Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`Page 1
`
`Richard E. Griffin, Frank George Vlahakos, Mark
`Tidwell, Jackson Walker LLP, Houston, TX, David
`Fielding, Fielding Parker et al., Fort Worth, TX,
`Stephen B. Benisch, Attorney at Law, Clark, NJ, for
`Defendant.
`
`FINDINGS OF FACT, CONCLUSIONS OF LAW,
`AND CONCLUSION AND ORDER
`EWING WERLEIN, JR., District Judge.
`Table of Contents
`
`Only the Westlaw citation is currently available.
`
`United States District Court,
`S.D. Texas,
`Houston Division.
`SANITEC INDUSTRIES, Plaintiff,
`v.
`MICRO-WASTE CORPORATION, Defendant.
`
`Civil Action No. H-04-3066.
`Nov. 28, 2006.
`
`Richard J. Oparil, Jennifer King, Patton Boggs LLP,
`Washington, DC, for Plaintiff.
`
`Title
`
`Findings of Fact:
`
`Page
`
`1
`
`2
`
`3
`
`15
`
`23
`
`26
`
`26
`27
`
`I. The Parties
`
`II. The Relevant Sanitec Entities
`
`III. The Efficacy of the Patent Application
`Process Under the Patent Cooperation
`Treaty, Issuance of the '000 Patent, and
`Whether There was Inequitable Conduct
`IV. Whether the Patent is Invalid Due to
`Anticipation.
`
`A. Comparison of “Heating Means”
`Limitation in Claim 1 (see Conclusions
`of Law Nos. 79-92) with Alleged Prior
`Printed Publications
`
`B. Comparison of the Eight Steps of the
`Process Claim 18 (see Conclusions of
`Law Nos. 93-122) with Alleged Prior
`Printed Publications
`
`V. The Trademarks
`VI. The Facts Regarding (i) Alleged
`Conversion by Micro-Waste, (ii)
`Alleged Patent Infringement by Micro-
`Waste, (iii) Alleged Lanham Act and
`Unfair Competition by Micro-Waste,
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`AVS EXHIBIT 2013
`Toyota Inc. v. American Vehicular Sciences LLC
`IPR2013-00417
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`Page 2
`
`(iv) Alleged Fraudulent Inducement of
`the License Agreement by Micro-Waste,
`(v) Alleged Breach of the License
`Agreement by Industries, and (vi)
`Alleged Damages Sustained by Micro-
`Waste from Industries's Breach of the
`License Agreement
`
`VII. Group's Agreements with Platinum
`Funding
`
`Conclusions of Law:
`
`I. Patent Applications Under the Patent
`Cooperation Treaty
`
`II. Proof Required to Show Patent
`Invalidity
`
`A. Requirements to Show Invalidity due
`to Anticipation: 35 U.S.C. § 102(b)
`
`B. The “On Sale” Bar
`
`C. The Prior Printed Publications Bar
`
`D. Construction of Claims 1 and 18 for
`Comparison Purposes on Anticipation
`
`III. Patent Unenforceability: Inequitable
`Conduct
`
`IV. The Requirements for Fraudulent
`Inducement
`
`V. License as an Affirmative Defense to
`the Patent Infringement Claim
`
`VI. Breach of the License Agreement
`Contract by Licensor Industries
`
`VII. Conversion
`
`VIII. Lanham Act/Unfair Competition
`
`51
`
`54
`
`58
`
`59
`
`63
`
`67
`
`70
`
`84
`
`86
`
`89
`
`89
`
`93
`
`95
`
`97
`
`Conclusion and Order
`
`*1 After all parties have rested and closed the
`evidence,
`and having heard and considered the
`arguments and authorities of counsel, the Court makes
`the following findings of fact and conclusions of law
`pursuant to Fed.R.Civ.P. 52, followed by the Court's
`Conclusion and Order.
`
`Findings of Fact
`Except where the clear and convincing evidence
`standard of proof applies and the Court so notes, the
`Court finds from a preponderance of evidence as
`follows:
`
`I. The Parties
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`Sanitec
`Plaintiff/Counterclaim Defendant
`1.
`Industries, Inc. (“Industries”) is a corporation organized
`under the laws of the State of California, having its
`principal place of business in California. Industries was
`incorporated on February 19, 2003.
`
`2. James Harkess (“Harkess”) is the President and
`CEO of Industries.
`
`3. Defendant/Counterclaim Plaintiff Micro-Waste
`Corporation (“Micro-Waste”) is a corporation organized
`under the laws of the State of Texas, having its principal
`place of business in Fort Worth, Texas. Micro-Waste
`was founded in September 1989 and was incorporated
`in February 1990.
`
`4. Robert Bollinger (“Bollinger”) is the President of
`Micro-Waste.
`
`II. The Relevant Sanitec Entities
`5. At
`least
`in the 1980's Vetco Sanitec GmbH
`(“Vetco Sanitec”) was
`a German subsidiary of
`Combustion Engineering (“CE”).
`
`6. During that period of time CE-Environmental,
`(“CE-E”) and CE Impell
`(“CE-I”) were also
`Inc.
`subsidiaries of CE.
`
`7. In December 1989, Asea Brown Boveri Inc.
`(“ABB”) purchased CE. The two companies merged in
`January 1990.
`
`thereafter, CE-E became ABB
`Shortly
`8.
`Environmental Services,
`Inc.
`(“ABB-E”), and CE-I
`became ABB Impell (“ABB-I”).
`
`9. John Cusack (“Cusack”) and Joseph Delloiacovo
`(“Delloiacovo”) were both employees of CE-E.
`
`In 1990, ABB formed ABB-Sanitec,
`10.
`(“ABB-S”).
`
`Inc.
`
`11. Cusack served as President of ABB-S from its
`inception in 1990 until 1993.
`
`12. In 1995, ABB-S became Sanitec, Inc. (“Inc.”).
`
`13. In April 2001, Sanitec, Inc. became Sanitec,
`
`Page 3
`
`Ltd. (“Ltd.”).
`
`14. On February 20, 2002, Sanitec Group, LLC
`(“Group”) was formed.
`
`15. Group was owned by Guardian Investments,
`LLC (“Guardian”), which was in turn owned by Steven
`Ventre (“Ventre”).
`
`16. Guardian is an Ohio limited liability company
`organized on or about October 1, 1999.
`
`17. Ventre was the sole Member of Guardian and
`Group.
`
`18. Group was managed by Delloiacovo as
`President until his resignation in February 2004.
`
`19. In February 2004, Group assigned its assets to
`Industries.
`
`III. The Efficacy of
`the Patent Application Process
`Under the Patent Cooperation Treaty, Issuance of the '
`000 Patent, and Whether There was
`Inequitable
`Conduct
`20. The patent-in-suit is U.S. Patent No. 5,270,000
`(“the '000 Patent”), entitled “Apparatus and Process for
`Treating Medical Hazardous Wastes.” The technology
`covered by the '000 Patent (the “Sanitec Technology”)
`pertains
`to a device, often called a “microwave
`disinfection unit” or “MDU,” and process that uses
`microwaves to disinfect and sterilize medical waste in
`an economical and environmentally friendly manner.
`
`*2 21. The Sanitec Technology was originally
`developed by employees of Vetco Sanitec.
`
`22. The named inventors of the '000 Patent, Helmut
`Goldner, Reinhold Kamann,
`and Heinz Leinski
`(“Leinski”) (collectively, the “Inventors”) were located
`in Germany.
`
`23. On April 19, 1989, a Federal Republic of
`Germany patent application, Serial No. P3912751.6
`(also called DE 39 12 751) (the “German Application”),
`was filed with the German Patent office and issued as
`German Patent No. 3912751 (the “German Patent”).
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`the Sanitec
`24. The German Patent discloses
`Technology and is a foreign counterpart of the '000
`Patent. Industries is the current owner of the German
`Patent.
`
`25. On April 16, 1990, international application No.
`PCT/US90/02043 (the “PCT Application”) was filed
`under the Patent Cooperation Treaty (the “PCT”).
`
`26. The Patent Application designated Canada,
`Japan, and the United States
`for national patent
`protection.
`
`27. The PCT Application listed Vetco Sanitec as
`the applicant for Japan, ABB-E as the applicant for
`Canada, and the Inventors as the applicants for the
`United States (collectively, the “Applicants”).
`
`28. The PCT Application included a 19-page
`description, 4 pages of claims, a 1-page abstract, and 7
`pages of drawings.
`
`29. The PCT Application claimed priority based on
`the April 19, 1989, German Application, and a certified
`copy of the German Application accompanied the PCT
`Application.
`
`30. The PCT Application was also accompanied by
`a request to charge fees to a deposit account, and the fee
`calculation worksheet provided that the European Patent
`Office (“EPO”) would conduct the international search.
`
`31. The fee calculation worksheet also provided
`that the designation fees were to be applied first to the
`United States, and then to Japan and Canada, in that
`order,
`indicating that
`the Applicants viewed patent
`protection in the United States being of highest
`importance.
`
`the EPO notified the
`32. On May 15, 1990,
`Applicants' attorney, Richard Berneike (“Berneike”),
`that the search copy of the PCT application had been
`received by the EPO on May 9, 1990.
`
`33. The PCT Application was published with an
`international search report on November 1, 1990, under
`PCT Publication No. W090/12602.
`
`Page 4
`
`the United States
`34. On September 27, 1991,
`Patent and Trademark Office (“USPTO”) received a
`transmittal
`letter
`from the Applicants'
`attorney
`Berneike,
`requesting that
`the PCT Application be
`entered into the national stage in the United States.
`
`35. In the September 27, 1991 transmittal letter,
`Berneike stated that the request to enter the national
`stage was being made “by 30 months and a proper
`demand for International Preliminary Examination [a
`“Demand”] was made by the 19th month from the
`earliest claimed priority date.”
`
`36. The evidence is not clear and convincing that
`Berneike's representation that a proper Demand had
`been filed within 19 months after April 19, 1989,
`priority date was either mistaken or false.
`
`*3 37. A proper Demand for
`International
`Preliminary Examination was timely filed within 19
`months after April 19, 1989.
`
`the PCT Application was
`38. After processing,
`application
`Serial No.
`assigned United
`States
`07/768,870 (the “'870 Application”).
`
`39. On October 22, 1991, the USPTO drafted from
`the deposit account the national stage application fee for
`the '870 Application.
`
`40. On October 25, 1991, the USPTO mailed to
`Berneike a “Missing Requirements under 35 U.S.C. §
`371 and 37 CFR 1.494 or 1.495 ” notification, which
`stated:
`
`The following items must be received by: 22 [ ] 32
`months
`from any claimed priority date for
`the
`application to be accepted for examination:
`
`...
`
`Oath or declaration of the applicant(s) for DO/EO/US
`
`Surcharge for providing the fee and/or oath or
`declaration later than [ ]]] 20 [ ] 30 months from any
`claimed priority date (37 CFR 1.492(e)) $120
`
`41. The “22” months box, rather than the “32”
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`months box, was mistakenly checked on the foregoing
`Missing Requirements form, an obvious mistake since a
`Demand had been filed (see supra Findings of Fact Nos.
`35, 36, and 37), which entitled the Applicant
`to 30
`months (plus two months grace period) within which to
`enter the national stage.
`
`42. In fact, the Missing Requirements form was not
`mailed until October 25, 1991, which itself was more
`than 22 months after the April 19, 1989, priority date.
`Thus, when the Missing Requirements form was mailed,
`there was no possibility that the applicants could submit
`their oath or declaration within 22 months from the
`priority date. This further evidenced the mistaken
`marking of the box designating “22” months.
`
`43. The purpose of the Missing Requirements form
`is to provide the applicant(s) with an opportunity to
`satisfy the requirements of 35 U.S.C. § 371(c).
`
`44. If no Demand had been made and 20 months
`(plus two months grace period) from April 19, 1989,
`had actually been the time allowed to enter the national
`stage, then by October 25, 1991 (30
`months after
`the priority date),
`the USPTO instead of sending a
`Missing Requirements form would have, if anything,
`given notice that
`the PCT Application had been
`abandoned as to the United States.
`
`the USPTO sent a Missing
`that
`45. The fact
`Requirements notification as late as October 25, 1991,
`evidences that the USPTO was actually processing the
`'870 Application under Chapter II of the PCT, and that
`under 37 C.F.R. 1.495(c) the Applicants therefore had
`32 months after the April 19, 1989, priority date within
`which to file the declaration.
`
`46. On October 31, 1991, Berneike responded to
`the Missing Requirements notification by submitting
`three copies of the 35 U.S.C. § 371(c)(4) Declaration
`and authorizing the USPTO to draft the surcharge from
`the deposit account.
`
`47. Because the Declaration was filed within 32
`months of the April 19, 1989, priority date-i.e., before
`December 19, 1991-the Declaration was timely filed.
`
`Page 5
`
`*4 48. Because October 31, 1991 is the date on
`which the Applicants fully satisfied the last of the 35
`U.S.C. § 371(c) requirements, October 31, 1991,
`is
`displayed as the “371(c) Date,” the “102(e) Date,” and
`the filing date on the file wrapper.
`
`49. Although the file wrapper lists the “Filing
`Date” of the '000 Patent as October 31, 1991, this is
`merely the date of receipt of all 35 U.S.C. § 371(c)
`requirements, not the actual international filing date.
`
`50. On November 25, 1991, the USPTO mailed to
`Berneike a “Notification of Acceptance of Application
`under 35 U.S.C. § 371 and 37 CFR 1.494 or 1.495.”
`Thus, the USPTO determined that the '870 Application
`was properly filed in the United States under 35 U.S.C.
`§ 371 and either 37 C.F.R. § 1.494 or § 1.495, i.e., that
`it met the requirements for entering the national stage in
`the United States under the PCT.
`
`51. The Notification of Acceptance states:
`
`The applicant is hereby advised that the United States
`Patent and Trademark Office in its capacity as a
`Designated Office, [ ] Elected Office, has determined
`that the above identified international application has
`met the requirements of 35 U.S.C. § 371 and 37 CFR
`1.494, [ ] 1.495 and is ACCEPTED for national
`patentability examination in the United States Patent
`and Trademark Office.
`
`52. The § 1.494 box on the Notification of
`Acceptance form was mistakenly marked instead of the
`§ 1.495 box, which was the only section of
`the
`Regulations under which the USPTO could have
`accepted the '870 Application as properly filed. (As it
`happens, the same USPTO employee filled in both this
`form and the Missing Requirements form referred to
`above in Findings of Fact Nos. 40-45).
`
`53. The foregoing clerical error in marking the §
`1.494 box is obvious because the '870 Application was
`filed on September 27, 1991-which was more than 20
`months after
`the April 19, 1989, priority date-and
`therefore the '870 Application would not have met the
`requirements for entering the national stage under
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`Chapter I of the PCT and 37 C.F.R. § 1.494.
`
`54. Because the '870 Application was filed on
`September 27, 1991, within 30 months after the April
`19, 1989, priority date, the '870 Application met the
`requirements for entering the national stage under
`Chapter II of the PCT and 37 C.F.R. § 1.495, so long as
`a Demand electing the United States was timely filed. (
`See Findings of Fact Nos. 35, 36, and 37, above.)
`
`55. If a Demand electing the United States had not
`been timely filed, the '870 Application would not have
`met the requirements of Chapter I or Chapter II of the
`PCT, and the USPTO would not have accepted the '870
`Application under 35 U.S.C. § 371.
`
`'870
`the USPTO accepted the
`56. Because
`Application under 35 U.S.C. § 371 and issued its Notice
`of Acceptance to that effect,
`the '870 Application
`necessarily met all the requirements for entering the
`national stage under Chapter II of the PCT, including
`the requirement
`that a Demand electing the United
`States be filed no later than November 19, 1990.
`
`*5 57. The patent offices of Japan and Canada also
`accepted the PCT Application for national stage entry
`under Chapter II of the PCT (i.e., more than 20 months
`but fewer than 30 months after the April 19, 1989,
`priority date), and it
`is exceedingly improbable and
`virtually inconceivable that the patent offices in three
`different nations at different
`times and in different
`places would have all mistakenly accepted the PCT
`Application for national stage entry under Chapter II of
`the PCT if a Demand electing those countries had not
`been filed with the EPO.
`
`58. It is no less improbable and inconceivable that
`the Applicants filed a Demand electing both Canada and
`Japan but not the United States, given the fact that the
`United States, as found above in Finding of Fact No. 31,
`was
`the Applicants'
`highest
`priority
`for
`patent
`protection.
`
`PCT
`the
`of
`translation
`Japanese
`59. The
`Application, which has been translated into English,
`states:
`“Request
`for
`preliminary
`examination
`
`Page 6
`
`Requested.” This direct evidence that a Demand
`electing Japan was
`timely filed provides
`further
`circumstantial proof that a timely Demand electing the
`United States was filed at the same time.
`
`the
`60. When the '870 Application was filed,
`USPTO maintained two files for PCT applications: (i) a
`file under
`the PCT application number
`for
`the
`international stage; and (ii) a file under the United
`States application number for the national stage.
`
`61. The Demand is missing from the file wrapper
`for the '870 Application, but may have been placed in
`the separate international file. The parties attempted to
`search the international file for the '870 Application, but
`were informed that the USPTO could not find it.
`
`62. The evidence is not clear and convincing that a
`Demand electing the United States was not timely filed
`with the EPO.
`
`63. Krisanne Thornton was the patent examiner
`who performed the substantive examination of the '870
`Application (the “Examiner”).
`
`64. On November 27, 1992, the Examiner sent to
`Berneike an Examiner's Action notification rejecting
`numerous claims in the '870 Application as being
`unpatentable over the combination of two prior art
`references: German Democratic Republic Patent No.
`DD271454, dated September 6, 1989 (the “East German
`Patent”); and United States Patent No. 4,999,471, dated
`June 5, 1989 (the “Guarneri Patent”).
`
`the USPTO received
`65. On January 21, 1993,
`Berneike's response to the rejection, in which he stated
`that the effective filing dates of both the East German
`Patent and the Guarnari Patent were subsequent to the
`effective filing date of the '870 Application, such that
`they were not properly considered prior art.
`
`66. On April 21, 1993, the Examiner conducted a
`telephonic interview with Berneike. The Examiner's
`interview notes
`reflect
`that based on Berneike's
`representation in response to the notice of rejection, the
`Examiner
`requested from Berneike a copy of
`the
`translation of the German priority document in order to
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`confirm “continuity in the priory doc[ument].” A copy
`of
`the Examiner's
`interview notes was mailed to
`Berneike on April 30, 1993.
`
`*6 67. Also on April 30, 1993, the Examiner mailed
`to Berneike an Examiner's Action notification in which
`she again rejected the claims in the ' 870 patent on the
`ground that
`they were unpatentable over
`the East
`German Patent and the Guarnari Patent. The Examiner
`explained the reason for the continued rejection as
`follows:
`
`Applicants set forth the assertion that the dates of
`both [the Guarnari Patent] and [the East German
`Patent] are subsequent to the effective date of the
`['870] application,
`that date being April 19, 1989
`provided by the filing date of the German priority
`document, however, until such a time as Applicants
`submit a translation of that priority document so that
`continuity
`in
`the
`present
`application
`can
`be
`confirmed, the above cited rejections are maintained
`and deemed proper.
`
`the Examiner did not rely on Berneike's
`Thus,
`assertion that the '870 Application was entitled to a
`foreign priority date.
`
`68. In response to the April 30, 1993 rejection,
`Berneike
`submitted to the Examiner
`a
`certified
`translation of the German Application.
`
`the Examiner mailed to
`69. On June 28, 1993,
`Berneike a “Notice of Allowability,” in which she
`stated that the previously rejected claims were being
`accepted because “Applicant supplied a copy of the
`translation of the priority document in support of the
`effective filing date of this application and therefore
`overcomes the rejection set forth in paper No. 14 as the
`references relied upon have dates subsequent
`to the
`effective filing date of the present application.”
`
`70. The Supervisory Patent Examiner, Robert J.
`Warden, also approved the allowance.
`
`71. On December 14, 1993, the '000 Patent issued
`to ABB-S as assignee. ABB-S appears as assignee on
`the face of the '000 Patent.
`
`Page 7
`
`72. Micro-Waste had no conversations with the
`Inventors from which it could have gained personal
`knowledge as to any intent or state of mind of the
`Inventors in prosecuting the '000 Patent.
`
`73. Micro-Waste had no conversations with the
`Inventors' representatives from which it could have
`gained personal knowledge as to any intent or state of
`mind of the Inventors' representatives in prosecuting the
`'000 Patent.
`
`74. The evidence is not clear and convincing that
`the Inventors, Berneike, or any other person who was
`substantively
`involved
`in
`the
`preparation
`and
`prosecution of
`the '870 Application and who was
`associated with the Inventors or ABB-S,
`failed to
`disclose information known to the Applicants to be
`material to patentability.
`
`75. Even if the Inventors, Berneike, and/or ABB-S
`failed to disclose material information to the USPTO,
`there is no clear and convincing evidence-either direct
`or circumstantial-that
`they did so with the intent
`to
`deceive or mislead the USPTO. There is no factual basis
`from which such a deceptive intent can be inferred.
`
`76. There was no inequitable conduct in procuring
`the '000 Patent.
`
`IV. Whether the Patent is Invalid Due to Anticipation
`*7 77. The critical date for the '000 Patent against
`which prior art is measured for purposes of 35 U.S.C. §
`102(b) is April 16, 1989. (See Conclusions of Law Nos.
`24, 25.)
`
`78. Micro-Waste at trial did not attempt to prove by
`clear and convincing evidence that any of Claims 2-17
`of the '000 Patent are invalid.
`
`79. Micro-Waste has not argued that any of the
`alleged prior art references introduced into evidence
`invalidates any of Claims 2-17 of the '000 Patent.
`Micro-Waste's challenges based on alleged anticipation
`were only to Claims 1 and 18.
`
`80. Cusack testified that he had first learned of the
`Sanitec Technology in 1987, during his employment by
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`CE-E, and that he began “marketing” the Sanitec
`Technology in the United States in 1988.
`
`81. Delloiacovo, another employee of CE-E who
`was instrumental in evaluating the German technology
`for CE-E, testified that CE-E made no effort to sell the
`Sanitec Technology in the United States prior to the
`spring of 1989 and that it did not become a product line
`for the company until late 1989.
`
`82. Although CE-E had a growing interest in the
`technology and its possible appeal in the United States,
`and attempted to cultivate interest among others, the
`company did not become engaged in actual sales efforts
`in the United States until mid-to-late 1989.
`
`83. The apparatus that is the subject of the '000
`Patent was not the subject of an offer for sale in the
`United States before the critical date of April 16, 1989.
`
`84. Vetco Sanitec created a video in German about
`a Sanitec MDU being operated in Germany, and the
`video was later translated to English (the “Marketing
`Video”) for use in England.
`
`85. The extant Marketing Video is undated,
`although the year “1987” was written on its external
`cover at some unknown later date by Cusack.
`
`86. The script presented in the Marketing Video,
`however, recounts that the Sanitec MDU project started
`in July 1986 and had continued for over two years.
`From this intrinsic evidence it
`is apparent
`that
`the
`Marketing Video was not filmed at least until after July
`1988.
`
`showed the
`testimony that he
`87. Cusack's
`Marketing Video at conferences and sales meetings as
`early as 1987 and showed it
`to potential customers
`beginning in 1988,
`is uncorroborated and, based on
`intrinsic evidence from the video itself,
`is evidently
`mistaken.
`
`is not clear and
`88. The evidence in any event
`convincing that the Marketing Video was disseminated
`and/or publicly accessible before the April 16, 1989,
`critical date.
`
`Page 8
`
`In June 1988, a German paper entitled,
`89.
`“Disposal of
`Infectious Hospital Wastes
`through
`Disinfection with Microwaves Results of Research
`Using the “Gottinger Model” (the “German Paper”) was
`given before the 21st Annual Convention of
`the
`Austrian Association for Hygiene, Microbiology, and
`Preventative Medicine in Baden/Vienna, Austria (the
`“Convention”).
`
`90. The evidence is not clear and convincing that
`printed copies of the German Paper were disseminated
`and/or publicly accessible at the Convention.
`
`*8 91. The German Paper was
`published as an article in HYGIENE
`Magazine (the “German Magazine Article”).
`
`subsequently
`MEDIZIN
`
`the
`that
`contends
`92. Although Micro-Waste
`German Magazine Article appeared in the July/August
`publication of HYGIENE
`MEDIZIN Magazine, the
`Magazine Article itself is not dated.
`
`93. Cusack, whose recollection of dates in other
`contexts was demonstrably faulty,
`testified that he
`included English translations of the German Paper and/
`or German Magazine Article in marketing materials that
`he sent to potential customers in the late-1988 to 1989
`time frame, but his testimony is entirely uncorroborated.
`
`94. The evidence is not clear and convincing that
`the German Paper and/or undated German Magazine
`Article was disseminated and/or publicly accessible
`before the April 16, 1989, critical date.
`
`95. Although Cusack testified that he enclosed an
`Abstract entitled “Disposal of Hospital Specific Waste
`by Microwave Disinfection:
`Investigations on the
`Gottinger Model”
`(the
`“Abstract”)
`in marketing
`materials that he sent to potential customers in the late-
`1988 to 1989 time frame, Cusack's testimony again is
`uncorroborated.
`
`96. The Abstract itself is not dated, and Cusack
`could not recall the date of the Abstract.
`
`97. The evidence is not clear and convincing that
`the Abstract was
`disseminated
`and/or
`publicly
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`accessible before the April 16, 1989, critical date.
`
`In the fall of 1988, a Second National
`98.
`Symposium on Infectious Waste Management
`(the
`“Conference”) was held. The Conference was held in
`San Francisco, California on September 19-20, 1988,
`and again in Boston, Massachusetts on October 3-4,
`1988.
`
`99. The organizers of the Conference restricted all
`presenters, including Cusack, from making any sales
`pitches.
`
`100. Cusack's presentation at the conference was a
`slide
`presentation
`entitled,
`“Innovative
`New
`Technology for Disinfection of Infectious Wastes: The
`Vetco Sanitec Microwave Disinfection System” (the
`“Slide Presentation”), which was an abstract of a paper
`of the same name authored by Cusack and Leinski (the
`“Conference Paper”)
`(collectively,
`the “Conference
`Materials”).
`
`101. The evidence is not clear and convincing that
`copies of the Conference Paper were disseminated or
`were made publicly accessible at the Conference.
`
`102. The evidence is not clear and convincing that
`the Slide Presentation was continuously on display
`throughout the Conference or that copies of the Slide
`Presentation were disseminated or were made publicly
`accessible at the Conference.
`
`103. Although Cusack testified that he was offering
`the MDU machine for sale with his slide presentation,
`this testimony varied sharply with his previous sworn
`testimony that it “was marketing, not sales, per se. We
`were trying to generate market-sales leads from the
`marketing effort,” and that
`the purpose of the Slide
`Presentation was “for the same purpose of marketing,
`trying to find out if we could find customers. Our job
`was to come home with business cards of interested
`people that might buy the machine.”
`
`*9 104. One of the slides states that CE-E is
`“looking to install a demonstration unit in the United
`States within six months.”
`
`Page 9
`
`the slides contained in the Slide
`105. One of
`Presentation depicts a simple or schematic drawing of a
`“Microwave Waste Disposal Unit.” Although labels are
`affixed to some parts of
`the drawing, no written
`explanation accompanies the drawing.
`
`106. Although Cusack testified that he included
`copies of
`the Conference Materials
`in marketing
`materials that he sent to potential customers in the late-
`1988 to 1989 time frame, Cusack's testimony is again
`uncorroborated.
`
`107. The evidence is not clear and convincing that
`the Conference Materials were disseminated and/or
`were publicly accessible before the critical date of April
`16, 1989.
`
`108. On April 10, 1989, an article entitled,
`“Combustion
`Engineering
`Inc.
`Affiliate
`Uses
`Microwaves to Treat Medical Waste” was published in
`The Wall Street Journal (the “WSJ Article”).
`
`109. In the WSJ Article, the author states: “The
`Stamford, Conn.
`engineering
`and
`environmental
`concern [CE-E] said it plans to introduce the Sanitec
`system in the U.S. after the successful operation of a
`prototype at a German hospital.”
`
`the Sanitec
`110. The WSJ Article describes
`Technology in only general terms and does not disclose
`all of the elements or limitations contained in Claim 1
`or all of the steps in Process Claim 18 of the '000
`Patent; nor is there clear and convincing evidence that
`anything in the WSJ Article would enable one of skill in
`the art to make and use the apparatus disclosed in Claim
`1 or practice the process in Claim 18 of the '000 Patent.
`
`111. CE-E published a Journal, which it circulated
`internally to its employees and the employees of other
`CE companies.
`
`112. The Spring 1989 issue of CE-E's Journal
`included an article written by Cusack,
`entitled,
`“Infectious Waste Microwave Disinfection Technology
`Now Available in U.S.” (the “Spring 1989 CE-E
`Journal”). The Spring 1989 CE-Journal Article provided
`general information about the Sanitec Technology and
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`

`Not Reported in F.Supp.2d, 2006 WL 3455000 (S.D.Tex.)
`(Cite as: 2006 WL 3455000 (S.D.Tex.))
`
`concluded by stating, “Contact John Cusack at (203)
`328-2355 for more information.”
`
`113. The Spring 1989 CE-E Journal Article is not
`dated, and the evidence is not clear and convincing that
`the Spring 1989 CE-Journal Article was disseminated
`and/or was publicly accessible before the April 16,
`1989, critical date.
`
`114. In June 1989, in response to a request for
`information on the Sanitec Technology, CE-E sent to
`Bollinger,
`then an employee of CE-Impell, a sales
`brochure describing the Sanitec Technology (the “Vetco
`Sanitec Brochure”).
`
`115. The Vetco Sanitec Brochure is not dated, and
`the evidence is not clear and convincing that the Vetco
`Sanitec Brochure was disseminated and/or publicly
`accessible before the April 16, 1989, critical date.
`
`116. Cusack's testimony that he enclosed copies of
`the Vetco Sanitec Brochure in marketing materials that
`he sent to potential customers in the late-1988 to 1989
`time frame is again uncorroborated.
`
`*10 117. Cusack created a set of “Responses to
`Typical Questions About Sanitec System” (the “FAQ
`Document”).
`
`118. The FAQ Document is not dated, but Cusack
`believes the typed version was prepared sometime after
`March 1989.
`
`119. A handwritten note on the FAQ Document
`includes the date “June 1989.”
`
`120. The evidence is not clear and convincing that
`the FAQ document was created or disseminated and/or
`publicly was accessible before the April 16, 1989,
`critical date.
`
`121. Although the Sanitec Technology was in use
`in Europe before the April 16, 1989, critical date, the
`evidence is not clear and convincing that the Sanitec
`MDUs were on sale in the United States before April
`16, 1989.
`
`Page 10
`
`122. In fact, the first MDU that CE-E sold in the
`United States was a unit imported from Germany and
`installed at Forsyth Memorial Hospital (“Forsyth”) in
`Winston-Salem, North Carolina in February 1990,
`fulfilling a sales contract made in the latter part of 1989.
`
`123. In May, 1990, a second MDU was imported
`from Germany
`and
`installed
`at
`Integrated
`Environmental Systems (“IES”) in Oakland, California.
`This sale also occurred long after the critical date.
`
`124. Cusack was not designated by Micro-Waste as
`an expert witness and was not allowed to claim he was
`one at trial.
`
`125. Micro-Waste did not allege in its pleading or
`include in the Joint Pretrial Order any claim that the '
`000 Patent is invalid under 35 U.S.C. § 103(a).
`
`126. Micro-Waste neither argued nor presented any
`evidence at trial that the ' 000 Patent is invalid under 35
`U.S.C. § 103(a).
`
`127. The '000 Patent is not invalid under 35 U.S.C.
`§ 102(b) or § 103(a).
`
`A. Comparis