Joint Appendix (Part 1)

Case 2:10-cv-02225-VBF-JC Document 20 Filed 07/15/10 Page 5 of 16 Page ID #:8912345678910111213141516171819202122232425262728JOINT RULE 26(f) REPORT- 4 -CASE NO. CV10-02225-VBJ (JCx)Further, the specification section of the Patent-in-Suit does not provide sufficientinformation to meet the requirements of 35 U.S.C. §112. Among other deficiencies, thePatent-in-Suit fails to identify the proper weight differential required to maintain the turretin a stationary position and allow the tobacco pipe to meet its functional purpose.Finally, the claims of the Patent-in-Suit are invalid at least for being anticipated orrendered obvious in light of prior art. Additionally, Plaintiff is barred from any relief itseeks, in whole or in part, at least by waiver, estoppel, laches, prosecution historyestoppel, and/or lack of marking. As discovery in this case proceeds, Defendantsanticipate that additional defenses will be further developed.III. LEGAL ISSUESThe parties anticipate that the key legal issues will include, without limitation, thefollowing:1. Whether each and every claim limitation of the asserted claims of the Patent-in-Suit are practiced under 35 U.S.C. §271(a) by the accused tobacco pipe.2. Whether Defendants have induced or contributed to the infringement of thePatent-in-Suit under 35 U.S.C. §271(b) or (c).3. Whether the Patent-in-Suit is invalid for being anticipated under 35 U.S.C.§102.4. Whether the Patent-in-Suit is invalid under 35 U.S.C. §103 for being renderedobvious in light of the prior art.5. Whether the Patent-in-Suit is invalid for failing to meet the requirements of 35U.S.C. §101.6. Whether the Patent-in-Suit is invalid for failing to meet the requirements of 35U.S.C. §112.7. Whether Plaintiff committed inequitable conduct during prosecution of thePatent-in-Suit.8. Any relief to which Plaintiff may be entitled if the Patent-in-Suit is found to beinfringed by Defendants.-A196-