Seminar in Advanced Patent Law - Fall 2005
Prof. Morris
Last updated 9/23/05  10:00 a.m. - rjm


CREATING YOUR PACKET


Contents
1. What Is In a Packet
2. Sample Packet
3. The Cover Sheet
A. Cases
B. Statutes, Regulations, and MPEP Provisions
C. Articles
D. Material you have authored
E. The Standard Disclaimer
4. Page Numbering, Headers and Footers, and Line Numbering
5. Editing    (Especially Downloads, Claims and Statutes, and Foot/Endnotes)
6. Checklist for Handing in Your Draft
7. Visual Aids and The Talking Part of the Talk




1.  WHAT IS IN A PACKET

Q. What goes in your packet? A. The selected, edited materials that you want us to digest before we attend your talk. See "How The Course Will Work" for additional information. To prepare for your talk, you will undoubtedly read much more than you include in your packet. Your packet should include the most important material, consistent with the page limits (12-15 for final, no more than 25 for draft). You can summarize what you do not have room for if it will help us understand what you do include, or if it has influenced your thinking on the subject.  Please also abridge the materials you do include, to cut out repetition, blather (law-review-ese that says nothing in many lines), tangentially relevant sections, etc. In other words, I expect you to be able to justify -- if anyone were to ask -- every single word you include, whether authored by you or by another, and every single word you have deleted.

Skim through this document now so you know what is here. When it is time to make your draft packet, please read it carefully.

2.  SAMPLE PACKETS

Several of the 2003 seminar's packets are linked on the course website's main page. The rest of the 2003 packets are listed in the fall2003 directory . Look for DBApacket.doc, kumar.doc, pandya.doc, slspacket.rtf or slspacket5.1.wp or steele_f.wpd, and stasa.doc. I can find things to love in every one, but also things to criticize.This is an indirect way of saying: follow none of them blindly. Use these packets more as format templates than as substance templates. Please first look to these written instructions, using the student packets to resolve matters not covered here.

3. THE COVER SHEET

The first page of your set of readings must be a cover sheet.The purpose of the cover sheet is to summarize -- on one side of one piece of paper -- your entire effort.It is your Introduction, as well as your table of contents, your advertisement, and other things, too.

Samples:  A few years ago, after the first two packets were distributed, I rewrote their cover sheets. The before' and 'after' are available for you to use, both as templates and as further guidance about the substance of the coversheet. (The document, COVERS.DOC, is also linked on the main page of the course website.)

The well-considered cover sheet is visually and substantively an improvement over the standard law review-type introduction. It is skimmable and absorbable at different levels of detail, and you never have to turn the page to see everything at once. The format has been developed to
        (1) remind readers about key facts so that they can instantly find material inside the packet, whether at first reading or five years later; and
        (2) give to the first-time reader an idea of the evidentiary weight, as it were, of each item.
The instructions for the guidelines reflect these purposes.  If you have a question about your own cover sheet that is not addressed here, you may be able to answer it for yourself by thinking about them.

The cover sheet may be the single most important thing you prepare this semester.    It is the first thing ‑‑ and in a different context might be the only thing ‑‑ the reader sees.  It is also the source for future reference, should the subject come up again after graduation.

Title:  The top of the cover sheet, after the header, should have the title of your presentation. The title can be as long as you want it to be, with clever subtitles and such. See COVERS.DOC. The important thing is that it should fit your topic and your packet: it should tell us the subject matter accurately. It should not promise things that you do not actually do.  It should not pose a question you will not answer, nor one that is irrelevant to what you present. You will probably revise the title as you work and may not decide on it definitely until you are done. But remember, the title is the first thing people will read. If it turns out to be misleading, your credibility will be adversely affected.(This may seem self-evident, but every year I receive a number of drafts with lying titles, so I know I need to say this up front.)

Cover Sheet as Outline AND Table of Contents:   The cover sheet should tell us about the items we will read. The 3‑column format works best for this (again, see COVERS.DOC).

The left column is essentially an outline. What you write there should be brief but meaningful.  An outline point can correspond to a single item, or a group of items: use logic; there is no set rule.  Do what makes sense. Each idea should have its own row, so that the organization is presented visually, and can be understood quickly with both halves of the brain.

The middle column identifies the individual items in the packet. The idea here is to tell us what the item is, and to include details that are important, or will be important when we look back at this document. This means you can safely exclude formalities of citation that convey less useful information, such as a full bluebook citation (although you will need to include one inside the packet when you reproduce the item itself). Think of the purpose of the cover sheet:  bluebooking gives too much of some information and not enough of other kinds. Instead, think about what busy readers will want to know when they sit down to read the packet. (How to find the case in a printed West reporter is not likely to be high on their list.) Think also about what busy readers might want to be able to flip to the cover to find, when they are immersed in the middle of the readings and come up with a fundamental question about the item, or something else they have just read.

The right column is for the page number corresponding to each item in the middle column.

What are the "important details" for the middle column?
One thing you may not think of immediately, but which is crucial, is the DATE, no matter what the item is. Please provide a date for cases, articles, websites, proposed legislation, everything. The only item which does not need a date is one you have written yourself for the purpose of the packet. (But if you were to excerpt something you wrote a few years ago, then you would give that date.)

A.  Cases should be listed with
- the name, as shortened as it ought to be (which is not the same as bluebook "short-form"). Thus Festo might be just Festo or Festo v. SMC, Graham v. Deere would be just that, and less well-known cases would be named without Inc.'s and with real abbreviations not bluebook silliness: "Int'l" is fine, "Intern." is ridiculous.). Use both parties' names unless the first is unusual and the second insignificant, such that the case would tend to be discussed as, e.g., Sbezzegootti, not Sbezzegootti v. Jones.
       Examples Brasseler, Reiffin v. Microsoft, Exxon v. Mobil. For a lawsuit like Brasseler, where there were reported decisions on several different issues, or for a case that covered a host of issues, like In re Yarn Processing, you might indicate the issue of interest in parenthesis, to remind us that there was more going on in the case as a whole);
- the court;
- the date, usually just the year, but a more precise date may be appropriate if the case is quite recent, or if you are contrasting two cases whose dates are close; and
- the author of the opinion(s) if the court is the Federal Circuit or Supreme Court, or if the author is noteworthy (Posner, Cohn of EDMich, etc.) and the author's status if that is noteworthy (e.g., a magistrate or special master, etc.). For Federal Circuit 3-judge opinions, use the convention of naming the panel and underlining the author of the majority opinion (again, see COVERS.DOC). If there is a dissent that is germane to your topic, you will probably include it inside the packet, or at least allude to its existence there. In the former situation, give the dissent a separate line in the middle column and a corresponding page number in the right column, too. In the latter, the middle column might say something like "(dissentby Justice Douglas omitted.)" For situations not covered here, apply similar logic.

B.   Statutes, Regulations, and MPEP Provisions : For statuory and regulatory provisions, please provide:
- The section number (or rule number) alone is enough if someone who knows patent law (all of you) would recognize it as being in 35USC or 37 CFR. Otherwise, give the number of the capital-T Title and the section cite. If the provision is in some Title of the code whose number we would not recognize (that is, if it is notin 17 USC, copyright, or 15 USC, trademarks), tell us the subject matter of that title, too. Examples: Section 103; Rule 56; MPEP 2133.03; 17 USC 107; Title 19 (Customs Duties), Sec. 1337.
- The heading (that is, the title, as opposed to the Title) of the section, unless it is 101, 102, 103 or 112. You can use your own or Congress's heading. If you group a number of statutes together, you may want to make up a word title that describes the set in a manner useful to the reader.
- The year (and month, too, if relevant) when the statute was last amended, preceded by the words "last amended," as well as the date of enactment, preceded by the words "enacted." For example: 35 USC 102, enacted 1952, last amended 1999. (In my view, bluebook rules for dating statutes are useless. Who cares (tomorrow, or in 10 years) what edition of USCA you looked at when you wrote whatever you wrote? Chances are very good it was the latest one available at that time, and we already know when you wrote. If you simply put "(2005)" (because you are looking at the current USCA) to identify a statute that has not been changed since 1952, readers who are considering that same statute in connection with a 1956 opinion will have to do further research to determine if the language in 1956 was different from what it was in 2005. Similarly, if the statute was amended during the year, people reading your work will not know whether your version is before or after that change. Inside the packet, however, please include the bluebook cite for any statutes at the start of the item, just as you do for cases.

Articles: Provide the following information in this order: author(s), title of the article, name of the periodical and date. Again, the date need only be the year unless there is some significance to a more precise date.
- If the article is from a symposium whose date is earlier than the date of the article, include that date and the title of the symposium, too. See COVERS.DOC, p.5.
- Provide information about the author or authors that will help us understand their expertise and perspective. Sometimes you can find this information in a biographical footnote, sometimes you will need to do a little digging. If the author is a law student, please say so. (How will you know? In the old days, anything called"Note" was by a student. These days, students may write things that are not called "Note." Also you can always look the person up in Martindale or on the web, and check out the date of law school graduation.) If the author is at a firm, research whether that firm ‑‑ if not that person ‑‑ was involved in any important cases cited in the article. Often, that is how the author began researching the subject. Even for academics, research if the author is "of counsel" to a party or amicus on a leading case on the issue that the article deals with. Put that information (succinctly) right on the cover sheet; repeat it, with amplification as appropriate, in the packet at the start of the article, too.
       The author information on the cover sheet should generally not reproduce an entire biographical footnote, although it may draw from that footnote. The key in all of this is to exercise judgment, and to be succinct yet informative.

D.   Material you have authored .   When your own work appears as a stand‑alone item (as opposed to an internal summary, comment or cross‑reference), list it with its page number on the cover sheet. Note that some material you have authored may be an introduction, or final note for another item, and will not logically belong on its own page. Whether or not to list such material on the cover sheet is a judgment call. Ask yourself this:after the first skim of your packet, is there a good chance we will want to look again at your terrific hypotheticals and your excellent explanation of the patent law of country X? If so, the cover sheet should help us find them.

E.  The Standard Disclaimer:   Over the years, my students and I have developed a standard disclaimer about editing, emphasis, reformatting, etc. COVERS.DOC has versions appropriate to those packets. Adapt them to your own circumstances. (The use of such a disclaimer is an old trick from writing briefs with severe page limits. If, in the table of contents, or somewhere not subject to page limits, you write "Except as noted, emphasis has been supplied throughout," you save yourself a few lines in the body of the brief.)


4. PAGE NUMBERING, AND HEADERS AND FOOTERS

Page numbering:  Please number the pages consecutively at the bottom center with your initials and the page number(e.g., RJM‑1).

Headers: Each page should have two headers: one on the right and one on the left. The one on the left will be the same for every page. It should include the name of the seminar, title of your talk (condensed to a few words, if you have a long title), your name, and the date of your talk.
The right hand header should be the name of the particular item, abbreviated to a few words, but enough so that we can find things as we go back through the pages. For a case, use the colloquial name (Pfaff would be enough). For an article, use a condensed version of the title, maybe the date, maybe the author's name - if the author is a name we recognize before we read your packet, the periodical name if that is important, etc. Lead off with the thing people are most likely to think of when they search back through the packet after the first skim. For example:
       - Forum Shopping Data (Moore 2001)
       - Patent Pitfalls (MichLR Stu.Note 1946)
       - Frostick on Plant Patents
In Word, section breaks (Insert-Break- SectionBreak) between items are necessary in order to make the pageheaders change.

Footers:   Aside from the centered page number, you can have any footers you like. I personally like to use either the printed or the last-saved date and time on my pages. That way, when my desk is littered with printouts, I can figure out which one is the latest.

Line Numbering:   Please use line numbering on all the materials inside your packet. (The cover sheet does not need line numbering.) Line numbering makes it much easier for me to write to you about your draft without having to quote extensively, or write things like "first full paragraph, third sentence."
How to get line numbers:  In MSWord, the font style and size for line numbering is the default in your template. If your template is set to Times Roman 12, your line numbers will be Times Roman 12 no matter what the adjacent text is. The solution is to use a special template for line-numbered documents. There is one called "packet.dot" on the course website, but Word being what it is, you may want to create your own. Open a NEW document and make it a TEMPLATE not a document. (In Word2003: File - New - Find templates on my computer - Blank. Then check template, NOT document, in the buttons at the lower right). In the blank template, change the font to whatever you want for line numbering (Format - Font - Font Style and Size). Then make sure you click on the "DEFAULT" button in the bottom left of the Font box, and say "yes." Voila. Documents created with that template will have the line number size you want. Change the text font and size manually in the document. For line numbers, go to File - Page Setup - Layout - Line Numbers. Only number every 5 lines. You can continue numbers through an item, and start fresh with the next item, or re-start on each page.


5. EDITING

Editing means abridging, adding cross-references, inserting comments to clarify -- or bracketed text to replace -- the author's words when they are confusing or wrong, and so on. Additional advice about editing in general is in How the Seminar Will Work .

The Start of An Item

What goes at the beginning of an item? This is the place for the bluebook cite. If the item is a case, use as much of the caption as makes sense. Often this is NOT everything in the download. For example, we only need the US or F. cites, not the parallel reporter or LEXIS or Westlaw cites. We may not need to know all the parties. Do you include counsel names, or the amicus brief list? Maybe: it depends on what information is relevant. If the item is an article, include at least the biographical tidbit you included on the cover sheet. If there is more that is of interest, include that, too.

Do you need to put each item on a new page? Not necessarily. A shorter item (a statute or regulation or the full text of a claim of a patent), can be on the same page with a previous or subsequent item. Make sure that there are visual cues on the page itself, though. For example, the page header should let the busy reader know that there are two different items on the page.

Cross‑references. If an article discusses a particular aspect of a case that you also reproduce by itself, cross-reference to the specific page.If a case refers to a statute, one that you quote in full in the packet, you can delete the text of the statute in the case (all too often stuck in a footnote, anyway) and cross-reference to your own statute page.Of course, if the case quotes specific language that it then construes, leave in the court's quote.Intelligent use of cross-references will add to the value, and excellence, of your packet.

Internal citations. Whether in material you author or in an edited case, be on the lookout that the FIRST time something is cited, it receives its full cite.  For example: suppose you delete the first three pages of a case or article. The first page in your edited version of the document now includes a quotation cited only as "Name at 456." Please go back and find the full cite in the deleted passage so that in your packet we will read "Name [Name, Inc. v. Blutz Co., 51 F.3d 434,] 456 [(Fed. Cir. 2001)]." Please also insert full citations if the previous mention of a case is more than a few paragraphs back.

Downloads. To make downloaded cases and articles readable and useful, please put them into two‑column format. Use left (NOT full) justification and use a font and size that allows a reasonable amount of text to appear on a line. I usually use Times Roman 10. You will have to spend some time cleaning up downloads, but this is a good way to force yourself to read every word with care, whether you have read the material before or not.

Case names: All internal case names, whether long or short form, must be either italicized or underlined, everywhere they appear. The rest of the citation, however, should not be italicized: this has been a problem with Westlaw downloads, and may still be. (Please do not distract me with italicized page citations and court data when I read your drafts.   I consider that on a par with a very glaring typo.) Also, case names (but not references to the party of that name) in short form (Pfaff or Markman) should be italicized/underlined so that the busy reader can find them wherever they are. You will need to look for this because Westlaw and Lexis (and maybe even the court itself, if, for example, you use Federal Circuit slip opinions ) are not reliable.

Other citations: Please follow bluebook rules to reformat citations from downloads.

Non-English English: By "Non-English English" I means most claims, statutes and regulations).
Claims, statutes and even regulations may often be unreadable, or at least very difficult to comprehend when they are presented in paragraph form. I therefore ask you to use what I call "sequential indentation" whether or not that was done in the original. That means using tab stops to identify what goes with what, in an analog to a tabbed outline. Be sensible about this: tab stops of 1/2" will mean that by the third indent there are two words per line. This is visually ghastly. Tab stops of about .25" work well.  For a really convoluted claim or statute, you may want to switch back to using the full page, rather than two columns, so you have enough room to make the grammatical structure clear.

For an example of what I mean by "sequential indentation" see how I reformatted the Japanese patent statute for Ryoko's talk. (I used the full width of the page there, so the tabs are 1/2 inch instead of 1/4 inch, as they would be on a 2-column page. Note that parallel phrases are shown at the same tab stop. Think, also, about where you would put in an ellipsis if you were focusing on a particular part of the statute: the text before and after the ellipsis should be at the same tab stop, the text that has been replaced by the ellipsis should be farther to the right. If you have ever diagrammed sentences, you should be able to reformat your statutes and claims.) To avoid having to add "{formatting supplied ‑ RJM}" all the time, just use the standard disclaimer on the cover sheet, or at the start of the item.

Footnotes/Endnotes: Please delete as many of these as are irrelevant.
Footnotes for page citations ("id. at 375") where we might really care what page something appeared on should be put into text without an id. E.g., "(at 375)." If the particular page number is not important, or if previous text was from the same page, please delete the whole footnote.
"Id.'s" generally: If the "id." refers to something quoted more than a paragraph away, and the source is important, then insert the short name of the source in text and delete that footnote that just says "Id.". The busy reader, skimming through, should not have to hunt for the source.
The first full citation with court and year should be right there in the text for us to see, not in a footnote.
Footnotes with commentary should be deleted, if not relevant to your topic. If they are relevant, but deserve to be footnotes, move them adjacent to the referenced text, indented and smaller or italicized so that we know that the material is a footnote.   Footnote numbers, however, should not be changed.(Beware of automatic numbering, since an interested reader may need to know that the first footnote you quote in full is actually number 14.) I find LEXIS downloads easier to work with than WESTLAW because WESTLAW uses endnotes for everything.
For some examples of what I like done with footnotes, look at the readings for the seminar, such as Regents of UNM v. Knight.

Figures and Tables: Downloads may say "see figure in original" or totally mess up tabulated data originally typed in constant‑width fonts. Your job is to insert the figure or data where the reader can see it. You can have several figures together in a separate item, or restore the figure to where it belongs in the text, just as if we had the paper copy. To do this, you may have to hunt down a paper copy of your selection, or spend time retyping a table.But it is your job, and you need to do it before you hand your draft materials in for my review.

Patent Figures:You may include a case that does not reproduce a key patent figure, because the judge had it in the Appeal Appendix and didn't care about non-party readers. Or the cover sheet of a patent may be useful to us for your own purposes.It is easy enough to obtain these images, and you should include them in your packet if they are needed.

Artifacts of LEXIS and WESTLAW downloads: Delete phrases that LEXIS uses to designate fields such as "SUBSEQUENT HISTORY." WESTLAW ends up inserting a single blank space at the start of paragraphs: change it to a tab or delete it. It is neither a standard, nor a visually pleasing, way to mark a new paragraph. Please delete or fix anything else that is an artifact of downloading, and not present in the original.

Quotations: For the 2 column format you will use for most items in your packet, please indent any quotation that goes on for more than about two lines. As I've said in my editor's notes in the readings so far, quotations are either boilerplate, which we can happily skip, or the most important text around, and we must give it our special attention. Either way, indenting helps the busy reader.

Showing Deletions - Use *** if you delete MORE than a single paragraph and ... if you delete less than a paragraph.   Use [] to replace ANY amount of text -- from a single word to 35 pages -- with your own word or words. This tells us that the word before the "[" was by the other author, and the word after the "]" was, too, but who knows what that author had in between. If it should matter to the reader that the bracket replaces huge amounts of text, tell us that inside the brackets. (If you want to insert an explanation in line and NOT replace words, use curly brackets, italics for the explanation, and your initials "{blah blah - RJM}.")

Materials you author:If you write a hypothetical, or a page of background information, you can do it in double‑spaced full‑page‑width appellate brief format (see the Federal Circuit Rules) or the same 2-column format you use for other materials.
Lines of text with more than about 14 words per line are painful to read (for me anyway). At the opposite end of the spectrum, excessive white space suggests lack of content and waste of paper. Choose your font, margins and spacing accordingly.

For shorter comments and summaries that are internal to an article or case, make sure we know who is saying what, and facilitate our skipping your comments if we choose to, by doing reader‑friendly things like using italics, using brackets, italics for the comment, and adding your initials at the end of the comment so we know who the author is. The materials I have edited for the seminar can be referred to for guidance.

For longer comments, please make liberal use of labels and headings. Give your work a title, so we know what to expect in it. "Introduction" will never be enough: we already KNOW it is an introduction because it is the first item in the packet.   If you have decided to tell us some history, or the way the problem arises in real life, or the statutory scheme underlying the cases, let us know that from the title of the item. Tell us the main points by using headings.

AVOID STOPPERS. "Stopper" is my term for anything -- typo, grammatical error, awkward phrase, non sequitur, lack of parallel construction, indication of fuzzy thinking, etc., etc., -- that makes the reader have to stop and go back and re-read and ponder what the writer must have been trying to say. Good writers re-read their drafts and eliminate stoppers before handing the draft to anyone else. In some sense, this requires them to listen to what they wrote. (Sometimes you affirmatively want to employ a stopper. A very short sentence, or a sudden use of a colloquial phrase, can be a very effective stopper. Like this one, you jerk.) EVERYONE's writing has stoppers, mine included, but decent, upstanding people go on search-and-destroy missions to get rid of all the unintended stoppers before pushing that 'send' button.

In general, follow the best rules you know for good writing. Good writing should be easy to skim. You should be able to read it aloud without stumbling, guffawing or suffocating. It should be long on content and short on platitudes and filler. When I review your draft, I will evaluate your writing with great attention.

Do you need to write the first item in the packet? Not necessarily. As stated above, the cover sheet is an annotated table of contents, and serves the purpose of most law-review-type introductions in a more visually useful and definitely less verbose way. Some packets delve into arcane subject matter none of us is that familiar with.   (Examples from prior years include:creditors rights in patents under the UCC and the patent law (Chris Liro '00); and European Patent Office opposition practice (John Russell '03.)If your packet is like that, you probably will need to write an introduction to bring us up to a level above total ignorance. But please do NOT include an Introduction that repeats the cover sheet information, or utters platitudes about basic patent law concepts that we all know already. That is a waste of your time and ours. Let us begin reading the meat. We should only read your writing when it makes sense for you to ask for our attention.


6. CHECKLIST FOR HANDING IN YOUR DRAFT

A. Proofread by eye.Spellcheck will not find all your errors, and occasionally introduces some.  More than one typo per page is outrageous.   Less than 3 in the whole document is stellar. (Some typos just refuse to be found until years later.)

B. Cover Sheet. Compare your cover sheet to the instructions.Make sure you have included the information you are supposed to include and deleted the information you are not supposed to include. If I have to keep writing "see instructions" when I give you comments, your work has not met the minimum standard for "good faith (sincerity and intelligence)" (see How the Seminar Will Work). I look at the cover sheet first, to understand what you have chosen, what you want us to learn, where you are coming from, etc., etc. If it is well done, I am likely to see everything else through rose-colored glasses.

C. Title.   Make sure your title is accurate and complete. If it misleads me, I may waste time criticizing things that would be fine if your title were correct, and not appreciating your insights and preparation.


7. VISUAL AIDS AND THE TALKING PART OF THE TALK

For your talk, prepare some overheads or powerpoint slides.A good rule of thumb is one visual for every 1 or 2 minutes.   Since your talk, without interruptions, should be about 30 minutes, this means about 20 overheads. They should guide us through your talk, and help you keep on track, without overwhelming us with information or distracting us from listening.   They should not have too many words, and need not be in sentences, but they should be quickly comprehensible. Where claim or statutory language is crucial to your points, you can quote it on an overhead.   My powerpoint slides are a place to start, but they are often too crowded, I know. You can do better.

Getting ready for Public Speaking: Rehearse your talk as many times as you can. Do not write a script for yourself, or memorize or read from a prepared text.   Talk. (Yes, talk aloud to yourself. Obviously you have to choose a good place to do this.)You will find that trying to speak aloud the things you want to say will help you focus your ideas, illuminate what is confusing, organize things in a more comprehensible way, and generally be the best way to give a great talk. When I can force myself to prepare this way, I am always glad.   It is not easy, and it takes hours, but it is a skill well worth acquiring. Whether you go on to practice law, run for political office or manage your own high-tech business, you will have many chances to give talks, sometimes known as "oral argument" or "opening to the jury" or "sales presentation" or "greeting to stockholders". Being good at it will be rewarding, spiritually and otherwise.

***

I expect you to take the time to put your readings into useful shape before you hand in a draft to me.I expect you to make your packet totally perfect after you receive my comments. You must take full responsibility for the final product, exercising judgment with regard to which of those comments to follow, which to ignore, and what to do that would be even better than what I suggested or failed to notice.

Clients, supervising attorneys, judges, venture capitalists, Congressional committees, etc. expect you to present your work in a way that shows respect for them, their busy schedules, and sometimes their lack of interest, expertise, or mental agility or ability. So does everyone in this seminar, including me.

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