Tafas v. Dudas et al

Filing 258

Notice of Correction re 235 Brief in Support, Additional attachments after NEF sent on 1/10/08 (Attachments: # 1 Appendix B# 2 Appendix C# 3 Appendix D# 4 Appendix E# 5 Exhibit 1# 6 Exhibit 2# 7 Exhibit 3# 8 Exhibit 4# 9 Exhibit 5# 10 Exhibit 6# 11 Exhibit 7# 12 Exhibit 8# 13 Exhibit 9# 14 Exhibit 10# 15 Exhibit 11# 16 Exhibit 12# 17 Exhibit 13# 18 Exhibit 14# 19 Exhibit 15 part 1# 20 Exhibit 15 part 2# 21 Exhibit 16# 22 Exhibit 17 part 1# 23 Exhibit 17 part 2# 24 Exhibit 17 part 3# 25 Exhibit 18 part 1# 26 Exhibit 18 part 2# 27 Exhibit 18 part 3# 28 Exhibit 19# 29 Exhibit 20# 30 Exhibit 21# 31 Exhibit 22# 32 Exhibit 23# 33 Exhibit 24# 34 Exhibit 25# 35 Exhibit 26# 36 Exhibit 27)(klau, )

Case 1:07-cv-00846-JCC-TRJ

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APPENDIX A
TO EXHIBIT 1

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Appendix A

Patent search firm's quotes for patentability search reports

1. Mogambo Solutions, LLC. ( www.mogambosolutions.com )
-----Original Message----From: Chirag Shah [mailto:[e-mail]] Sent: Friday, October 19, 2007 1:51 PM To: [e-mail] Subject: AES Questions Dr. Katznelson: (1) We quote projects on a fixed fee basis. For the AES searches, the cost is $4000.00 for the first 10 claims, and $300.00 per claim thereafter. The standard turnaround time is 21 days, and can be expedited to 5-10 days for an additional fee. (2) If your accelerated patent examination application is rejected for lack of a thorough search, we will conduct another search in accordance with the examiner's class and keyword recommendations at no additional cost. If after delivery of the initial report you would like for us to refine the search scope (more narrow or broader), we are happy to conduct another search at no additional cost. If you would like us to re-search on amended claims, the fee will vary on how substantively different the amended claims are from the initial claims. (3) The AES search will include a search of US and foreign patent databases. We also conduct a nonpatent literature search of various technical and scientific journals and articles. We will provide full-text PDFs of all references we cite (patents and NPLs). There is no additional charge for this. I have attached a sample AES search - you can see the citation on page 4. Our NPL list is starts on page 10. Please note that this sample report is redacted and provided so you can get an idea of how we present our results. Please feel free to email or call me at 1.800.849.1094 if you have any further questions. We look forward to working with you. Regards, Chirag Shah Mogambo Solutions, LLC 1940 Duke St., Suite 200 Alexandria, VA 22314 (T) 1.800.849.1094 (F) 206.888.6712 www.mogambosolutions.com

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2. Clearly Understood, Inc. ( www.clearlyunderstood.com )
-----Original Message----From: Bill Brody [mailto:[e-mail]] Sent: Friday, October 19, 2007 11:25 AM To: [e-mail] Subject: Draft pricing

Ron It was good talking to you and I hope this will help. Bill

DRAFT Pricing
ESD Areas needing additional information. These may affect effort and thus final pricing.
1. We do not know what the compliance manual is going to be to know exactly what we are

going to need to do. An example what we will exactly be able to supply the attorney and what the attorney is going to have to supplement.
2. The Final OMB ESD form is not yet available. All we have are only good through

November 30, 2007.
3. The classification search may produce questionable results. The USPTO is moving to the

international classification standards, and thus changing classifications of many existing patents. Also, many patents are miss-classified in the current system. To the best of our knowledge classification searches have not been used for a number of years. The patent attorney is expected to provide the probable classification of the concept/application submitted.
4. Some foreign patents and non patent literature will not be searchable. They are not in

machine readable form, or in a language that is difficult to electronically search. Below is our Draft of Pricing for new search procedures to comply with the new patent law changes. ESD Estimate ­ with Pricing Table The following provides our Six Step ESD Search and Documentation Process with Incremental Pricing. Concepts and Inventions with up to 5 independent or 25 total claims continue to follow our current process and pricing. Once this claim threshold is exceeded the ESD process is required. Our six step ESD process allows you and your client to determine to proceed or stop at each point in the process, based upon the results to that point. Your comments, questions and recommendations are always appreciated.

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Clearly Understood, Inc. 37 CFR 1.265 Examination Support Documentation (ESD) Six Step Search Process & Pricing Step Action Step Concept Search 1 USPTO (Patents, Applications, Class) 2 Foreign Patent Documents 3 Global Non-Patent Literature $750 $750 $2,500 Pricing Incremental

Attorney Prepares Patent Application Patentability Search by Claim w/ ESD Audit Trail 4 USPTO (Patents, Applications, Class) 5 Foreign Patent Documents 6 Global Non-Patent Literature Total Base Price 1-5 Independent or 1-25 Total Claims $1,250 $1,250 $3,500 $10,000 Each Additional Claim $50 $50 $100 $200

Best Regards, Bill Brody President Clearly Understood, Inc. 972-419-8000 Email: [e-mail]

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3. Patent Hawk, LLC. ( http://www.patenthawk.com )
-----Original Message----From: Patent Hawk [mailto:[e-mail]] Sent: Friday, October 19, 2007 8:43 PM To: 'Ron Katznelson' Subject: RE: ESD estimate

Hi Ron: Thanks for calling. As we discussed on the phone, you are well aware of the USPTO ESD circumstance and requirements. Besides extensive cross-referential search, including tedious class/subclass search, for an ESD, documentation is non-trivial. Patent Hawk rate is $160/hour. Any ESD matter Patent Hawk would take would be budget estimated, but without a not-to-exceed guarantee; the nature of the work itself being somewhat unpredictable. My estimate, for computer related technologies, is that an ESD at the low end may take 35-40 hours: $5600-$6400 minimum, and, depending upon the technology, i.e. how heavily patented or extensive the prior art thicket, could easily run to 60-80 hours: $9600-$12800. My work ethic is to complete matters as expeditiously as possible while affording confidence in the quality of the work, and work product. The above estimates are hypothetical, but based upon eight years of experience as a professional prior art searcher. Hope this helps. For your convenience, my business card (Outlook vCard) is attached. Regards, Gary Odom Patent Hawk LLC Email: [e-mail] Web: http://www.patenthawk.com Weblog: The Patent Prospector - http://www.patenthawk.com/blog/ Voice: 206.529.5146 Fax: [phone] NW 12th Avenue, #1545, Portland, OR 97209

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Case 1:07-cv-00846-JCC-TRJ 4. Other search firms

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Other patent search firms were contacted but did not respond with a standard quote. They either declined to provide a public quote or declined to provide a standard quote because they quote based on the specific attributes of the case. These firms are listed below: (a) Cardinal Intellectual Property ( www.cardina-ip.com ) 1603 Orrington Avenue 20th Floor Evanston, IL 60201 Phone [phone] Fax [phone] [e-mail] (b) Landon IP, Inc. ( www.landon-ip.com ) Suite 450 1700 Diagonal Road Alexandria, Virginia 22314 Phone [phone] Fax [phone] [e-mail] (c) Nerac, Inc. ( www.nerac.com ) One Technology Drive Tolland, CT 06084 Phone [phone] (d) Lexis/Nexis-Reedfax Intellectual Property Services ( www.reedfax.com ) 7 Walnut Grove Drive Horsham, PA 19044 Phone [phone] or 215-441-4768 Fax [phone] or 215-441-5463 [e-mail] (e) Intellevate, LLC ( www.cpaglobal.com/patents/intellevate ) 900 2nd Ave S, Suite 1700 Minneapolis, MN 55402 Phone [phone] Fax [phone] Email [e-mail] 15