mammals, if you followed that logic. 3 MR. LAWTON: Your Honor, we don't think -- 4 THE COURT: What I'm relying on is the word 5 "mutant" itself limits what it can come from, and I don't 6 think it jumps through these levels that you're worried 7 about. Because if it's a mutant of a -- let's say a 8 phylum -- for example, does phylum include human beings? 9 MS. MAHANEY: I'm sorry? 10 THE COURT: Does phylum class, what you said is 11 fish and -- you mentioned three things, fish and -- fish and 12 what? 13 MS. MAHANEY: Fish, birds and reptiles. 14 THE COURT: Okay. Fish, birds and reptiles. Are 15 humans in that phylum? 16 MS. MAHANEY: If I could put up a slide that might 17 explain it. 18 So the top -- the top classification is kingdom, 19 and that's all animals. 20 THE COURT: Okay. 21 MS. MAHANEY: Okay. And then you have -- and we 22 only show two phylums. Obviously, there's a lot more in the 23 world. On the right we have the phylum. It's called 24 cordata. 25 THE COURT: Okay. -8-

1 MS. MAHANEY: And that covers all mammals, birds, 2 fish, reptiles. 3 THE COURT: So the answer is, humans are included 4 in the phylum with fish. 5 MS. MAHANEY: Yes. In that phylum. 6 THE COURT: With fish. 7 MS. MAHANEY: Right. 8 THE COURT: Okay. That was the answer to my 9 question. So human beings are in that -- 10 MS. MAHANEY: In that phylum called cordata. 11 THE COURT: In that phylum. But they're not in 12 the same class. 13 MS. MAHANEY: No, they are not in the same class. 14 THE COURT: Now, if a bird -- let's say if a bird 15 mutated, a bird grew a -- let's say a bird grew webbed feet. 16 A bird grew webbed feet. That would be a mutation of the 17 bird class, but it wouldn't be a mutation of the mammalian 18 class, would it? It wouldn't be -- 19 MS. MAHANEY: I'm sorry, your Honor? 20 THE COURT: If the bird grew webbed feet. 21 MS. MAHANEY: Right. 22 THE COURT: That wouldn't -- that would be a 23 mutation of the avis class in the phylum group of the 24 kingdom, but it wouldn't be a mutation of the mammalian 25 class of the phylum group of the kingdom, right? -9-

1 MS. MAHANEY: And that's -- right. That's exactly 2 the point I'm trying to make. 3 THE COURT: Well, I don't see your problem. I 4 mean, a mutation -- if it's a mutation of the EFG -- GFP, if 5 it's a mutation of that, it is hardly going to be something 6 out of its class. You're worried about a mutation of a 7 person being GFP? 8 MS. MAHANEY: Well, no. The problem is, your 9 Honor, is nobody actually knows what mutated from what. I 10 mean, all scientists can do -- 11 THE COURT: No. This claim -- this patent 12 discusses GFP or mutants thereof. 13 MS. MAHANEY: Right. 14 THE COURT: But not mutants of human beings. 15 MS. MAHANEY: No, no, no. I'm talking about the 16 evolutionary background of green fluorescent proteins. 17 Okay. And on this left side, we've put two examples. At 18 the bottom, species Victoria. That's the jellyfish that 19 produces green fluorescent protein. On the right is 20 reniformas. That's the sea pansy. They are not 21 evolutionarily related to each other until you get back up 22 to the phylum level. They're as different as a bird and a 23 person. 24 THE COURT: Okay. I see. Your point is -- your 25 point is that to be a mutant, they have to come from the -10-

1 same species. Is that your point? 2 MS. MAHANEY: Yes. But the point is, this patent 3 is only to artificial mutants have been modified. 4 THE COURT: It doesn't say anything about 5 artificial. 6 MS. MAHANEY: Well, it doesn't say anything about 7 evolutionary mutants, and I don't believe anybody of 8 ordinary skill in the art would read this and think that 9 this included something that mutated a million years ago. 10 THE COURT: I don't know what the time has any 11 importance to if it's a mutation of the same species, for 12 example. 13 MS. MAHANEY: Because you don't know. That's the 14 problem. Nobody knows. 15 THE COURT: You don't know what? 16 MS. MAHANEY: Nobody knows exactly what mutated 17 from what. And so the problem is is this claim now is 18 undefined. 19 THE COURT: Well, I think the way we get guidance 20 to that, we just have to look at the definition of 21 "mutants." And the definition of mutants, if it's an 22 adequate definition, should be explanatory to your question. 23 So what -- has anybody got a good dictionary definition of 24 "mutant"? 25 MR. LAWTON: I don't readily at hand, your Honor, -11-

1 but mutation, as understood by those skilled in the art, 2 would include natural mutation as well as manmade mutation. 3 MS. MAHANEY: We would -- 4 MR. LAWTON: And all these proteins are closely 5 related, and there are many mutations that arise in nature 6 as well as manmade mutations. There's no limitation on 7 mutants that's set forth in the spec or anywhere in the 8 intrinsic evidence. 9 THE COURT: As far as I -- in my ignorance, I 10 would have thought that mutation -- the concept of mutation 11 preceded artificial mutation by millenniums. 12 MR. LAWTON: We have a chart on this, your Honor. 13 And if the Court was interested, we could present it via the 14 ELMO. We worked it -- 15 THE COURT: Well, I'm not sure it's necessary. I 16 think that -- 17 MS. MAHANEY: Your Honor, actually -- 18 THE COURT: The proposition is, you want me to 19 limit the mutations which is claimed here to artificial 20 mutation. That's the issue, should I specify that the 21 mutation must be manmade and artificial. And I'm not 22 inclined to do that. I'm not inclined to say that this 23 claim does not claim natural mutation which produces GOP -- 24 GFP -- 25 MR. LAWTON: Let's hope it doesn't produce GOP, -12-

1 your Honor. 2 THE COURT: -- GFP naturally. I mean, if they can 3 find a mutant of GFP, a mutant of anything that produces 4 green, that protein, anything that produces that gene or 5 rather that protein -- wherever it occurs in nature, it's a 6 mutant of GFP, green fluorescent protein. It's a mutant of 7 green fluorescent protein that we're focusing on, not the 8 mutant of a jellyfish. It's the mutant of the protein. 9 Because we're only concerned with the protein here. We're 10 not concerned with the jellyfish. 11 I mean, I made that statement at the beginning. 12 And your argument focuses on the jellyfish. And I'm not 13 focusing on the -- I'm focusing on the protein itself. And 14 wherever that protein can be found, if it's a green 15 fluorescent protein, then it's a GFP. And I don't care 16 where it comes from. And anything that's a mutant of 17 whatever that protein is that produces green fluorescent 18 protein, any protein mutant from it, as far as I'm 19 concerned, is claimed. 20 So I understand the argument, but I don't -- 21 number one, I think it's -- I'm totally disagreeing that it 22 has to be artificial because mutation is a natural 23 phenomenon in nature. It has been for millenniums. And 24 only mankind, when they got so smart for their britches, 25 that they learned how to do it artificially. But mutation -13-

1 went on for millenniums before man even showed up. 2 MS. MAHANEY: But how can a claim cover -- I mean, 3 that's such a broad expansion of claim scope. That's not 4 what this patent is about. That's not what -- 5 THE COURT: I don't think it's that broad. 6 Remember, what they're claiming is a label which uses a 7 protein called green fluorescent protein. 8 MS. MAHANEY: But they are argue -- 9 THE COURT: And however that protein is obtained, 10 by mutation naturally or artificially or the -- however it's 11 obtained, if it's a green fluorescent protein, it's claimed 12 as the label in this patent. That's all I'm saying. And 13 I'm not going to limit the patent to mutations which are now 14 subsequently created or were previously created and couldn't 15 cover subsequent and couldn't cover natural mutations which 16 were discovered later. 17 If through research they discovered, oh, there's 18 another -- there's another green -- there's another protein 19 that's evincing a green fluorescence. Let's check that one 20 out. And they isolate it, and it comes from a hog or 21 something. I mean -- 22 MS. MAHANEY: But your Honor, let's say someday 23 some scientist proves that the red fluorescent proteins 24 came -- that, you know, they came from green fluorescent 25 proteins. And we don't think that's the case. So then -14-

1 you're saying that all of a sudden this patent now covers 2 red fluorescent proteins. And that's just not fair. 3 THE COURT: It covers -- it covers mutants of the 4 green fluorescent protein. That is a protein identified. 5 It's -- as I understand it, it's a 283 amino acid sequence 6 which is known as a protein for green fluorescent material. 7 MS. MAHANEY: But you didn't limit the -- with all 8 due respect, your Honor, you didn't limit -- that's what we 9 wanted the claim to be limited to, to this specific 283 10 amino acid protein. But I thought your decision was that it 11 covers all green -- 12 THE COURT: Well, it -- no. They only -- I don't 13 know how many -- see, I'm not -- I'm not a biologist, I'm 14 not a chemist. I don't know whether the green fluorescent 15 protein, the protein itself, is always identical, no matter 16 where it's found. Is it always 283 amino acids long? I 17 don't know that. 18 MS. MAHANEY: It is not, your Honor. And we can 19 show you an example of two of them. We have a picture of 20 the sea pansy. We were discussing that yesterday. That 21 also produces green fluorescent proteins. 22 THE COURT: Uh-huh. 23 MS. MAHANEY: And that has 233 amino acids. 24 THE COURT: In the protein. 25 MS. MAHANEY: Yes. And they're different amino -15-

1 acids. Each green -- there is more than one green 2 fluorescent protein, and each of them has a different string 3 of amino acids. 4 THE COURT: Okay. Well, the language -- the 5 language of the claim is, it's claiming a nucleotide 6 sequence encoding green fluorescent protein. It doesn't say 7 a particular one. It just says a nucleotide sequence. It 8 claims a nucleotide sequence or -- containing encoding green 9 fluorescent protein or mutants thereof. A mutant of green 10 fluorescent protein. 11 Now, I don't know that it -- I'm not saying 12 that -- and I don't see any basis for saying that it's 13 claiming that -- if green fluorescent protein appears with 14 different types of -- or different lengths of amino acids in 15 different sequences, that's -- that's interesting, but I 16 don't think it's limiting to the claim. They're using a 17 green fluorescent protein, and they don't specify which one, 18 but they have to identify at least one in their preferred 19 embodiment to make the patent fly, and they did that. 20 And then they defined what "mutants" means, and 21 I -- and we defined "mutants" to mean modifications of that 22 protein which may enhance expression, so forth and so forth. 23 I'm just -- I'm not persuaded that there's 24 anything further that we need to say about this. I just 25 think that wherever it may be found, if it's a GFP, if it's -16-

1 a green fluorescent protein, if it says a protein and if it 2 fluoresces green color, it's a GFP. So if some accused 3 device came up and it was made from ants and it -- and you 4 went to this ant and you found a protein in the ant which 5 was -- emitted a -- it was a protein, and it emitted a green 6 fluorescence, as far as I'm concerned, that would be a green 7 fluorescent protein. 8 And I don't care if it had three amino acids in 9 length or 500. If it is a protein which emits a green 10 fluorescence and the accused device used that, it looks to 11 me like that would be literal infringement. 12 Now, if the accused device used a protein which 13 emitted a red fluorescence, that sounds to me like a mutant. 14 And that also would be a literal infringement because they 15 claim mutants. 16 MS. MAHANEY: But how do you know it's a mutant of 17 GFP? Nobody knows the answer to that question, your Honor. 18 What -- 19 THE COURT: You're saying that mutant requires a 20 show of relationship relative -- when I say "relationship," 21 I mean sister or brother relation. 22 MS. MAHANEY: No. Daughter. Daughter/son. 23 THE COURT: Okay. Any relationship. In other 24 words -- in other words, it might do the same thing, but it 25 is not a mutant of -- it's a different -- it exists in -17-

1 nature separately. That's the difference between mutation. 2 MS. MAHANEY: A mutation is a change made to the 3 genetic sequence, right. 4 THE COURT: Well, then I would say any green 5 fluorescent protein that is different in the sense that 6 there are -- the number of amino acids are different and the 7 sequence of them is different. Tell me this. Wouldn't they 8 all have amino acids? Don't all proteins have amino acids? 9 MS. MAHANEY: Yes. They're made up -- it's 10 like -- the amino acids are like the alphabet of the 11 protein. 12 THE COURT: That's what I thought. Okay. So 13 you -- but I could believe that you could have different 14 green emitting proteins that have different numbers of amino 15 acids and in different sequences, but if they produce a 16 green fluorescent glow and they are a protein, as far as I'm 17 concerned, they are a green fluorescent protein. 18 Now, if they emit a different light color, then it 19 sounds to me like they would be a mutant of it. 20 MS. MAHANEY: That last part -- 21 THE COURT: That's where we have a problem with 22 you. 23 MS. MAHANEY: Yes. Yes. 24 THE COURT: You say, well, it might be -- it might 25 be a different type of a protein, but it's not a mutant -18-

1 protein. 2 MS. MAHANEY: Exactly. And if I could direct your 3 attention to the slide. Here we're just talking about 4 these -- if I can get this to work. The two bottoms, the 5 Victoria GFP and the sea pansy GFP, those are not mutants of 6 each other, right? They are related in that they have a 7 common ancestor, but everything has a common ancestor to 8 some point. 9 THE COURT: Right. 10 MS. MAHANEY: But they're not mutants of each 11 other. 12 THE COURT: So -- 13 MR. LAWTON: We disagree with that, your Honor. 14 THE COURT: Well -- 15 MS. MAHANEY: Well, that's -- 16 THE COURT: Your use of the word "mutant," then -- 17 actually, what your argument is, that they're using -- where 18 they should be saying "or equivalence thereof," they're 19 using "mutants thereof." 20 MS. MAHANEY: They're trying -- 21 THE COURT: Now, stop a minute. Your argument is 22 to me they're using the concept of equivalence thereof and 23 using the word "mutants thereof." That's what your position 24 is. You're saying the GFP in the reniformas from the 25 pansy -- sea pansy might be an equivalent of the GFP -19-

1 produced in the Victoria because it does -- it's equivalent 2 because it does the same things with a different color dye 3 or something like that. But it's not a mutant. It may be 4 an equivalent, but it's not a mutant. That's your argument. 5 MS. MAHANEY: Right. I wouldn't concede that 6 they're equivalent, but the point is that they're not 7 mutants of each other. And what I'm very -- 8 THE COURT: Well, you back off to say, well, if 9 it's not a mutant, it's at least an equivalent. You'd say 10 that. In the sense that it's used as a marker, can be used 11 as a marker. It does the same function in substantially the 12 same way -- 13 MS. MAHANEY: It hasn't been cloned yet. 14 THE COURT: -- to get the same result. You know, 15 the Doctrine of Equivalence -- in my experience, 99-percent 16 of the time when you have a problem of equivalence, it's 17 always in that middle element. That's the bugger. That's 18 the bugger. They're always doing the same function, and 19 they're getting the same result, but they've got this little 20 different way of getting there. Have you observed that? Is 21 that unique to me or -- is that your experience? 22 MS. MAHANEY: That's true. That's true. 23 THE COURT: It's always that way that's the 24 problem -- 25 MS. MAHANEY: Yes. -20-

1 THE COURT: -- when you talk about Doctrine of 2 Equivalence. Well, that's -- what you're telling me is, it 3 may produce a fluorescence, and it may be injectable into a 4 tumor, and it may be great for -- and it may be stable, and 5 you may be able to trace it all over the place, but it isn't 6 a GFP because it's red. So at most, it's an equivalent, but 7 it's not a mutant because it doesn't come from Victoria 8 species. That's your argument. 9 MS. MAHANEY: Yes, but I'm not admitting 10 equivalence, your Honor, because that will get used against 11 me at some later date. I'm not admitting that. The point 12 is is that they're not mutants of each other. And what I'm 13 worried about is their argument is, because -- 14 THE COURT: Well, at least you're trying to 15 accomplish at least avoiding literal infringement and at 16 least narrowing the battle to a DOE. 17 MS. MAHANEY: Okay. Fine, your Honor. Yes, I 18 would agree. 19 THE COURT: Well, that's a legitimate concern. 20 Well, let me ask Mr. Lawton. Is there a 21 difference between a mutant thereof and an equivalent 22 thereof, in your mind? Is there some requirement to become 23 a mutant? In other words, does mutancy require a familial 24 relationship? Whereas equivalence obviously doesn't require 25 being a member of the family. -21-

1 MR. LAWTON: I don't know if I can literally 2 answer the Court's question, but in the context of green 3 fluorescent proteins, all fluorescent proteins that occur in 4 nature arose from natural mutation and descended from a 5 common ancestor. 6 THE COURT: From what? 7 MR. LAWTON: Now, we can -- 8 THE COURT: Which was what? 9 MR. LAWTON: Well, we have a chart on this and -- 10 THE COURT: Well, just tell me with your own 11 words. 12 MR. LAWTON: Well, we can't identify the common 13 ancestor. It was millions of years ago. But on the sub- 14 class level, we can identify various organisms, and we can 15 identify all of the natural mutations that we know about now 16 that fall into anthizoa, which are organisms like the sea 17 pansy, the corals, which I misidentified yesterday as a 18 jellyfish. It is an invertebrate. 19 THE COURT: It's still an invertebrate. 20 MR. LAWTON: It's still an invertebrate. And 21 hydrozoa, which are jellies. But all these fluorescent 22 proteins -- 23 THE COURT: Jellies meaning jellyfishes? 24 MR. LAWTON: Jellyfish, sometimes used 25 synonymously. But we've been using jellyfish, so I should -22-

1 say that. But all of these fluorescent proteins arose by 2 natural mutation and from a common ancestor. 3 THE COURT: Which was? 4 MR. LAWTON: We don't know. Ms. Mahaney correctly 5 said we're talking about millions of years ago, and we just 6 don't know. 7 MS. MAHANEY: And that's the problem, your Honor. 8 MR. LAWTON: But what we do know is that all of 9 the fluorescent proteins that occur in nature arose from 10 natural mutation. We have a short tutorial on this if the 11 Court was interested. We could present it via the ELMO, and 12 the Doctor Hoffman worked it up, and I understand that we're 13 not taking testimony in this proceeding, but the Court did 14 ask him a couple of questions yesterday on some of the 15 science, and I thought his responses were helpful to the 16 Court, and if the Court thought it was helpful on this 17 point, we are prepared to do that. 18 But I think the ruling that the Court has made 19 before now -- mutants thereof, that's what this really is 20 about. That's the nub of this discussion. 21 THE COURT: That's right. The issue right now is 22 what is meant by the meaning "mutants thereof." 23 MR. LAWTON: Right. And they want to say, well, 24 that only means manmade or human-made mutants. And there is 25 no basis in the claims -- -23-

1 THE COURT: Well, that's not -- I'm not concerned 2 about that. I'm not -- I reject that argument. I'm not 3 limiting it to artificial changes. 4 MR. LAWTON: Very well, your Honor. 5 THE COURT: However, there was another argument 6 made which causes me some concern, and that is that Ms. 7 Mahaney is claiming that you're using the term "mutation" or 8 "mutant" much more broadly than it means. She claims, as I 9 understand her argument, that "mutant" is a relative -- a 10 relative, you know, like a cousin, a relative -- of 11 something which has evolved into a variant of the relative, 12 but has the basic -- some basic genetic tie to the relative. 13 And it doesn't -- a mutation doesn't go out and 14 seek and find somebody that's totally unrelated, an eskimo 15 from the North Pole and try and make that person a relative 16 of the King of England or something, when there just isn't 17 any record of it. But -- so a little wart that grew on the 18 eskimo is a mutation of the King. The King would be upset 19 if you said that. He'd like to think that's not a mutation 20 of him. 21 So she claims that you're using -- you're using it 22 like you should be claiming in your claim "or equivalance 23 thereof," but you don't need to claim "or equivalance 24 thereof" in your claim because that's covered by the law for 25 you. So she claims, if you're going to say -- if you're -24-

1 going to claim "mutants," we have to define it in some 2 meaningful way. We can't use it so generally that it 3 includes a lot of things that aren't mutations. Equivalents 4 may not be mutations. 5 MR. LAWTON: Your Honor, I think that one skilled 6 in the art at the time would understand fluorescent proteins 7 that were known about in 1997 to be mutants descended from a 8 common ancestor. 9 THE COURT: But we need to define -- we're not 10 going to go all the way up the kingdom now. We've had a 11 good chart here on the biological kingdom. And everybody -- 12 I guess we're all related. I'm related to those mice that 13 we had in the courtroom yesterday. I suppose somebody will 14 call me a mouse now. But, you know -- 15 MR. LAWTON: Remember, you got an A on your 16 project, your Honor. 17 THE COURT: The point she's making, we're all 18 related. Everybody is related. Everything that lives and 19 breathes -- what about things that -- we're not related to 20 plants, are we, that don't breathe? They live, but they 21 don't breathe. Or do they breathe? Do they breathe? 22 MS. MAHANEY: I believe there's the theory that we 23 all came from one cell. 24 THE COURT: So plants -- 25 MS. MAHANEY: Yeah. -25-

1 THE COURT: We're all -- 2 MS. MAHANEY: I'm not an evolutionary expert, your 3 Honor, but -- 4 THE COURT: We're all related, even to plants and 5 animals, you know. 6 MS. MAHANEY: There is that -- there is that 7 theory. 8 THE COURT: What's that cell? Is that carbon? 9 What is the cell? Is it an atom? No. 10 MR. JOHNSON: I mean, the -- if you reduce the 11 evolutionary theory to its core, all life was from one cell 12 that was formed at some point. 13 THE COURT: Well, what was that cell? That must 14 have been a heck of a cell. 15 MR. JOHNSON: Yeah. 16 MR. BOGGS: Probably a procaryote. 17 THE COURT: What was it? What? 18 MR. BOGGS: Probably a procaryote. 19 THE COURT: What's that? 20 MR. BOGGS: A cell without a nucleus, like a 21 bacteria. 22 THE COURT: A cell with a nucleus? 23 MR. BOGGS: Without. 24 MR. JOHNSON: Without. 25 THE COURT: Oh, without a nucleus. -26-

1 MR. BOGGS: Yes. But it probably -- I mean, 2 modern-day bacteria are also evolved from that cell. So 3 what that first cell looked like or the characteristics of 4 that, I certainly don't think it's known right now. 5 Certainly there's no fossil record. 6 MR. JOHNSON: It would win you the Nobel Prize, 7 your Honor, if you know the answer to that question. 8 MS. MAHANEY: Your Honor, if I could point out on 9 page seven, there is a definition of "mutants." 10 THE COURT: Page seven of what? 11 MS. MAHANEY: The joint chart. 12 THE COURT: Oh, the encyclopedia on page seven? 13 Well, let's look at that. I'm on page seven. Mutants, 14 replacement of one or more nucleotides which results in 15 alteration of the amino acid sequence. I take it that's the 16 amino acid sequence of GFP? 17 MS. MAHANEY: Correct, your Honor. 18 THE COURT: Replacement of one or more nucleotides 19 which results in alteration of the amino acid sequence. 20 Well, then I take it that the sea pansy would be a mutant, 21 wouldn't it? Because it's a -- 22 MS. MAHANEY: No, your Honor. 23 THE COURT: It's a protein in which -- then what's 24 a nucleotide? 25 MS. MAHANEY: It's the building blocks of DNA and -27-

1 RNA, the ATCG. It's like the alphabet of DNA. 2 THE COURT: Oh. 3 MS. MAHANEY: But no, it's not -- a mutant is, you 4 start with your GFP gene and you change it. Okay. Sea 5 pansies and aequorea Victoria came up separately in the 6 evolutionary -- yes, they had a common ancestor, but one 7 didn't come from the other. 8 THE COURT: Well, maybe this is -- maybe this is 9 the direction that we need to go in. In other words, I 10 feel -- the inadequacy that I feel is in what is really the 11 proper definition of the term "mutants." That's my problem. 12 If I knew exactly what the definition -- the definition that 13 the Plaintiff seems to want to do is give an extremely broad 14 definition, which may go beyond what a scientist would say 15 is the legitimate definition of that term. 16 And I don't know -- this definition of "mutants" 17 is in the agreed column here. So it looks to me -- I mean, 18 reading this, I would infer that both parties agree on this 19 definition of "mutants." And it says, replacement of one or 20 more nucleotides, which you say is one of the four letters 21 of the DNA? 22 MS. MAHANEY: Yes, your Honor. 23 THE COURT: In one little spot. 24 MS. MAHANEY: Yeah. You could just change one, 25 and that could make it -- -28-

1 THE COURT: One letter in one spot would be a 2 replacement of one or more nucleotides, right? It would be 3 a replacement of one nucleotide. 4 MS. MAHANEY: If you replaced one, you'd be making 5 a mutant of that gene. If you replaced a couple of them, 6 you'd be making a mutant of that gene. 7 THE COURT: Of the gene. And the gene is just 8 part of the DNA. 9 MS. MAHANEY: Correct. So it -- 10 THE COURT: The DNA has many genes in it, doesn't 11 it? 12 MS. MAHANEY: Yes. Although I would -- right. I 13 take it they isolate, though, the gene of interest, the gene 14 that actually makes the GFP. And then they would -- it's 15 like editing it. 16 THE COURT: They revise that. 17 MS. MAHANEY: Revise it, right. 18 THE COURT: But it could be revised in nature as 19 well as by man. 20 MS. MAHANEY: Over millions of years, your Honor. 21 THE COURT: Okay. 22 MS. MAHANEY: I mean, I just don't think -- 23 THE COURT: Well, there's no hurry about this. It 24 could happen naturally, couldn't it? In fact, it 25 probably -- it probably does, doesn't it? -29-

1 MS. MAHANEY: Well, mutations are -- mutations do 2 occur naturally. If we could put up the tree that Mr. 3 Lawton has, you will see that GFP has -- it's off by itself. 4 THE COURT: Well -- 5 MS. MAHANEY: The other things did not come from 6 GFP. 7 THE COURT: What I -- I think this is more helpful 8 than that. For the moment, I don't think I need to see the 9 whole forest or trees, but let me just say this. 10 Replacement of one or more nucleotides, which I now 11 understand what a nucleotide is, which results in alteration 12 of the amino acid sequence of the GFP, right? Can I add 13 that on this definition? 14 MS. MAHANEY: Yes. 15 THE COURT: Aren't we talking about the GFP? 16 MS. MAHANEY: Right. It should actually probably 17 come after nucleotides. Replacement of one or more 18 nucleotides in the GFP gene. 19 THE COURT: Okay. In the GFP gene, which results 20 in alteration of the amino acid sequence of the gene. 21 MS. MAHANEY: Of the resulting protein. Right. 22 The gene has the ATCGs, and the protein has the amino acid. 23 So if you change the gene, you will then most likely change 24 the resulting protein. 25 THE COURT: So we ought to say, amino acid -30-

1 sequence of the protein. 2 MS. MAHANEY: Right. That would be more correct. 3 THE COURT: Then the jury would be able to set 4 aside -- or distinguish between protein and nucleotide and 5 DNA. 6 MS. MAHANEY: Right. And I just want to make 7 clear that -- I mean, I think even as of today, there are no 8 identified natural mutants of GFP. Because nobody knows 9 what came first. 10 THE COURT: We don't know whether -- whether the 11 one that we see now is itself a mutant from something else. 12 I would infer that it probably is. 13 MS. MAHANEY: But why, your Honor? 14 THE COURT: Well, because it's -- because we're 15 talking about trillions of years, quadrillions of years 16 probably. 17 MS. MAHANEY: Probably. 18 THE COURT: Quadrillions of centuries probably. 19 MR. LAWTON: Your Honor, if it's -- 20 THE COURT: Quadrillions of millennia probably. 21 MS. MAHANEY: I don't know. 22 THE COURT: I wasn't there either, but I just 23 infer that. 24 MS. MAHANEY: I wasn't suggesting that you were. 25 MR. KRACHT: If it's helpful, your Honor, I've got -31-

1 a couple of definitions from Oxford University Press 2 Dictionary. 3 THE COURT: Well, that's helpful. Can you put it 4 up on the board? No. 5 MR. KRACHT: I cannot. I'm sorry. They're short. 6 I can read them. 7 THE COURT: Okay. 8 MR. KRACHT: Mutant is an adjective meaning 9 resulting from or showing the effect of mutation. Not very 10 helpful. 11 THE COURT: That's Oxford. 12 MR. KRACHT: Mutation is the process or instance 13 of changing. The second definition is, a change in genetic 14 structure which results in a variant form and may be 15 transmitted to subsequent generations. And the third 16 definition is a distinct form resulting from such a change. 17 THE COURT: Well, the third -- the next to last 18 one I thought was what we're talking about. 19 MR. KRACHT: A distinct form resulting from such a 20 change. So the process -- 21 THE COURT: The last one -- that's the last one 22 you read, right. 23 MR. KRACHT: Right. The first one is the process 24 or instance of changing, which is -- 25 THE COURT: Well, that one, but the next to last -32-

1 one you read. 2 MR. KRACHT: The second one is, a change in 3 genetic structure. 4 THE COURT: Yeah, the third one. 5 MR. KRACHT: The third one is, a distinct form 6 resulting from such a change. 7 THE COURT: Keep reading. 8 MR. KRACHT: A change in genetic structure which 9 results in a variant form and may be transmitted to 10 subsequent generations. 11 THE COURT: That's the one. That's the one that 12 seems to be what we're saying. And that's what we have in 13 our -- that's what you have in your definition here in front 14 of me. It says, replacement of one or more nucleotides in 15 the GFP gene which results in alteration of the amino acid 16 sequence of the protein. 17 MR. LAWTON: It's another way of saying the same 18 thing, I think. 19 THE COURT: Same thing, yeah. It seems to me to 20 be the same. 21 Well, then let's -- let's let that be the 22 definition of "mutant." Actually, it's mutation, not 23 mutant. I mean, the word we just -- the word we just -- the 24 definition really applies to mutation. How could we change 25 the tense of it. Mutants -- -33-

1 MR. LAWTON: Your Honor, I wonder if we're -- 2 THE COURT: How about this? A protein in which 3 one or more nucleotides in the GFP gene has been replaced, 4 which results in alteration of the amino acid sequence. Can 5 I do that? 6 MR. LAWTON: Your Honor, I wonder if -- 7 THE COURT: Somebody heard it. 8 MR. LAWTON: -- if we -- we started with a working 9 definition of "mutant" back on page five that gave the jury 10 something to work with in terms of enhancing expression, 11 modifying expectation, modifying fluorescence. And I hope 12 that we're not doing away with that material because I think 13 it is explanatory, and it will help the jury make sense of 14 what the claim really means. 15 And I see that we have a definition of "mutants" 16 on page seven, but I wonder if it's frankly inferior to the 17 one that the Court identified yesterday in terms of 18 explaining for the jury what the effect of mutation can be 19 and what the protein actually does. 20 THE COURT: Well, let's -- let's explore that in 21 the context of this other language. Let's get the language 22 and then take a look at it. A mutant is a protein in which 23 replacement of one or more nucleotides in the GFP gene 24 results in alteration of the amino acid sequence of the 25 protein, which may produce -- which may -- excuse me -- -34-

1 enhance the expression, modify excitation and/or modify 2 fluorescence. 3 Now, can we -- is it possible -- have we got the 4 equipment here to put that up on the wall? Have we got -- 5 sometimes -- I get spoiled. Sometimes I have these 6 hearings, and these parties come in here with some of the 7 most fabulous stuff you ever saw, and we talk, and boom, 8 it's on the wall. Do you have that equipment here? 9 MS. MAHANEY: Yeah, we could. You'd have to resay 10 it, I think. 11 THE COURT: I'll be happy to do that. I wrote it 12 down. I can restate it. 13 MR. LAWTON: I think I can do it, your Honor. 14 It'll just take me a minute. 15 THE COURT: Okay. Do you want me to read it 16 again? 17 MR. LAWTON: I think I got it, your Honor. 18 THE COURT: Let me just read it. You follow me. 19 A protein in which replacement of one or more nucleotides in 20 the GFP gene results in alteration of the amino acid 21 sequence of the protein, which may enhance expression, 22 comma, modify excitation, comma, and/or modify fluorescence, 23 closed bracket. 24 The first question is, did we get it down? 25 MR. LAWTON: We have it, your Honor. -35-

1 THE COURT: Okay. The second question, can we put 2 it on the wall? 3 MR. LAWTON: Yes. It'll just take a moment. 4 THE COURT: Okay. 5 MR. LAWTON: I'm just transcribing it for my 6 notes. 7 THE COURT: Okay. 8 MS. MAHANEY: I think we have it, your Honor. Did 9 we get it? 10 THE COURT: Protein in which replacement of one or 11 more nucleotides in the GFP gene results in alteration of 12 the amino acid sequence of the protein, which may enhance 13 expression, modify the excitation and/or modify 14 fluorescence. You've got it. It's on the board. It's on 15 the wall. 16 Now, the next question is, is it okay? 17 MS. MAHANEY: Your Honor, we're going to maintain 18 our objection that it should not cover evolutionary mutants. 19 THE COURT: Okay. But at least we've got it 20 narrowed to that objection, that you wanted it to be limited 21 to artificial. 22 MS. MAHANEY: That's correct, your Honor. 23 THE COURT: Artificial insemination. 24 MR. DIBOISE: No. 25 THE COURT: No. But it is kind of an artificial -36-

1 insemination you're talking about, isn't it? 2 MR. DIBOISE: I don't think we should go there, 3 your Honor. 4 THE COURT: Okay. Well, okay. But we're talking 5 about -- I think we're talking about living things, aren't 6 we? But we don't need to go there. It's artificial. Okay. 7 MS. MAHANEY: I mean -- 8 THE COURT: Artificial replacement. How's that? 9 MS. MAHANEY: Right. I mean, because if you look 10 at the word "replacement," that suggests to me an artificial 11 replacement, you know, somebody doing something 12 intentionally, not something that occurs slowly over 13 millions of years. 14 MR. LAWTON: Your Honor, that's going -- that's 15 running afoul of the Court's correct view that mutation does 16 not necessarily limit itself to artificial man or human-made 17 action. 18 THE COURT: Well, okay. The replacement -- 19 MR. LAWTON: That's what they want. 20 THE COURT: The gene -- when we say replacement of 21 one or more nucleotides, we are saying -- for example, it 22 could mean -- it can't mean deletion, though, can it? It 23 can't mean deletion because if you take one of those little 24 nucleotides out, the other one doesn't have -- doesn't have 25 a mate. Isn't that the rule? You can't take one out, can -37-

1 you? Or can you? Aren't they all paired up? I thought -- 2 MS. MAHANEY: Yeah. DNA is -- 3 THE COURT: I thought all these nucleotides were 4 paired up. 5 MS. MAHANEY: They are paired up, your Honor. 6 THE COURT: Well, then what happens if you take 7 one away? 8 MS. MAHANEY: I'm not sure. 9 THE COURT: Well, does anybody know what happens? 10 You're Mr. Hoffman. 11 MR. LAWTON: I'll bet Doctor Hoffman knows. 12 THE COURT: What happens? 13 MR. HOFFMAN: Sometimes you get a deletion -- 14 sorry. Your Honor -- 15 THE COURT: Just tell me what happens if you 16 delete one. 17 MR. HOFFMAN: The cell has an editing system, your 18 Honor, and it will edit the unpaired nucleotide out of the 19 sequence. 20 THE COURT: In other words, it will delete the 21 other one. 22 MR. HOFFMAN: That's right, your Honor. 23 THE COURT: If one is -- if one dies, the other 24 one gets taken away. 25 MR. HOFFMAN: That's right, your Honor. And that -38-

1 results in -- that's another kind of mutation. 2 THE COURT: I would think that would be an 3 inevitable mutation. 4 MR. HOFFMAN: Yes, your Honor. 5 THE COURT: Yeah. 6 MR. HOFFMAN: That happens over evolutionary time 7 as well as in the laboratory. 8 THE COURT: Does it happen fast? I mean, if one 9 of them is removed suddenly, does the other one die pretty 10 quick and get taken off? 11 MR. HOFFMAN: The cell has an editing system which 12 will remove such an unpaired nucleotide. 13 THE COURT: You said that. My question is, is it 14 quick or does it take a long time? 15 MR. HOFFMAN: It's quick, your Honor. 16 THE COURT: Quick. 17 MR. HOFFMAN: Because the cell's viability depends 18 on this -- on this system of editing. So it's quick. 19 THE COURT: Are you talking -- now, when you say 20 quick, are you talking nanoseconds or are you talking weeks 21 or days or what? 22 MR. HOFFMAN: I don't think nanoseconds. Maybe -- 23 depending on the cell division time, but I would say the 24 order of probably hours, that order, sir. 25 THE COURT: Okay. Thank you. -39-

1 MR. HOFFMAN: You're welcome. 2 MR. BOGGS: Your Honor -- 3 THE COURT: Yes. 4 MR. BOGGS: Your Honor, I think Doctor Hoffman 5 would agree that the deletion of one nucleotide tends to 6 change the reading frame drastically of the protein. The 7 reading -- producing the protein from a specific gene 8 requires a very specific sequence of nucleotides. If you 9 delete one, the ones downstream from that are no longer in 10 register, and usually that will prevent the protein from 11 being produced at all. 12 THE COURT: That'll kill the protein. 13 MR. BOGGS: Yes. 14 THE COURT: I can see that because -- 15 MR. HOFFMAN: Not necessarily, your Honor. 16 THE COURT: No? 17 MR. HOFFMAN: No. Sometimes it will, sometimes it 18 won't. It depends on the position of the mutation. If it's 19 near the end of the protein, it's true that there would be a 20 change in register -- 21 THE COURT: Something happened to your mic. 22 MR. HOFFMAN: I'm sorry. If it's near the end of 23 the protein, it may not -- it may not cause a nonsense 24 mutation where no protein is produced. Deletions can -- 25 it's very well known in the art that deletions can cause a -40-

1 change in the amino acid sequence, and the protein may have 2 a different function, no function, an improved function. 3 THE COURT: It just depends. 4 MR. HOFFMAN: It depends, yes, your Honor. 5 THE COURT: Now, suppose -- this is really 6 interesting and informative to me because I know so little 7 about this. But the DNA let's assume is pretty long. And 8 let's assume that this particular gene is right at the front 9 end of this DNA. The first 1-percent of it, you run into 10 this gene. And this gene, let's say, has a nucleotide 11 sequence of let's say 100 nucleotides. 12 And the first one of those -- or the second one of 13 those 100 nucleotides, one of them is somehow deleted or 14 replaced. It's taken out. Not replaced. It's just taken 15 out. If it's replaced, I see something coming in and 16 replacing it, and I don't mean to say that. I mean to say 17 take it out. Then you say, if that happens, the other one 18 will drop out. And so they'll move up and go on as if 19 nobody was ever there. 20 Now, will that affect the whole rest of the DNA? 21 Will it alter the sequences all the way down or just within 22 that gene? 23 MR. DIBOISE: Your Honor, sorry to interrupt you, 24 but I must object at this point in time. 25 THE COURT: Why? -41-

1 MR. DIBOISE: We understood that there would be no 2 expert testimony offered during the course of this hearing. 3 And in reliance on that, we didn't bring our internal 4 experts. 5 THE COURT: Okay. Well, let me say this. Number 6 one, I don't regard this as testimony. I regard this as -- 7 MR. DIBOISE: Well, I would have regarded it as 8 exposition for your Honor, but we are still at a 9 disadvantage because we relied on their representation that 10 they weren't going to bring someone to the court to offer to 11 you expert help at all, and not bringing someone ourselves. 12 THE COURT: Well, it's not their fault. It's my 13 fault because I'm asking a question. 14 MR. DIBOISE: Well, I wouldn't say that, your 15 Honor. They represented to us over the course of the last 16 couple of weeks that they would not offer Doctor Hoffman to 17 provide -- 18 THE COURT: Well, they aren't. And I'm sure 19 they're in good faith. They aren't offering at all. I 20 mean, I'm the one that's asking him the question. 21 MR. DIBOISE: I understand, your Honor, but -- 22 THE COURT: However, if you won't -- 23 MR. DIBOISE: -- at the same point -- 24 THE COURT: If you won't permit me to ask -- 25 actually, this is an opportunistic move on my part to get -42-

1 some information. This is a tutorial question. It has 2 nothing to do with your patent. I'm asking what happens to 3 a DNA chain if a pair of nucleotides are removed. I'm just 4 curious, what happens -- in a tutorial way, what happens to 5 the rest of that nucleotide chain? Does everybody move up 6 one? And if they do, do all of these sequences get out of 7 kilter by one? That's what I'm asking. It has nothing to 8 do with the patent. It's a tutorial question. So relax. 9 Okay. 10 MR. DIBOISE: Done. 11 THE COURT: All right. But if anybody else knows 12 the answer too, tell me. I mean, I -- 13 MR. BOGGS: Your Honor. 14 THE COURT: Yeah. 15 MR. BOGGS: Basically, each gene is an intact 16 unit. 17 THE COURT: Oh, okay. 18 MR. BOGGS: So that it won't affect genes 19 downstream of that dilution. It would just affect that 20 particular gene. 21 THE COURT: Good. 22 MR. BOGGS: I mean, that's the general answer. 23 THE COURT: Do you agree with that? 24 MR. HOFFMAN: Yes. Genes have intervening 25 sequences between them. It kind of protects against this -43-

1 cascade. He's correct. 2 THE COURT: Okay. Fine. So you see, I learned 3 something. Nobody got hurt, but I learned something. 4 All right. Now, does anybody object to this 5 definition of "mutants"? 6 MR. LAWTON: Not us, your Honor. 7 THE COURT: And your only objection is you want to 8 limit it to artificial. 9 MS. MAHANEY: Yes. And we also object to the 10 definition of GFP, to the extent we talked about it earlier, 11 that we think it should be limited to the GFP gene of 12 aequorea Victoria because that's how it was defined in the 13 specification. 14 THE COURT: Right. Okay. 15 MS. MAHANEY: So it should be mutants of that 16 specific gene. 17 THE COURT: Of that specific gene, the Victoria 18 GFP gene. Okay. All right. 19 MR. LAWTON: Your Honor, I think we're plowing old 20 ground. 21 THE COURT: Well, let's -- I think we've -- I 22 think we now at least have defined "mutants." We've 23 improved our definition. 24 Marc, have you got that down? 25 THE LAW CLERK: Yes, your Honor. -44-

1 THE COURT: Let's use that as our definition of 2 "mutants." 3 THE LAW CLERK: Your Honor, just one question. 4 THE COURT: Yes. 5 THE LAW CLERK: Should it be proteins rather than 6 a protein, since it's plural, mutants? 7 THE COURT: It should be plural. Mutants are 8 proteins. 9 THE LAW CLERK: Thank you, your Honor. 10 THE COURT: So drop "a." Just say "proteins." 11 Okay. So that'll be the definition of "mutants." 12 Now we can go to page seven and the second 13 nucleotide sequence encoding a selection marker. Does 14 anybody want to do anything with that or could we leave it 15 as is? Both of you want to define "selection marker." Do 16 you want to define the selection marker? Hello? 17 MS. MAHANEY: We thought the jury probably would 18 not understand what a selection marker is. 19 THE COURT: Okay. So you both have it defined 20 here. A selection marker is a protein -- Xenogen's is 21 shorter, so I'll read that first. That always gets my 22 attention. The shorter one gets my attention. You should 23 know that. 24 MR. LAWTON: We've learned that, your Honor. 25 THE COURT: All right. Selection marker, a -45-

1 protein produced by a cell that confers resistance to an 2 inhibitor or poison which kills or inhibits cells that do 3 not contain this protein. A protein produced by a cell that 4 confers resistance to an inhibitor or poison which kills or 5 inhibits cells. 6 Well, let me read the Plaintiff's. I don't 7 understand the Defendant's. 8 MR. LAWTON: Your Honor, we -- I'm sorry. 9 THE COURT: A genetic sequence which encodes a 10 known protein which is inserted into an expression vector 11 containing a sequence of interest whereby the expression of 12 the known protein under suitable growth conditions can be 13 used to select cells capable of functionally expressing a 14 genetic sequence of interest. 15 We've got to do better than this. It's too 16 complicated. 17 MR. LAWTON: Your Honor, I agree. And we don't 18 object to the Xenogen proffered construction. Maybe it 19 could be -- maybe a couple of those terms could be defined 20 in brackets, as the Court has been doing with some of these 21 technical terms -- 22 THE COURT: By parenthesis, you mean? With 23 parenthesis? 24 MR. LAWTON: -- like "inhibitor." 25 THE COURT: Well, let's see what -- first I've got -46-

1 to understand what it means. A selection marker. The use 2 of it is, a second nucleotide. We already know what that 3 is. That's a -- 4 MS. MAHANEY: A piece of DNA. 5 THE COURT: It's a piece of DNA. A second 6 nucleotide sequence encoding a selection marker. Well, 7 first of all, don't you think we need the definition of a 8 nucleotide sequence? 9 MS. MAHANEY: I believe we defined it above 10 when -- 11 THE COURT: Oh, did we? Where did we define it 12 above? 13 MS. MAHANEY: There was a first sequence. 14 MR. LAWTON: We called that a specific order of 15 nucleotides comprising a nucleic acid, in this case DNA, is 16 my note for the definition of first nucleotide sequence. 17 And I'm sure Mr. Sharpe has that. 18 THE COURT: Nucleotide -- yeah, I see we did 19 define it, but I didn't write it down here. 20 Would you please read it slowly for me, Marc. 21 THE LAW CLERK: Yes, your Honor. 22 THE COURT: Nucleotide sequence. 23 THE LAW CLERK: Nucleotide sequence, a specific 24 order of nucleotides comprising a nucleic acid -- 25 THE COURT: Nucleotides comprising? -47-

1 THE LAW CLERK: Yes. A nucleic acid. 2 THE COURT: Comprising a nucleic acid -- 3 THE LAW CLERK: -- comma, in this case DNA. 4 THE COURT: Okay. I wrote down, a specific order 5 of nucleotides comprising a nucleic acid, comma, in this 6 case DNA. 7 THE LAW CLERK: That's what I have, your Honor. 8 THE COURT: We used the term "comprising"? 9 THE LAW CLERK: Yes, your Honor. 10 THE COURT: Which means including but not limited 11 to? 12 THE LAW CLERK: Yes, your Honor. But we haven't 13 defined "comprising" yet. 14 THE COURT: Well, if we're going to use it, we 15 need to define it. Or we could avoid it for now by just 16 saying, a specific order of nucleotides, including a nucleic 17 acid instead of comprising. Or else, if you want to say 18 comprising, you can make a parenthesis saying, including but 19 not limited to. 20 Does this specific order of nucleotides contain 21 more than the nucleic acid? 22 MS. MAHANEY: No. It would just be the string 23 of -- necessary to produce that specific protein. 24 THE COURT: So then "comprising" is the wrong word 25 there. Because "comprise" means including, but not -- -48-

1 MS. MAHANEY: Yeah. It should be "consisting." 2 THE COURT: It should be consists of or something. 3 MS. MAHANEY: Yes. It's not -- right. 4 THE COURT: That's a closing word. Comprising is 5 an opening word. 6 MS. MAHANEY: It's consisting in this situation. 7 THE COURT: Consisting. Okay. 8 THE LAW CLERK: Your Honor, are we changing that 9 to "consisting"? 10 THE COURT: Yeah. Consisting of. Consisting of a 11 nucleic acid. Consisting of a nucleic acid, in this case 12 DNA. Okay. Now, that's just -- that's the definition of 13 "nucleotide sequence." So now we're on -- now we're on page 14 seven. Let's underline the term "nucleotide sequence." You 15 remember we underlined it if we previously defined it. We 16 don't define it again, but we underline it. 17 Okay. Encoding a selection marker. Now we define 18 "selection marker." Now, tell me in common terms what this 19 selection marker is going to do. The first nucleotide 20 sequence is going to -- 21 MS. MAHANEY: It's going to produce the GFP. 22 THE COURT: -- produce GFP, and the second is 23 going to inject the GFP into the tumor. Is that what it's 24 going to do? 25 MS. MAHANEY: Your Honor, if I could just bring up -49-

1 one of our tutorial slides. 2 THE COURT: Yeah. 3 MS. MAHANEY: And if you look on the right, this 4 is a -- you know, a simplified look at an expression vector. 5 THE COURT: Yeah. 6 MS. MAHANEY: Okay. So the claim requires that 7 there be this first sequence that produces the protein -- 8 and in this case, it's GFP -- and that there be a second 9 sequence that produces a selection marker. So this is all 10 within the expression vector. 11 THE COURT: And the market is going to ride -- is 12 it going to camp on the GFP? 13 MS. MAHANEY: I don't know if "camp" is the right 14 word. They're both on this expression vector. And what the 15 selection marker is going to do, it's going to protect the 16 cells that are transformed from whatever toxin or inhibitor 17 you put in to destroy the nontransform cells. 18 THE COURT: The tumor cells. 19 MS. MAHANEY: No, no. So -- 20 THE COURT: You're going to try and destroy the 21 tumor cells? 22 MS. MAHANEY: No. Let me start over. I'm sorry. 23 So let's say you have a culture of cells. Okay. And you 24 want to transform them. You want to get this foreign gene, 25 which is GFP, into those cells. Okay. So you use -- you -50-

1 make this expression vector, and you put the gene for GFP on 2 it, and you put the gene for the selection marker on it. 3 But unfortunately, for whatever reason, this expression 4 vector is not going to get into every single cell. Some 5 cells will be transformed and some will not. So how do you 6 distinguish the two? 7 And the way that's done is by using a selection 8 agent, which is like a toxin or something that's going to 9 kill off or do something bad to the cells that are not 10 transformed. And this selection marker will protect those 11 cells that actually are transformed to produce GFP. So 12 those won't die. 13 THE COURT: I see. 14 MS. MAHANEY: So your end result should be cells 15 that are transformed. 16 THE COURT: It's like a vaccination to protect 17 those cells, where the other ones won't be vaccinated. 18 They're going to die. 19 MS. MAHANEY: Right. 20 THE COURT: This expression vector, have we 21 defined that, what an expression vector is? 22 MS. MAHANEY: We did, your Honor. I think it was 23 on page three or four. 24 THE LAW CLERK: Would you like me to read the 25 definition, your Honor? -51-

1 MR. LAWTON: I think we did, your Honor, on page 2 three. 3 THE COURT: Expression vector. It's on page four 4 on mine. We said it's a virus or plasmid, parenthesis, a 5 circular piece of DNA, closed parenthesis, that carries a 6 DNA sequence into a suitable host cell and there directs the 7 production of a specific protein. 8 MR. LAWTON: That's what I have, your Honor. 9 THE COURT: And what protein does it direct the 10 production of? 11 MS. MAHANEY: In this case, it would be GFP. 12 MR. LAWTON: Green fluorescent protein, your 13 Honor. 14 MS. MAHANEY: GFP. 15 THE COURT: It directs the production of GFP? 16 MS. MAHANEY: Yeah, right. 17 THE COURT: How does it do that? Production? GFP 18 is there, isn't it? 19 MS. MAHANEY: The expression vector takes GFP and 20 puts it into the cell. So then GFP -- 21 THE COURT: This DNA sequence is the GFP, isn't 22 it? 23 MS. MAHANEY: Yes. 24 THE COURT: So a virus or plasmid, paren, circular 25 piece of DNA, that carries the GFP sequence. We say carries -52-

1 a DNA sequence. It carries the GFP sequence, isn't it -- 2 doesn't it? 3 MS. MAHANEY: In this particular case, it's the 4 DNA sequence for GFP. 5 MR. LAWTON: Maybe we should say that. 6 THE COURT: Why don't we say that? In the context 7 of how this claim is using it -- we're talking about GFP, 8 aren't we? 9 MS. MAHANEY: Yes. 10 THE COURT: So why don't we say, that carries the 11 GFP sequence into a suitable host cell, and there directs 12 the production of what? What does it produce? What does it 13 direct the production of? 14 MS. MAHANEY: The actual -- 15 MR. LAWTON: GFP. 16 MS. MAHANEY: The actual protein that's green 17 fluorescent. 18 MR. LAWTON: GFP, your Honor. 19 THE COURT: It produces the protein there? 20 MS. MAHANEY: Yes. Once it's inside the cell. 21 THE COURT: What did it take in there? I thought 22 it took it in there. 23 MS. MAHANEY: Just the gene. 24 THE COURT: It took the gene. 25 MS. MAHANEY: Yes. -53-

1 THE COURT: But not the protein. 2 MS. MAHANEY: No. The cell will then take the 3 gene and make protein with it. 4 THE COURT: Okay. Okay. Ahh, okay. Okay. 5 MS. MAHANEY: And just to be clear, in this 6 specific instance, the expression vectors, don't forget, 7 have two sequences, one for GFP and one for the selection 8 marker. 9 THE COURT: Well, I'm not sure that I understood 10 that, but let me just grab this one little tiny bite at a 11 time. 12 MS. MAHANEY: Okay. 13 THE COURT: A virus or a plasmic, paren, circular 14 piece of DNA, closed paren, that carries the GFP gene 15 sequence, right? It's the gene sequence that's carried into 16 the suitable host cell, and there directs the production of 17 the GFP protein. 18 MR. LAWTON: GFP protein is slightly redundant, 19 your Honor. 20 THE COURT: Why? I didn't use it before. 21 MR. LAWTON: Well, GFP protein, if you spell out 22 the acronym, would be green fluorescent protein protein. 23 THE COURT: Oh, I see what you mean. Okay. Well, 24 then have we previously defined "GFP"? Where did we do 25 that? That came later. -54-

1 MR. LAWTON: GFP is on the next page. 2 THE COURT: Well, then we ought to just say, 3 production of the specific green fluorescent protein. 4 MR. LAWTON: And maybe then it could say, defined 5 below or defined on the next page or something. 6 THE COURT: Yeah. Directs the production of a 7 specific green fluorescence -- fluorescent protein or mutant 8 thereof, comma, defined below. 9 MS. MAHANEY: Your Honor, if we're going to be 10 that specific, though, then we need to mention the selection 11 marker also. Because if you keep going down the claim, the 12 expression vector has to have two things, the gene for GFP 13 and the gene for the selection marker. 14 THE COURT: Okay. 15 MR. LAWTON: Can't we just define it where it is? 16 THE COURT: Why are we defining "expression 17 vector" right now? Well, it's in the claim. 18 MS. MAHANEY: Right. And the reason we kept it 19 sort of general up there was because then there were 20 specific additions coming later. As long as it's clear 21 somewhere that it also includes a selection marker, that 22 would be okay. 23 THE COURT: Directs the production -- okay. Let's 24 see. A virus or plasmid that carries -- plasmid, paren, a 25 circular piece of DNA, closed paren, that carries -- carries -55-

1 a selection marker, paren, defined below, and the GFP gene 2 sequence into a suitable host cell and there directs the 3 production of a specific green fluorescent protein or mutant 4 thereof defined below -- also defined below. 5 That's getting a little big long in the tooth, but 6 does that work? 7 MS. MAHANEY: Could you re-read that? 8 THE COURT: Yeah. 9 MS. MAHANEY: Thank you. 10 THE COURT: I think I can. I'll try. Expression 11 vector, open bracket, a virus or plasmid, parenthesis, a 12 circular piece of DNA, closed parenthesis, that carries a 13 selection marker, parenthesis, defined below, closed 14 parenthesis, and a GFP gene sequence into a suitable host 15 cell and there directs the production of a specific GFP or 16 mutant thereof, parenthesis, also defined below. 17 Now, before you react to that, let me make an 18 alternative suggestion. We have just -- when you look at 19 this word "expression vector," we've just been asked to say 20 like -- we walk into a room and somebody says, what time is 21 it. And we either tell them what time it is -- we look at 22 our watch and we say, it's 10:15, or we say, well, the time 23 is determined by a clock which contains a spring and a 24 winder and gears and jewels and hands, and it gives us the 25 time of day, and that right now happens to be 10:15. -56-

1 Is there any way -- that's a crude analogy. Is 2 there any way to say what an expression vector is as if we 3 were looking at a forest from a distance of a mile away, and 4 then later, little by little, we're going to be going into 5 that forest, and we're going to clearly be defining the 6 trees that are in that forest, rather than attempt in this 7 awkward way to either define it here or say, defined later. 8 You know, twice I've said, defined below. 9 MS. MAHANEY: Right. I suppose the way we did it 10 originally was to keep it sort of general and then add the 11 specifics later. 12 MR. LAWTON: I think that was the intent, your 13 Honor. 14 THE COURT: Perhaps it was, but it wasn't all that 15 real good. 16 MR. LAWTON: It wasn't successful, right. 17 THE COURT: No. 18 MS. MAHANEY: The problem is is once you get -- 19 MR. LAWTON: Clear as mud. 20 MS. MAHANEY: Once you get to the bottom of the 21 claim, there's actually -- the expression vector actually 22 has to be derived from something specific. So it's going to 23 get even more specific as we get to the bottom of the -- 24 THE COURT: Well, that's as it should be. I think 25 if you creep into it, little baby steps, you know, -57-

1 eventually they'll get the whole picture. But if you jump 2 right in the first deal and you just give them the whole 3 shot with -- like a five-inch hose in the face, they're not 4 going to get it. 5 MS. MAHANEY: I suppose we were trying to do baby 6 steps, but -- 7 THE COURT: Well, that's what -- I'm trying to 8 back up to look at an expression vector. Can we improve 9 that? It's pretty bulky right now. 10 MS. MAHANEY: Well, maybe we should just go back 11 to just the general definition, then. 12 THE COURT: Well, could we say, an expression 13 vector is a -- it's a -- is the vector a -- is a vector an 14 amino acid sequence? 15 MS. MAHANEY: No, your Honor. 16 THE COURT: Is it a nucleotide sequence? 17 MS. MAHANEY: Yes, your Honor. 18 THE COURT: It is? 19 MS. MAHANEY: Yes. 20 THE COURT: A nucleotide sequence. 21 MS. MAHANEY: It can be a piece of DNA, yes. 22 THE COURT: Okay. Well, could we say it's -- an 23 expression vector is a piece of DNA which is injected into a 24 host cell? And stop there for the moment. Could we say 25 it's a piece of DNA which is injected -- we've already said -58-

1 it has been transfected. That means injected. So we don't 2 have to say that again, do we? A piece -- oh, transfected. 3 The cell is transfected with an expression vector. An 4 expression vector is a piece of DNA which carries material 5 to perform this claim. 6 MS. MAHANEY: I suppose, your Honor, we're a 7 little bit concerned we're expanding the definition. 8 THE COURT: Of "expression vector"? 9 MS. MAHANEY: Yeah. I mean, expression vector is 10 something very specific. It can't really be any piece of 11 DNA, is the problem. It has to be, you know, sort of this 12 plasmid idea, which is a circular piece of DNA or it can be 13 something from a virus. So my concern -- 14 THE COURT: Well, it is a piece of -- it's a 15 specific piece -- a specific piece of DNA which carries 16 material to perform a specific function described below. 17 Would that do it? 18 MS. MAHANEY: What if we said that -- just 19 thinking out loud -- capable -- I mean, what it does is it 20 takes a foreign gene, and it inserts it into a cell, and 21 thereby directs the production of whatever protein comes 22 from that gene. 23 THE COURT: Okay. A specific -- an expression 24 vector is a piece of DNA used to inject -- what did you say 25 it injects, a gene? To inject a gene into a cell. -59-

1 MS. MAHANEY: And it's a foreign gene. 2 THE COURT: A foreign gene, yeah. Inject a 3 foreign -- a foreign gene into a cell. And for now, 4 wouldn't that do it? 5 MS. MAHANEY: I'm just thinking about the second 6 part, directing the production. You know, maybe if that's 7 mentioned below. 8 THE COURT: Well, all that stuff is going to come, 9 I think. 10 MS. MAHANEY: Okay. 11 THE COURT: But for now, at least we can say it is 12 a piece of DNA used to inject a foreign gene into a cell. 13 It's a lot of things, but at least it does that. 14 MS. MAHANEY: Right. 15 THE COURT: The vector is the device for injecting 16 it. 17 MS. MAHANEY: Exactly. 18 THE COURT: Is it a device? A piece of DNA, is 19 that a device? 20 MS. MAHANEY: I don't know if you'd call it a 21 device. People call it a construct. 22 THE COURT: Well, that's a complicated word too. 23 MR. LAWTON: It wouldn't be a method. It would be 24 an apparatus. 25 THE COURT: Yeah. Well, why don't we -- we could -60-

1 say an apparatus. 2 MR. LAWTON: That's a little clunky for the jury. 3 Probably not -- 4 MS. MAHANEY: That's just something mechanical. 5 MR. LAWTON: Yeah. 6 THE COURT: A -- 7 MR. LAWTON: Vehicle? 8 THE COURT: A vehicle. Yeah. How about that? A 9 vehicle -- a vehicle for injecting a foreign gene into a 10 cell. 11 MS. MAHANEY: I think we could live with that, 12 your Honor. 13 THE COURT: A vehicle for -- we can avoid the DNA 14 too. A vehicle for injecting -- 15 MS. MAHANEY: Yeah. As long as we're defining 16 things later, I think that will work. 17 THE COURT: Yep. A vehicle for injecting a 18 foreign gene into a cell. 19 MR. LAWTON: We like it. 20 THE COURT: You like that? 21 Marc, have you got that? 22 THE LAW CLERK: Yes, your Honor. 23 THE COURT: You've got it down? 24 THE LAW CLERK: I believe so, your Honor. 25 THE COURT: Okay. Let me read it. Expression -61-

1 vector is a vehicle for injecting a foreign gene into a 2 cell. You got it? 3 THE LAW CLERK: Yes, your Honor. 4 THE COURT: Good. All right. 5 MS. MAHANEY: Your Honor, could we make it a DNA 6 vehicle, just to make clear it's not some other type? 7 THE COURT: Sure. That's all right. You want to 8 do that, DNA vehicle? 9 MS. MAHANEY: Thank you. 10 THE COURT: Okay. Injecting a DNA vehicle. All 11 right. That's -- now, that's an improvement. 12 MR. LAWTON: Or a DNA vehicle for injecting. Was 13 that the Court's -- 14 THE COURT: That's okay. A DNA -- a DNA vehicle 15 for injecting a foreign gene. A DNA vehicle for injecting a 16 foreign gene. 17 You got it? 18 THE LAW CLERK: Yes, your Honor. 19 THE COURT: We just made a recent change. A DNA 20 vehicle. 21 THE LAW CLERK: A DNA vehicle. 22 THE COURT: All right. Good. 23 Now, where does that take us as -- before we're 24 done, before you leave San Diego, you've got to look up on 25 your computer, under Google, look up after hours. Don't do -62-

1 it now because I don't want raucous laughter in the 2 courtroom, but look up -- look up -- in your Google, look up 3 Ajax Liquor. Just look up Ajax Liquor Program. Ajax Liquor 4 Program. And then you'll get some -- you'll get a second 5 meaning out of when I say, so what have we got so far? 6 You'll get a second understanding from that expression when 7 I say, so what have we got so far. So on your own time, 8 look up Ajax Liquor Program. You'll enjoy it. 9 Okay. Now, where are we? 10 MR. LAWTON: Your Honor, I had a question about 11 the use of the term or the word "injecting" insofar as it 12 may -- 13 THE COURT: How about "inserting"? 14 MR. LAWTON: Well, we used "inserting" on a 15 previous page in the definition of "transfected," which we 16 called a process by which genes have been inserted into the 17 tumor cell. 18 THE COURT: Well, we could say insert rather than 19 inject. I don't -- 20 MR. LAWTON: Or added. I just -- I think that the 21 word "injected" suggests a limitation to the jury, a gene 22 gun or something like that. 23 THE COURT: What about "inserted"? 24 MR. LAWTON: It would be consistent with the 25 previous definition. -63-

1 THE COURT: It seems pretty synonymous to me. A 2 DNA vehicle for inserting a foreign gene into a cell. 3 Any problem with that? 4 MS. MAHANEY: No, your Honor. 5 THE COURT: Okay. Let's go with that. 6 Now, then, that takes us down to -- where are we 7 now? 8 MS. MAHANEY: Page seven, selection marker. 9 THE COURT: Selection marker. Okay. Now -- 10 MS. MAHANEY: And I think we were trying to 11 simplify -- 12 THE COURT: Trying to simplify that one too. The 13 selection marker is a part of the expression vector -- 14 MS. MAHANEY: Actually, the gene is part of the 15 selection vector. The selection marker is actually the 16 protein that would come from the gene, which is in the 17 expression vector. 18 THE COURT: You lost me. 19 MS. MAHANEY: I'm sorry. That's perhaps a little 20 misleading. The gene for the selection marker is what is 21 part of the vector. Not the actual protein, the gene. 22 THE COURT: Oh, and then the host cell will make 23 the protein from that gene. It'll make its own selection 24 vector. The cell -- the cell will make its own selection 25 vector. -64-

1 MS. MAHANEY: No. It'll make -- 2 THE COURT: I mean, it'll make its own, yeah, 3 selection marker. 4 MS. MAHANEY: Right. 5 THE COURT: The cell will make its own selection 6 marker -- 7 MS. MAHANEY: Correct. 8 THE COURT: -- from the gene that it's given. 9 MS. MAHANEY: Yes. 10 THE COURT: I see. Okay. Well, the selection 11 marker, then -- the selection marker is the protein that 12 protects the -- I'm trying to identify the cell, the 13 injected cell or the inserted cell or something. 14 MR. BOGGS: The host cell? 15 THE COURT: Hmm? 16 MR. BOGGS: Host? 17 THE COURT: Host? Okay. Which leads me to wonder 18 if we could use the word "host" in that first trans- 19 expression vector thing. A process by which -- 20 MR. BOGGS: Or protect -- perhaps protects the 21 cells receiving a vector? 22 THE COURT: Do you remember how we defined this 23 expression vector is a vehicle for inserting a foreign gene 24 into a host cell. If we used the term "host" right there, 25 right off the bat, it would then -- expression vector, if we -65-

1 put the word "host" in there, then later when we refer to a 2 host cell, we'll have an antecedent for it. 3 MS. MAHANEY: That's fine, your Honor. 4 THE COURT: So let's put "host" in that expression 5 vector. Back to expression -- 6 THE LAW CLERK: I got it, your Honor. 7 THE COURT: Okay. Now we're back to -- we're back 8 to "selection marker." 9 THE LAW CLERK: Your Honor? 10 THE COURT: Yeah. 11 THE LAW CLERK: Do we need to define what "host 12 cell" means? Because that's the first time we've used it. 13 Is it going to be clear what it's referring to? 14 THE COURT: Well, we could -- we could put that -- 15 host cell, that's kind of self-explanatory, it seems to me. 16 THE LAW CLERK: Okay. 17 THE COURT: Express something -- you insert 18 something into a host cell. I think it sort of tells this 19 picture that what you -- the host is the one that receives 20 the insertion, I think. Let's for the moment leave that 21 one. Let's go back to selection marker. 22 Now, selection marker, we started with that. It's 23 a protein. The selection marker itself is a protein. 24 MS. MAHANEY: Correct, your Honor. 25 THE COURT: So now we can say that selection -66-

1 marker is a protein produced by the host cell to immunize it 2 or to protect it. A protein produced by the host cell to 3 protect it from the purification process by which non-host 4 cells are eliminated. Does that make any sense to anybody? 5 MR. LAWTON: Can we have it again, your Honor? 6 I'm sorry. 7 THE COURT: Yeah. Selection marker, open bracket, 8 a protein produced by the host cell to protect it from the 9 purification process by which non-host cells are eliminated. 10 Now, let's look at the claim, how that word was 11 used, see if that -- I know it's 10:30. 12 We said -- we're talking about the second 13 nucleotide sequence, aren't we? A second nucleotide 14 sequence encoding a selection marker, open bracket, a 15 protein produced by the host cell to protect it from the 16 purification process by which non-host cells are eliminated, 17 comma. Would that be acceptable to both sides? 18 MR. LAWTON: To us it is, your Honor. 19 THE COURT: How about you, Ms. Mahaney? 20 MS. MAHANEY: I think it's okay. 21 THE COURT: Okay. All right. Let's go down to 22 page eight. Both said first and -- oh, it's 10:30. Let's 23 take a 15-minute recess. 24 MR. LAWTON: Very well, your Honor. Thank you. 25 MS. MAHANEY: Thank you, your Honor. -67-

1 (Proceedings recessed briefly.) 2 THE COURT: Marc has a suggestion for us on this 3 page five where we defined "nucleotide sequence." And he 4 suggests that -- have you got it in front of you? Presently 5 it reads, a specific order of nucleotides consisting of a 6 nucleic acid, in this case DNA. 7 He's wondering if we might want to say, a specific 8 order -- a specific -- a nucleic acid consisting of -- 9 consisting of a specific order of nucleotides, in this case 10 DNA. Reversing the -- we said, a -- let me read it again. 11 A nucleic acid, comma, consisting of a specific order of 12 nucleotides, comma, in this case DNA. 13 Is that what -- is that right? 14 THE LAW CLERK: Yes, your Honor. 15 THE COURT: That's what you read from? 16 THE LAW CLERK: Yes, your Honor. 17 THE COURT: Do you want me to read it again? 18 MS. MAHANEY: No. That's fine with us, your 19 Honor. 20 MR. LAWTON: We've got it, your Honor, and it's 21 fine. 22 THE COURT: Is that fine? 23 MR. LAWTON: Yes. 24 THE COURT: Let's make that change. Okay. We'll 25 make that change on nucleic -- on the first nucleic -68-

1 sequence. That's where it appears the first time on page 2 five. 3 Okay. Now we're down to -- what have we got so 4 far? Where are we? Okay. Where are we? Are we on page -- 5 MR. LAWTON: I thought we -- 6 MS. MAHANEY: Page eight. 7 THE COURT: Did we finish the selection marker? 8 MS. MAHANEY: Oh, thank you. Yes, we finished 9 that, and I think we were on "control of viral promoter." 10 THE COURT: Okay. let me back up. I hate to do 11 this. 12 MS. MAHANEY: Okay. 13 THE COURT: But we used the term "protein." I 14 don't know if we had defined "protein." Have we ever 15 defined "protein"? 16 MS. MAHANEY: No, your Honor. 17 THE COURT: We've used "protein" in our 18 definitions. I think in "mutants." We used the term 19 "protein" in our definition of "mutants." 20 MS. MAHANEY: Your Honor, I believe we discussed 21 that a bit yesterday, and we couldn't come up with a way of 22 describing protein that was any simpler. 23 THE COURT: That's true, but we were discussing 24 that during the break. I was discussing it with Marc, and I 25 was saying I'm frustrated because it seemed to me like we -69-

1 were admitting defeat. Because I don't know that a juror 2 would know what a protein is. To be honest with you, the 3 first time I had one of these Markman hearings, I didn't 4 know what a protein was. I thought -- I thought they were 5 things that you ate. I thought you either ate proteins, 6 carbohydrates or fat. You know, I thought it was food, it 7 was kind of a form of food, and I thought protein was 8 something that your body made bones and muscles with. So 9 that's about all I knew what a protein was. 10 But we all -- we tried to define it for a while. 11 We seemed to stumble on it. So you all punted by saying, 12 let's just leave it alone. But I was wondering, could we -- 13 MR. LAWTON: I think we -- 14 THE COURT: What if we said a protein is a -- a 15 protein is an organic compound -- an organic compound. 16 MR. LAWTON: Comprised of amino acids? 17 MR. KRACHT: I can give you the dictionary 18 definition, which -- if you'd like to hear that, your Honor. 19 THE COURT: Who's speaking? Oh, you. 20 MR. KRACHT: I'm sorry. It says, any of a class 21 of organic compounds forming structural components of body 22 tissue and constituting an important part of the diet. But 23 the main part that your Honor hit upon was organic compounds 24 forming structural components of body tissue. 25 THE COURT: I'm not even sure we have to say what -70-

1 it's used for. We could just say it's an organic compound. 2 MR. LAWTON: We could say what they're made of, 3 but I agree with the Court that I think we have to define it 4 because there's other parts -- there's other terms later 5 that talk about protein. For example, the definition of 6 "virus," which we're going to tell them is a particle 7 containing nucleic acid encased in a protein coat. So I do 8 think we have to do a better job. An organic compound 9 consisting of a combination of amino acids might at least 10 tell them what it's made of. I think we have to tell them 11 that. 12 THE COURT: An organic compound. If we don't say 13 what it's made of, we could say it's an organic compound 14 used as building blocks of an organism or a body or an 15 animal. 16 MR. KRACHT: Body tissues is what the definition 17 says. 18 THE COURT: Body tissue. It's an organic compound 19 which builds body tissue. Is that what you said? 20 MR. KRACHT: Forms the structural components of 21 body tissues. 22 THE COURT: An organic compound which forms the 23 structural -- 24 MR. KRACHT: Components. 25 THE COURT: -- components of body tissue? -71-

1 MS. MAHANEY: But GFP does not do that, so -- 2 THE COURT: What doesn't? 3 MS. MAHANEY: GFP. 4 THE COURT: And that's a protein. 5 MS. MAHANEY: Yes. 6 THE COURT: Yeah. But it is an organic compound. 7 MS. MAHANEY: Right. But organic compounds is 8 broader than proteins. 9 THE COURT: Oh, yeah. And a carbohydrate is an 10 organic compound too. So is fat. You're right. 11 MS. MAHANEY: Right. So I just don't want to give 12 the -- 13 THE COURT: Well, we could say a protein is a 14 specific or a particular organic compound. 15 MS. MAHANEY: Could we add, made up of amino 16 acids? 17 THE COURT: Yeah, if you want to. But aren't all 18 organic compounds made up of amino acids? 19 MS. MAHANEY: No. 20 THE COURT: No? Okay. Well, then that -- so what 21 have we got? We've got a protein is an organic compound 22 made up of amino acids. 23 THE LAW CLERK: Can you write that? 24 THE COURT: Organic compound made up of -- 25 THE LAW CLERK: Made up of amino acids? -72-

1 THE COURT: -- amino acids. 2 Okay. Well, that will be -- now, we could stick 3 that down here on the claim where we -- the first time we 4 used "protein." See where that happens. 5 MS. MAHANEY: Your Honor, could we say specific 6 sequence of amino acids? Because it's just not any 7 random -- 8 THE COURT: Yes. Yeah, a specific sequence. 9 Okay. 10 MS. MAHANEY: When we do the glossary, we could 11 always give examples. 12 THE COURT: The first place the word "protein" 13 appears is in the limitation which says, containing a first 14 nucleotide sequence encoding green fluorescent protein, GFP. 15 We could say after GFP, so as not to interfere with the 16 expression -- after GFP put, open bracket, and then say, a 17 protein is an organic compound made up of a specific 18 sequence of -- what did we say? 19 THE LAW CLERK: Amino acids. 20 THE COURT: Amino acids. Made up of a specific 21 sequence of amino acids, closed bracket. And we could put 22 that after the GFP. And that'll be in brackets. You got 23 that? 24 THE LAW CLERK: Yes, your Honor. 25 THE COURT: Good. All right. -73-

1 Well, we seem to be going backwards faster than 2 we're going forward, but let's hope for making -- the ball 3 is going forward anyway. 4 Where are we now? Have we finished "selection 5 marker"? Are we happy with that? Have we agreed on that, 6 "selection marker"? 7 MR. LAWTON: I think we did, your Honor. 8 THE COURT: Did we say it's a protein produced by 9 the host cell to protect it from the purification process by 10 which non-host cells are eliminated? 11 MR. LAWTON: That's what I have, your Honor. 12 THE COURT: Okay. Closed bracket. Does that take 13 us to page eight? 14 MR. LAWTON: Yes, your Honor. 15 THE COURT: Okay. Now, both said first and second 16 said nucleotide. Have we -- did we define "nucleotide"? 17 Yeah, we did. 18 MR. LAWTON: We did. 19 THE COURT: Underline the word "nucleotide." 20 Sequence being under control of a viral promoter. We need 21 to define "viral promoter," right? 22 MR. LAWTON: I think it is defined there in the 23 second sentence beginning on the bottom line of page eight 24 in the agreed column. 25 THE COURT: Okay. The DNA sequence that encodes -74-

1 GFP and the DNA sequence that encodes a selection marker are 2 linked to and controlled by a viral promoter. A viral 3 promoter is a sequence of DNA isolated or derived from a 4 virus which directs the transcription of the GFP gene and 5 the selection marker. Transcription is an early step in the 6 expression of a gene when the code from DNA is transferred 7 to messenger RNA -- wow. We're getting down there, guys. 8 We're getting down -- to RNA prior to making a protein. 9 And I can just see, an RNA is a blah blah blah, 10 and then a blah blah blah is a -- pretty soon we're getting 11 down into a hole here. 12 MS. MAHANEY: We could perhaps switch 13 "transcription" to "production" and then maybe skip that 14 last sentence. 15 THE COURT: Well, what is a viral promoter? Is it 16 a -- does it promote something? 17 MS. MAHANEY: Yes. 18 THE COURT: What does it promote? 19 MS. MAHANEY: The gene. It tells -- 20 THE COURT: What do you mean, promote the gene? 21 MS. MAHANEY: It's a piece of DNA. It's in front 22 of the gene, and it tells the gene when to turn on and make 23 protein. 24 THE COURT: Oh, well, then promoter is -- a viral 25 promoter is a sequence of DNA which tells the -- which gene? -75-

1 MS. MAHANEY: Whichever gene it's attached to. So 2 in this case, it's controlling both the gene for GFP and the 3 gene for the selection marker. 4 THE COURT: If you say the promoter is a sequence 5 of DNA -- but it's not a gene, is it? 6 MS. MAHANEY: No. 7 THE COURT: It's a sequence of DNA. Is it a 8 compound? No. 9 MS. MAHANEY: It's just -- it's just a piece of 10 DNA. And depending on the type of promoter, it tells the 11 gene to turn on and make protein. 12 THE COURT: Is it a piece of DNA which is attached 13 to a gene? 14 MS. MAHANEY: Yes. 15 THE COURT: And it controls the activity of the 16 gene? 17 MS. MAHANEY: Correct. 18 THE COURT: Well, let's say that. What did I say? 19 MS. MAHANEY: Controls the activity of the gene. 20 THE COURT: Okay. 21 MR. LAWTON: I think you said, your Honor, it's a 22 sequence of DNA which is attached to a gene and controls the 23 activity of the gene. But maybe that could be narrowed down 24 to say directs the gene to produce protein. 25 THE COURT: Yeah. A sequence of DNA attached to a -76-

1 gene which -- 2 MR. LAWTON: Or and which. 3 THE COURT: And which? What else does it do? 4 MR. LAWTON: Well, if you put "which" right after 5 "gene," then it makes it sound like the gene is doing it, 6 and I think you want to be talking about the viral promoter. 7 THE COURT: Oh, okay. Okay. A sequence of DNA 8 attached to a gene that? 9 MR. LAWTON: I think we said a viral promoter, a 10 sequence of DNA which is attached to a gene and which 11 directs the gene. 12 THE COURT: What if we just said, a sequence of 13 DNA attached to a gene that controls -- 14 MR. LAWTON: It makes it sound like the gene is 15 controlling. 16 THE COURT: Oh. 17 MR. LAWTON: The antecedent of "which" is what I'm 18 talking about. 19 THE COURT: Okay. 20 MR. LAWTON: I think if we put "and" in there 21 before the "which," then it -- 22 THE COURT: Well, if we -- is it true that if we 23 put a comma in there, that we prevent that problem? 24 MR. LAWTON: Maybe not, because the reader might 25 still think you're talking about the gene rather than the -77-

1 promoter. 2 THE COURT: I thought the comma took away that. 3 MR. LAWTON: It's subjective, but to -- to me it 4 is, but -- 5 THE COURT: Uh-huh. Okay. A sequence of DNA 6 attached to a gene -- well, let me just try this. Let's see 7 what -- a sequence of DNA attached to a gene, comma, that 8 controls -- what does it control? The activity of a gene? 9 MR. LAWTON: Or more specifically, directs the 10 gene to produce protein. 11 THE COURT: Okay. That directs a gene to produce 12 protein. Now, if that's what we're going to say, then I 13 don't have the problem that you do. It would read, a 14 sequence of DNA attached to a gene, comma, that directs the 15 gene to produce protein. And I don't think your problem 16 would surface if that's what it said. 17 MS. MAHANEY: Right. But in this case, it does 18 have to be a viral promoter. 19 THE COURT: A what? 20 MS. MAHANEY: A promoter from a virus. 21 MR. LAWTON: We've seen that already. 22 THE COURT: It's a viral promoter. 23 MR. LAWTON: At the bottom of page eight. 24 THE COURT: We're defining a viral promoter. 25 MS. MAHANEY: Okay. But the -- -78-

1 THE COURT: And we say, a viral promoter is a 2 sequence of DNA -- 3 MS. MAHANEY: From a virus. 4 THE COURT: Okay. Is it a sequence of viral DNA? 5 MS. MAHANEY: Yes. 6 THE COURT: Okay. Okay. A viral promoter, open 7 bracket, is a sequence of viral DNA attached to a gene that 8 directs the gene to produce protein. Now, we're really not 9 worried about defining "viral" so much as we are "promoter." 10 So we can use "viral" again in the definition because it 11 isn't really viral where our question arises. It's what 12 promoter is doing. Does that make sense? 13 I don't like to use the same word in the 14 definition that I'm defining, but I'm wondering if I can't 15 make an exception in this case. Because we're not so much 16 concerned about what the word "viral" means as we are 17 "promoter." 18 MS. MAHANEY: We're concerned about both. 19 THE COURT: Yeah, but most people know what a 20 viral something is. It's pertaining to a virus. I think 21 the jurors will know what "viral" means. 22 MS. MAHANEY: I suppose I'm not so sure. 23 MR. LAWTON: But we're defining -- we're defining 24 "virus" later on, and I think it is important to define it. 25 Because I think not everybody knows what it is. -79-

1 THE COURT: Well, then do you -- are you still 2 happy with this definition? We're saying a viral promoter 3 is a sequence of viral DNA attached to a gene that directs 4 the gene to produce protein. Are you satisfied with that? 5 MS. MAHANEY: We're fine. 6 THE COURT: All right. Because you haven't 7 defined "viral" yet. 8 MR. LAWTON: We're all right with that, your 9 Honor. 10 THE COURT: Okay. Well, then let's do that. 11 That takes us, then, to page 10. Wherein said 12 vector is derived from pED-mtx. Well, we're talking about 13 the expression vector, aren't we, the said vector? 14 MR. LAWTON: Your Honor, is the Court all right 15 with the definition of "virus" just above? Because we were 16 just talking about that. 17 THE COURT: It wasn't used in the claim yet, was 18 it? 19 MS. MAHANEY: I think we took it off. 20 MR. LAWTON: We have it in the agreed column. 21 THE COURT: But I'm asking, is it in the claim? 22 MR. LAWTON: No. "Viral" is, but "virus" -- 23 THE COURT: Well, we don't want to define "virus." 24 I mean, I'm -- it's a good word for our glossary certainly, 25 but we wouldn't want to put it within brackets because we're -80-

1 not defining -- the word "virus" isn't in the claim. 2 MR. LAWTON: Very well, your Honor. 3 THE COURT: Let's -- let's put it in the glossary, 4 Marc. 5 And do you like the definition? You agreed on the 6 definition. A particle consisting of nucleic acid, RNA or 7 DNA, enclosed in a protein code and capable of replicating 8 within a host cell and spreading from cell to cell. Viruses 9 can be good or bad, right? No? 10 MS. MAHANEY: Yes. 11 THE COURT: So we aren't going to say that they're 12 bad. 13 MS. MAHANEY: No. 14 THE COURT: What good viruses are there? 15 MS. MAHANEY: We can't think of any. 16 THE COURT: I thought all good viruses were dead 17 ones. 18 MR. LAWTON: Your Honor, they know a good virus 19 when they see it. It's like obscenity. 20 THE COURT: Who said that? Was that Oliver 21 Wendell Holmes? 22 MR. LAWTON: I think it was Potter Stewart, your 23 Honor. 24 THE COURT: Potter Stewart. Okay. Okay. 25 MS. MAHANEY: Well, I mean, in this case you're -81-

1 using a virus to get a foreign gene into a host cell, so 2 you're using it in a positive way. But generally, I think 3 most people would think viruses are bad. 4 THE COURT: So you can get some constructive good 5 out of a virus. 6 MS. MAHANEY: Exactly, your Honor. 7 THE COURT: Okay. Well, then let's -- we'll go 8 with this definition. You all agree to it. We'll put that 9 in the glossary. We may run into the word "virus" later on. 10 If we do, we'll bracket it, put this definition in there. 11 MS. MAHANEY: Now, are we doing the glossary or -- 12 THE COURT: No. We are doing it as we go along. 13 Every term that we define will also appear alphabetically in 14 the glossary. It'll be in brackets where it appeared in the 15 claim, but it'll be alphabetical in the glossary. So if 16 somebody uses the word and the juror wonders, now, what did 17 that word mean again, they don't have to thumb through the 18 patent and try and find it. They can go to the glossary, 19 and it's alphabetic, and they can find it just like that. 20 That's going to be Attachment B to the order. 21 MS. MAHANEY: I understand. 22 THE COURT: Okay. Now, I'm on page 10 where it 23 says, wherein said vector -- we'll underline "vector" 24 because we defined "expression vector," and that's close 25 enough. We'll underline "vector" and say, is derived -82-

1 from -- now, underline "pED-mtx." And what's the definition 2 of that? 3 MS. MAHANEY: It's -- 4 THE COURT: What is a pED-mtx? 5 MS. MAHANEY: It's a specific expression vector 6 that was described in a paper in the specification. So I'm 7 not quite sure how to describe it other than by reference. 8 THE COURT: It's a specific expression vector? 9 MS. MAHANEY: Right. 10 THE COURT: And we said an expression vector is a 11 nucleotide sequence? No. It's a DNA sequence. 12 MS. MAHANEY: Right. So this is a specific one 13 made by these individuals, Kaufman, et al. 14 THE COURT: Well, it is -- it's an artificially 15 made one? 16 MS. MAHANEY: Yes. 17 THE COURT: And it's a DNA sequence? 18 MS. MAHANEY: Yes. 19 THE COURT: Well, then why don't we say, bracket, 20 an artificially created DNA sequence. What's it used for? 21 MS. MAHANEY: It has -- it has the GFP and the 22 selection marker on it. So even with that picture we had of 23 the expression vector -- it's that expression vector. 24 It's -- 25 THE COURT: Oh. -83-

1 MS. MAHANEY: It's like a specific one. 2 THE COURT: Oh, it's a specific -- an artificially 3 created DNA sequence used as an expression vector? 4 MS. MAHANEY: Right. And it's described in this 5 paper. And they were -- 6 THE COURT: Described in what paper? 7 MS. MAHANEY: The Kaufman paper. 8 MR. LAWTON: Kaufman, your Honor. 9 MS. MAHANEY: At page 11. If you look at -- 10 THE COURT: What's that? Kaufman, what's that, a 11 book? 12 MS. MAHANEY: It's a paper -- what happened is, in 13 the specification their embodiment talked about using the 14 specific vector which they got from this paper. And when 15 they went through prosecution, the examiner required the 16 claims to be limited to something that originated from that 17 vector. And so that's why it's -- it's like a name of a 18 specific vector, of a commercial vector. 19 THE COURT: So in this case, it is a specific -- 20 MS. MAHANEY: Right. 21 THE COURT: It is a specific artificially created 22 DNA sequence. 23 MS. MAHANEY: Right. 24 THE COURT: Okay. Let's call it an artificially 25 created DNA sequence used as an expression vector. -84-

1 MS. MAHANEY: But it has to be the one from the 2 paper. 3 THE COURT: Well, we say it's a specific -- how 4 about that? A specific artificially created DNA sequence. 5 A specific. 6 MS. MAHANEY: Right. But you don't know which 7 one. 8 THE COURT: We don't have to say here which one, 9 do we? 10 MS. MAHANEY: Yes. 11 THE COURT: Why? 12 MS. MAHANEY: Because that's a limitation in the 13 claim, and the jury won't know what it is. I mean, if you 14 don't say which one, it could be any. 15 THE COURT: I'm looking at the claim. I'm looking 16 at the claim. 17 MS. MAHANEY: Okay. 18 THE COURT: And it says, a viral promoter wherein 19 said vector is derived from pED-mtx. So what is pED-mtx? 20 It is a specific artificially created DNA sequence for the 21 expression vector. 22 MS. MAHANEY: Right. Described in this paper. I 23 think you have to -- 24 THE COURT: For the -- for the -- for the -- the 25 expression vector. "The" means that there's an antecedent, -85-

1 and we just told them what the antecedent was. We defined 2 expression vector. 3 Now, if we say this, I'm submitting that when I 4 say it's a specific artificially created DNA sequence for 5 the expression vector, I've said, since it's a specifically 6 artificially -- a specific artificially created DNA 7 sequence. If they want to know where it is or what it is 8 more than that, they can go look it up. I mean, I don't 9 know why we have to tell them in the definition of a term 10 pED-mtx. We've said that is a specific artificially created 11 DNA sequence for the expression vector. 12 MS. MAHANEY: Because if you don't tell the jury 13 which -- which vector it is, that it's the one described in 14 this paper, then when we get to an infringement analysis, 15 then what do they compare to the accused product? They have 16 to know what the vector is in order to compare it to the 17 accused product. And if you just say a vector, then they 18 don't know. 19 THE COURT: You're telling me -- if we tell the 20 jury that it comes from a paper, they're going to say, have 21 we got that paper? What paper are we talking about? 22 MS. MAHANEY: Well, we can give them the name -- 23 THE COURT: Why do we have to -- that's TMI. 24 MS. MAHANEY: But you're reading out a limitation 25 of the claim that was required by the examiner, that it be -86-

1 this specific vector. 2 THE COURT: I think I'm honoring it when I say 3 this particular one. This pED-mtx is a specific 4 artificially created DNA sequence for the expression vector. 5 When I say it's a specific one, that means it's been 6 identified specifically. 7 MS. MAHANEY: As long as we all understand that. 8 I just don't want to be accused of infringement with a 9 totally different vector. As long as that's understood it's 10 this specific vector, then I can live with it. Because we 11 don't use this vector. We never have. So that's my only -- 12 THE COURT: I don't feel -- I don't feel any -- I 13 don't feel any angst about that at all. I mean, if it 14 says -- if we tell the jury that we're referring to a 15 specific artificially created DNA vector, there can only be 16 one. 17 MS. MAHANEY: Okay. 18 THE COURT: Singular, a specific artificially 19 created vector. In the whole kingdom, there can only be one 20 of those, as far as I'm concerned. It wouldn't be specific 21 if there's more than one. 22 MS. MAHANEY: Well, how about -- 23 THE COURT: It wouldn't be a specific artificially 24 created sequence. It wouldn't be more than one of those. 25 MS. MAHANEY: Well, with that caveat, we'll accept -87-

1 the definition. 2 THE COURT: Well, we're on the record here. And 3 of course, if I'm trying this case, there's no problem at 4 all for sure. 5 MS. MAHANEY: I know. 6 THE COURT: And if I'm not trying this case, go to 7 the record. And I'll just right now for the record, I'll 8 instruct whatever judge tries this case, it's referring to 9 this one referred to in the patent. 10 MS. MAHANEY: Thank you, your Honor. 11 THE COURT: The patent specification. So follow 12 it. End of message to the judge. 13 MS. MAHANEY: We appreciate that. 14 THE COURT: Now you've got a good record. 15 MS. MAHANEY: Yes, thank you. 16 THE COURT: From the grave, I'll be instructing 17 her how to do this. 18 Okay. So that takes care of that one. Now let's 19 go on to -- we're going to page 12. Wherein said cell 20 line -- and we're talking about the -- by the way, cell 21 line. That's another thing. Tumor cell line. We said that 22 at the beginning. That's the one you're referring to, I 23 take it? 24 MR. LAWTON: Page one, your Honor. 25 THE COURT: We defined tumor cell line, didn't we? -88-

1 MR. LAWTON: Yes. 2 THE COURT: Where is -- is this the one that you 3 agreed to, and I said, okay, if you agree to it? 4 MR. LAWTON: Yes. Page one. We called that a 5 population of cells derived from a tumor that can 6 proliferate indefinitely in culture. 7 THE COURT: I don't read that here. 8 MR. LAWTON: On page one, your Honor. 9 THE COURT: I'm on page one. I don't see any 10 population. 11 MR. LAWTON: Do you see the first line underneath 12 the bold face and underscored? 13 THE COURT: Yeah. It says -- it says, a tumor 14 cell line -- oh, there it is. A tumor cell line, a 15 population of cells derived from a tumor that can 16 proliferate indefinitely in culture. Okay. 17 So now we say a said cell. Let's underline "cell 18 line." Okay. Now, stably. Is that a fair enough word? We 19 understand "stably"? Meaning with stability, durability. 20 MR. LAWTON: I think that's what it means, your 21 Honor. 22 THE COURT: Are you satisfied that the jury will 23 understand? I'm not unhappy with it as it is. Are you 24 happy with it as it is? Stably? 25 MR. LAWTON: We could define it. There are people -89-

1 that might not know what that is. 2 THE COURT: Okay. Well, what you wrote here in 3 the right -- in the agreed column, you just used the word 4 "stably" again. You didn't define it. 5 MR. LAWTON: Well, the words "permanently altered" 6 appear down there on the fifth line of text in the body 7 there in the agreed column on page one. 8 MS. MAHANEY: We could say continually maintained 9 instead of stably maintained. Stable is to get across the 10 thought that this actually will last, this transformation. 11 It will last. 12 THE COURT: Right. Not transient. 13 MR. LAWTON: And I think that's -- 14 MS. MAHANEY: Right. Permanent. 15 THE COURT: Durable. 16 MR. LAWTON: And that's reflected in the fourth 17 line from the bottom where it says, consistently maintained 18 in the daughter cells. I think that's what -- 19 THE COURT: Where am I reading from? 20 MR. LAWTON: I'm looking, your Honor, at page one 21 in the agreed column. 22 THE COURT: Oh, I'm looking at page 12. 23 MR. LAWTON: Well -- 24 THE COURT: Okay. 25 MR. LAWTON: I was just referring back to -- -90-

1 THE COURT: Okay. 2 MR. LAWTON: -- what seemed to be a definition of 3 "stably." 4 THE COURT: Well, we're defining "stably" in the 5 context of tumor cell line. We're actually describing a 6 stable tumor cell line. 7 MR. LAWTON: Well, a cell line which stably 8 effects high-level expression. I think we could import some 9 of that language from page one in this context. 10 THE COURT: Yeah. You know what's running through 11 my mind is, although you agreed on it and I was wanting to 12 go along with it, it's an awfully long definition of a tumor 13 cell line. I'm just wondering if it's necessary to be so 14 wordy. If we said, open bracket, a population of cells 15 derived from a tumor that can proliferate indefinitely in 16 culture, isn't that what a tumor cell line is? 17 Because at this point, you say, wherein such cell 18 line has been permanently altered. Oh, I see. It is a 19 transformed tumor cell line. 20 MS. MAHANEY: Right. 21 THE COURT: Has been permanently altered by the 22 incorporation of foreign DNA. 23 MS. MAHANEY: We were trying to explain -- 24 THE COURT: Why couldn't we stop there? 25 MR. LAWTON: Why don't we stop there? -91-

1 THE COURT: Why couldn't we? 2 MR. LAWTON: Because I think it's important to 3 communicate the idea that the expression of high levels of 4 GFP continues consistently in the wake of replication of 5 individual cells. 6 THE COURT: Okay. Well, I'm -- 7 MR. LAWTON: And that gets back, if the Court 8 remembers our little tutorial, the stability of the signal 9 over time. 10 THE COURT: I guess what I'm wondering is 11 whether -- and all those things are true, and they're all 12 important at some point. I guess what I was wondering is 13 whether -- at the moment, we're just trying to define the 14 expression "tumor cell line." And I guess a tumor cell 15 line -- just for starters, a tumor cell line is a -- is a 16 population of tumor cells, a group of tumor cells. If you 17 don't even want to use the big word "population," we could 18 say, a tumor cell line is a group of tumor or diseased cells 19 and stop there. And all these other properties of it -- of 20 course, we're defining a transformed -- 21 MR. LAWTON: But stably transformed, your Honor, 22 is what I think the rest of that -- 23 THE COURT: I see. 24 MR. LAWTON: What the other clauses go to. 25 THE COURT: Well, then we need to identify -- I -92-

1 underlined only "tumor cell line." I think I should have 2 underlined "stably transformed" as well, if you want that 3 whole thing in there. 4 MR. LAWTON: We underlined it in the chart. 5 THE COURT: All of them? 6 MR. LAWTON: Because it is a defined term. 7 THE COURT: All the words -- one, two, three, 8 four, five. All five words? 9 MR. LAWTON: Yes. 10 THE COURT: Okay. 11 MR. LAWTON: Eight -- well, six, actually. Stably 12 transformed tumor cell line. 13 THE COURT: Yeah, okay. Six. Okay. So then 14 let's -- let's just underline "cell line" on page 12, and 15 I'll forget what I was going to suggest. Just say -- 16 underline "cell line." Now we're working on the word 17 "stably." And we've got to have a word for "stably." We 18 don't want to say permanently because I don't know that we 19 really mean permanently, do we? 20 MS. MAHANEY: We do. That's what stable means, 21 your Honor. 22 THE COURT: Stable means permanently? 23 MR. KRACHT: I can go to the dictionary again if 24 you'd like, your Honor. 25 MR. LAWTON: In this context, your Honor, we agree -93-

1 with what Ms. Mahaney is saying. 2 THE COURT: Okay. Well, then why don't we just 3 say stably, open bracket, permanently, closed bracket. If 4 that's what you all agree "stably" means, then let's just 5 say, open bracket, permanently, closed bracket. 6 Now, effects -- underline "stably." Now, effects 7 high-level expression of said GFP in the absence of a 8 selection agent. We need to define "selection agent," I 9 think, don't we? 10 MR. LAWTON: It's defined down below, your Honor, 11 if I'm not mistaken. 12 MS. MAHANEY: Actually, in the chart, we disagree 13 on it. 14 THE COURT: You disagree. 15 MR. LAWTON: But we discussed -- but last night 16 we -- we discussed it. We don't think we disagree. 17 Didn't we? 18 THE COURT: What do you agree? Where is the 19 definition? 20 MR. LAWTON: I'll find it, your Honor. 21 THE COURT: They both appear on page 12, but 22 they're not exactly the same. 23 MR. LAWTON: The proposed construction of Xenogen, 24 we do not object to. 25 THE COURT: Okay. Then that would be a chemical -94-

1 such as inhibitor or poison that kills or inhibits cells 2 unless they produce a protein conferring resistance thereto. 3 MS. MAHANEY: So this goes along with the 4 selection marker. 5 THE COURT: Yeah, it does. It does. Suppose we 6 could say, a chemical such as -- let's see. A chemical -- 7 never mind such as inhibit or poison. Suppose we say a 8 chemical that kills or inhibits cells unless they are 9 protected by the selecting -- by the selection agent. 10 MS. MAHANEY: That is selection marker. 11 THE COURT: Marker. So we could say, a chemical 12 that kills -- kills -- why don't we say -- okay -- or 13 inhibits. But does it kill? Why don't we never mind 14 inhibit. Do you want to say inhibit? Are you saying that 15 they don't necessarily kill them, they just -- 16 MS. MAHANEY: It depends on the selection marker. 17 THE COURT: Or it depends on the agent. 18 MS. MAHANEY: Yeah. I'm sorry. It depends on the 19 agent. 20 THE COURT: The selection agent. 21 MS. MAHANEY: Yes. You're right, your Honor. 22 THE COURT: But do they -- do they sometimes not 23 bother to kill them totally, just disable them? 24 MS. MAHANEY: Yes. 25 THE COURT: Okay. Then a chemical that kills or -95-

1 inhibits cells unless they are protected by the selection 2 marker. Would that work? 3 MS. MAHANEY: I believe so, because we defined 4 that above. 5 THE COURT: Yeah. 6 MR. LAWTON: That's fine with us, your Honor. 7 THE COURT: Okay. That'll be it. And that'll be 8 in brackets after -- we're going to underline "selection 9 agent" and open bracket after the word "agent" and put that 10 definition in. 11 You got that, Marc? 12 THE LAW CLERK: Yes, your Honor. 13 THE COURT: Okay. Now we're on page 13. 14 Maintains said high-level expression of said GFP when said 15 cell line proliferates through multiple passages of said 16 cell line. I don't know what that means. 17 MS. MAHANEY: It's just referring to generations 18 of cell lines. So the high levels of GFP are maintained as 19 the cell line reproduces. 20 THE COURT: Replicates? 21 MS. MAHANEY: Replicates. 22 MR. LAWTON: Yes, your Honor, replicates. 23 THE COURT: Maintains said high level of 24 expression of said GFP when said cell line reproduces -- 25 they won't know about -- I don't know if they know about -96-

1 proliferate or replicate, but isn't that the same word as 2 reproduce? They'll all know what reproduce means. Said 3 cell line reproduces. Would it be correct to say reproduces 4 through several -- through multiple generations of said cell 5 line? 6 MS. MAHANEY: That would be -- that would be okay. 7 THE COURT: They'll understand that. 8 MS. MAHANEY: Yes. 9 THE COURT: Reproduces through several generations 10 of cell lines. Of cell line. 11 MS. MAHANEY: Can we use the word "multiple 12 generations"? 13 THE COURT: Yes. Multiple generations. That'll 14 go, then, after the word -- after -- after the end of that 15 thing, as said cell line, open bracket, put reproduces 16 through multiple generations of cell line, period. Put a 17 period after the bracket is closed. 18 THE LAW CLERK: Where is the bracket, your Honor? 19 Is it after "passages" or -- 20 THE COURT: At the end, after "cell line." 21 THE LAW CLERK: It's after "cell line"? 22 THE COURT: I would think at the end of "cell 23 line." That's the word -- 24 THE LAW CLERK: And what are we underlining? 25 THE COURT: The whole thing. -97-

1 THE LAW CLERK: Okay. 2 MR. LAWTON: Your Honor, could we have the whole 3 definition read in one piece when -- either by Mr. Sharpe or 4 by you? 5 THE COURT: Yeah. Follow me, Marc. I've got the 6 mic. Follow me if I say it wrong. 7 THE LAW CLERK: Okay. 8 THE COURT: After the whole phrase, before the 9 period, put an open bracket, and it'll say, reproduces 10 through multiple generations of cell line. 11 MS. MAHANEY: If you're going to say that, I think 12 you need to underline only the last part, "when said cell 13 line proliferates." Because you're not defining "maintains 14 said high-level expression." 15 THE COURT: No. You're right. We don't need to 16 do that. We could say when -- would you start with when? 17 MS. MAHANEY: Yeah, I think so. I think so. Do 18 we think the jury will understand what "maintaining said 19 high-level expression" means? 20 THE COURT: I think so. It seems to me that it's 21 okay. Underline from the word "when" on. When said cell 22 line proliferates through multiple passages of said cell 23 line, open bracket, reproduces through multiple generations 24 of cell line. 25 Okay. Let's -- moving right along. We're on -98-

1 Claim 3, are we? Page 14? 2 MR. LAWTON: Yes, your Honor. 3 THE COURT: Is that okay as is? 4 MR. LAWTON: It's all right with us, your Honor. 5 MS. MAHANEY: Yes, your Honor. 6 THE COURT: As is. Okay. 7 Number 4, a method to prepare a mammal which 8 harbors a tumor expressing GFP, which method comprises. Is 9 that preamble okay as is? 10 MS. MAHANEY: So you're suggesting not defining 11 it? 12 THE COURT: Yeah. Whenever I say, is it okay as 13 is, I mean it looks to me like we could leave it as it is. 14 If you agree, we're all set. 15 MR. LAWTON: We don't think we need to add 16 anything. 17 THE COURT: Are you happy with that? 18 MS. MAHANEY: Yes. 19 THE COURT: Okay. As is. 20 Number 5. Oh, 4 goes on. Which method comprises. 21 Now we're down to Claim -- Limitation 1 of Claim 4. 22 Administering to a mammal an amount of cells of the cell 23 line, Claim 1, sufficient to effect production of a tumor in 24 said mammal. That seems pretty straightforward to me. Are 25 you satisfied with it as is? -99-

1 MS. MAHANEY: Yes. 2 THE COURT: You? 3 MR. LAWTON: Yes, your Honor. 4 THE COURT: Okay. Now, wherein said mammal is 5 genetically immuno-compromised or syngeneic with said tumor. 6 Now, we've got to do something with that. Genetically 7 immuno-compromised. I know what it means, and I now know 8 what syngeneic with said tumor. Let's underline 9 "genetically immuno-compromised" -- or "syngeneic" is one 10 expression that we're going to define. "Genetically immuno- 11 compromised" or "syngeneic," those words will be -- after 12 that, we'll have an open bracket. 13 Now, let's see. You both broke out "syngeneic" to 14 agree with. We could do them separately. "Immuno- 15 compromise," we could have an open bracket after that and 16 then have an open bracket after "syngeneic." Let's do that. 17 And we'll use the agreed definition of the counsel after 18 "syngeneic." 19 MS. MAHANEY: Your Honor, I would suggest it might 20 be better to use -- to define the whole phrase, "syngeneic 21 with said tumor." And we do have an agreed definition as to 22 that phrase. It's more in context. If you look on page 17 23 at the top, that the tumor used for implantation is derived 24 from a genetically identical source. I just think that 25 might be more useful for the jury. -100-

1 MR. LAWTON: We agree with Ms. Mahaney, your 2 Honor. 3 THE COURT: I'm trying to find it. 4 MR. LAWTON: Page 18 at the top, your Honor. 5 THE COURT: Oh, 18. Okay. 6 MS. MAHANEY: Oh, mine is on 17. Oh, well. 7 THE COURT: Eighteen. That one is blank on my 8 form. Are we dealing with different spreadsheets again? 9 MR. LAWTON: It sounds like we -- I don't think we 10 were yesterday, but it sounds like we are in this moment. 11 THE COURT: A virus got into the spreadsheet. 12 MS. MAHANEY: It's okay, your Honor. 13 MR. LAWTON: It's -- it appears right below the 14 agreed definition of "syngeneic" in the agreed column and 15 just above Claim 5. 16 THE COURT: You mean "or syngeneic with said 17 tumor"? 18 MR. LAWTON: That's it. 19 THE COURT: It says, "or alternative" -- 20 MR. LAWTON: That's it. 21 THE COURT: -- "a tumor used for implantation is 22 derived from a genetically identical source." Well, that's 23 the meaning of "syngeneic." 24 MR. LAWTON: That's -- that's the meaning of 25 "syngeneic" with said tumor. Syngeneic in that context -101-

1 means that. 2 THE COURT: Well, are you saying that you want to 3 define "immuno-compromise" and "syngeneic" at the same time, 4 Ms. Mahaney? 5 MR. LAWTON: I think Ms. Mahaney was suggesting 6 that in addition to underlining just the word "syngeneic," 7 we underline the three words that follow, "with said tumor," 8 so that we make "syngeneic with said tumor" a defined term. 9 THE COURT: Good. 10 MR. LAWTON: And then that we just put in the 11 brackets after the word "tumor" the definition of "or 12 syngeneic with said tumor" that's agreed. 13 THE COURT: And that would be relating to 14 genetically identical individuals? 15 MR. LAWTON: Well, that's the definition of 16 "syngeneic" by itself. 17 THE COURT: Okay. 18 MR. LAWTON: But I think Ms. Mahaney's suggestion 19 is we make -- 20 THE COURT: Oh, here. "Or syngeneic with said 21 tumor." Okay. 22 MR. LAWTON: Right. 23 THE COURT: And that definition you agree with, 24 namely the tumor used for implantation is derived from a 25 genetically -- we can strike the "or alternatively," right? -102-

1 MR. LAWTON: Yes, your Honor. 2 THE COURT: Okay. So we're on -- Marc, we're on 3 page 17. Open bracket, the tumor used for implantation is 4 derived from a genetically identical source, closed bracket. 5 THE LAW CLERK: Your Honor, are we defining -- 6 THE COURT: That was just -- that was just the 7 term "syngeneic with said tumor." 8 THE LAW CLERK: And defining -- 9 THE COURT: We haven't yet done "immuno- 10 compromise." 11 THE LAW CLERK: -- "immuno-compromise"? 12 THE COURT: We haven't done it yet. 13 THE LAW CLERK: But we're going to define them a 14 two separate phrases? 15 THE COURT: Yeah. 16 THE LAW CLERK: Okay. 17 THE COURT: So far we are. I mean, I was told -- 18 MR. LAWTON: We agree with that approach, your 19 Honor. 20 THE COURT: And then what about the definition of 21 immuno- -- "immuno-compromised"? AntiCancer's suggestion 22 is, subjects particularly susceptible to tumor development, 23 such as subjects with impaired -- why don't we just say, 24 immuno-compromise, just say impaired immune systems. 25 MS. MAHANEY: But that doesn't define the word -103-

1 "genetically." 2 THE COURT: Oh, we're defining that. 3 MS. MAHANEY: We're defining -- 4 THE COURT: Well, then how about genetically 5 impaired immune systems. 6 MR. LAWTON: Your Honor -- 7 THE COURT: No? 8 MR. LAWTON: We don't disagree with the Xenogen 9 proposed construction. We think that's a fair construction. 10 THE COURT: And that is, where said mammal 11 inherits a defect in its immune system such that the normal 12 transplantation rejection immune system has been suppressed. 13 That would be enough right there, right? 14 MS. MAHANEY: Your Honor, as long as it's -- here 15 we have an issue of prosecution history where the examiner 16 specifically said that the claims were not enabled for any 17 mammal that had been immuno-compromised by radiation or 18 immuno-suppressants. So as long as that's clear that that's 19 not covered by the claim, then we would be okay. 20 MR. LAWTON: I think the first sentence that the 21 Court read says it, without the need to gild the lily. 22 MS. MAHANEY: Well, we are concerned -- 23 MR. LAWTON: Or be redundant. 24 MS. MAHANEY: Well, if you would agree -- 25 THE COURT: Well, let's see. What I read -- -104-

1 MS. MAHANEY: The problem is, your Honor, they 2 made an argument that radiation was a form of genetic 3 immuno-compromise -- immuno-compromising, which we do not 4 agree with. And that's why we thought we needed this 5 clarification. 6 MR. LAWTON: We don't object to the second 7 sentence, but we want to do obviously what the Court thinks 8 is most clear. 9 THE COURT: Well, before we got into this 10 discussion, walking into this room, I would have thought if 11 it's genetically immuno-compromised, it was born with a 12 weakened immune system. That's what I would have thought it 13 meant. 14 MS. MAHANEY: Yes. 15 THE COURT: It was in his genes. But when you 16 start talking about radiation -- I would still like to think 17 that if it's genetically compromised, that that was that way 18 at birth. 19 MS. MAHANEY: Right. 20 THE COURT: The reason I paused is because I read 21 an article that said that every day in every way in 22 everything we do, we're being irradiated. We're being 23 irradiated in this room. You're being irradiated if you 24 live in a brick house. You're being irradiated -- I think 25 they call them milli-therm or something like that, some -105-

1 little tiny measurement of radiation that all of us live 2 with every day, and our body constantly is being irradiated 3 all of our life. 4 So that's a form of radiation. But on the other 5 hand, if you mean by radiate to put him under an X-ray 6 machine and just bomb him with something, that's another 7 radiation altogether. Or if you walk him through an atomic 8 environment without protection or something, that's another 9 question altogether. 10 So now that you talk radiation, I still would like 11 to think that genetically means at birth. Do you accept 12 that? 13 MR. LAWTON: Yes. 14 THE COURT: Is that okay with you too? 15 Genetically -- 16 MS. MAHANEY: Yes. 17 THE COURT: Well, then let's say that where -- 18 let's say genetically immuno-compromised means 19 genetically -- a genetic defect in this immune system. 20 MS. MAHANEY: At birth. 21 THE COURT: At birth, yeah. A genetic defect -- 22 an inherited defect in its immune system. How's that? 23 MS. MAHANEY: Inherited genetic defect. 24 THE COURT: An inherited genetic defect. That's 25 what I said. An inherited genetic defect. -106-

1 MS. MAHANEY: Yes. 2 THE COURT: Okay. So we'll say open bracket, an 3 inherited genetic defect in its immune system, closed 4 bracket. 5 All right. Wonderful. Now we're on page 17. I 6 am. Number 5, Claim 5. A method to prepare a mammal which 7 harbors a tumor expressing GFP, which method comprises. Is 8 that preamble okay as is? 9 MS. MAHANEY: Yes. 10 MR. LAWTON: Yes, your Honor. 11 THE COURT: Okay. 12 THE LAW CLERK: Your Honor? 13 THE COURT: Yeah. 14 THE LAW CLERK: Do we want to define "comprises"? 15 THE COURT: Haven't we done that yet? 16 THE LAW CLERK: I don't believe we have. 17 THE COURT: Well, this is a good time to do it. 18 Is this the first time it's appeared? 19 THE LAW CLERK: Actually in Claim 4. 20 THE COURT: Oh, well, we need to do it in Claim 4, 21 then. I always define "comprises," and we didn't do it in 22 Claim 4, and I apologize. Comprises, I always say it means 23 includes, but not limited to. 24 MR. LAWTON: Open to inclusion of other steps. 25 THE COURT: That's too -- well, I like mine -107-

1 better. It's more for the common man. There's no such 2 thing as a common woman. But there's a common man. 3 Includes, but not limited to. 4 Ms. Mahaney, don't feel smug and smile over that 5 because it's also true that there is such a thing as a 6 reasonable man, but nobody ever heard of a reasonable woman. 7 MS. MAHANEY: I think I've just been insulted. 8 THE COURT: So it's a little -- it's a little give 9 and take, you know. You got a little and you gave a little. 10 Okay. 11 MS. MAHANEY: I realize. 12 THE COURT: All right. 13 MR. LAWTON: Your Honor, all the women in this 14 court are reasonable, in my experience so far. 15 THE COURT: All right. But not in the law. We 16 don't have a doctrine of the reasonable man -- we don't have 17 a reasonable woman doctrine, just a reasonable man. 18 MR. LAWTON: We need some more published opinions 19 maybe that -- from some of the District Courts that put out 20 a reasonable woman standard. 21 THE COURT: Well, maybe Ms. Mahaney will give us 22 such a thing when she makes the bench. 23 All right. Well, we're through with Number 5? 24 No. On page 18, implanting into a mammal the cell line -- 25 underline "cell line" of Claim 3 which comprise -- I think -108-

1 that's a typographical error. 2 MR. LAWTON: The claim language says "comprises." 3 THE COURT: What claim is it? Which number? 4 MR. LAWTON: What line are we -- 5 MS. MAHANEY: No, it doesn't. 6 THE COURT: If it's Claim 5 -- 7 MR. LAWTON: I'm looking at line two. 8 THE COURT: If it's Claim 5 -- right? 9 MS. MAHANEY: On the next line. 10 MR. LAWTON: Claim 3, which comprise. 11 THE COURT: We're on Claim 5, aren't we? 12 MR. LAWTON: I think the Court is right, your 13 Honor. I think it is a grammatical error. 14 THE COURT: But it's not yours. It's in the 15 patent. 16 MR. LAWTON: You're right, your Honor. I'm 17 looking at the photocopy. 18 THE COURT: The patent says "comprise" as well, 19 doesn't it? Claim 5. 20 MR. LAWTON: It says that, your Honor. It says 21 "comprises" in the line above, and then it says "comprise." 22 So it mixes the -- but it's still -- it should be singular, 23 shouldn't it? 24 THE COURT: A method to prepare a mammal which, A, 25 harbors a tumor expressing GFP, which method comprises, -109-

1 implanting into a mammal the cell line of Claim 3, which 2 comprise -- 3 MR. LAWTON: You know what we could do, your 4 Honor? We could put a bracket and an S and then a closed 5 bracket like -- 6 THE COURT: If you're satisfied it's a mistake, we 7 could do that. 8 MR. LAWTON: I am, your Honor. 9 THE COURT: And this is a nonsubstantive mistake, 10 right? 11 MS. MAHANEY: Right. 12 THE COURT: So we can mess around with it. 13 MR. LAWTON: Yes, your Honor. 14 THE COURT: Okay. So let's put -- wait a minute. 15 We wanted to go back to Claim 4. Is this -- is this Claim 4 16 I'm looking at? Where it first said "comprise." Is this 17 it? 18 THE LAW CLERK: We could clear that, your Honor. 19 I think we move back down to Claim 5. 20 THE COURT: We're on Claim 5. Underline -- on 21 page 17, underline the word "comprises" on Claim 5 in the 22 preamble. And then when you get down here to "comprise," 23 underline it and put a bracket, S, closed bracket after the 24 word "comprise." Okay. 25 A solid tumor by surgical -- now, we have to -110-

1 define "orthotopic implantation." Did you agree on that? 2 MR. LAWTON: We did agree, your Honor. 3 THE COURT: Where's that? 4 MS. MAHANEY: It's right in the definition. 5 MR. LAWTON: Page 19 of my copy. 6 THE COURT: Here it is. Surgical orthotopic 7 implantation. Okay. Well, let's underline all three of 8 those words, "surgical orthotopic implantation." And it's 9 agreed to mean surgical implantation at a site from which 10 the cells were derived. That will go in there. 11 And changing -- flipping to the next page, 20. 12 Wherein said mammal is genetically immuno-compromised -- 13 Let's underline "genetically immuno-compromised" -- or 14 syngeneic with said tumor. Underline both of those 15 expressions only because we've already defined them. Okay. 16 Now we're over on page 22, which is Claim 6. A 17 non-human mammal which has been modified to contain a tumor 18 expressing GFP prepared by the method of Claim 4. Are you 19 satisfied with that as is? 20 MS. MAHANEY: Your Honor, my only concern -- and I 21 have that with the previous claim too -- is that there's 22 several levels of dependency. The claims refer to an 23 earlier claim, which then refers back to Claim 1. And so 24 I'm a little nervous the jury might get confused by that. 25 Do you explain usually how -- -111-

1 THE COURT: Dependent claims, you mean? 2 MS. MAHANEY: Yeah, and how they work. 3 THE COURT: Yeah. It usually comes up, and the 4 lawyer -- by the time you try the case and the lawyers have 5 questioned all the witnesses and the lawyers have made 6 opening statements and closing arguments, these jurors -- 7 it's amazing. They can almost recite the claims. I mean, 8 they hear it so many times, they may not know exactly what 9 they mean, but they can -- and they know what a dependent 10 claim is. 11 However, "dependent claim" is not a term in the 12 patent, so it's an awkward thing for me to start writing an 13 exposition as to what is meant by a dependent claim because 14 they don't use the term "dependent claim." 15 MS. MAHANEY: Right. I mean, usually there's a 16 jury instruction. Yeah. 17 THE COURT: Oh, we definitely will prepare a jury 18 instruction like that. 19 MR. LAWTON: I think they'll know how to relate 20 back, your Honor. 21 THE COURT: And we'll give them a jury instruction 22 on that kind of a -- that's a perfect subject for a jury 23 instruction. Not the Markman jury instruction. Not this 24 one. 25 MS. MAHANEY: No. I agree. This is just unusual -112-

1 in that there's several levels of dependency. 2 THE COURT: It would be another jury -- exactly. 3 Yeah, sometimes six is on four and four is on two and two is 4 on one. 5 MS. MAHANEY: Yes. 6 THE COURT: Yeah. That's right. Okay. Well, now 7 we're on Number 7. A non-human mammal which has been 8 modified to contain a tumor. What about the word "tumor"? 9 Should we underline the word "tumor"? Have we defined 10 "tumor"? 11 MR. LAWTON: I don't believe we have, your Honor. 12 THE COURT: Maybe the first time we use the word 13 "tumor" we ought to define it. Because we're referring to a 14 diseased tissue, aren't we, when we use the word "tumor"? 15 MR. LAWTON: Yes. 16 THE COURT: Why don't we say that. Where is the 17 first place -- here's -- "tumor" appears on page 20. Does 18 it appear earlier than that? 19 MS. MAHANEY: Your Honor, we had an agreed-upon 20 definition of "tumor" which is on at least page two of my 21 chart. 22 THE COURT: Okay. The question is, where do we 23 want to put it? 24 MS. MAHANEY: Right. So I suppose we put it there 25 because the claim term was "tumor cell line," so we thought -113-

1 we should explain what a tumor is there, but -- 2 THE COURT: Well, how did we define "tumor cell 3 line"? 4 MR. LAWTON: We defined it -- well, "tumor" or 5 "tumor cell line"? Because we did agree on a definition of 6 "tumor." 7 THE COURT: Didn't we define the expression "tumor 8 cell line"? Didn't we define that? 9 MR. LAWTON: Yes. 10 MS. MAHANEY: Yeah. We said the cell line -- 11 MR. LAWTON: Stably transformed tumor cell line. 12 MS. MAHANEY: We said the cell line was a 13 population of cells derived from a tumor. 14 THE COURT: But we didn't define the word "tumor"? 15 MR. LAWTON: But we have an agreed definition. 16 THE COURT: Okay. Well, let's underline -- where 17 did it first appear in the claim? 18 MR. LAWTON: In the Claim 1, in the context of -- 19 THE COURT: Tumor cell line. Okay. 20 MR. LAWTON: -- "tumor cell line." 21 THE COURT: Well, then where in that -- in that 22 definition we have there, when we ended with the word 23 "tumor," let's add that sentence right there. Let's add it 24 right there. Where does that appear? 25 Have you got that, Marc? -114-

1 MR. LAWTON: It's at the bottom of page two of my 2 chart, your Honor, in the agreed column. 3 THE COURT: Okay. Now, you got that "tumor cell 4 line"? 5 THE LAW CLERK: Uh-huh. 6 THE COURT: Okay. Right at the end of that is the 7 word "tumor," is it, in the definition? 8 MS. MAHANEY: It's sort of in the middle, 9 unfortunately. 10 THE COURT: Would you read what we read for "tumor 11 cell line," the whole thing what we said. 12 THE LAW CLERK: What we have for "tumor cell line" 13 or -- 14 THE COURT: Yeah. 15 THE LAW CLERK: -- for a "stably transformed tumor 16 cell line"? 17 THE COURT: The latter. It's a long one. 18 THE LAW CLERK: Yes. 19 THE COURT: Where is it? Have I got it in my 20 chart? 21 THE LAW CLERK: It's in Claim Number 1. 22 THE COURT: I know, but what page of the 23 spreadsheet is it? 24 MS. MAHANEY: Page one. 25 THE LAW CLERK: Page one, your Honor. -115-

1 THE COURT: Oh, okay. Let's take a look at this. 2 Maybe before -- right after it says "daughter cells" -- do 3 you see that? Would that be a place where we could say, a 4 tumor is a mass of cells generally derived -- you agree on 5 the definition. Would that be a place to put that in, and 6 then go back to the definition that you already have and 7 say, the tumor cell line must have all of the limitations 8 that follow? 9 MR. LAWTON: Your Honor, maybe -- it might even be 10 better if we put the definition of "tumor" right up at the 11 top so they can understand what a tumor is before we start 12 telling them what a -- 13 THE COURT: That's a good idea. 14 MR. LAWTON: Yeah. 15 THE COURT: What if we start this stably 16 transformed tumor cell line, just start out by saying, a 17 tumor is a mass of cells, et cetera, and then go right into 18 what you already agreed to below that. 19 MR. LAWTON: I like it, your Honor. 20 THE COURT: You like that? 21 MS. MAHANEY: That's fine. 22 THE COURT: All right. Now, Marc, taking the 23 language on page two of the spreadsheet where it says 24 "tumor, a mass of cells." So we start this "stably 25 transformed tumor cell line" definition by saying, a tumor -116-

1 is -- then the definition is on page two -- a mass of cells 2 generally derived from a single cell that is not controlled 3 by normal regulators of cell growth. 4 MS. MAHANEY: Your Honor, it might be -- since 5 we're tending to simplify things, maybe just to say a mass 6 of cancerous cells. 7 THE COURT: Or diseased. A mass of diseased 8 cells. How about that? Or is it peculiar to cancer because 9 it's an unregulated growth? Is that a property of cancer 10 that distinguishes it from other diseases? 11 MR. LAWTON: There are benign tumors, though. 12 MS. MAHANEY: Although they're not cancerous. 13 MR. LAWTON: Right. But that's the question. 14 THE COURT: Can you use this device with benign 15 tumors too? Do you use those to track or to locate benign 16 tumors too? 17 MS. MAHANEY: I don't think so, your Honor. 18 THE COURT: No. No. 19 MS. MAHANEY: I mean, we're fine with the original 20 definition, if that's okay. 21 THE COURT: Well, I think it's a good idea to say 22 that there's something wrong with the cell. In other 23 words -- 24 MR. LAWTON: Call it bad. 25 THE COURT: Bad? That's a little bit colloquial. -117-

1 MR. LAWTON: Well, the Court used "bad" earlier in 2 the question about the virus, so "tumor" might be a more 3 appropriate candidate for giving them the idea that we're 4 talking about something that's -- 5 THE COURT: A mass of bad cells. A mass of bad 6 cells. 7 MR. LAWTON: -- maligned. 8 THE COURT: I don't know about that. 9 MR. LAWTON: Making moral judgments on cells. 10 THE COURT: Beauty is in the eye of the beholder, 11 you know. Doctors that research this, they think those are 12 beautiful. Man, look at those beautiful cancer cells. 13 Those are beautiful. 14 Why don't we just say a mass of cancerous cells. 15 MR. LAWTON: The thing is that -- 16 THE COURT: Is that too narrow? 17 MR. LAWTON: Well, tumors contain normal cells. I 18 don't know if the Court remembers from the tutorial -- 19 THE COURT: How about diseased -- 20 MR. LAWTON: -- but when we looked at those -- 21 that sequence of slides of a tumor, we went into it 10 22 microns by 10 microns, there were healthy cells intermingled 23 with cancer cells. So I don't think we can tell them it's a 24 mass of cells that are entirely diseased. A tumor has 25 healthy normal cells in it as well as cancerous cells. -118-

1 THE COURT: Well, but that's -- you're talking 2 about the whole line now, aren't you? I'm talking about the 3 actual tumor. 4 MR. LAWTON: I am too, your Honor. 5 THE COURT: The tumor is more than a cell. 6 MR. LAWTON: Yes, your Honor. 7 THE COURT: It's a bunch of cells. Okay. 8 MS. MAHANEY: But it's a bunch of cancerous cells. 9 MR. KRACHT: It's an abnormal -- 10 THE COURT: Well, could we say it's a diseased -- 11 a tumor is -- 12 MR. KRACHT: An abnormal growth of tissue. 13 THE COURT: I like that. An abnormal -- 14 MS. MAHANEY: But that could be a wart, your 15 Honor, I mean a mole. I really -- I think we should either 16 stick to the definition that we had or go to a cancerous 17 definition. 18 THE COURT: Well, you've got -- 19 MR. LAWTON: We could call it a mass of cells 20 containing cancerous cells, and that gives them the idea. 21 THE COURT: Well, you know, what you had initially 22 is good because it says -- whether you want to say it's all 23 bad or all good or whatever you say, that it is -- that the 24 mass of cells is not controlled by normal regulators of cell 25 growth. That's true. And maybe that's enough to tell them. -119-

1 Because they may know that much about cancer. I think 2 everybody knows that one of the unique properties of cancer 3 is it's uncontrolled growth. Everybody pretty much knows 4 that. 5 MS. MAHANEY: That's fine, your Honor. 6 THE COURT: So maybe we should just leave it the 7 way it is. So let's put that definition that you agreed to 8 right at the beginning. A tumor is a mass of cells 9 generally derived from a single cell, comma, that is not 10 controlled by normal regulators of cell growth. 11 And then period, then go on, Marc, with the rest 12 of what's there. 13 THE LAW CLERK: Yes, your Honor. 14 THE COURT: Okay. All right. Now, that takes us 15 down to -- underline, then, "tumor" in 6, Claim 6. 16 Underline the word "tumor." Underline the word "tumor" on 17 7. Do we need to do anything else with 7 other than that? 18 MS. MAHANEY: No, your Honor. 19 THE COURT: As is. And then let's take our noon 20 recess. We're finished with this patent. 21 MR. LAWTON: Yes, we are, your Honor. 22 THE COURT: One-thirty. 23 MR. LAWTON: Very well, your Honor. 24 MS. MAHANEY: Thank you. 25 (Proceedings were recessed to reconvene.) -120-

1 AFTERNOON SESSION 2 --o0o-- 3 MR. LAWTON: Apologize for being tardy, your 4 Honor. 5 THE COURT: Well, we already finished the 968 6 patent. What's the next one? 7 MR. LAWTON: Your Honor, I trust the Court to have 8 made the correct rulings, so we'll just ask Mr. Sharp for a 9 copy of that and then move on. 10 THE COURT: While you're getting ready, is it 11 agreeable to start at 8:30 tomorrow morning? 12 MR. LAWTON: Yes, your Honor. 13 THE COURT: So, we can go 8:30 to 11:30 and 2:00 14 to 4:30. 15 MR. LAWTON: And your Honor, I understand from Mr. 16 Diboise that he may have a scheduling issue. Maybe this is 17 a good time to address that. 18 THE COURT: Okay. Do you mean for tomorrow? 19 MR. DIBOISE: Not for tomorrow, your Honor. My 20 understanding is that your clerk had asked us for dates next 21 week. 22 THE COURT: Oh. 23 MR. DIBOISE: I was not aware of them. I have a 24 conflict next week and was wondering if we could push them 25 off into the following week. -121-

1 THE COURT: I don't have the calendar in front of 2 me. Next week is not available. 3 MR. DIBOISE: You're not available next week? 4 THE COURT: No. 5 MR. DIBOISE: Okay. We've got -- 6 THE CLERK: We sent that out a long time ago. 7 Weeks ago. I can show you where I sent them out. 8 THE COURT: What? 9 THE CLERK: Next week's dates. We sent a notice 10 of hearing out a couple weeks ago. 11 THE COURT: You mean on this case? Well, they're 12 not available. You're not available next week, right? 13 MR. DIBOISE: Right, I mean, your Honor, I can be 14 available but I'd have to change other matters. But, they 15 were set before. 16 THE COURT: Well, look, around here, the difficult 17 we do immediately, and the impossible just takes a little 18 longer. 19 MR. DIBOISE: Right, and it's more in the 20 impossible part of it than -- 21 THE COURT: So, how much time do you need to take 22 care of it? 23 MR. DIBOISE: To take care of moving those 24 hearings? 25 THE COURT: The impossible, yeah. -122-

1 MR. DIBOISE: Yeah, I don't know that I can. 2 THE COURT: You can't do that. 3 MR. DIBOISE: But, I can substitute, if I have to. 4 THE COURT: Oh, you can substitute counsel. 5 MR. DIBOISE: Right. Other partners in my firm. 6 THE COURT: What's the firm? 7 MR. DIBOISE: Sorry? 8 THE COURT: What firm is it? 9 MR. DIBOISE: Wilson Sonsini. 10 THE COURT: Well, they've got a number of good 11 lawyers in that firm, haven't they? 12 MR. DIBOISE: Right, there are at least five or 13 six of them in the courtroom. 14 THE COURT: Well, are you the -- 15 MR. DIBOISE: No, your Honor, there is no -- 16 THE COURT: Am I finally meeting the indispensable 17 man? I've been looking for him all my life. 18 MR. DIBOISE: I'd like to think that, but I would 19 never have the huberous (phonetic) to say that. Your Honor, 20 I guess what I'm telling you, if you have no time in the 21 week, I believe, is the 25th to accommodate the movement, 22 then we would prefer to leave the schedule as is. 23 THE COURT: Well, I do have a Markman hearing the 24 entire week, starting the 26th of June. I have a Markman 25 all week in another case. And also, I have a Markman the -123-

1 first week in July. I have a Ninth Circuit judicial 2 conference the second week in July. I have a Markman 3 hearing the third week in July. The fourth week in July -- 4 THE LAW CLERK: Actually, that's a trial, your 5 Honor, not a Markman. 6 THE COURT: That's a trial. I beg your pardon. 7 Yeah, that's a trial. It's a pretty full schedule. It 8 would be much later before we could pick this up again. 9 MR. DIBOISE: We don't want to do that, so 10 we'll -- 11 THE COURT: Well, you may have to anyway, because 12 we have eleven patents in this case. 13 MR. LAWTON: We have nine, your Honor. 14 THE COURT: Okay, just nine, okay, well, that's 15 good. That's a piece of cake, nine. It may take us more 16 than three more days after this week to do all that. It 17 just depends on how complex they are, but sometimes, they're 18 extremely complex and this one so far wasn't uncomplicated 19 to me. It wasn't as bad as I've seen, but it was 20 uncomplicated -- I mean, it was complicated. 21 MR. DIBOISE: So, we will keep the dates that you 22 have offered us and I will make my schedule change. 23 THE COURT: All right, well, then, we'll proceed, 24 then, on this case next week. We'll proceed -- what's 25 this -- Mark, what's this on Tuesday, Markman in another -124-

1 case? 2 THE LAW CLERK: Yes. 3 THE COURT: That's a one-day Markman? 4 THE LAW CLERK: One-claim case. 5 THE COURT: Do you think we could move that up to 6 Monday afternoon? 7 THE LAW CLERK: I don't know how long that will be 8 and I don't know how long the pretrial and motions in 9 limine. There's two motions in limine in the -- court case. 10 THE COURT: Okay. 11 THE LAW CLERK: Pretrial in limine, so I don't 12 know long that's going to take. 13 THE COURT: Well, okay, the 23rd. I see that we 14 have -- that's a two-day week, the 21st and 22nd of June, 15 for this case. It's scheduled for a two-day week. Are you 16 aware that it's scheduled for a two-day week next week, 17 Wednesday and Thursday? 18 MR. DIBOISE: Yes, your Honor. 19 THE COURT: Okay. 20 MR. DIBOISE: And your Honor, has -- that Tuesday 21 is full with another matter? 22 THE COURT: I have another Markman on Tuesday in 23 another case. That's a one-claim patent case, and so it's 24 only set for one day. Now, you know, it's possible, and if 25 you wanted to work with me on this, it's possible that that -125-

1 case could be finished in a morning, but I don't have a 2 feeling for that right now because I don't have the patent 3 in my mind. I don't know what patent it is. But, it's only 4 one claim. The patent is only one claim. So, I would like 5 to think that I could do that in a morning, and if we did, 6 we could start this case Tuesday afternoon at 1:30. And 7 then, we'd have two and a half days next week. Do you come 8 from out of town, Mr. Diboise? 9 MR. DIBOISE: Yes, your Honor. I live in San 10 Francisco. 11 THE COURT: Where? 12 MR. DIBOISE: San Francisco. 13 THE COURT: San Francisco. Well, if you were a 14 gambling man, if you want to come down and be ready at, you 15 know, 1:30, I think the odds are that we could do it. In 16 fact, I could give you a better answer later this afternoon. 17 Mark, could you get that case out and take a look at the 18 patent? That's 1065, number 1065. 19 THE LAW CLERK: Yes. 20 MR. LAWTON: Your Honor, I'm afraid I have a 21 conflict on Tuesday, were we to try to start early. It's an 22 appointment with a client that I have up in Orange County. 23 The duration of that is unpredictable. It's scheduled for 24 the morning, but we could be up there for a few hours, and 25 coming back, I don't know if I could be back by 1:30. -126-

1 THE COURT: And you're the responsible person on 2 these Markman hearings? 3 MR. LAWTON: That's not a Markman -- oh, on this 4 proceeding, your Honor, yeah, I am. 5 THE COURT: Well, okay, then, even if the Court 6 were available, you wouldn't want to schedule it for the 7 afternoon on the 20th. Let me ask you this. 8 MR. LAWTON: I don't think I could responsibly 9 commit to that, your Honor. 10 THE COURT: Okay, let me ask you this. If it did 11 start and you were an hour or so late, and it were handled 12 by one of your partners for that period of time, would that 13 break a commitment that you've made with your client? 14 MR. LAWTON: No. 15 THE COURT: Would that be something you could live 16 with? 17 MR. LAWTON: I think so, your Honor. We could 18 muddle through, certainly. 19 THE COURT: Well, then, why don't we -- why don't 20 we schedule it for 1:30 on Tuesday. Then, we've got two 21 questionables. I might not make it myself, but I think I 22 will. 23 MR. LAWTON: Understood, your Honor. 24 THE COURT: And you may be an hour or so late, but 25 you might not be. And if you can live with that, we could -127-

1 schedule it for 1:30 on Tuesday. 2 MR. LAWTON: I didn't bring my calendar with me, 3 but could I borrow -- I'd just like to step out and double 4 check the time of that Orange County appointment on Tuesday. 5 THE COURT: Sure, all right. 6 MR. LAWTON: Thank you, your Honor. 7 (Pause.) 8 MR. LAWTON: Your Honor, I wasn't able to reach my 9 assistant, but irrespective of the time of the appointment 10 in Orange County, we'll find a way to make it work on our 11 side. 12 THE COURT: Good, all right. 1:30 on Tuesday of 13 next week will be our next time. Now, we're on 968. Do we 14 have a tutorial on this patent? 15 MR. LAWTON: No, your Honor. It was -- the 16 tutorial -- 17 THE COURT: Pretty similar. 18 MR. LAWTON: Very much similar. 19 THE COURT: It's got the same title. The patent 20 has the same title. 21 MR. LAWTON: Yes, your Honor. 22 THE COURT: Okay, well -- 23 MR. LAWTON: Involves a method for seeing tumor 24 invasion and metastasis in viable fresh tissue through skin. 25 THE COURT: Okay. -128-

1 MR. LAWTON: It can be adapted so you can see 2 angiogenesis in tumors and it can be used to get clinical 3 data in human subjects where those subjects are bearing 4 tumors. 5 THE COURT: Okay, well, then, let's start right 6 away with Claim 1, and it says, a method to observe 7 angiogenesis -- underline that -- in at least one solid 8 tumor contained in a first mammalian subject, which method 9 comprises -- underline comprises. Are there any other words 10 in that preamble that you would want defined other than 11 "angiogenesis" and "comprises"? 12 MR. LAWTON: None from us, your Honor. 13 MS. MAHANEY: Maybe solid tumor, although that 14 does sound sort of self-explanatory. 15 THE COURT: Well, maybe not. What is a solid 16 tumor? 17 MS. MAHANEY: It's a tumor that grows as a solid 18 mass, so -- 19 THE COURT: A tumor that grows in a solid mass? 20 MS. MAHANEY: Yeah, a solid mass. 21 THE COURT: Well, why don't we define that. It 22 won't do any harm. I don't think it's that obvious what it 23 is. 24 MR. LAWTON: Does it materially differ from our 25 previous definition of tumor? �����

1 MS. MAHANEY: Well, the word "solid" is now added. 2 MR. LAWTON: I know it, but does that really 3 change what we want the jury to understand the term to mean? 4 THE COURT: Let's think about this as well. When 5 the case comes to trial, will we have the same jury on 968 6 as we had on 523? 7 MR. LAWTON: I think that's a real question, your 8 Honor. 9 THE COURT: Because the way I set these cases up 10 for trial is I try to limit the number of claims or the 11 number of patents to a single jury to two, no more than 12 three at all, but two, but no more than three. Then, if 13 this -- and then, we will organize them for trial in a 14 substantively logical progression. So they -- because 15 they're all related, it looks like to me. So, we'll take 16 them the way they're more closely related. The more closely 17 related they are, those will be the ones that will couple 18 up. And as it turns out, these two might not be coupled up. 19 In that case, it's possible we have different juries, so 20 maybe we have to redefine some of the terms here as if it 21 were the only case being tried to a jury. So, maybe, if 22 that's the case, we should take a look and see what we said 23 about "tumor." We did that fairly recently. 24 MR. LAWTON: We did that on -- the existing 25 location or the pre-existing location was at the bottom of -130-

1 Page 2 of the disputed claim chart. 2 THE COURT: Mark, I don't have that spreadsheet. 3 THE LAW CLERK: Yeah, I took that back into 4 chambers. I didn't know we'd be going back to it. 5 THE COURT: Okay. 6 MR. LAWTON: I can bring it up to the bench if 7 that -- 8 THE COURT: He can get it, just a second. Just to 9 kind of keep the clutter down, they cleaned me up for the 10 afternoon session. I remember we said something about a 11 cellular growth with unregulated growth control or something 12 like that. 13 MS. MAHANEY: We did, your Honor. 14 MR. LAWTON: We said it was a mass of cells 15 generally derived from a single cell that is not controlled 16 by normal regulators of cell growth, and then we may have 17 modified that a little to talk about cancer. 18 THE COURT: Well, no, I think we obviated the 19 cancer by sticking to the last part of it. Okay, let's see. 20 What page was that on? Mark, do you remember what page that 21 was on? 22 THE LAW CLERK: I do not know what page that was 23 on, your Honor. I think it might have been the first page. 24 THE COURT: Page 2? 25 MS. MAHANEY: Page 2. -131-

1 THE COURT: A mass of cells generally derived from 2 a single cell that is not controlled by normal regulators of 3 cell growth. Solid tumor could be a -- how about a solid 4 mass of cells generally derived from a single cell that is 5 not controlled by its normal regulators of cell growth? 6 Okay, we'll insert the word -- what did I say, solid? 7 MR. LAWTON: Yes, your Honor. 8 THE COURT: A solid mass of cells. That will 9 be -- the only addition is the word "solid." Got that, 10 Mark? 11 THE LAW CLERK: Yes, your Honor. 12 THE COURT: Okay, that takes care of solid tumor. 13 How about angiogenesis? It says here, development of new 14 blood vessels. Well, that's good. That's agreed to. Shall 15 we go with that? 16 MS. MAHANEY: Yes, your Honor. 17 MR. LAWTON: We agree, your Honor. 18 THE COURT: Angiogenesis means, open bracket, 19 development of new blood vessels, close bracket. Now, we're 20 down to "comprises," which means including -- includes but 21 is not limited to. 22 Okay, now, we're over to Page 27. First 23 limitation. Optionally exposing at least one tissue 24 containing said tumor of said subject and observing the 25 blood vessels in said tumor. As is? -132-

1 MR. LAWTON: It's all right with us, your Honor. 2 THE COURT: I'm going to underline "tumor" twice. 3 Anything else, Ms. Mahaney? 4 MS. MAHANEY: No, your Honor. 5 THE COURT: Okay, next page. Wherein said blood 6 vessels contain a fluorescent contrast dye -- 7 THE LAW CLERK: Your Honor? 8 THE COURT: What? 9 THE LAW CLERK: Are we inputting the definition 10 from "tumor" from the -- we defined solid tumor and this 11 just says tumor. 12 THE COURT: It says "said tumor." No, let's just 13 underline "tumor." 14 THE LAW CLERK: Okay, and we're going to use the 15 definition for "solid tumor"? 16 THE COURT: We won't have to put brackets here, 17 just underline it, and we'll use in our glossary -- let's 18 list "tumor" and "solid tumor" separately, alphabetically, 19 and the same definition will -- 20 THE LAW CLERK: Okay. 21 THE COURT: Except on "tumor," you can delete the 22 word "solid" in your glossary. So, just say a mass. 23 MS. MAHANEY: Right, in the glossary, right. 24 THE COURT: In the glossary. 25 MS. MAHANEY: Right. Yeah, here it's referring -133-

1 back to said solid tumor. 2 THE COURT: Yeah, when we're referring back to 3 "said," but we're not going to define anything here, just 4 underline. 5 MS. MAHANEY: Got it. 6 THE COURT: So, said tumor, we'll just underline 7 "tumor." Expresses green fluorescent protein. Underline 8 those, GFP, and we'll put the same definition there that we 9 did on the other patent. And you can find that, right, 10 Mark? 11 THE LAW CLERK: Yes, your Honor. 12 THE COURT: Okay. 13 THE LAW CLERK: For -- 14 THE COURT: For green fluorescent protein GFP. 15 MS. MAHANEY: What happened to fluorescent 16 contrast dye? 17 THE COURT: What happened to what? 18 MR. LAWTON: Your Honor, we've got different spec 19 language for green fluorescent protein pertinent to this 20 claim, and I think it bears us looking at. 21 THE COURT: Okay. What page? 22 MR. LAWTON: It's Column 4 of the specification 23 and I can -- 24 THE COURT: Are these different inventors? Tan 25 and Shoshima (phonetic). -134-

1 MS. MAHANEY: It's the same inventors. 2 MR. LAWTON: They're the same inventors, your 3 Honor. 4 THE COURT: And they came up with different 5 definitions of the same term. 6 MR. LAWTON: Yes, your Honor. 7 THE COURT: Shame, shame. What are we, Column 4? 8 MR. LAWTON: English language is a marvelous thing 9 sometimes. Yes, your Honor, I'll display it on the large 10 screen, if the Court please. At the end of the top line, 11 which would be line 1, there's some language that discusses 12 the exhibition of colors other than green and GFP. 13 THE COURT: Various forms of GFP exhibit colors 14 other than green. And these two are included within the 15 definition of GFP and are useful in the methods and 16 materials of the invention. In addition, it is noted that 17 green fluorescent proteins falling within the definition of 18 GFP herein have been isolated from other organisms, such as 19 assepazi renela raraformis (phonetic). Any suitable and 20 convenient form of the GFP gene can be used to modify the 21 tumor cells useful in the model's invention, and for 22 retroviral transformation of endogenous tumors. The 23 particular humanized HGFPS 65-T clone is used in the example 24 set forth below for illustration. 25 Well, the parties don't agree on a definition? -135-

1 MS. MAHANEY: No, your Honor. 2 THE COURT: Okay, I'm on Page 28, right? 3 MR. LAWTON: Right, your Honor. A 4 protein -- looking at Plaintiff, a protein that emits light 5 upon incidence of an excitation includes any suitable and 6 convenient form of GFP includes a native gene including 7 GFP -- includes mutants found useful (reading) includes 8 various forms of GFP, including those which exhibit green 9 colors and colors other than green, includes but is not 10 limited to GFP, which have been isolated from other 11 organisms. Claim covers any type of fluorescent protein 12 since in nature they have a common ancestor and have evolved 13 by mutation. 14 Well, that's a little wordy. Let's see what the 15 Defendant says. A protein that fluoresces in the green part 16 of the spectrum upon excitation with -- light GFP, can also 17 refer to forms of GFP that have been modified to fluoresce 18 in colors other than green. To be clear, this does not 19 cover a fluorescent protein that naturally fluoresces in a 20 color other than green. 21 Well, Ms. Mahaney, where do you find back-up for 22 the sentence, "To be clear, this does not cover a 23 fluorescent protein that naturally fluoresces in a color 24 other than green? 25 MS. MAHANEY: Because, your Honor, the claims are -136-

1 limited to green fluorescent proteins. They did not say in 2 the claim fluorescent proteins. They could have. They do 3 that in a later patent. We do that. They said green 4 fluorescent protein. We are willing to give them 5 modifications of the green fluorescent protein into another 6 color, because that is in the specification. We're not 7 willing to give them the world of fluorescent proteins. 8 That is not covered by the claim and it's not supported by 9 the specification. 10 MR. LAWTON: Your Honor, GFP clearly here is used 11 as a term of art like green card or pink slip or red flag or 12 similar terms where the color is not necessarily descriptive 13 of what the person sees. It's a term of art. And it 14 expressly includes forms of GFP that exhibit colors other 15 than green. That's in line 2 in Column 4, and I just don't 16 know how they can possibly get around that, except to just 17 ignore it and pretend it's not there. And I don't think 18 that the Phillips Cannons (phonetic) allow us to do that. 19 MS. MAHANEY: How is a red fluorescent protein a 20 form of GFP? 21 MR. LAWTON: If GFP is a term of art, to address 22 Ms. Mahaney's question, then the word "green" is not 23 necessary descriptive of the color being exhibited by the 24 fluorescent protein. GFP is used as a term of art. 25 MS. MAHANEY: There is absolutely no support in -137-

1 the intrinsic evidence that they're using the term green 2 fluorescent proteins to include every fluorescent protein 3 ever. 4 MR. LAWTON: You mean except for the spec? 5 MS. MAHANEY: Would you let me finish? 6 MR. LAWTON: I'm sorry, I thought you were 7 finished. 8 MS. MAHANEY: The spec specifically says -- 9 THE COURT: Where are you? 10 MS. MAHANEY: Why don't we start at Column 3. How 11 about line 54. So, here's when we start the discussion of 12 mutants of GFP, and this is similar to the last patent, 13 although they have added some language here. Okay, and then 14 we go down to line 64. 15 THE COURT: Okay. 16 MS. MAHANEY: By suitable modification, the 17 spectrum of light emitted by the GFP gene -- GFP can be 18 altered. They're talking about taking a GFP gene and 19 altering it to emit blue or yellow. We would agree that 20 such a modification is covered by their claims. What they 21 don't get is something that naturally fluoresces in another 22 color. That's not part of a modification. 23 MR. LAWTON: Your Honor, it's like saying -- Ms. 24 Mahaney's argument is akin to the argument of saying, for 25 someone to have a valid green card, the physical card has -138-

1 got to be green, or else they're not a lawful permanent 2 resident of the United States, because green card must mean 3 green, and if it's not green, you don't have lawful 4 permanent residency. And it completely sidesteps the nature 5 of this term, which by now means, if you look at the 6 spec -- and again, I don't see how it could have been 7 written any more clearly. The term GFP, the way it's used 8 in the present application, includes proteins that are not 9 necessarily green in appearance. And that sentence begins 10 at line 66 in Column 3, and finishes at line 1 of Column 4. 11 MS. MAHANEY: Your Honor, they're the ones who 12 decided to put in their claim the term "green fluorescent 13 proteins." If they wanted to claim all fluorescent 14 proteins, they should not have used the word "green." We're 15 not talking about green cards here. We're talking about 16 patent claims. And patent claims serve a notice function, 17 and the notice function of these claims is important. You 18 can't use -- I don't even know what they're using to get to 19 all fluorescent proteins, because there's nothing in this 20 spec that gives them all fluorescent proteins. If you read 21 the paragraph, they're talking about making mutants, 22 modifications. I was actually on Column 3. 23 MR. LAWTON: I'll go back to it. 24 MS. MAHANEY: Let's read the language that 25 Mr. Lawton wanted to point to. By suitable modification, -139-

1 the spectrum of light emitted by the GFP can be altered. 2 Okay, they're talking about including within the definition 3 of GFP mutants of GFP where they've changed the color. We 4 are willing to give them that. However, that doesn't mean 5 they get all fluorescent proteins. They only get the ones 6 that are altered. 7 THE COURT: I think it's a very good point. I 8 think, however, there's a sentence which takes some of the 9 edge off your spear. Look at Column 4, line 1. It says, 10 various forms of GFP exhibit colors other than green, and 11 these, too, are included within the definition of GFP and 12 are useful in the methods and materials of the invention. 13 MS. MAHANEY: Right, but you have to -- 14 THE COURT: Now, when it says, "various forms of 15 GFP exhibit colors other than green and these, too." Now, 16 when it says "these, too," that means to me that this 17 example of various forms of GFP, in addition to those which 18 he described immediately before, which were ones that 19 were -- which were modified by science, that's another 20 category of forms of GFP that exhibit colors other than 21 green, other than those manufactured. 22 MS. MAHANEY: No, your Honor. 23 THE COURT: Well, it says there's various forms of 24 GFP -- various forms of GFP, other than the ones I've just 25 identified above, which were by suitable modification the -140-

1 spectrum of light emitted by the GFP can be altered, meaning 2 altered, meaning artificially altered by -- or manmade 3 altered. And it says, thus, although the term GFP is used 4 within the present application, the proteins included within 5 this definition are not necessarily green in appearance. 6 So, that's so far as we've gone. They're saying that, not 7 only green, but other colors that have been manufactured are 8 also included within the GFP. Which you said you're willing 9 to give them. So far, you said you're willing to give them 10 that. 11 MS. MAHANEY: Yes. 12 THE COURT: But, you don't want to give them any 13 other source of other colors other than that. But, then, 14 you aren't accounting for the next sentence. It says, 15 various forms of GFP exhibit colors other than green, and 16 these, too, are included within the definition of GFP. 17 MS. MAHANEY: Right. We disagree as to that 18 sentence, your Honor, because that sentence is summarizing 19 the prior two sentences, and it's making clear that, when 20 you modify GFP to another color and you make a form of GFP 21 that exhibits a color other than green, they're going to 22 include those in the definition of GFP. A red fluorescent 23 protein is not a form of GFP. It is something different. 24 MR. LAWTON: It's a mutant of GFP. 25 MS. MAHANEY: It is not. -141-

1 MR. LAWTON: And therefore, it is expressly 2 included within the meaning of this specification. 3 MS. MAHANEY: I would like to see evidence that 4 it's a mutant of GFP because there is no such evidence. 5 MR. LAWTON: I don't know, again, how much more 6 clearly the intent of the inventor could have been expressed 7 here. 8 MS. MAHANEY: I can say how it could have been 9 said. We want to cover all fluorescent proteins. It does 10 not say that. It says we want to cover all forms of GFP. 11 Never once do they say we want to cover all fluorescent 12 proteins, and that is what they should have done if they 13 wanted to cover all fluorescent proteins. In a later 14 patent, they use the word fluorophor, which covers all 15 fluorescent proteins. In the later patent, they have claims 16 to green fluorescent proteins, red fluorescent proteins and 17 yellow fluorescent proteins. So, how is it, in one patent, 18 you acknowledge the distinction, but here, you claim that 19 green covers everything? 20 MR. LAWTON: It does because GFP is a term of art. 21 What if the term was pink fluorescent protein? 22 MS. MAHANEY: Then, you would get pink fluorescent 23 proteins. 24 MR. LAWTON: And if pink fluorescent protein, as a 25 term of art, was understood by somebody skilled in the art -142-

1 to include proteins that exhibited colors other than pink, 2 pink fluorescent protein would include those proteins as 3 well, irrespective of the first word in that three-word 4 phrase. 5 MS. MAHANEY: Your Honor, they are eviscerating a 6 claim limitation. The claim says green fluorescent 7 proteins. 8 THE COURT: Okay, let's take it one little baby 9 step at a time. First, I think you agree that GFP clearly 10 means green fluorescent protein, green. 11 MS. MAHANEY: Yes, we'd agree. 12 THE COURT: Then, I think you also agree that 13 where the color of the GFP has been changed so that it's not 14 necessarily green in appearance, it is still defined in this 15 patent as GFP. 16 MS. MAHANEY: And to be clear, we're talking about 17 artificial manmade -- 18 THE COURT: I'm talking about artificially 19 altering. They use the term "altered." 20 MS. MAHANEY: Exactly. 21 THE COURT: Okay, so, and I understand your 22 position to be, in that situation, you do recognize that 23 when they use the term GFP, green fluorescent protein, they 24 are including red or blue or brown or orange fluorescent 25 protein, if it's been mechanically or manufactured altered -143-

1 by science, not by nature. 2 MS. MAHANEY: Right, if they started with the GFP 3 gene and they altered it to emit pink, we would agree that 4 they get that, because it's -- they still started with GFP. 5 THE COURT: Yeah, I think what they're saying here 6 is they're altering the spectrum of light emitted by the 7 GFP, which is green. And I think they're clearly referring 8 to that. They're referring to green fluorescent protein. 9 So, then, they say, thus, although the term GFP, in quotes, 10 is used in the present application, the proteins included 11 within this definition are not necessarily green in 12 appearance, even though they call them green. They're not 13 necessarily green, because he just says that, by simple 14 modification, the light can be altered, and he wants to 15 include those in which they've been altered. So, we're 16 going to call red and blue and so forth green to that 17 extent. 18 Now, then, it goes on to say, various forms of GFP 19 exhibit colors other than green, and these, too -- now, when 20 they say "these, too," they mean these also are included 21 within the definition of GFP, and that means they're talking 22 about forms of GFP other than alterations of a green green 23 GFP. They're talking about another category of forms of 24 this protein. Other forms exhibit colors other than green. 25 And these, too, these also are included within the -144-

1 definition of GFP, and are useful in the methods and 2 materials of the invention. So, it says -- and I think 3 that -- and I believe that that opens the door beyond 4 mechanical alteration, because they're clearly referring to 5 another bunch of, as they say, various forms of GFP. 6 MS. MAHANEY: But, we're still talking about GFP, 7 your Honor. 8 THE COURT: We're talking about various forms of 9 GFP. However, he says GFP is not used to be limited to the 10 color green. 11 MS. MAHANEY: I disagree, your Honor. 12 THE COURT: Well, look. It says here, although 13 the term GFP is used in the present application, the 14 proteins included within this definition are not necessarily 15 green in appearance. 16 MS. MAHANEY: And they're referring to the 17 modifications, your Honor. That's all. 18 MR. LAWTON: I don't think that's what's referred 19 to at all. I think -- 20 THE COURT: I'm concerned that you're not 21 recognizing the -- I understand your position, but I don't 22 agree with you. I think that when they say various forms of 23 GFP exhibit colors other than green, and those as well or 24 those also are included within the definition of GFP. Now, 25 we all know -- we all know in the law that the patentee can -145-

1 be its own lexicographer, and if he says I want to refer to 2 all fluorescent proteins as GFP, I don't care what their 3 color is, I'm going to call them GFP in this patent, then 4 we're going to do that. We're going to call them. We don't 5 care about the color. He wants to use GFP. If he wants to 6 call them foo-foo, we'll call them foo-foo. Whatever he 7 wants to call them, that's what we'll call them. 8 MS. MAHANEY: That's not what they've done here, 9 your Honor. They could have said what you just said. We 10 are including all fluorescent proteins. That's simple. 11 Anybody would have understood that. Instead, they keep 12 talking about forms. 13 THE COURT: I think he did say that. 14 MS. MAHANEY: I don't think so, your Honor. 15 THE COURT: When he says, various forms of GFP 16 exhibit colors other than green, and these also are included 17 within the definition, he already included the artificial 18 ones. They're already included. So, he didn't have to say 19 that again. You're saying that sentence is just redundant, 20 is what you're telling me. And I don't think it's 21 redundant. 22 MS. MAHANEY: I think it's conclusionary. 23 THE COURT: It isn't redundant. He's including 24 another category of GFP forms which exhibit colors other 25 than green. He says those also are included within the -146-

1 definition of GFP, and are useful in the methods and 2 materials of the invention. 3 MS. MAHANEY: But, they still have to come from 4 GFP. They didn't say -- they said various forms of GFP. 5 So, what they're saying is, okay, maybe there's some GFP 6 that exhibit colors other than green. So, fine, they can 7 get that. But, they still -- it's still limited to 8 something of GFP. 9 THE COURT: Well, you're saying too much. You're 10 saying he's saying that there are forms of GFP which are not 11 green, and they just use the term green as a generic term, 12 even though they're not green. 13 MS. MAHANEY: But, it's still limited to green 14 fluorescent proteins. So, let's say there's a green 15 fluorescent protein that exhibits blue in addition to green, 16 okay? That's what they're saying. So, they get that. 17 THE COURT: Well, what would you say they say 18 about GFP that exhibits red and only red? 19 MS. MAHANEY: Then, it's not a GFP. 20 THE COURT: No, I can't -- I'm sorry, I don't 21 agree. 22 MR. LAWTON: Well, then, that language means 23 nothing. 24 MS. MAHANEY: No, your claim means nothing. How 25 can you have a claim to green fluorescent proteins where the -147-

1 word "green" has no meaning? 2 THE COURT: Well, if he defines it without 3 meaning, that's the way -- 4 MS. MAHANEY: I don't think that's a clear 5 definition to -- a clear definition to expand a claim scope 6 way beyond its ordinary meaning. GFP is not a term of art. 7 There is absolutely no evidence before the Court that it is. 8 And there's absolutely no evidence that anybody would read 9 this as encompassing the world of fluorescent proteins. 10 THE COURT: I don't know about a word of art. All 11 I know is that he has defined what he means when he uses the 12 term -- when he uses the words GFP. And to me, he says 13 that he includes all various forms of GFP that exhibit 14 colors other than green. Those are also included within the 15 definition of GFP. There it is right in front of you, just 16 like the nose on my face. It's right in front of us. 17 MS. MAHANEY: Right, but it says forms of GFP. 18 Why does everybody keep reading out of GFP? 19 THE COURT: I'm not reading it out. He says, any 20 form of GFP that exhibits colors other than green are 21 included within the definition of GFP. 22 MS. MAHANEY: Okay, well, what will be the -- 23 THE COURT: He's ruling out the term "green." In 24 other words, he's telling you green means nothing. It's 25 just not meaning -- it doesn't mean anything. He says I've -148-

1 defined it as including red, blue and yellow. 2 MS. MAHANEY: We totally disagree, your Honor. 3 THE COURT: In this patent, green means green, 4 red, blue and yellow. 5 MS. MAHANEY: No, it doesn't. 6 THE COURT: Well, okay. I respect your position. 7 Unfortunately, at this point, it's not a fair fight. I win. 8 MS. MAHANEY: You know, that's really unfair. 9 THE COURT: For a minute, for a minute. But, when 10 you get into more erudite heads, turn their heads around, 11 but I'm going to define it this way. 12 MR. LAWTON: Thank you, your Honor. 13 MR. DIBOISE: Your Honor, I'd ask just a point of 14 clarification on this point. 15 THE COURT: Yes. 16 MR. DIBOISE: If -- as I understood your Honor's 17 rationale for your ruling, if GFP, whatever that protein is, 18 if it expresses a color in the red spectrum, that's 19 included. 20 THE COURT: If it's a form of GFP, yes. 21 MR. DIBOISE: That exhibits the color red when 22 excited. 23 THE COURT: If it exhibits red, but it is a 24 fluorescent protein and it exhibits red, it's a GFP for 25 purposes of this patent. -149-

1 MR. DIBOISE: What if it were from a coral 2 protein, such as DS red? 3 THE COURT: If it's a protein, a fluorescent 4 protein. 5 MR. DIBOISE: Yes. 6 THE COURT: And it exhibits any other color than 7 green, I think it's -- with his definition, it's a GFP. 8 MR. DIBOISE: Even if it comes from some potential 9 protein different than the original GFP protein. 10 THE COURT: You're saying it has to at least be an 11 invertebrate. 12 MR. DIBOISE: No. I'm just trying to understand 13 your rationale, just so I understand it. It could come from 14 anywhere, as I understand your Honor's position. 15 MR. LAWTON: Your Honor, the spec goes out of its 16 way to say that GFP includes fluorescent proteins that come 17 from organisms other than aequorea according to the meaning 18 ascribed to the term by the inventor. 19 THE COURT: I think he's asking whether -- what if 20 they found a fluorescent protein in a vertebrate. At least 21 some other non-vertebrate would be similar in that respect. 22 Yeah, I think he's -- 23 MR. DIBOISE: Well, no, I'm asking, what if it's 24 in another non-vertebrate? 25 THE COURT: Another non-vertebrate? -150-

1 MR. DIBOISE: Yeah, what if it comes from a coral 2 that naturally expresses the color red? Is that included 3 within GFP? 4 THE COURT: I'm not sure. I don't know that much 5 about coral, but I understand that -- I always thought that 6 coral was a vertebrate. But, apparently, the soft corals 7 are not. 8 MR. LAWTON: The Court is right. 9 MR. DIBOISE: Well, I think we're saying the same 10 thing. 11 THE COURT: No, he says I'm not right. 12 MR. LAWTON: Well, the Court is right when it says 13 that soft coral is an invertebrate. 14 THE COURT: Yeah, I understood that was an 15 invertebrate. But, I thought, before I walked in here, that 16 corals were vertebrate organisms, but I didn't know. I 17 just -- if you'd have asked me over a beer yesterday, I 18 would have said it's a vertebrate, and I didn't even -- I 19 never knew about a soft coral. I never heard of a soft 20 coral. 21 MR. DIBOISE: I don't know the answer to that 22 question. But -- 23 THE COURT: I guess we were told that a soft coral 24 is an invertebrate. Assuming that's true -- 25 MR. DIBOISE: Assuming that's true. -151-

1 THE COURT: Then, I still would think, unless 2 somebody told me otherwise, I would still think that a 3 coral, not a soft coral, but a coral is a vertebrate. But, 4 I don't know. I'm not a biologist, but they seem kind of 5 crusty to me. 6 MR. DIBOISE: What I'm trying to understand is 7 whether the definition that's being used for GFP here would 8 include a naturally fluorescent protein that expresses in 9 the color other than green, and it's not limited -- 10 THE COURT: Now, because of the sentence, various 11 forms of GFP, various forms other than this victorious 12 jellyfish, various forms of GFP exhibit colors other than 13 green, and these, too, these also are included within the 14 definition of GFP. 15 MR. DIBOISE: Your Honor, could we have a moment? 16 We're -- 17 THE COURT: Of course. You can't settle the case, 18 though. 19 MR. DIBOISE: I can't settle it? 20 THE COURT: No. 21 MR. DIBOISE: Well, I -- 22 THE COURT: You can't take a moment to settle the 23 case. You've got to do that after hours. 24 MR. DIBOISE: Can we just huddle here at the 25 table? -152-

1 THE COURT: Of course. If this is going to be 2 protracted, you can use the jury room. 3 MR. LAWTON: Your Honor, just for everybody's 4 edification, I'm informed by the people that really know 5 that vertebrates have spines or backbones. That is their 6 distinguishing characteristic. 7 THE COURT: I thought that. 8 MR. DIBOISE: Your Honor, if we could have five 9 minutes. 10 THE COURT: Do you want to use the jury room? 11 MR. DIBOISE: We can just go outside in the hall. 12 THE COURT: Yeah, let's take a five-minute recess. 13 (Proceedings recessed briefly.) 14 THE COURT: All right, now, where we are, we are 15 on Page 28, and we're going to put an open bracket after 16 GFP, and we're going to write something here which defines, 17 for purposes of this patent, the expression "green 18 fluorescent protein, parenthesis, (GFP), close parenthesis, 19 right? 20 MR. LAWTON: Yes, your Honor. 21 THE COURT: All right. 22 MR. LAWTON: We have a proposed construction 23 appearing in the middle column beginning at the bottom of 24 Page 30, which I think the Court will find a little too 25 wordy. -153-

1 THE COURT: 30 on my sheet is blank. How about 28 2 on my sheet? 3 MR. LAWTON: It starts -- it's in the middle 4 column. It's underscored, bolded, green fluorescent protein 5 (GFP). Then, there's a too wordy -- 6 THE COURT: Yeah, I got that. About 20 lines. 7 MR. LAWTON: Right. 8 THE COURT: And it goes on half of the next page. 9 MR. LAWTON: Yes, your Honor. 10 THE COURT: Okay, I'm with you. 11 MR. LAWTON: So, that's the construction that we 12 would propose, and as I said, we'd be glad to try to cut 13 that down in the interest of -- 14 THE COURT: Well, let's take a look at the other 15 definition and see how much of that might fly. We said, GFP 16 is a protein which fluoresces green when excited by light. 17 MR. LAWTON: We'd be willing to -- that's 18 consistent with the prior definition. We're happy with that 19 language so far. 20 THE COURT: Well, wait a minute, so far. What do 21 you mean by so far? 22 MR. LAWTON: Well, there's a little more to be 23 said. 24 THE COURT: Well, I would think so. I mean, we've 25 been fighting for an hour for nothing if we haven't. What -154-

1 else -- why would we say that? Why would we say it's a 2 protein which fluoresces green when excited by light? 3 MR. LAWTON: No, your Honor, I was saying that's a 4 better way to say what we've got in the first two lines of 5 the proposed construction. 6 THE COURT: Why? I think it's wrong. We don't 7 want to say -- I don't want to say it fluoresces green when 8 excited by light. I want to say it fluoresces light -- it 9 fluoresces a color when excited by light. 10 MR. LAWTON: Yes, your Honor. 11 THE COURT: But, I don't know why I would want to 12 say it fluoresces green. 13 MR. LAWTON: The Court's right, your Honor. We've 14 got a protein that emits light upon incidence of an 15 excitation, and I was focusing on the latter part of the 16 Court's formulation, where the Court was saying -- 17 THE COURT: Protein which fluoresces a light when 18 it's -- 19 MR. LAWTON: When excited by light. 20 THE COURT: When excited by something. I guess it 21 is light, isn't it? 22 MR. LAWTON: It is light, your Honor. 23 THE COURT: Now, it fluoresces color light. It 24 fluoresces color light when excited by light. Why do we 25 have to say anything more than that? -155-

1 MR. LAWTON: Because we've got this discussion of 2 other colors. 3 THE COURT: Let me repeat. What if it said a 4 protein which fluoresces a colored light when excited by 5 light? 6 MR. LAWTON: We're satisfied with that, your 7 Honor. 8 MS. MAHANEY: Absolutely not. 9 THE COURT: You're not willing to stipulate to 10 that one, huh? 11 MS. MAHANEY: No, your Honor. We -- 12 THE COURT: Well, I understand your position, but 13 I can't agree with your position. I'm sorry. I think that 14 this is, in my view, this is a classic example of patentee 15 lexicography. 16 MS. MAHANEY: Will you let me say a little bit 17 more about it? 18 THE COURT: You mean, in addition to what you've 19 said so lively before? 20 MS. MAHANEY: I was going to maybe try a little 21 bit -- 22 THE COURT: Did you come up with any ammunition 23 from that huddle that you had out in the hall? 24 MS. MAHANEY: We tried, your Honor. 25 THE COURT: Well, if you've got some new input, -156-

1 I'm always willing to be shown I'm wrong. I don't want to 2 be wrong and I won't be deliberately wrong. I'm wrong 3 enough when I try to be right. 4 MR. LAWTON: Your not wrong this time. 5 MS. MAHANEY: I'd like to, if we could have 6 the -- I just want to make just a couple points. Okay. 7 Green fluorescent protein is not a term of art that covers 8 other colors, and this is shown by one of AntiCancer's own 9 patent, the 159, which we'll get to later, where they 10 actually have a claim where they talk about green 11 fluorescent proteins, blue and red, and they mention them 12 separately. So, clearly, green fluorescent protein is not 13 something known in the state of the art to cover these other 14 colors. So, that's point one. 15 THE COURT: Well, wait a second. I don't 16 understand your -- in the first place, what's the relevance 17 of this quotation from patent number 159? 18 MR. LAWTON: None. 19 MS. MAHANEY: Because Mr. Lawton kept saying that 20 green fluorescent protein was a term of art known to 21 everybody. 22 THE COURT: No, no, he may have said that. I told 23 you, I don't know about that. 24 MS. MAHANEY: Okay. 25 THE COURT: All I'm saying is that the way that -157-

1 the patentee defined the term in this patent is this, and 2 he's entitled to define it any way he wants. 3 MS. MAHANEY: I agree with you, your Honor. 4 THE COURT: And I'm going to honor his definition 5 MS. MAHANEY: This is where we disagree. 6 THE COURT: Well, 159 isn't this patent, so I 7 don't care what the patentee did in 159. He could define a 8 green fluorescent protein as an automobile and it would fly 9 in that patent as an automobile. 10 MS. MAHANEY: Your Honor, if they had said GFP 11 includes all fluorescent proteins of any color, I would 12 agree with you. 13 THE COURT: He did say that. 14 MS. MAHANEY: No, he didn't. What they -- 15 THE COURT: Okay, that's where we disagree. 16 MS. MAHANEY: I know we disagree, your Honor. 17 They said various forms of GFP can exhibit other colors. 18 So, at best, at best, the claim construction should be forms 19 of GFP that exhibit other colors. But, there still -- it 20 still has to be a form of GFP. 21 THE COURT: It has to be a fluorescent protein. 22 That's all it has to be. 23 MS. MAHANEY: But, what is a form? Why do they 24 use those words? 25 THE COURT: It doesn't have to be green. It just -158-

1 has to be a fluorescent protein of any color. If it's any 2 color, it wouldn't be green, I assume. I mean, any color 3 other than green. 4 MR. DIBOISE: That would be -- sorry, your Honor. 5 Any form of -- any color -- 6 THE COURT: Any fluorescent protein -- in this 7 patent, any fluorescent protein is defined as a GFP. 8 MR. DIBOISE: What does the form of GFP mean in 9 the specification, in the definition that you're adopting 10 from their patent? 11 THE COURT: In this patent, GFP means a 12 fluorescent protein that exudes any color. 13 MS. MAHANEY: They could have said it that way, 14 your Honor, but they didn't, and you -- 15 MR. LAWTON: We did say it that way. 16 MR. DIBOISE: Your Honor, I'm just -- leaving 17 aside the technology for a moment, and just dealing with the 18 sentence, we've underlined various forms of GFP. And then 19 it says, "and these." I'm not certain how your Honor gets 20 from "and these" to mean any form of fluorescent protein as 21 opposed to "these" referring to the various forms of GFP. 22 THE COURT: It just seems to apparent from the 23 language that I can't get beyond the language. I mean, 24 apparently, that language doesn't say to you what it says to 25 me, and I can't help that. If I'm misreading it, you will -159-

1 prevail on appeal. But, the way I read this is it says, 2 although the term "GFP" is used, the proteins included 3 within this definition are not necessarily green in 4 appearance. That tells me the GFP doesn't mean it must be 5 green. 6 MR. DIBOISE: No. 7 THE COURT: Okay? 8 MR. DIBOISE: But, we're not disagreeing with that 9 part. 10 THE COURT: Okay, well, then, read on. It says 11 various forms of GFP exhibit colors -- the first sentence 12 has to be considered here. It says -- I'm reading from the 13 patent. By suitable modification, the spectrum of light 14 emitted by the GFP can be altered. Thus, although the term 15 GFP is used in the present application, the proteins 16 included within this definition are not necessarily green in 17 appearance. Various forms of GFP exhibit colors other than 18 green, and these also -- these, too, T-O-O, also, 19 additionally are included within the definition of GFP. So, 20 in other words, even colors that are emitted not by 21 alteration, but perhaps existing in nature, they're also 22 included in the definition, because when they say these 23 various forms of GFP other than the altered forms -- are 24 also included in my definition of GFP. They include 25 every -- he includes every fluorescent protein in the -160-

1 kingdom, no matter what color it emits. 2 MR. DIBOISE: What if you had a yellow -- a 3 naturally occurring yellow fluorescent protein that was 4 modified to fluoresce green? 5 THE COURT: It would be included as GFP, as would 6 its vice versa, one that emits green and it's altered to 7 emit yellow. It's still a GFP. 8 MR. DIBOISE: Right, and just -- 9 THE COURT: And if it's modified to emit blue or 10 red, it's still a GFP. And if it's found in nature, by 11 golly, if we found one in nature, it's a fluorescent 12 protein, but lo and behold, it emits blue. It emits blue. 13 It's a GFP. Here's another one over here. It's found in 14 nature and it emits red. Wow. It's a GFP. Because green 15 is defined as any color, not just green. 16 MR. DIBOISE: Well, there we would disagree 17 because it doesn't define it as any color, other than it can 18 express in a different color because that's what the 19 sentence says. 20 THE COURT: Well, look, I think we're almost a 21 circular DNA here. We're going around and around. And I 22 don't think we're breaking out of the circle. I don't think 23 we're saying anything different. And the only question now 24 is who's right and who's wrong. And as I say, for the 25 moment, at least, I win the battle. But, if you can -161-

1 convince more erudite minds that the other is true, then 2 you'll win the battle, and I'll do whatever I'm told to do. 3 MR. LAWTON: Thank you, your Honor. 4 THE COURT: Okay. All right, now, we've 5 got -- have we got that written down now? 6 MR. LAWTON: I have it, your Honor. 7 THE COURT: Okay. 8 MR. LAWTON: Shall I read it back? I'm sure 9 Mr. Sharp has it. 10 THE COURT: Okay, read it back. 11 MR. LAWTON: I have, a protein that emits colored 12 light when excited by light. 13 THE COURT: Is that the only way you can excite a 14 fluorescent protein is with light? 15 MR. LAWTON: Fluorescence is defined by, among 16 other things, requiring another source of light, some other 17 irradiation to create -- 18 THE COURT: So, your answer is yes. 19 MR. LAWTON: Yes, your Honor. 20 THE COURT: Okay, all right, because it 21 doesn't -- Defendant does say it incident light, but in your 22 first one, you just said upon incidence of an excitation. 23 MR. LAWTON: I think incident is -- it doesn't 24 really add anything. 25 THE COURT: Or you could say, if you wanted to -162-

1 be -- you tried to broader in your writing here than you are 2 now. You narrowed it as the Defendant wants, which is fine 3 with me, a protein that fluoresces in the green -- a protein 4 that fluoresces in, what did we say, in a color? 5 MR. LAWTON: A colored light. 6 THE COURT: A colored light. Well, that's 7 redundant, isn't it? 8 MR. LAWTON: Well -- 9 THE COURT: It fluoresces in a color. 10 MR. LAWTON: What about just that emits colored 11 light, because that's what it -- 12 THE COURT: Okay, upon excitation. 13 MR. LAWTON: Sure, by light, by light. 14 THE COURT: Okay, by light. 15 MS. MAHANEY: It has to be fluorescent, so -- 16 MR. LAWTON: But, that's what fluorescence is. 17 THE COURT: It's a protein that fluoresces -- 18 MR. LAWTON: Which is emitting light, which I 19 think the jury ought to -- emitting light is a little easier 20 to understand than fluoresce. 21 THE COURT: In the presence of excitation. 22 MR. LAWTON: Or when excited by light. 23 THE COURT: Okay, when excited by light. Have you 24 got that, Mark? 25 MS. MAHANEY: Your Honor, their phrasing covers -163-

1 phosphorescence, so we are not willing to accept that. 2 THE COURT: Phosphorescence. 3 MS. MAHANEY: Yes. Why can't 4 we -- phosphorescence, which is not covered by fluorescent 5 proteins. Even if you're going to give them all fluorescent 6 protein, they do not get phosphorescence. 7 THE COURT: Is that phosphate? Is that anything 8 like a cherry phosphate or something in the drug store? 9 What's a phosphorescence? 10 MR. LAWTON: If you had a fluorescent cherry 11 phosphate, that would be something. 12 THE COURT: That would be something. You could 13 drink it at night. It would glow in the dark and then you'd 14 glow. 15 MR. LAWTON: You wouldn't lose it in a power 16 outage. 17 MS. MAHANEY: It's like a glow on your -- you know 18 how some watches glow. That's sort of a phosphorescence. 19 It's just -- 20 THE COURT: Oh, that's a phosphorescence? 21 MS. MAHANEY: It's just a different type of light 22 than fluorescent, so I just want to make sure we don't go 23 even broader. 24 THE COURT: Okay, then, let's say excited by 25 light. How's that? No? -164-

1 MR. LAWTON: I think that says it, your Honor. 2 MR. BOGGS: But, I think phosphorescence occurs 3 when a molecule is excited by light. It's just a much lower 4 energy and delayed emission of light. And therefore, it 5 still emits light, but it's still being excited by light, 6 but its phosphorescence and not fluorescence. That's my 7 understanding. 8 THE COURT: Okay. So, what language should we be 9 using here? 10 MR. BOGGS: We should use the term "fluorescence" 11 within the definition. 12 THE COURT: Okay. A protein that fluoresces? 13 MR. BOGGS: Yes. 14 THE COURT: Okay. A protein that fluoresces in 15 a -- what did you say -- in a color? 16 MR. LAWTON: Fluoresces a colored light. Or we 17 could say fluoresces and then maybe a bracket or a parens, 18 and then emits colored light, close paren. 19 THE COURT: Okay. 20 MR. LAWTON: Because I think they have to be told 21 what fluoresces is. 22 THE COURT: Upon excitation -- 23 MR. LAWTON: When excited by light, or upon 24 excitation by light. 25 THE COURT: Okay, when excited by light. Okay, -165-

1 let's do that. A protein that -- read it again and make 2 sure Mark has it now. A protein that fluoresces, 3 parenthesis, emits light, close -- 4 MR. LAWTON: Or colored light. 5 THE COURT: And emits colored light, close 6 parenthesis, upon -- 7 MR. LAWTON: Upon excitation by light or when 8 excited by light. 9 THE COURT: When excited by light, close bracket. 10 Now, that takes care of that one. Now, we're down to, 11 "whereby the presence of angiogenesis." We did define that, 12 so underline it. (Reading.) Tumor, underline tumor. Is 13 there anything else we want to do with that limitation? 14 MS. MAHANEY: Did we define fluorescent contrast 15 dye, your Honor? 16 THE COURT: Did we define what? 17 MS. MAHANEY: Fluorescent contrast dye? 18 THE COURT: No, I don't recall we did that. Let's 19 define that, fluorescent contrast dye. What does that mean? 20 Wherein said blood vessels contain a fluorescent contrast 21 dye, open bracket, a fluorescent -- what is a dye? Is that 22 like a liquid stain of some kind? 23 MS. MAHANEY: Yes. 24 MR. LAWTON: Yes, your Honor. 25 MS. MAHANEY: It just has to be fluorescent in -166-

1 this case, and the term "contrast" means that it has to be a 2 color that's sufficiently different from the color of the 3 GFP so that it can be seen. 4 MR. LAWTON: Your Honor, the Court may recall from 5 the AntiCancer tutorial some of the images involving blood 6 vessels where the surrounding tissue was green in color and 7 the tumor cells were red in color. Contrast dye is used so 8 that the viewer can tell the difference. That's why 9 contrast dye is used. 10 THE COURT: I don't have any problem with 11 "contrast." So, let's say what the definition of a 12 fluorescent contrast dye is a fluid -- is it? Is it a 13 fluid? Is it a foreign material? 14 MS. MAHANEY: A compound. 15 THE COURT: Is it a foreign injected compound? 16 MS. MAHANEY: Yes. 17 THE COURT: So, it's a foreign compound -- a fluid 18 compound? Is it always liquid? 19 MR. LAWTON: Your Honor, it's injected into the 20 animal. 21 THE COURT: Is it fluid? 22 MR. LAWTON: And it is a fluid. It must be a 23 fluid to be injected. 24 THE COURT: Why don't we say a fluorescent fluid 25 inserted in the mammal which fluoresces with a sufficiently -167-

1 different color than the GFP to enable it to be seen. 2 MR. LAWTON: The dye does have to be in the blood 3 vessels. 4 THE COURT: Yeah. I guess I didn't say that, did 5 I. 6 MR. LAWTON: I think that it already says that. 7 It says, wherein, said blood vessels contain, et cetera. 8 THE COURT: Yeah, that's right. In the claim 9 itself, it says the blood vessels contain. So, we know it's 10 in the blood vessels. 11 MS. MAHANEY: Okay. I thought I heard in your 12 definition that you said "in the mammal." 13 THE COURT: Oh, well, I guess I did say that. 14 MS. MAHANEY: That caused me concern. 15 THE COURT: Well, anyway, fluorescent contrast 16 dye, open bracket -- 17 MR. LAWTON: Well, the blood vessels are in the 18 mammal. 19 THE COURT: -- for a fluid which -- does it have 20 to be excited by light to do it or what? 21 MS. MAHANEY: Yes, your Honor. 22 THE COURT: Okay. A fluid -- a fluorescent fluid 23 that emits a colored light when excited, which differs from 24 the color emitted by GFP fluorescence. First of all, did 25 you get that down? Did you get that down? -168-

1 THE LAW CLERK: Yes, your Honor. 2 THE COURT: Now, the second question is, does 3 anybody want to buy it? 4 MS. MAHANEY: Could we re-read it, your Honor, 5 please? 6 THE COURT: Re-read it, please. 7 THE LAW CLERK: A fluorescent fluid which 8 fluoresces -- or wait a second. A fluorescent fluid which 9 emits a colored light when excited, which differs from the 10 color of light emitted by GFP fluorescence. 11 MS. MAHANEY: A couple problems, your Honor. I 12 think we need to say that it fluoresces, as opposed to 13 saying it emits a color. 14 THE COURT: Okay. 15 MS. MAHANEY: And then, the color does have to be 16 sufficiently different that it can be seen. So, I'm not 17 sure it's enough to say that it's a different color. You 18 know, obviously, a light green and a dark green might be a 19 different color, but you might not be able to see the 20 distinction. 21 THE COURT: So, you want to put the caboose on it 22 so that it can be seen. 23 MS. MAHANEY: Right, in the presence of the -- 24 THE COURT: I agree. I agree with that. 25 MS. MAHANEY: Okay. -169-

1 THE COURT: So, let's add that. So that it can be 2 seen. 3 MR. LAWTON: We like that. 4 THE COURT: Okay, now, back up. Read it again, 5 Marcus. We may have -- we do have -- I think we said 6 fluorescence. Read it. 7 THE LAW CLERK: I'm really not sure what we were 8 changing. I have it, your Honor. I have it. 9 THE COURT: What do you have? 10 THE CLERK: A fluorescent fluid which emits a 11 colored light when excited, which differs from the colored 12 light emitted by GFP fluorescence so that it can be seen. 13 MS. MAHANEY: I thought we were changing "which 14 emits" to "which fluoresces." 15 MR. LAWTON: Your Honor, that's what they wanted, 16 but I don't think that's what your Honor did. 17 THE COURT: Well, I wanted to say it fluoresces. 18 I thought we had fluoresces in there. Read it again just 19 one more time. 20 MR. LAWTON: Well, a fluorescent fluid that emits 21 a colored light when excited -- 22 THE COURT: Well, if it emits a light, wouldn't 23 that be because it's a fluorescent fluid, Ms. Mahaney? 24 MR. LAWTON: Well, the Court's right. 25 THE COURT: Wouldn't that take care of your -170-

1 fluorescence? 2 MR. LAWTON: The fluorescence by definition is 3 emission of light upon excitation by another light. 4 THE COURT: Well, we said it's a fluorescent fluid 5 or a -- what did we say? 6 MR. LAWTON: A fluorescent contrast dye is the 7 defined term, which is defined as a fluorescent fluid that 8 emits a colored light when excited. So, I think to say 9 that, again, it's fluorescing is adding maybe a second layer 10 of redundancy. 11 THE COURT: Well, if it's a fluorescent fluid, 12 then, the light it emits is a fluorescent light, I think. 13 MS. MAHANEY: That's okay, your Honor. 14 THE COURT: Okay. Do you have that down, Mark? 15 THE LAW CLERK: Could I hear it one more time, 16 please? 17 THE COURT: Yeah. 18 MR. LAWTON: A fluorescent fluid that emits a 19 colored light when excited, which differs from the colored 20 light emitted by GFP fluorescence so that it can be seen. 21 THE COURT: Okay, now, we're down to angiogenesis. 22 We've underlined that. Is there anything else? And we 23 underlined "tumor." Is there anything else to do on that 24 limitation? 25 MR. LAWTON: I don't think so. -171-

1 THE COURT: Let's go on. Now, we're on Page 31. 2 Wherein said subject has been administered sic. I wonder 3 how you got sic. Wherein said subject has been 4 administered, said contrast dye by intravenous injection. 5 Is there some defect in that sentence that they wrote sic in 6 there? Wherein said subject has been administered said 7 contrast dye by intravenous injection. What's wrong with 8 that that they put sic in there? 9 MR. BOGGS: I think the -- excuse me, your Honor. 10 THE COURT: Yeah. 11 MR. BOGGS: I think the patent claim as published 12 doesn't use the word "administered." I think an "n" is left 13 out. 14 THE COURT: Oh, I see, I see. Oh, thank you. 15 Let's take a look at that. What claim is this? Is this 16 still 1? 17 MR. LAWTON: Yes, your Honor. 18 (Pause.) 19 THE COURT: Does anybody know where it is in the 20 patent? Is it Column 12 or what? 21 MS. MAHANEY: Column 12, line 9. 22 THE COURT: Wherein said subject has been 23 administered -- oh, I see, admistered (sic). I see, 24 admistered, sure. It's typographical. All right. And no 25 problem with the changing of it, is there? No problem with -172-

1 that? 2 MS. MAHANEY: No, your Honor. 3 THE COURT: Okay. Wherein said subject has been 4 administered said contrast dye by intravenous injection. 5 Does anybody need to define any of the terms there? Is that 6 okay as is? 7 MS. MAHANEY: I suppose the only possibility would 8 be intravenous injection, although I assume most people 9 would know that means within the veins. 10 THE COURT: Yeah, I would think so, too. IV's are 11 very common. You can't watch television for an hour without 12 running into some IV's. At least, our jury will watch TV. 13 I can guarantee that. 14 MS. MAHANEY: I believe that, too, your Honor. 15 THE COURT: Okay, well, let's leave this one as 16 is. That's okay? 17 MS. MAHANEY: That's okay. 18 THE COURT: All right. Now, we go on. Page 33. 19 Wherein said solid tumor -- we can underline solid 20 tumor -- that expresses GFP -- underline GFP -- has been 21 obtained by a method which comprises -- underline 22 comprises -- providing a tumor cell line -- underline tumor 23 cell line -- comprising -- underline comprising -- an 24 expression system. Well, we'd better underline and define 25 expression system, and then underline GFP. What do we want -173-

1 to say about -- what? 2 THE LAW CLERK: Are we underlining tumor cell line 3 or just tumor in that line about -- 4 THE COURT: Well, did we ever use tumor cell line 5 in this patent, or that was in the other patent. 6 MR. LAWTON: We used stably transformed tumor cell 7 line. 8 THE COURT: In the other patent. 9 MR. LAWTON: But, subsumed within -- yes, your 10 Honor. 11 THE COURT: Well, why don't we define tumor cell 12 line here. So, let's define it now. Tumor cell line. Have 13 you folks submitted something by agreement? I don't see 14 anything. What do you want to do with tumor cell line? 15 MR. LAWTON: There are competing constructions set 16 forth, your Honor, in the middle column and the column to 17 the right, and I'm trying to isolate the part that just 18 relates to tumor cell line. 19 MS. MAHANEY: Your Honor, there's no disagreement 20 as to the meaning of tumor cell lines. 21 THE COURT: And what would you say it should be? 22 MS. MAHANEY: I think it should be what we used in 23 Claim 1 of the 523, which was a -- 24 MR. LAWTON: That's a stably transformed tumor 25 cell line. -174-

1 MS. MAHANEY: If you'd let me finish. 2 THE COURT: It appeared once without the stably, I 3 think, didn't it? 4 MS. MAHANEY: In the 523 -- 5 THE COURT: Oh, no. Stably transformed tumor cell 6 line, yeah. 7 MS. MAHANEY: We defined tumor cell line apart 8 from stably transformed. 9 THE COURT: Where did we do that? 10 MS. MAHANEY: Page 1. 11 THE COURT: And what did we say tumor cell line 12 was? 13 MS. MAHANEY: A population of cells derived from a 14 tumor that can proliferate indefinitely in culture. 15 THE COURT: That's right. Do you like that? 16 MR. LAWTON: No objection, your Honor. I think, 17 earlier, we thought proliferate might be kind of a 50-cent 18 word for multiply or reproduce. 19 THE COURT: Well, why don't we change that to 20 reproduce? Would you go along with that? 21 MR. LAWTON: I think that's what we settled on the 22 first time. 23 THE COURT: Ms. Mahaney, how about changing 24 proliferate to reproduce? 25 MS. MAHANEY: No objection. -175-

1 THE COURT: Okay, and other than that, we can go 2 with that, can't we? So, in the new patent, 968, 3 let's -- after solid tumor, let's say, bracket, a population 4 of cells derived from a tumor -- wait a second. I'm on the 5 wrong one. We're defining tumor cell line. 6 MR. LAWTON: That's what I thought we were doing, 7 your Honor. That's all right. 8 THE COURT: I'm sorry, I apologize for that. 9 Tumor cell line, bracket, a population of cells derived from 10 a tumor that can reproduce indefinitely in culture, close 11 parenthesis. Then, we want to define expression system. 12 What do you want to say about that? 13 MR. LAWTON: A system for producing GFP, and it 14 looks like both sides may agree on that phrase based on just 15 isolating those parts of their competing claim 16 constructions. 17 THE COURT: Where would I find that? 18 MR. LAWTON: To the right, the middle column and 19 the column to the right of that, the first sentence below 20 the defined term in the middle column. 21 THE COURT: What page are you on? Are you on the 22 spreadsheet? 23 MR. LAWTON: Yes, your Honor. 24 THE COURT: What page are you on? 25 MR. LAWTON: IT's my page 32. It's at the same -176-

1 level of the defined term in the far left column. It might 2 be the Court's Page 33. 3 THE COURT: Oh, I see. Expression system. So, 4 what's the part of it that defines expression system? 5 MR. LAWTON: The end of the sentence in the middle 6 column under the defined term says, having a system for 7 producing GFP. 8 THE COURT: Oh, so, you'd say expression system is 9 a system for producing GFP? 10 MR. LAWTON: Yes, your Honor, and Xenogen's 11 language is strikingly similar. The last phrase of its 12 proposed construction says having a system for producing 13 GFP. So, it's verbatim, those two -- 14 THE COURT: So, should we go with that? 15 MS. MAHANEY: Yes, we don't disagree. 16 THE COURT: Okay, good. So, expression system, 17 open bracket, having a system for producing GFP. 18 MR. LAWTON: Thank you, your Honor. 19 THE COURT: Okay, and I guess that's it for that 20 page, isn't it? 21 MR. LAWTON: I think so, your Honor. 22 THE COURT: So, now, we're on page 34. Injecting 23 a second mammalian subject which is genetically -- let's 24 underline genetically immuno-compromised. Underline that. 25 Or underline syn -- -177-

1 MR. LAWTON: Syngeneic? 2 THE COURT: Syngeneic. Underline that. With said 3 tumor cell line, underline tumor cell line. Subcutaneously. 4 Now, that means under the table, isn't that right? 5 MR. LAWTON: Under the skin. 6 THE COURT: Under the skin, okay. Sub rosa is 7 under the table, that's right. Do you know what sub rosa, 8 what the origin of that is? I thought it was kind of 9 interesting. I suppose somebody knows. Does somebody know? 10 It's a mafia -- I think it's a mafia expression, and it 11 means, under the rose. They would have a rose on the table, 12 and they would plot and be very secret what they say. It's 13 under the rose, and it meant secret and confidential, and it 14 comes from the fact that they did it in an environment where 15 there was a rose and they did it underneath the rose. I 16 think that's the origin of it, sub rosa. That's your 17 unessential fact for the day. 18 Okay, we don't need to define subcutaneously, do 19 we, or do we? 20 MS. MAHANEY: I think we should, your Honor. I'm 21 not sure if people would know that word. 22 THE COURT: Would you go along with, bracket, 23 under the skin or beneath the skin, just beneath the skin? 24 How about that? Just beneath the skin. 25 MS. MAHANEY: Yes, we like that, your Honor. -178-

1 THE COURT: Okay, you like that, Mr. Lawton? 2 MR. LAWTON: Yes, your Honor. 3 THE COURT: Okay, that's what it will be. Just 4 beneath the skin. And with said cell line. Do we need to 5 define cell here. It's the first time we've seen it alone, 6 isn't it? Or cell line? 7 MS. MAHANEY: I think we just defined cell line 8 the previous page. 9 THE COURT: So, let's just underline it, then. To 10 convert said cell line -- underline it again -- to a 11 subcutaneous -- underline it -- tumor -- underline that. 12 Now, have we defined tumor in this patent? 13 MS. MAHANEY: Yes. 14 THE COURT: That's all we need to do there, isn't 15 it? 16 THE LAW CLERK: Your Honor? 17 THE COURT: What? 18 THE LAW CLERK: Are we using the same definitions 19 for genetically immuno-compromised in this patent? 20 THE COURT: Yes. Oh, we haven't defined it in 21 this patent yet? 22 THE LAW CLERK: No. 23 MR. LAWTON: I think we defined it in the 523, 24 your Honor. 25 THE COURT: Can we go with that definition in this -179-

1 patent? 2 MS. MAHANEY: Yes, your Honor. 3 MR. LAWTON: We have no objection. 4 THE COURT: Use the same definition that we used 5 in the other patent. 6 THE LAW CLERK: Okay, I think -- 7 THE COURT: Same with syngeneic? 8 MS. MAHANEY: Yes. 9 MR. LAWTON: No objection, your Honor. 10 THE LAW CLERK: We didn't define syngeneic. 11 THE COURT: Didn't we? 12 MS. MAHANEY: In the 523, we did, though. 13 THE COURT: I thought we did. 14 THE LAW CLERK: No, we didn't. We did syngeneic 15 with said tumor. 16 MS. MAHANEY: You're correct, you're correct. 17 MR. LAWTON: That's right. 18 THE COURT: What did we say? 19 THE LAW CLERK: We defined syngeneic with said 20 tumor. 21 THE COURT: Oh. 22 MR. LAWTON: Rather than syngeneic in isolation. 23 THE COURT: Well, then, let's define it in 24 isolation. Syngeneic comes from the same -- 25 MS. MAHANEY: But, it appears here in the same -180-

1 phrase, syngeneic with said tumor. 2 MR. LAWTON: We had an agreed definition for 3 syngeneic in the agreed column in the 523. Maybe we could 4 just borrow that, because that was for the word in 5 isolation. Relating to genetically identical individuals. 6 That was an agreed on Page 22 in the 523. 7 THE COURT: Okay. Relating to identically -- 8 MR. LAWTON: Relating to genetically identical 9 individuals. 10 MS. MAHANEY: Your Honor, we agreed to that 11 definition, but I'm concerned about the context here. What 12 has to -- who has to be genetically identical to what. And 13 in here, the cell line has to be from a source that's 14 genetically identical to the subject. So, I think that 15 needs to be explained to the jury, because I'm not sure 16 they're going to understand it out of context. 17 MR. LAWTON: How about from a genetically 18 identical source? Does that work? 19 THE COURT: Relating to -- relating to material? 20 What did you say? Relating to what? Material from -- 21 MR. LAWTON: No, just from a genetically identical 22 source. 23 THE COURT: The sentence is, a subject which is 24 genetically syngeneic, and you want to say that that means a 25 subject which is syngeneic with -- and then it follows with -181-

1 "with said tumor." So, it would be subject -- relating to a 2 subject which is genetically identical to the tumor cell 3 line. Isn't that what we're doing? 4 MR. LAWTON: I think it modifies -- your Honor, I 5 think the language "genetically immuno-compromised 6 syngeneic" modifies subject, mammalian subject. 7 THE COURT: But, it's got to be syngeneic with 8 something. And the "with" is the tumor cell line, isn't it? 9 MS. MAHANEY: Right, the subject. 10 THE COURT: The subject has to be the same as the 11 tumor cell line, right? 12 MS. MAHANEY: Right. 13 THE COURT: Well, it says now, syngeneic, bracket, 14 relating to subject which is genetically identical to the 15 tumor cell line. 16 MS. MAHANEY: I think that's okay. 17 THE COURT: Can I -- do you want me to say it 18 again, Mr. Lawton? Do you want to hear it again? 19 MR. LAWTON: I've got it, your Honor. 20 THE COURT: Okay, do you agree with it? 21 MR. LAWTON: Yes, your Honor. 22 THE COURT: Okay, is there anything else on that 23 page? 24 MR. LAWTON: Not that I can think of, your Honor. 25 THE LAW CLERK: I'm sorry, your Honor. I didn't -182-

1 catch what the final -- 2 THE COURT: Okay. After the word "syngeneic," 3 open bracket, relating to a subject which is genetically 4 identical to the tumor cell line. 5 THE LAW CLERK: Thank you, your Honor. 6 THE COURT: Close bracket. Okay, now we're on 37. 7 Surgically implanting said subcutaneous -- underline 8 subcutaneous, underline tumor -- into said first mammalian 9 subject, which is genetically immuno-compromised, 10 underlined, or syngeneic, underline, with said tumor cell 11 line, underline, in a location orthoptic (sic). 12 MR. LAWTON: Orthotopic, your Honor? 13 THE COURT: Orthotopic. Yeah, orthotopic. What's 14 the sic. Let's see what the -- 15 MR. LAWTON: I'll just check, your Honor. 16 MS. MAHANEY: It's at Column 12, line 22. It's 17 another typo. 18 MR. LAWTON: It is a typo, your Honor. It's 19 spelled -- 20 THE COURT: It's orhotopic. I see it. Orhotopic, 21 yeah, I see, okay. So, the real word is orthotopic, right? 22 MR. LAWTON: Yes, your Honor. 23 THE COURT: And we've underlined that because 24 we've defined it, haven't we, or have we? No. 25 MS. MAHANEY: I don't think we have. -183-

1 THE COURT: We haven't. 2 MS. MAHANEY: We defined surgical -- 3 MR. LAWTON: Surgical orthotopic implantation. 4 THE COURT: Well, what is orthotopic? 5 MS. MAHANEY: It's the same meaning. It's at the 6 site from which the cells were derived. So, you're talking 7 about a location where you're going to implant this tumor 8 and you're going to put it in at the site from where the 9 cell line, the tumor cell line was derived. You remember 10 the example of there was a lung tumor, you would implant it 11 at the lung. If there was a liver tumor, you'd put it in at 12 the liver. So, it just refers to the location. 13 THE COURT: Okay, so, you -- they're going to 14 implant it into the mammal in a location orthotopic to said 15 tumor cell line. So, it means -- orthotopic means near. 16 MS. MAHANEY: No, it means "at." You can see it 17 in the agreed column. It means, at the site from which the 18 tumor cells were derived. 19 THE COURT: Okay, at the site of, or at the site? 20 It's followed by a "to." 21 MS. MAHANEY: Maybe you want to define it, then, 22 after -- maybe define the whole phrase then? You could 23 define in a location orthotopic to said tumor cell line as 24 meaning at the site from which the tumor cells were derived. 25 THE COURT: What if we used the term "close"? -184-

1 Then, it would be, at a location orthotopic, bracket, close, 2 close bracket, to said tumor cell line? 3 MS. MAHANEY: No, it's -- 4 THE COURT: Has it really got to be right there at 5 the very spot? 6 MS. MAHANEY: Yes, and that was agreed to by the 7 parties. 8 MR. LAWTON: Taking a liver tumor out of the liver 9 and then surgically implanting it back to that same location 10 where it came from, where it came from in the first place. 11 THE COURT: Okay. 12 MS. MAHANEY: If you remember, you're growing the 13 tumor in one mammal, then taking it out and putting it into 14 another mammal. 15 THE COURT: And you're going to put it in the same 16 place in the second mammal, the same place that you took it 17 out of the first mammal. Okay. All right, well, in a 18 location -- 19 MR. LAWTON: Maybe from the same or from the 20 corresponding organ in the second mammal. Thinking out 21 loud. 22 THE COURT: We could say identical. 23 MR. LAWTON: Or in the same place. 24 THE COURT: That might work. 25 MS. MAHANEY: What's important is where the tumor -185-

1 cell line was derived. 2 MR. LAWTON: Does "in the same place" do it? 3 THE COURT: In the same place to said tumor cell 4 line? Would that fly? 5 MS. MAHANEY: You're going to put that after 6 orthotopic? 7 THE COURT: Yeah. 8 MS. MAHANEY: Say that again, please? 9 THE COURT: In the same place. 10 MS. MAHANEY: From where the tumor cells were 11 derived. 12 THE COURT: Yeah, it says, follows by said tumor 13 cell line. 14 MS. MAHANEY: I don't know if that would -- if 15 that would explain it enough, your Honor. 16 THE COURT: The "to" is what gives us a problem. 17 MS. MAHANEY: Yes. 18 THE COURT: Maybe we should follow your suggestion 19 and say, underline, in a location, underline, location 20 orthotopic to said tumor cell line, and the whole thing 21 means located at the same place as the tumor cell line is 22 located. 23 MS. MAHANEY: Well, were derived from, because 24 they're no longer located there. 25 THE COURT: Oh, same place as -- the same place -186-

1 that the tumor cell line was removed. Is that what you 2 mean? 3 MS. MAHANEY: No, derived really needs -- 4 THE COURT: Derived. What's that mean, derived? 5 Okay, was derived, okay. 6 MS. MAHANEY: The problem is there's a whole bunch 7 of -- you grow these tumor cell lines -- 8 THE COURT: It may not have been removed. 9 MS. MAHANEY: Right. 10 THE COURT: Some of it may have been, but not all 11 of it. 12 MS. MAHANEY: And it might have been grown in 13 culture, too, and so -- 14 THE COURT: So, we'll say "derived," okay. 15 MS. MAHANEY: Thank you. 16 THE COURT: Does that work? We've got the whole 17 location. The expression is, location orthotopic to said 18 tumor cell line, open bracket, located in or at -- at the 19 same place that the tumor cell line was derived. 20 MR. LAWTON: From which the tumor cell line was 21 derived? 22 THE COURT: Same -- at the same place from which. 23 Yeah, that's okay, that's good. 24 MR. LAWTON: Thank you, your Honor. 25 THE COURT: From which the tumor cell line was -187-

1 derived. Is that okay? 2 MS. MAHANEY: Yes, your Honor. 3 THE COURT: All right, have you got that, Mark? 4 THE LAW CLERK: Yes, your Honor. 5 THE COURT: All right. Page 44. We don't need to 6 do anything with that one. That's as is, okay. Wherein 7 said tumor, underline tumor, is endogenous, underline that. 8 Have we defined it yet? 9 MR. LAWTON: I don't believe so, your Honor. 10 THE COURT: Endogenous to said first mammalian 11 subject. Local? 12 MS. MAHANEY: Originated within that mammal. How 13 about originated? 14 THE COURT: It's just the tense that's -- 15 MS. MAHANEY: Oh, I see. 16 THE COURT: Tense is a little bit of a problem. 17 How about originally located? 18 MR. LAWTON: Produced -- produced by -- 19 MS. MAHANEY: The problem -- 20 THE COURT: Originally produced. 21 MR. LAWTON: Produced by the organism? Produced 22 by the mammalian subject? That's literally what endogenous 23 means in that context. 24 MS. MAHANEY: I suppose we're more comfortable 25 with the originated within the first mammal. -188-

1 THE COURT: Well, once again, the "to" gives us a 2 little bit of a problem. Originated, endogenous. 3 Originated to first mammalian subject. Tumor is endogenous. 4 Tumor is originated. Tumor is original or -- 5 MR. LAWTON: Produced by. Produced by the 6 subject. 7 THE COURT: Okay, let's underline "endogenous to" 8 and open the bracket and say "produced by." Then, it will 9 read okay because you can say, wherein said tumor is 10 produced by said first mammalian subject and has been 11 modified to express, and so forth. Instead of saying 12 endogenous to the first mammalian, we say produced by first 13 mammalian subject. How's that? 14 MR. LAWTON: It's synonymous. That's what it 15 means. That's a correct definition. 16 MR. DIBOISE: Your Honor, endogenous -- somehow 17 the meaning of "endogenous" has to be that it arose in the 18 mammal that we're discussing. If you say, produced by the 19 animal, that also implies a subcutaneous inoculation of a 20 tumor cell line which produces a mammal -- which produces a 21 tumor. 22 THE COURT: How about grown by? 23 MS. MAHANEY: But it could be -- it could be grown 24 by as a result of a foreign gene being inserted into the 25 animal. Endogenous means it actually has to have come from -189-

1 the animal without any outside interference. 2 THE COURT: How about naturally grown by? 3 MS. MAHANEY: I think that works. 4 THE COURT: Well, good. Okay. Open bracket, 5 naturally -- 6 MR. LAWTON: What about transgenes introduced into 7 an embryo, though, your Honor? Like when AntiCancer 8 produces a transgenic mouse like the green mouse that we 9 saw. And the Court will recall Doctor Hoffman's explanation 10 of how that mouse is born -- born green, by first 11 introducing a transgene into the embryo of the mouse. So -- 12 MS. MAHANEY: That was artificially added. 13 THE COURT: Well, if we took an organ from that 14 mouse, wouldn't that be -- 15 MR. LAWTON: I'm sorry, your Honor? 16 THE COURT: If we took an organ from that mouse, 17 wouldn't that be an organ that naturally originated there or 18 something? 19 MR. LAWTON: Yes, despite the transgenic -- is 20 what we would -- is how we would interpret. I'm not sure if 21 there's agreement. 22 THE COURT: Let's -- first of all, let's start 23 with the language -- we jumped into accepting it or 24 rejecting it before I wrote the language down. 25 MS. MAHANEY: Okay. -190-

1 THE COURT: And the language we started with was, 2 naturally -- what did we say? Naturally -- 3 MR. KRACHT: Grown by. 4 THE COURT: -- grown by. Now, that's the language 5 we liked, was it? 6 MS. MAHANEY: We were okay with that, yes. 7 THE COURT: Okay. Now let's talk about it. You 8 don't think that would fit an embryonic gene transplant 9 situation? 10 MR. LAWTON: We think it would. We think it 11 would. 12 THE COURT: So you're happy with it? 13 MR. LAWTON: As long as it's understood that it 14 would comprehend that situation. 15 MS. MAHANEY: No, it should not comprehend that 16 situation. 17 THE COURT: Okay. 18 MS. MAHANEY: Endogenous means it originates 19 naturally within that mammal. It cannot -- 20 THE COURT: Well, then why don't we say naturally 21 originates in said first mammalian subject. Naturally 22 originates in. Naturally originates in would rule out a 23 transgenic implant in embryo. 24 MS. MAHANEY: Yes. 25 THE COURT: Because that would not be naturally -191-

1 originating in. So do you like naturally originating in? 2 MS. MAHANEY: Yes. 3 THE COURT: Do you like that? 4 MR. LAWTON: No, your Honor, because it excludes 5 the introduction of transgenes into a mouse by the method 6 that Doctor Hoffman described yesterday. That mouse, when 7 it's born, is who he is. And if after that that mouse 8 suffers a tumor, that tumor is endogenous. And what 9 happened before that mouse was born in the embryo should be 10 considered endogenous to that mouse. 11 THE COURT: It doesn't deprive endogenicity. 12 MR. LAWTON: Yes, your Honor. And there's 13 nothing -- 14 THE COURT: I thought that at first too. 15 MR. LAWTON: -- in the definite -- 16 THE COURT: I thought that at first too, and Ms. 17 Mahaney immediately and emphatically said, absolutely not. 18 Why did you say that? 19 MS. MAHANEY: What did I say, absolutely not? 20 THE COURT: Why did you say that? 21 MS. MAHANEY: To what? 22 THE COURT: Why did you reject an example of 23 endogenicity which was where there was an in-embryo 24 implantation of a gene, transgene implant put into the 25 embryo of the mouse? And the embryo matured and was born as -192-

1 a mouse. And you said that that meant that that organ that 2 received the transgene injection couldn't be endogenous. 3 Why did you say that? 4 MS. MAHANEY: Because endogenous means something 5 that's original to the mouse. It cannot be something that's 6 implanted. It cannot be something that's the result of a 7 transgene or a foreign gene. It's something that naturally 8 originates within the animal. 9 MR. LAWTON: There is nothing in the definition of 10 "endogenous" anywhere that says it has to be naturally 11 occurring. They keep using this word "natural." I have 12 never detected that word in any definition of "endogenous." 13 Endogenous means produced within, yielded by the organism. 14 And if a mouse is born green, what's in him when he's born 15 or the color of his skin when he's born is endogenous to 16 him, irrespective of what happened when he was an embryo. 17 MS. MAHANEY: We're talking about a tumor here. 18 We're not talking about green. We're talking about a tumor 19 being endogenous. Okay. If the mouse, who is green, grows 20 a tumor and it originates within that tumor and it's not the 21 result of this GFP insertion, then that would be endogenous. 22 But your Honor, we agreed to a definition to 23 "endogenous" that it had to originate within the mammal. So 24 I don't quite understand -- 25 THE COURT: I think the question is, when does the -193-

1 mammal originate? Isn't that the question? Does the mammal 2 originate when the sperm initially impregnates an egg or can 3 it still originate when -- later, after that event happens 4 and while the egg is dividing and starting into making an 5 embryo, they enter trans -- trans something a gene, trans -- 6 MR. LAWTON: Transgenic? 7 THE COURT: Transgene. What does it mean? You 8 inject a gene into the embryo. 9 MR. LAWTON: Yes, your Honor. 10 THE COURT: And that's before birth. Now, is that 11 animal -- at birth, is that going to have any endogenous 12 organs? Have you got any technical discussion that supports 13 your opposition to this? 14 MS. MAHANEY: Well, I thought we had agreed -- 15 THE COURT: Look to your left. You might have 16 some there. 17 MS. MAHANEY: Yeah. I mean, I thought we had 18 agreement on this. 19 THE COURT: No. Just you and I had an agreement. 20 He didn't. 21 MS. MAHANEY: Yeah, apparently. This is from 22 Dorland's Illustrated Medical Dictionary. Endogenous, 23 growing from within, developing or originating within the 24 organism or arising from causes within the organism. 25 THE COURT: Of course, that doesn't -- that -194-

1 assumes what we're trying to answer. It assumes the 2 question. The question is, is it originating with the 3 animal? When the animal is born, it's there, but it was 4 planted in the animal when it was an embryo. 5 MS. MAHANEY: I'm not sure that's what Mr. Lawton 6 was saying. Was he saying that the tumor was implanted into 7 the embryo? 8 THE COURT: No. He's saying a gene, a transgene. 9 Aren't you saying a gene was put into the embryo? 10 MR. LAWTON: Yes, your Honor. 11 THE COURT: You're not saying a tumor was put in 12 there. 13 MR. LAWTON: No, your Honor. 14 THE COURT: No. If the tumor was put in there, I 15 would agree with you. I don't care how far before birth it 16 was. If you took a foreign tumor and put it into the egg of 17 the mouse, it would not be endogenous to the mouse. 18 MS. MAHANEY: Right. 19 THE COURT: I agree with that. 20 MS. MAHANEY: Okay. 21 THE COURT: But he just said that he would think 22 that the mouse is 100-percent endogenous if it contained a 23 gene that was put into the embryo while it was still an egg 24 and before it was born. Once it's born, everything inside 25 the mouse would be endogenous to the mouse, including the -195-

1 gene that was put into the egg. 2 MS. MAHANEY: So what is the proposed definition 3 that we have now? 4 THE COURT: Basically very similar to what you 5 just read me from that medical dictionary -- 6 MS. MAHANEY: Okay. 7 THE COURT: -- which is, naturally originates in. 8 That's endogenous. Naturally originates in. 9 MR. LAWTON: Well, your Honor, we're back to 10 "naturally" and what that means. Does that include or 11 exclude -- 12 THE COURT: Oh, I see. Well, then you would just 13 rather say, originates in. Endogenous originates in. 14 MR. LAWTON: Yes, your Honor. 15 THE COURT: Well, why don't you get that 16 definition from the book out one more time because I heard 17 one of those things she read that sounded pretty close to 18 what we want. 19 MR. LAWTON: Your Honor, do counsel object if I 20 look on with them on Dorland's? 21 THE COURT: I don't know. Ask them. 22 Can he look over your shoulder at the book? 23 MS. MAHANEY: You don't trust us to read it 24 correctly? 25 MR. LAWTON: No. Of course I do. I just -- I -196-

1 process information better visually. 2 MS. MAHANEY: We didn't ask to read over your 3 shoulder when you read all those dictionary definitions. 4 MR. LAWTON: You can. You can if you want. 5 MR. DIBOISE: So Judge, over the years, has it 6 changed? 7 THE COURT: I'm sorry? 8 MR. DIBOISE: Has it changed over the years? 9 THE COURT: Well, I don't know. Whenever a woman 10 wanted to look over my shoulder, I never objected to it, and 11 I don't remember any woman objecting if I wanted to look 12 over her shoulder. 13 MR. DIBOISE: I meant more generically about 14 counsel. 15 THE COURT: Oh, I see. 16 MR. LAWTON: Growing from within is the primary 17 definition that Dorland's supplies, and we would have no 18 objection to that. It seems to emanate from a source that 19 should be noncontroversial. 20 THE COURT: Well, now, would you please give the 21 book back to Ms. Mahaney. 22 MR. LAWTON: Ms. Nguyen now is involved in this. 23 THE COURT: You have a woman looking over your 24 shoulder. 25 MR. LAWTON: Well, we have -- -197-

1 MS. NGUYEN: I'm sorry, your Honor. 2 THE COURT: Don't be sorry. 3 MR. LAWTON: It hardly ever happens. 4 MS. NGUYEN: I think we should take both the 5 definitions, one and two, developing or originating within 6 the organism. 7 THE COURT: I can't hear what you're saying. 8 You're going to have to use the mic. 9 MS. NGUYEN: I think -- your Honor, I think we 10 should take, developing or originating within the organism 11 or arising from causes within the organism, which is the 12 definition that we read to you and that you liked. 13 THE COURT: I like that too. Yeah. Let's go with 14 that. 15 MR. LAWTON: It seems like they're trying to 16 preserve or set up an argument that -- 17 THE COURT: Well, I don't know what they're trying 18 to set up, but it does seem like an appropriate -- 19 MR. LAWTON: Well, your Honor, if we're going to 20 use Dorland's -- 21 THE COURT: Read it again. Read it again. 22 MR. LAWTON: If we're going to use Dorland's, why 23 not use the primary definition. 24 THE COURT: Read it again. 25 MR. LAWTON: Growing from within. -198-

1 THE COURT: What does the other one say? 2 MR. LAWTON: Developing or originating within the 3 organism or arising from causes within the organism. 4 THE COURT: What is meant by "arising from causes 5 within the organism"? That would be, for example, a tumor 6 that grew in the organism. 7 MS. MAHANEY: Right. You know, resulting 8 from however tumors arise. 9 THE COURT: Yeah. And that might -- that might 10 not have been there originally. I mean, the person could 11 have been 50 years old before the tumor arose. It would 12 still be endogenous, wouldn't it? The tumor. 13 MS. MAHANEY: Right. And we're focusing on the 14 tumor being endogenous. That's what's important here. 15 THE COURT: Exactly. Exactly. Well, then that's 16 a better definition because it allows for something that 17 came into your body -- I mean, that grew in your body after 18 you were born, such as a tumor. If you developed a tumor, 19 it would be endogenous to you, even though it wasn't there 20 when you were born. It wasn't originally there. 21 MR. LAWTON: What about something before you were 22 born, when you were in utero? 23 MS. MAHANEY: We're talking about a tumor. I'm 24 not sure -- 25 MR. LAWTON: Well, a transgene can cause a tumor. -199-

1 THE COURT: Well, the tumor is what we're focusing 2 on, not the transgene. If the cause of it is something from 3 within the body, it's endogenous. 4 MS. MAHANEY: But if it's -- 5 MR. LAWTON: Even though the original cause may 6 have been transgenic or implantation of a transgene into an 7 embryo before the birth of the mammal. 8 THE COURT: Yeah. I think -- I think we focus on 9 endogenicity, it seems, when the problem comes up, not past 10 history of what might have caused it. I mean -- yeah, I 11 don't -- I think it would still be endogenous. I'm not an 12 expert. I suppose you ask the expert. But if a person was 13 born who had had a transgene, and then from then on in its 14 life it developed a tumor, that dictionary would say it's 15 endogenous. 16 MR. LAWTON: We agree. 17 THE COURT: All right. Well, read the letter -- 18 read the language of the longer language. 19 MR. LAWTON: Yes, your Honor. Developing or 20 originating within the organism. 21 THE COURT: Hold it. Developing or originated -- 22 MR. LAWTON: Within the organism, comma. 23 THE COURT: Wait a second. Within the organism. 24 MR. LAWTON: Comma. 25 THE COURT: Comma. -200-

1 MR. LAWTON: Or arising from -- 2 THE COURT: Or arising from. 3 MR. LAWTON: -- causes within the organism. 4 THE COURT: Causes within the organism. Let's go 5 with that. 6 MR. LAWTON: Very well, your Honor. 7 THE COURT: Have you got that, Marc? 8 THE LAW CLERK: That is the definition for 9 "endogenous to"? 10 THE COURT: Yes, "endogenous to." 11 THE LAW CLERK: Okay. 12 THE COURT: And it'll be, developing or 13 originating within the organism or arising from causes 14 within the organism, closed bracket. 15 Reading on, we can underline "GFP," "comprises." 16 Do you want to say anything for "infecting" or just leave 17 that alone? Infecting. Do you need to define that, do you 18 think, Ms. Mahaney? Of course, comprises just means 19 includes, but not limited to, infecting the tumor. So 20 "infecting" doesn't have to cover all kinds of intrusion or 21 insertion. It just -- it's just one because it comprises. 22 You notice it says "comprises infecting." There may be some 23 other ways to invade an endogenous tumor other than 24 infecting it. 25 MS. MAHANEY: But "infecting" goes together with -201-

1 the retro-viral vector, which is on the next page. 2 THE COURT: Okay. But it says, "comprises" -- 3 right before "infecting," it says "comprises." 4 MS. MAHANEY: Right. So you could have -- 5 THE COURT: Which means including, but not limited 6 to infecting. So all I'm saying is, do we need to define 7 "infecting"? 8 MS. MAHANEY: I'm not sure you do by itself, but 9 when you get to retro-viral vector -- 10 THE COURT: Well, okay. We're infecting the 11 tumor, the endogenous tumor, contained in said first 12 mammalian subject with a retro-viral vector -- we'll 13 underline that -- derived from P-L-E-I-N -- we'll underline 14 that -- and comprising an expression system -- underline 15 "expression system" -- for said GFP -- underline that -- by 16 injecting said vector locally to said tumor. 17 So my first question is, can we leave "infecting" 18 as is? We're going to infect it by injecting. We're going 19 to infect it with the first -- with the retro-viral vector 20 by injecting it. We're going to infect by inject. 21 MS. MAHANEY: Correct. 22 THE COURT: Do you need to define either of those 23 terms, "infecting" and "injecting"? 24 MS. MAHANEY: You know, I don't think so, your 25 Honor. -202-

1 THE COURT: I don't either. 2 Do you agree, Mr. Lawton? 3 MR. LAWTON: We agree. 4 THE COURT: Okay. So I don't see anything new. 5 Is there anything -- yeah, pLEIN. We have to define P-L-E- 6 I-N, right? 7 MS. MAHANEY: I don't know if we've defined 8 "retro-viral vector." 9 THE COURT: Oh, haven't we done that yet? We did 10 that in the other patent, didn't we? It looks familiar to 11 me. What? 12 MR. LAWTON: The language is familiar, your Honor. 13 THE COURT: It sounds familiar to me. Retro-viral 14 vector. Was that in our circular DNA chart on the wall? 15 You remember that tutorial, circular DNA? Is that where we 16 say retro-viral vector? 17 MS. MAHANEY: Yes. It was on that slide, although 18 I feel like it came up before because we were talking about 19 defining viruses and we decided not to. 20 THE LAW CLERK: In the last one, we did define 21 "virus." 22 MS. MAHANEY: Oh, we did? 23 THE LAW CLERK: We defined "virus" and we defined 24 "viral promoters." 25 MS. MAHANEY: Oh, it was "viral promoter." -203-

1 THE LAW CLERK: We defined "expression vector." 2 MS. MAHANEY: Right. So we have not defined 3 "retro-viral vector" yet. 4 THE COURT: Okay. Do you want to? 5 MS. MAHANEY: I think we do. 6 THE COURT: Yes. All right. What do you -- have 7 you submitted some language? 8 MS. MAHANEY: I thought we had, your Honor. 9 THE COURT: Here it is. AntiCancer has. You did. 10 You have it under the retro-viral vector derived from pLEIN. 11 Maybe that's the way to do it. Retro-viral vector derived 12 from pLEIN. And you say that means a retro-viral vector is 13 a construct from a virus known as -- retro-viridae? 14 MS. MAHANEY: Viridae. 15 THE COURT: Viridae? Retro-viridae used to carry 16 and introduce foreign nucleotide sequence, in this case the 17 gene that produces GFP, into the tumor. 18 So retro-vector is a -- what can we say from a 19 construct? Is it -- is it a DNA or is it a sequence of 20 amino acids or what is it? A nucleotide? 21 MS. MAHANEY: I believe it's RNA, your Honor. 22 THE COURT: RNA. Okay. What is another word for 23 "construct"? Organism? Organ? Organism? 24 MS. MAHANEY: Construct? 25 MR. BOGGS: Your Honor, construct would be an -204-

1 artificially assembled sequence of DNA usually based on a 2 starting material like a retro-virus. 3 THE COURT: So it's a sequence of DNA? 4 MR. BOGGS: I'm sorry. RNA. Because it's a 5 retro-virus, which means backwards. 6 THE COURT: Can we get away from saying RNA? 7 Because I have to define RNA if we do that. Retro-viral 8 vector is a -- is it a -- is it an amino acid or is it a -- 9 MS. MAHANEY: Nucleic acid. 10 THE COURT: Is it a nucleic acid? 11 MR. BOGGS: A viral nucleic acid? 12 THE COURT: A retro-viral vector is a viral 13 nucleic acid from a virus known as retro-viridae used to 14 carry and introduce foreign nucleotide sequence, in this 15 case the gene that produces GFP. 16 Maybe we could just say, used to carry and 17 introduce the gene that produces GFP into the tumor. Could 18 we do that? 19 MS. MAHANEY: Yes. 20 THE COURT: Now, let me read this, Mr. Lawton. I 21 want to make sure you're with me here. 22 MR. LAWTON: I'm with you, your Honor, but please 23 read it. 24 THE COURT: Okay. Retro-viral vector derived from 25 P-L-E-I-N, open bracket, a retro-viral vector -- no. Open -205-

1 bracket, a viral nucleic acid from a virus known as retro- 2 viridae used to carry and introduce the gene that produces 3 GFP into the tumor, closed bracket. Read it again? 4 MR. LAWTON: I'm with you, your Honor, and 5 that's -- 6 THE COURT: Read it again? 7 MR. LAWTON: I've got it. 8 THE COURT: I'm reading it off of Xenogen's 9 proposed construction. Is that where you're looking? Is 10 that where you're looking? 11 MR. LAWTON: Yes, your Honor. 12 THE COURT: Okay. Well, I'll read it this time, 13 but I'll help you jump because I'm jumping some of the 14 words. That's where you have trouble following. 15 MR. LAWTON: No. I got the jump. I think I'm 16 with you. 17 THE COURT: All right. Let me start again. Open 18 bracket. I skipped "a retro-viral vector is," and I started 19 there. Open bracket, a -- drop "construct" and say, a viral 20 nucleic acid -- in its place -- from a virus known as retro- 21 viridae used to carry and introduce -- strike "foreign 22 nucleotide" and "sequence" and "in this case." Strike all 23 those words. So it reads, used to carry and introduce the 24 gene that produces GFP into the tumor. And drop the dashes. 25 MR. LAWTON: That sounds fine, your Honor. -206-

1 THE COURT: Okay. Have you got it, Marc? 2 THE LAW CLERK: Yes, your Honor. 3 THE COURT: Okay. 4 MS. MAHANEY: Your Honor, that defines what a 5 retro-viral vector is, but the claim does require it to be 6 derived from -- how do you say it? -- pLEIN. PLEIN is a 7 specifically commercially available vector. 8 THE COURT: Oh, okay. 9 MS. MAHANEY: So we do have to -- 10 THE COURT: Well, then let's say -- could we just 11 say -- wrap it up in there. Say, a viral nucleic acid made 12 from the P-L-E-I-N vector, a specific commercially available 13 vector available from Clontech. Gosh, what does that do 14 with this phrase, from a virus known as retro-viridae? 15 MS. MAHANEY: I suppose it's in some ways not 16 necessary, since we're talking about a specific vector, 17 but -- 18 THE COURT: So we don't need to deal with this 19 retro-viridae at all? 20 MS. MAHANEY: I mean, not if you say that it has 21 to -- if you have that language that it has to be the pLEIN. 22 THE COURT: Well, since it's a -- it looks to me 23 like a proper name. It's a -- perhaps a copyrighted name. 24 And we really have to define it specifically because it's in 25 the claim -- -207-

1 MS. MAHANEY: Right. 2 THE COURT: -- specifically. So we have to define 3 it specifically. So what I want to know is, does it make 4 redundant this expression about from a virus known as retro- 5 viridae? Does it make that redundant? 6 MS. NGUYEN: Yes, your Honor. 7 THE COURT: Oh, okay. Then let's drop "from a 8 virus known as retro-viridae" and say, the retro-virus -- is 9 a viral nucleic acid made from -- 10 MR. LAWTON: I'm sorry, your Honor. Virile or 11 viral? 12 THE COURT: Viral. I'm sorry. 13 MR. LAWTON: I suppose it could be both. 14 THE COURT: I don't know which -- I don't know how 15 to pronounce it. V-I-R-A-L. Made from a -- 16 MR. LAWTON: The pLEIN vector. 17 THE COURT: Made from the P-L-E-I-N vector, comma, 18 a specific commercial -- commercially available vector 19 available from Klondike -- 20 MR. LAWTON: No, your Honor. 21 THE COURT: -- Clontech. 22 MR. LAWTON: That's Xenogen's proffered -- 23 THE COURT: Well, let's finish it. Then we'll -- 24 let's get it down. 25 MR. LAWTON: Yes, your Honor. -208-

1 THE COURT: And then we'll discuss it. Made from 2 Klondike -- Clontech at a cost of $10 a ton. We don't need 3 to put that much detail, do we, the cost? 4 MS. MAHANEY: That it's from Klondike? 5 THE COURT: We say it's from Clontech. And if 6 Clontech sells it to somebody else, it isn't going to be 7 available from Clontech. Why don't we just say it's made 8 from a specific commercially available vector, period. 9 MR. LAWTON: It is available, your Honor, from 10 vendors other than Clontech. 11 THE COURT: Okay. So we'll just say it's a 12 specific commercially available vector. But it's 13 specific -- we say it's a specific commercially available 14 vector. That couldn't be more specific. 15 Now, do you agree with that, Mr. Lawton? 16 MR. LAWTON: Yes, your Honor. 17 THE COURT: Okay. Is that okay with you, Ms. 18 Mahaney? 19 MS. MAHANEY: One second. One second. 20 THE COURT: One moment. Okay. 21 MS. MAHANEY: As long as it's clear it's that 22 specific vector, your Honor, you're right, the source 23 wouldn't matter. 24 THE COURT: Yeah. I agree. But it definitely is 25 specific. -209-

1 MS. MAHANEY: Exactly. 2 THE COURT: Couldn't be any more specific. 3 MS. MAHANEY: Well -- 4 THE COURT: We've got a copyrighted name right in 5 the claim. 6 MS. MAHANEY: That's pretty specific, your Honor. 7 THE COURT: There's only one Xerox. Okay. So 8 close the bracket there. So now we've got -- can I read 9 what the final product is that we all -- that we have here 10 on this? 11 MR. LAWTON: Please, your Honor. 12 THE COURT: Okay. The bracket will be after 13 "retro-viral vector." Maybe we should be saying, retro- 14 viral rector derived from pLEIN. 15 MR. LAWTON: The brackets could start right after 16 pLEIN, your Honor. 17 THE COURT: Yeah. Put the bracket after pLEIN, 18 and it'll say, a viral nucleic acid made from the P-L-E-I- 19 N -- it's a small P and all capitals, L-E-I-N, vector, 20 comma, a specific commercially available vector, closed 21 bracket. 22 Now we go back to the claim. And it says, 23 comprising -- we've underlined that -- and then an 24 expression system -- we've underlined that -- for said 25 GFP -- underline that -- by injecting said vector locally to -210-

1 said tumor. Underline "tumor." Do we have to underline 2 "vector"? We haven't defined "vector" alone, have we? 3 MR. LAWTON: I don't believe so, your Honor. 4 THE COURT: I don't remember doing it. 5 Well, okay. Now we're down to Claim 3, but we 6 didn't take our recess, so we'll take a 10-minute recess. 7 MR. LAWTON: Thank you, your Honor. 8 MS. MAHANEY: Thank you, your Honor. 9 (Proceedings recessed briefly.) 10 THE COURT: Okay. We're on Claim Number 3. 11 Method of Claim 1 wherein said GFP is HGFP-S65T. Well, 12 let's underline "GFP," and let's put a bracket after "HGFP- 13 S65T." And I take it that that's some kind of a -- some 14 kind of a protein, fluorescent protein. 15 MR. LAWTON: It's a mutation of humanized GFP, 16 your Honor. 17 THE COURT: A mutation of what? 18 MR. LAWTON: Humanized GFP. 19 THE COURT: Do you agree? 20 MS. MAHANEY: Yeah. It's a specific -- it's a 21 specific protein. 22 THE COURT: It's got to be a specific one. 23 MS. MAHANEY: Yeah. 24 THE COURT: Okay. So what's the language? A 25 specific mutation of what? -211-

1 MR. LAWTON: A humanized GFP. 2 THE COURT: A humanized GFP, closed bracket. Will 3 that do it? 4 MR. LAWTON: We'd be satisfied with that, your 5 Honor. 6 THE COURT: And that's a period. That's the end 7 of Claim 3. 8 MR. LAWTON: Yes, your Honor. 9 THE COURT: Okay. Claim 4. The method of Claim 1 10 wherein said tumor -- underline "tumor" -- is a lung 11 tumor -- underline "tumor" -- or an ovarian tumor -- 12 underline "tumor." Do we need to define anything in that 13 one? 14 MS. MAHANEY: I don't think so. 15 THE COURT: I don't either. As is. 16 Number 5. The method of Claim 1 wherein said 17 first mammalian subject is a rabbit, rat or mouse. As is? 18 MS. MAHANEY: Yes. 19 THE COURT: Okay. 20 MR. LAWTON: Yes, your Honor. 21 THE COURT: Number 7, a nonhuman mammalian subject 22 which contains a solid tumor -- underline "solid tumor" -- 23 expressing GFP -- underlined -- and which has contained in 24 its blood vessels and fluorescent contrast dye administered 25 by intravenous injection. As is? -212-

1 MS. MAHANEY: Yes. 2 MR. LAWTON: I think we made a fluorescent 3 contrast dye. 4 THE COURT: We kind of played with that. 5 MR. LAWTON: We gave it a definition earlier. 6 THE COURT: Yeah. 7 MR. LAWTON: So should we -- 8 THE COURT: Was that the term we defined, 9 "fluorescent contrast dye"? 10 MR. LAWTON: We put in brackets a definition 11 earlier. 12 THE COURT: But was that the terms, exactly the 13 terms? 14 MR. LAWTON: I believe it was, your Honor. 15 THE COURT: "Fluorescent contrast dye"? 16 MS. MAHANEY: Yeah. We already defined it. 17 THE COURT: Well, then let's underline them. 18 "Fluorescent contrast dye," underlined. 19 MR. LAWTON: And your Honor asked earlier about 20 "intravenous" and whether we needed to define or not. 21 THE COURT: We did it. 22 MR. LAWTON: I noticed just shortly below and in 23 the agreed column, there is a definition of "intravenous." 24 THE COURT: We didn't define "intravenous." 25 MR. LAWTON: We didn't, but we could take this -213-

1 opportunity to do it, if the Court thought it was needed. I 2 don't -- and it may not be. 3 THE COURT: Well -- oh, that's right. We didn't 4 think it was an hour ago. Do we feel the same way? 5 MS. MAHANEY: I could go either way, your Honor. 6 THE COURT: I could too. If you feel -- 7 MS. MAHANEY: There's no harm in defining it. 8 THE COURT: There's no harm. 9 MR. LAWTON: It's a very short definition. 10 THE COURT: What have you got? We'll do it. 11 MR. LAWTON: Within a vein or veins. 12 THE COURT: Okay. Within a vein or veins. Is 13 there such a thing as an intra-arterial injection? Is 14 there? 15 MR. BOGGS: Yes, your Honor. 16 THE COURT: Isn't it kind of tricky to inject into 17 an artery because of healing problems? I mean the 18 pressures. 19 MR. BOGGS: Yes, it would be very difficult. I 20 wouldn't try it. 21 MR. LAWTON: I wouldn't recommend it except for 22 me, your Honor. 23 THE COURT: Because you're so half-dead all the 24 time anyway or what? 25 MR. LAWTON: It might have a desired effect. -214-

1 THE COURT: Oh, I see. Watch out for unforeseen 2 consequences. 3 Okay. Number 8, a non-human mammalian subject 4 which contains a solid tumor expressing GFP -- underline 5 "solid tumor" and "GFP" -- and which has contained in its 6 blood vessels a contrast dye -- do we need to underline 7 "contrast dye"? Did we define that earlier? 8 MR. LAWTON: We defined "fluorescent contrast 9 dye." 10 THE COURT: Why don't we underline it, and we 11 won't define it, but in the glossary, Marc, let's define 12 "contrast dye" with the same -- wouldn't it fit the same 13 definition as "fluorescent contrast dye"? 14 MR. LAWTON: I would expect so, your Honor. 15 THE COURT: Okay. So use the same definition, but 16 let's put it in the glossary. 17 Administered by intravenous -- underline 18 "intravenous" -- injection, wherein said subject is prepared 19 by the method of Claim 1. That's the end of that -- that's 20 the end of the patent. 21 Have we finished 969 -- 968? 22 MS. MAHANEY: Yes. 23 THE COURT: Okay. 24 MS. MAHANEY: On to the next one. 25 THE COURT: All right. Now, what's the next one? -215-

1 MR. LAWTON: Your Honor, I apologize for belatedly 2 bringing this to the Court's attention. A contrast dye is 3 not necessarily fluorescent. And that may account -- 4 THE COURT: Okay. 5 MR. LAWTON: I should have mentioned that. 6 THE COURT: Well, that's all right. We better -- 7 what is it, a contrast dye? 8 MR. LAWTON: It's a dye that's used to create a 9 contrast for the viewer between tumor cells and host 10 organism cells. Like we saw in the tutorial yesterday the 11 difference between green and red, this is a nonfluorescent, 12 or contrast dye in this context would include dyes which 13 don't fluoresce, but which nevertheless create contrast. 14 THE COURT: Okay. Well, then let's define 15 "contrast dye." After underlining "contrast dye," let's 16 define it. Has anyone submitted a definition of that? I 17 don't see one. A dye which -- what do you want to say? A 18 dye -- a fluid, right? 19 MR. LAWTON: Yes, your Honor. 20 THE COURT: A fluid which can be seen in the 21 vessels. By X-ray or by -- do we need to say what it can be 22 seen by? It can't be seen by the naked eye. Which can be 23 seen in the vessels by X-ray, et cetera or what? Can you 24 see it with MRI? Can you see this contrast dye with an MRI? 25 MR. LAWTON: It can be seen by microscopy or other -216-

1 optical means. 2 THE COURT: Okay. By microscopy -- 3 MR. LAWTON: Microscopy. 4 THE COURT: Microscopy or other what? 5 MR. LAWTON: Or other optical means. 6 THE COURT: Other optical means. Any objection to 7 that, Ms. Mahaney? 8 MS. MAHANEY: If you could re-read the whole 9 definition. 10 THE COURT: Yes. A fluid which can be seen in the 11 vessels by microscopy or other optical means. 12 MR. LAWTON: The only one-word change we would add 13 or propose, your Honor, is to call it a colored fluid -- a 14 colored fluid to distinguish it from a clear fluid. 15 THE COURT: Oh, right. A colored -- 16 MR. LAWTON: Because it is a dye. 17 THE COURT: Should we say an opaque fluid? 18 MR. LAWTON: I don't know that it's always opaque, 19 but it definitely is colored. 20 THE COURT: Okay. How does that go, Ms. Mahaney? 21 Do you like that? 22 MS. MAHANEY: I mean, the term "contrast dye" 23 suggests that the dye has to be of a color that's contrasted 24 to the color of the GFP. 25 THE COURT: Well, when we say it's a colored -- -217-

1 which can be seen, that suggests that it would be different 2 than the color of the blood. 3 MS. MAHANEY: Just an interesting observation, 4 this claim does require that the subject be prepared by the 5 method of Claim 1, and Claim 1 requires the dye to be 6 fluorescent. 7 THE COURT: Oh, really? 8 MS. MAHANEY: But I don't know if it -- since all 9 the limitations of Claim 1 will be incorporated, I'm not 10 sure that matters right here. 11 THE COURT: Well, it says the subject is prepared 12 by the method of Claim 1. 13 MS. MAHANEY: Right. 14 THE COURT: I wonder if that would include 15 injecting them with a fluorescent dye. 16 MS. MAHANEY: It would, your Honor, because that's 17 a requirement of Claim 1. 18 MR. LAWTON: It's a separate clause. 19 MS. MAHANEY: Right. We agree it's a separate 20 clause. 21 MR. LAWTON: But the limitation in the last clause 22 does not necessarily -- 23 THE COURT: It should be different than Claim 1, 24 just for claim differentiation. 25 MR. LAWTON: And the terms are different. I mean, -218-

1 fluorescent contrast dye is different than contrast dye. 2 MS. MAHANEY: I just -- just to be clear, I don't 3 want this to be interpreted that this somehow vacates the 4 limitation of Claim 1 that the contrast dye be fluorescent. 5 Because it does require the subject to be prepared by the 6 method of Claim 1. I just want to make sure that that's not 7 what somebody is trying to argue here. 8 THE COURT: Well, we start with a subject, a non- 9 human mammalian subject which contains -- he has a solid 10 tumor expressing GFP. So we know the tumor has been 11 injected with GFP. And which -- the tumor of which has 12 contained in its blood vessels a contrast dye administered 13 by intravenous injection. Wherein said subject is prepared 14 by the method of Claim 1. 15 How do you prepare him in Claim 1? How do you 16 prepare him in Claim 1? Well, let's see. You optionally 17 expose at least one tissue containing the tumor and 18 observing the blood vessels in the tumor, wherein the blood 19 vessels contain a fluorescent contrast dye, and said tumor 20 expresses green fluorescent protein whereby the presence of 21 angiogenesis is observable by the contrast dye in the blood 22 vessels seen against the GFP of the tumor. 23 Well, Claim 1 seems to claim injection of the 24 blood vessels with a fluorescent contrast dye. Now, the 8th 25 or the last dependent claim says -- oh, wait a minute. Then -219-

1 it goes on to say, the said subject has been administered 2 the contrast dye by intravenous injection. That would be 3 the blood vessel dye, wouldn't it? 4 MS. MAHANEY: Yes, your Honor. 5 THE COURT: Wherein solid tumor -- the expressed 6 GFP has been obtained by a method which comprises providing 7 a tumor cell line comprising an expression system for said 8 GFP. That's where the tumor cell line includes an 9 expression system for GFP. Injecting a second subject which 10 is genetically immuno-compromised -- with said tumor cell 11 line subcutaneously with said cell line. Injecting that 12 second one with said tumor cell line subcutaneously with 13 said cell line to convert said cell line to a subcutaneous 14 tumor and surgically implanting said tumor into said first 15 subject, which is genetically compromised, with said tumor 16 cell line in the location the same as the tumor cell line 17 was, or wherein the tumor is endogenous, first subject 18 having been modified -- with retro-vector derived from 19 pLEIN -- a non-human mammalian subject which contains -- 20 well, this Number 8, it says the non-human mammalian subject 21 which contains a solid tumor expressing GFP has been 22 injected in its blood vessels with a contrast dye. 23 I don't know that it -- it doesn't seem to suggest 24 that it's got to be a fluorescing contrast dye. 25 MS. MAHANEY: That part of the phrase does not, we -220-

1 would agree. But the next part does, where said subject is 2 prepared by the method of Claim 1. 3 MR. LAWTON: Well, that's a -- your Honor, we 4 would think that that would be a nonsensical construction. 5 It's as though to say a nonfluorescent contrast dye, so long 6 as the only contrast dye you're using is fluorescent because 7 that's what Claim 1's means of preparing the subject would 8 require. 9 The exception swallows up the rule or the whole. 10 There are fluorescent contrast dyes, and then there are 11 contrast dyes. 12 MS. MAHANEY: Maybe they're using two dyes. 13 MR. LAWTON: Defining a contrast dye or 14 acknowledging that contrast dyes include a subset of 15 fluorescent contrast dyes is important because -- 16 THE COURT: Well, this -- 17 MR. LAWTON: -- nonfluorescent contrast dyes are 18 being allowed to practice. By using nonfluorescent contrast 19 dyes allows you to use a greater number of dyes. 20 THE COURT: This patent, the first claim looks to 21 me like it involves two mammalian subjects, right? 22 MR. LAWTON: Yes, your Honor. 23 THE COURT: With a first mammalian subject which 24 could -- which could or might not be human, right? The 25 first mammalian subject could be human. -221-

1 MR. LAWTON: It does not require that, your Honor. 2 THE COURT: It doesn't require that it be human or 3 non-human. 4 MR. LAWTON: That's right. 5 THE COURT: So it could be human. 6 MR. LAWTON: Yes. 7 THE COURT: So the first mammalian subject, the 8 method is to observe it -- to observe angiogenesis. So 9 we're trying to observe angiogenesis, which means making new 10 cells, right? 11 MR. LAWTON: Blood vessels, your Honor. 12 THE COURT: Blood vessels. 13 MR. LAWTON: Yes, your Honor. 14 THE COURT: Making new blood vessels. 15 MR. LAWTON: Yes. 16 THE COURT: So it's a method to observe the making 17 of new blood vessels in at least one solid tumor. So blood 18 vessels in a tumor. We're looking at blood vessels in a 19 tumor which are contained in a first mammalian subject, 20 which method comprises exposing at least one tissue 21 containing said tumor of said first mammalian subject and 22 observing the blood vessels in that tumor, wherein said 23 blood vessels contain a fluorescent contrast dye and the 24 tumor expresses green fluorescent protein, whereby the 25 presence of angiogenesis is observable by the contrast dye -222-

1 in the blood vessels. 2 Now, that's referring to the fluorescent dye in 3 the first mammalian subject. 4 MR. LAWTON: Yes, your Honor. 5 THE COURT: Because it says "the contrast dye," 6 which means the one that we identified above. In the blood 7 vessels seen against the GFP of the tumor. So they're going 8 to be contrasting two fluorescent dyes. 9 MR. LAWTON: So you can -- 10 THE COURT: One protein and one dye. I don't know 11 if there's a difference between a protein and a dye. Maybe 12 there is. Now -- 13 MR. LAWTON: So that you can see -- so that you 14 can readily detect the difference between the tumor cells 15 and the non. 16 THE COURT: Well, it says that you're observing 17 the blood vessels in the tumor. 18 MS. MAHANEY: Right. You're comparing the blood 19 vessels to the tumor. You're trying to see if the blood 20 vessels have grown, expanded. 21 THE COURT: Okay. So you're trying to observe the 22 blood vessels in the tumor, see what they're doing, see what 23 the blood vessels are doing. 24 MR. LAWTON: Correct, your Honor. 25 THE COURT: Okay. Now, then, in this first claim -223-

1 it says, wherein said subject -- that's the first mammalian 2 subject -- has been administered said contrast dye, which is 3 a fluorescent dye, by intravenous injection. So the first 4 subject has been given fluorescent contrast dye. 5 Then, wherein said solid tumor -- that's the one 6 in the first subject, right? -- that expresses GFP has been 7 obtained by a method which comprises providing a tumor cell 8 line comprising an expression system for said GFP. 9 So the first mammalian subject has been provided 10 with a solid tumor that expresses GFP. That tumor has been 11 obtained by a method which includes providing a tumor cell 12 line which includes an expression system for said GFP. Then 13 you inject a second mammalian subject which is genetically 14 compromised or syngeneic with said tumor cell line 15 subcutaneously, said cell line meaning the same cell line 16 that was introduced into the first mammalian subject. 17 Is somebody helping us here? I'm just trying to 18 understand -- 19 MR. LAWTON: I agree with that, your Honor. 20 THE COURT: Subcutaneously with said cell line -- 21 that's the first one -- to convert said cell line to a 22 subcutaneous tumor. So now we're injecting a second subject 23 who doesn't have an immune system. We're injecting that 24 second subject with the cell line from the first subject, 25 right? -224-

1 MR. LAWTON: Yes, your Honor. 2 THE COURT: To convert that cell line to a 3 subcutaneous tumor. 4 MR. BOGGS: Your Honor. 5 THE COURT: What? 6 MR. BOGGS: The cell line exists independently of 7 the first subject. The second mammalian subject is being 8 used to create a solid tumor from a tumor cell line in 9 suspension. 10 MS. MAHANEY: You had mentioned that the cell line 11 came from the first subject. It does not. 12 THE COURT: Okay. Well, let's see where I went 13 off the truck. In the first part of the first claim, we had 14 a first mammalian subject, and we optionally exposed at 15 least one tissue containing said tumor, which is a solid 16 tumor -- a method to observe angiogenesis in at least one 17 solid tumor contained in the first subject. 18 So they're going to take -- they're going to 19 expose one tissue containing the tumor in the first 20 mammalian subject -- of said subject meaning the first 21 subject -- and observing the blood vessels in that tumor, 22 wherein the said blood vessels taken from the first subject 23 contain a fluorescent contrast dye, and said tumor from the 24 first subject expresses GFP, whereby the presence of 25 angiogenesis is observable by the contrast dye in the blood -225-

1 vessels seen against the GFP of the tumor. 2 And all that is involving the first subject so 3 far, right? 4 MR. BOGGS: Yes, your Honor. 5 THE COURT: Now, then -- then it says, wherein 6 said subject -- that's the first subject -- has been 7 administered said contrast dye, which is the fluorescent 8 contrast dye that we saw earlier. He got that injection by 9 intravenous injection. Okay. Then it says, wherein said 10 solid tumor, which is the one in the first subject -- that 11 expresses GFP, has been obtained by a method which comprises 12 providing a tumor cell line. You got that tumor by 13 providing a tumor cell line comprising an expression system 14 for said GFP. 15 It didn't say where we got the tumor cell line, 16 though, did it? 17 MR. BOGGS: That's correct, your Honor. 18 THE COURT: Okay. So now let's go from there. 19 Injecting the second subject which is genetically 20 compromised with the tumor cell line that we don't know 21 where we got it from, right? 22 MR. BOGGS: Correct. 23 THE COURT: We don't know where we got that line 24 yet. 25 MR. BOGGS: Correct, your Honor. -226-

1 THE COURT: But we didn't get it from the first 2 subject. 3 MR. BOGGS: Correct. 4 THE COURT: Okay. Subcutaneously with said cell 5 line to convert said cell line to a tumor in the second 6 mammalian subject. 7 MR. BOGGS: Yes, your Honor. 8 THE COURT: Now we've got a tumor in both 9 mammalian subjects. 10 MR. BOGGS: My understanding of the claim is that 11 the second mammalian subject actually comes before the first 12 mammalian subject so that you create the tumor in the second 13 mammalian subject so you can now implant that tumor 14 expressing GFP into the first mammalian subject. 15 THE COURT: Well, okay. Let me follow with that. 16 I mean it certainly is written in a confusing way. And then 17 surgically implanting said subcutaneous tumor. Is that the 18 tumor that started out in the second subject? 19 MR. BOGGS: Yes, your Honor. 20 THE COURT: We're going to implant that tumor into 21 said first subject. Okay. Which is genetically immobile 22 with said tumor cell line. And the tumor cell line is that 23 cell line we didn't know where it came from. 24 MR. BOGGS: That is correct, your Honor. 25 THE COURT: Okay. So we're going to implant the -227-

1 tumor from the second subject into the first subject, and 2 we're going to implant that tumor with that cell line -- 3 tumor cell line that was in limbo, as you say. 4 MR. BOGGS: Yes. 5 THE COURT: In a location -- I take it it's a 6 location in the tumor, which is now in the first subject. 7 We're going to inject that tumor in a location which is 8 identical to the location from which the tumor cell line was 9 taken. And where was it -- we don't know where it was 10 taken. We don't know from whom it was taken. 11 MS. MAHANEY: But the scientists would know that 12 it was derived, you know, from a lung. Lung tumor cells 13 or -- 14 THE COURT: So it would be the same location as 15 where it was taken from. And we're going to put it in the 16 first subject in that orthopodic place. 17 MS. MAHANEY: Exactly. 18 THE COURT: All right. Then it says, wherein said 19 tumor -- said tumor is endogenous to said first mammalian 20 subject. Endogenous? 21 MR. LAWTON: A rose within -- that's the -- 22 Dorland's definition that Ms. Nguyen suggested earlier. 23 THE COURT: But I thought -- I thought that so- 24 called said tumor was created in the second subject and was 25 then injected into the first. No? -228-

1 MS. MAHANEY: There's an "or" in front of this 2 last paragraph. 3 THE COURT: Oh, I see. Oh, thank you, thank you, 4 thank you. So this backs up to the "wherein" on line eight 5 or nine, right? So it's an "or." Now, this is the "or." 6 Wherein said tumor, which is the tumor in the first 7 mammalian subject -- is that right? -- is endogenous to said 8 first mammalian subject and has been modified to express GFP 9 by a method which comprises infecting said endogenous tumor 10 contained in the first subject with a retro-viral vector 11 derived from this tailor-made GFP by injecting said vector 12 locally into the tumor in the first mammalian subject. 13 MS. MAHANEY: So the claim basically gives you 14 sort of two alternatives. 15 THE COURT: It looks that way. Now, what part of 16 that first claim constitutes preparation of the subject? 17 And I take it we're talking about preparation of the first 18 mammalian subject, are we? 19 MS. MAHANEY: I would think so. 20 THE COURT: So what part of the first claim deals 21 with preparing the first subject? 22 Well, Number 8, you'll notice one thing. Number 23 8, 7 -- 8 and 7 are non-human mammalian subjects. And your 24 point, Ms. Mahaney, is that that contrast dye is a 25 fluorescent dye? -229-

1 MS. MAHANEY: I just wanted to make sure that when 2 we were in Claim 8, the last part of it is where said 3 subject is prepared by the method of Claim 1, that we were 4 incorporating all those limitations from Claim 1. Because, 5 I mean, that's pretty basic claim construction law. 6 THE COURT: Well, except it says the subject is 7 prepared. 8 MS. MAHANEY: I didn't write these claims, your 9 Honor. 10 THE COURT: We're just going to -- we're going to 11 consult Claim 1 to the extent that it's -- that it concerns 12 the preparation of the subject. 13 MS. MAHANEY: And that preparation includes the 14 subject being administered a fluorescent contrast dye. You 15 can't take a dependent claim -- 16 THE COURT: Maybe 8 -- the only difference is 8 is 17 non-human and 1 is human. Maybe that's the difference. 18 MS. MAHANEY: Well, 8 is also to an actual mammal. 19 THE COURT: I thought it was a non-human mammal. 20 MS. MAHANEY: Yes. You're right. 21 THE COURT: Well, Number 1 is a human mammal. 22 MS. MAHANEY: Sorry. To a non-human mammal. So 23 it's actually to -- 24 THE COURT: Maybe that's the difference. Eight is 25 a -- Claim 1 is a human, so Claim 8 is non-human, which -- -230-

1 it's mammalian -- non-human mammalian which contains a solid 2 tumor expressing GFP and which has contained in its blood 3 vessels a contrast dye administered by intravenous injection 4 wherein said subject, the non-human one, is prepared by the 5 method of Claim 1, which deals with a human subject. 6 The issue that I'm supposed to deal with here is 7 whether this contrast dye is fluorescing or not. Mr. 8 Lawton, are we dealing with a -- 9 MR. LAWTON: Your Honor, the specification -- 10 THE COURT: Are we dealing with a fluorescing 11 contrast dye or not? 12 MR. LAWTON: In Claim 8, no. And I think if we 13 were, it would state that because it's clear that the 14 inventor knew how to say "fluorescent contrast dye" when he 15 wanted to say that, and he knew how to say "said contrast 16 dye" when he wanted to say that, which in the context the 17 Court read aloud for us clearly relates back to fluorescent 18 contrast dye, the antecedent of said contrast dye. 19 So when we're just saying "contrast dye" in 20 isolation, that's a term that has independent meaning. It 21 can stand on its own two feet. It's contrast dye. And 22 we've already come up with a term to define that. And it 23 includes contrast dyes that are not fluorescent. 24 What is preparing the subject? I mean, the 25 specification talks about implanting the tumor, -231-

1 anesthetizing the animal, incising the animal, suturing the 2 animal. Those are all means of preparing a subject. And I 3 don't think that any of those means of preparation would 4 require usage of fluorescent contrast dye. Otherwise, it 5 would have been very easy to say that. 6 The Court has observed that the patentee is his 7 own lexicographer, and here the lexicographer decided that 8 in certain claims fluorescent contrast dye was going to be 9 used and in others it wasn't. And this is one where it 10 wasn't. 11 THE COURT: Well, it's true it doesn't say said 12 contrast dye, and it doesn't say fluorescent contrast dye. 13 It just says a contrast dye. And I feel reluctant to 14 restrict that to a fluorescent dye. 15 MR. LAWTON: I mean, up in Claim 2, when they 16 wanted to say the contrast dye was rhodamine, you know, they 17 had the ability to say rhodamine when that's what was 18 intended by the patentee. So if they meant rhodamine in 19 Claim 8 or if they meant fluorescent contrast dye in Claim 20 8, presumably they would have said that. It's like the dog 21 that didn't bark in the nighttime. 22 MS. MAHANEY: Your Honor, you cannot incorporate 23 an independent claim and somehow broaden it. I mean, that's 24 not how it works. They incorporated the method of Claim 1. 25 We don't dispute that this says a contrast dye. Maybe they -232-

1 want to use two contrast dyes, one that can be 2 nonfluorescent and one that can be fluorescent. We just 3 want to make sure that the limitations from Claim 1 are 4 included in Claim 8. 5 I mean, it's pretty clear, wherein said subject is 6 prepared by the method of Claim 1. And Claim 1, the method 7 of preparation starts where you talk about the blood vessels 8 containing a fluorescent contrast dye. 9 MR. LAWTON: I think the leap that Ms. Mahaney is 10 making or the assumption that she's making is that the words 11 "wherein said subject is prepared by" must include usage of 12 a certain type of dye. And that is not what was intended 13 because that is not the language -- and if Ms. Mahaney's 14 construction of this claim is correct, then, as I said 15 earlier, with no disrespect to her, that it seems to imply a 16 nonsensical meaning or a claim that can be construed two 17 diametrically different ways, where the exception in the 18 last clause swallows up what is said in the second to last 19 clause. 20 In the second to last clause they're saying a 21 contrast dye with no limitation by fluorescence. Ms. 22 Mahaney says -- Ms. Mahaney says, well, what that really 23 means is a fluorescent contrast dye because you have to 24 assume that preparing the subject according to Claim 1 means 25 using fluorescent contrast dye. -233-

1 MS. MAHANEY: Actually -- 2 MR. LAWTON: And if that was correct, then it 3 would have been easy to say a fluorescent contrast dye. 4 MS. MAHANEY: You know, I'm not the one who wrote 5 this claim. And I agree that it is perhaps not the best 6 drafted claim. I am not trying to read in the word 7 "fluorescent" in front of "contrast dye." I am trying to 8 make clear that this claim, wherein said subject is prepared 9 by the method of Claim 1, includes the limitation from Claim 10 1. And that includes a fluorescent contrast dye. 11 Perhaps they intended to use two contrast dyes. 12 Who knows? But that is what the claim says. 13 THE COURT: Well, okay. I appreciate your -- I 14 think we've covered -- I think we've covered all the issues. 15 I'm going to construe this to be a contrast dye, and I'm not 16 going to require it to be either type, just a contrast dye. 17 It could be fluorescent. It doesn't have to be. 18 I think that -- I want to make sure that -- 19 there's also a claim differentiation situation here. Claim 20 1 does not involve -- doesn't specify a non-human mammalian 21 subject. It doesn't say just a mammalian subject. This one 22 we're working on now is clarified. It is a non-human 23 mammalian subject, so it's narrower. It's a narrower claim. 24 So it could be referring to a fluorescent dye and 25 still be a dependent claim because it's narrower. It's -234-

1 limited to non-human. So that would support the Defendant's 2 position. But on the other hand, it should have said said 3 contrast dye or it should have said a fluorescing contrast 4 dye or the fluorescing contrast dye or the contrast dye. 5 But it doesn't. It says, a contrast dye. It's a new 6 contrast dye all of a sudden introduced. And I'm not going 7 to restrict it into any kind. I'm not going to make it be 8 fluorescent. 9 MS. MAHANEY: So what part of Claim 1 are we 10 saying is -- are incorporated into Claim 8? 11 THE COURT: The part that concerns preparation of 12 the subject for the -- for the -- 13 MS. MAHANEY: But you can't say that it 14 incorporates some parts of the preparation of the subject 15 and not others. 16 THE COURT: Oh, yes, you can. If it says -- it 17 only doesn't say Claim 1. In other words, it doesn't start 18 off by saying, the method of Claim 1. Look at Claim 3 or 19 Claim 2 or Claim 4 or 5 or 6. They start out by saying, the 20 method of Claim 1. And here it doesn't start that way. It 21 just says, a non-human mammalian subject which contains -- a 22 contrast dye administered. In other words, the procedure of 23 administering it by intravenous injection wherein said 24 subject is prepared for the administration of the injection 25 by the method of Claim 1. -235-

1 But I'm not going to -- I'm not going to 2 incorporate all of the entirety of Claim 1 into Claim 8 3 because it doesn't call for that. So I'm going to -- I'm 4 going to say that a contrast dye -- we had it written down. 5 What did we say it was? 6 MR. LAWTON: I had, a fluid which can be seen in 7 the vessels, but -- 8 THE COURT: A colored fluid. 9 THE LAW CLERK: Right. 10 MR. LAWTON: Mr. Sharpe I think has it. 11 THE LAW CLERK: A colored fluid which can be seen 12 in the vessels by microscopy or other optical means. 13 THE COURT: I'm going to leave it at that. 14 MS. MAHANEY: Your Honor, would you agree that the 15 parts of Claim 1 that have to do with preparing the tumor in 16 the subjects are incorporated into Claim 8? 17 THE COURT: Well, something -- something is 18 included because it says the dye is administered by 19 intravenous injection wherein the subject is prepared -- the 20 subject is prepared for that intravenous injection by the 21 method of preparation which is set out in Claim 1. 22 MS. MAHANEY: No, no. It's the subject being 23 prepared to contain a solid tumor expressing GFP. I mean, 24 there's -- the subject has two parts in Claim 8. I mean, 25 you have to read something from Claim 1 into Claim 8, you -236-

1 know. 2 THE COURT: I just said -- I just said what I 3 would read in from Claim 1 is that the contrast dye -- a 4 contrast dye administered by intravenous injection is 5 claimed here, wherein said subject which is going to get the 6 injection is prepared for that injection by the method of 7 Claim 1. And so if you want to see how he's prepared for 8 it, how they get him prepared for it, I suppose you look at 9 Claim 1. 10 MS. MAHANEY: But Claim 1 doesn't speak to how 11 he's prepared to receive the intravenous injection. It just 12 says he is. Claim 1 goes into quite a bit of detail about 13 the -- how the solid tumor gets into the subject. So at 14 least that part has to be incorporated into Claim 8. 15 THE COURT: Well, the first limitation says, 16 wherein said subject has been administered said contrast 17 dye, said meaning fluorescing contrast dye, by intravenous 18 injection. And down here it also says intravenous 19 injection, so they don't have to incorporate one for that. 20 And -- 21 MS. MAHANEY: Right. So now I'm talking about -- 22 THE COURT: The preparation of them is they 23 administer the intravenous injection of a contrast dye. So 24 I don't know. 25 MS. MAHANEY: No. I understand that we do -237-

1 disagree on that point, your Honor, but if you look at Claim 2 8, it requires a subject which contains a solid tumor 3 expressing GFP. That's the first thing. 4 THE COURT: Yep. 5 MS. MAHANEY: And the second thing, the contrast 6 dye. Okay. Then there's a comma, and it says, said subject 7 is prepared by the method of Claim 1. And so what I'm 8 saying is, is that when they say said subjects prepared by 9 the method of Claim 1, they're talking about how the tumor 10 got into the subject. I mean, that's part of four 11 paragraphs of Claim 1. 12 THE COURT: I think I see what you mean. It says, 13 a non-human mammalian subject which contains -- that subject 14 contains a solid tumor expressing GFP and which has -- 15 already has contained in its blood vessels a contrast dye 16 administered by intravenous injection wherein said subject 17 is prepared by the method of Claim 1. 18 The non-human subject which contains a solid 19 tumor, and that subject has contained in its blood vessels a 20 contrast dye. 21 MS. MAHANEY: How did it get the solid tumor in 22 him or her? It's through the method of Claim 1. 23 MR. LAWTON: Your Honor -- 24 THE COURT: Well, let's think about it, and we'll 25 take it up at 8:30 tomorrow morning. -238-

1 MS. MAHANEY: Okay. Thank you, your Honor. 2 MR. LAWTON: Thank you, your Honor. 3 THE COURT: What's our next patent? Is it -- 4 MR. LAWTON: 384, your Honor. 5 THE COURT: 384. All right. Eight-thirty. 6 MR. LAWTON: Thank you, your Honor. 7 MS. MAHANEY: Thank you, your Honor. 8 (Proceedings recessed.) 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 -239-

I certify that the foregoing is a correct transcript from the electronic sound recording of the proceedings in the above-entitled matter. _________________________________ ____________________ Transcriber Date FEDERALLY CERTIFIED TRANSCRIPT AUTHENTICATED BY: _____________________________ L.L. Francisco, President Echo Reporting, Inc. -240- �