Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 2 of 303 PageID #:
` 2173
`
`Jan M. Carroll (No. 4187-49)
`jan.carroll@btlaw.com
`BARNES & THORNBURG LLP
`11 South Meridian Street
`Indianapolis, Indiana 46204
`Telephone: (317) 236-1313
`
`Paul H. Berghoff (pro hac vice)
`berghoff@mbhb.com
`Sean M. Sullivan (pro hac vice)
`sullivan@mbhb.com
`Paula S. Fritsch (pro hac vice)
`fritsch@mbhb.com
`J. Dan Smith (pro hac vice)
`smith@mbhb.com
`MCDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`
`Attorneys for Defendants
`Süd-Chemie Inc., Airsec S.A.S.,
`and Süd-Chemie AG
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF INDIANA
`NEW ALBANY DIVISION
`
`
`CSP TECHNOLOGIES, INC.,
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`SÜD-CHEMIE AG, SÜD-CHEMIE INC.,
`and AIRSEC S.A.S.,
`
`
`
`
`
`
`
` )
`
`
`Defendants.
`
`
`
`
`
`Civil Action No.:
`4:11-cv-00029-RLY-WGH
`
`)
`)
`)
`)
`)
`)
`
`)
`Hon. William G. Hussmann, Jr.
`)
`Hon. Richard L. Young
`)
`
`EXPERT REPORT AND DECLARATION OF NEIL SHEEHAN
`
`
`
`
`Highly Confidential
`Pursuant to Protective Order
`
`000001
`
`CSP Ex. 2004
`
`

`

`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 3 of 303 PageID #:
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`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained as an expert witness in this case on behalf of the Defendants,
`
`Süd-Chemie Inc., Airsec S.A.S., and Süd-Chemie AG (collectively “Süd-Chemie”), to render an
`
`opinion as to the validity of the asserted claims of U.S. Patent No. 7,537,137 (“the ‘137 Patent”).
`2.
`
`I understand that CSP Technologies, Inc. (“CSP”) has asserted only claims 1-5
`
`and 7 of the ‘137 Patent, of which claims 1 and 7 are independent.1 Thus, this report/declaration
`
`will only address those claims. However, I reserve the right to supplement this report/declaration
`
`if CSP subsequently asserts claim 6 of the ‘137 Patent in this litigation.
`II.
`
`QUALIFICATIONS
`3.
`
`I received my Bachelor of Science degree in Mechanical Engineering, summa
`
`cum laude, from Villanova University in 1968. I was the recipient of their 1993 Alumni
`
`Achievement Award for my work in the medical device field. I took graduate courses in the
`
`Department of Engineering and Applied Physics at Harvard University in 1968-1969. I also took
`
`courses in biology and organic chemistry at the University of California at Berkeley in 1974-
`
`1975.
`
`4.
`
`I am currently self-employed as a consulting engineer in the field of mechanical
`
`and electrical devices, especially medical devices. A copy of my Curriculum Vitae, which
`
`includes, among other things, my academic credentials and my employment history, is attached
`
`to this report/declaration as Exhibit B. My field of expertise in this matter is polymeric
`
`assembly, closure, and sealing systems. This report/declaration is based upon my own personal
`
`knowledge, skill, experience, training, and education in my field of expertise, and upon
`
`
`1 Independent claims 1 and 7 are nearly identical with the notable exception of an additional
`“floating” clause in claim 7 that does not provide any meaningful limitation to the claim. See
`Exhibit A.
`
`
`
`1
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`Highly Confidential
`Pursuant to Protective Order
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`000002
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`CSP Ex. 2004
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`

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`information I have reviewed in connection with my retention as an expert witness in this matter.
`
`I have over thirty-five years of experience in mechanical and electrical device design and
`
`development, with roles ranging from that of an individual contributor to that of a Vice President
`
`of Engineering and Manufacturing. I have been directly involved in the design, development,
`
`and manufacture of such devices since 1975, both as an employee and as a consultant, during
`
`which time I worked extensively in the area of polymeric assembly, closure, and sealing systems.
`5.
`
`I am a named inventor on 40 patents covering a broad range of products, a
`
`number of which are directed towards polymeric assembly, closure, and sealing systems.
`III.
`
`PRIOR TESTIMONY
`6.
`
`In the past four years, I have testified as an expert at trial or by deposition in the
`
`cases set forth in Exhibit C.
`IV. COMPENSATION
`7.
`
`I am being compensated for the time that I spend consulting on this case at the
`
`rate of $450.00 per hour. My compensation is not dependent upon the outcome of this litigation.
`V. MATERIALS CONSIDERED
`8.
`
`In developing my opinions in this case, I reviewed, among other things, the ‘137
`
`Patent, its prosecution history, and numerous prior art references. A more complete list of the
`
`information that I reviewed is set forth in Exhibit D.
`VI.
`
`SUMMARY OF EXPECTED TESTIMONY
`9.
`
`If called as a witness, I expect to provide the Court with an appropriate technical
`
`primer relating to the ‘137 Patent, and provide opinions related to the ‘137 Patent’s validity.
`
`
`
`2
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`Highly Confidential
`Pursuant to Protective Order
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`000003
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`CSP Ex. 2004
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`10.
`
`I have been made aware of the parties’ proposed claim constructions (attached as
`
`Exhibits E and F2) and CSP’s preliminary infringement contentions (attached as Exhibit G).3 My
`
`opinions related to the issue of validity of the ‘137 Patent are based upon CSP’s proposed claim
`
`constructions, which are reflected in CSP’s preliminary infringement contentions. To the extent
`
`that CSP did not offer a claim construction for a particular claim term or element, I used the
`
`plain and ordinary meaning of the words, as would be understood by one of ordinary skill in the
`
`art in the context of the field of the invention at the time of the invention, to construe such a
`
`claim term or element. Should CSP change its proposed claim constructions, however, or should
`
`the Court issue a claim construction ruling that differs from CSP’s proposed claim constructions,
`
`I reserve the right to amend my analysis regarding the validity of the ‘137 Patent in light of such
`
`developments.
`11.
`
`I expect to testify that the asserted claims of the ‘137 Patent are invalid as
`
`anticipated and/or rendered obvious by the prior art. As part of this testimony, I expect to
`
`address the state of the art at the time CSP developed the claimed invention and the teachings of
`
`particularly relevant references in light of the state of the art.
`12.
`
`I also expect to testify that the asserted claims of the ‘137 Patent are invalid for
`
`lack of written description. As part of this testimony, I expect to address whether one of
`
`ordinary skill in the art can clearly conclude from the written description of the ‘137 Patent that
`
`what has been claimed has in fact been invented.
`
`
`2 While I reviewed the extrinsic evidence cited in and attached to the parties’ proposed claim
`constructions, I did not include it in Exhibits E and F.
`3 Under Süd-Chemie’s proposed constructions, the accused product does not infringe, either
`literally or equivalently, any of the asserted claims of the ‘137 Patent. The issue of non-
`infringement of the asserted claims of the ‘137 Patent, however, will be addressed in a later
`report/declaration for this case.
`
`
`
`3
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`Highly Confidential
`Pursuant to Protective Order
`
`000004
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`CSP Ex. 2004
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`

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`13.
`
`I reserve the right to amend and/or supplement this report/declaration in light of
`
`additional relevant evidence, arguments, or testimony presented, for example, during any claim
`
`construction hearing, summary judgment proceedings, or trial on the merits.
`VII. LEGAL STANDARDS
`14.
`
`I understand that a patent claim can be invalid under the United States patent laws
`
`for various reasons, including, for example, anticipation or obviousness in light of the prior art,
`
`and failure to satisfy the written description requirement. In arriving at my opinions, I have
`
`applied the following legal standards and analyses regarding patent invalidity.
`A.
`15.
`
`Burden of Proof
`
`I understand that United States patents are presumed valid because they are
`
`subject to an examination process at the United States Patent and Trademark Office (“USPTO”) .
`16.
`
`I also understand that Süd-Chemie has the burden to prove invalidity by “clear
`
`and convincing evidence.” The clear and convincing evidence standard is a higher standard than
`
`the preponderance of the evidence standard, but a lower standard than the beyond a reasonable
`
`doubt standard. Additionally, I understand that this standard is easier to meet when invalidity is
`
`based upon prior art that was not considered by the USPTO.
`17.
`
`By prior art, I include prior art references as well as prior art items and devices. I
`
`understand that if a reference, item, or device does not fall within one of the prior art definitions
`
`as outlined in the patent statute, that reference, item, or device may still be considered within the
`
`knowledge or understanding of one of ordinary skill in the art.
`B.
`18.
`
`Anticipation
`
`I understand that a claim is anticipated by a prior art reference, item, or device if
`
`the prior art reference, item, or device discloses every element in the claim. Such a disclosure
`
`
`
`4
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`Pursuant to Protective Order
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`can be express (it says it or shows it), or it can be inherent (the prior art must necessarily be there
`
`even if the prior art does not say it or show it). If the claim is anticipated, the claim is invalid.
`19.
`
`I understand that a first step in an anticipation analysis is to construe the claim,
`
`and a second step is to compare the construed claim to the prior art reference, item, or device.
`C.
`20.
`
`I understand that a patent claim may be invalid for obviousness even if it is not
`
`Obviousness
`
`anticipated by the prior art. I understand that a patent claim is obvious if the differences between
`
`the claimed invention and the prior art are such that the subject matter of the claimed invention,
`
`as a whole, would have been obvious to one of ordinary skill in the art at the time the invention
`
`was made. If the claim is obvious, the claim is invalid.
`21.
`
`I understand that before an obviousness determination is made, the level of
`
`ordinary skill in the art must be considered, and the scope and content of the prior art must be
`
`considered, as well. I understand that to determine the scope and content of the prior art, one
`
`must determine what prior art is reasonably pertinent to the particular problem the inventor
`
`faced. I understand that prior art is reasonably pertinent if it is in the same field as the claimed
`
`invention, or is from another field that a person of ordinary skill in the art would look to in trying
`
`to solve the problem.
`22.
`
`I understand that a patent claim may be obvious if the prior art would have
`
`suggested to, motivated, or provided a reason to one of ordinary skill in the art to combine
`
`certain prior art references to arrive at the elements of the claim. I also understand that one can
`
`look at interrelated teachings of multiple patents, the effects of demands known to the design
`
`community or present in the marketplace, and the background knowledge possessed by a person
`
`having ordinary skill in the art—all in order to determine whether there was an apparent reason
`
`
`
`5
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`Pursuant to Protective Order
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`CSP Ex. 2004
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`to combine the known elements in the fashion claimed by the patent at issue. I further
`
`understand that a person of ordinary skill is a person of ordinary creativity, not an automaton.
`
`This person of ordinary creativity works in the contexts of a community of inventors and of the
`
`marketplace. The obviousness inquiry needs to reflect these realities within which inventions and
`
`patents function. In order to arrive at a conclusion that an invention is obvious, it can be helpful
`
`to identify a reason that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed invention does.
`D. Written Description
`23.
`
`I understand that a patent claim will be invalid for failure to meet the written
`
`description requirement if the written description does not allow one of ordinary skill in the art to
`
`discern that what has been claimed has in fact been invented. I understand that the patent must
`
`convey with reasonable clarity to those skilled in the art that, as of the filing date, the applicant
`
`was in possession of the full scope of the claimed invention as construed. I understand that one
`
`of the purposes of this requirement is to prevent a patent applicant from overreaching the scope
`
`of his or her contribution to the art.
`24.
`
`I understand that a patent applicant must provide a written description of the
`
`claimed invention. I further understand that to satisfy this requirement, the application must
`
`describe an invention in sufficient detail such that one skilled in the art can clearly conclude that
`
`the inventor was in possession of the invention as of the filing date of the application. In other
`
`words, the patentee must provide a written description of the claimed invention such that a
`
`person of ordinary skill in the art can clearly conclude that the patentee invented what is claimed.
`25.
`
`I understand that the written description should include such descriptive means as
`
`words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. I
`
`
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`6
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`Pursuant to Protective Order
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`further understand that the purpose of the written description requirement is to prevent the
`
`inventor from trying to claim more than what he or she reasonably conveyed in the original
`
`disclosure.
`VIII. TECHNOLOGY OVERVIEW
`A.
`26.
`
`Background Information
`
`Containers and lids that make use of seals have been used for decades in
`
`numerous industries for a variety of purposes (e.g., Tupperware®). Sealed container and lid
`
`assemblies have been used to prevent both the ingress and egress of air, liquid, etc. The sealing
`
`mechanisms vary from single seal designs to multiple seal designs. For example, some
`
`assemblies use a single outer seal formed between an outer surface of the container and an inner
`
`surface of the lid. Other assemblies use two seals: (i) an outer seal as described above and (ii) an
`
`inner seal formed between an inner surface of the container and an outer surface of a portion of
`
`the lid that fits in the opening of the container when the lid is in the closed position. Some
`
`assemblies use even more seals. See, e.g., U.S. Patent No. 6,299,033, Figures 8a-j:
`
`FIG.Sa
`FlGS'(cid:173)
`FIGS'(cid:173)
`FIGS:-
`FlGS'-
`•
`
`
`
`
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`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 10 of 303 PageID #:
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`27.
`
`Many beverages, such as milk, have been and are commonly stored in container
`
`and lid assemblies having a single outer seal that prevents the milk from leaking out of and/or
`
`evaporating from the container, and prevents contaminants that could foul the milk from entering
`
`the container. On the other hand, condiments, such as ketchup, are often stored in sealed
`
`container and lid assemblies having both an inner seal and an outer seal. Likewise, back when
`
`people used cameras with film, that film was traditionally provided in a package consisting of a
`
`plastic container and lid, providing both an inner seal and an outer seal.
`
`B.
`
`28.
`
`Siid-Chemie's Early Vial Products
`
`Sud-Chemie has been designing and deVeloping sealed container and lid
`
`assemblies for a number of years. By 2000, Sud-Chemie had developed a container and lid
`
`assembly product for the packaging of diagnostic test strips. See, e.g., SC00001470-71:
`
`8
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`Highly Confidential
`Pursuant to Protective Order
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`000009
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`29.
`
`I am aware that in a prior litigation between CSP and Sud-Chemie, Judge Barker
`
`from the District Court of the Southern District of Indiana found that Sud-Chemie offered to sell
`
`the product referenced in Paragraph 28 in the United States to a company named Home
`
`Diagnostics, Inc. ("HDI") as early as July of2001.4 See 03-cv-00003-SEB-WGH, D.L 606, at 15
`
`("On or about July 2001, SCI offered for sale to HDI in the United States a tube containing a
`
`desiccant entrained polymer composition (hereinafter referred to as the 'HDI Product')."). As
`
`discussed in more detail below, with respect to the elements of the asserted claims of the' 137
`
`Patent as construed by CSP, the HDI Product that was offered for sale had all the same features
`
`as the product CSP has accused of infringement in this litigation. Thus, it anticipates the asserted
`
`claims of the '137 Patent.
`
`4 In addition, the HDI Product was also published in a marketing brochure in 2001. See
`SC0000093 7.
`
`9
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`Highly Confidential
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`000010
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`30.
`
`Following the offer for sale to HDI, Süd-Chemie continued to market similar
`
`products. See, e.g., SC00000938-42; SC00000948; SC00000968-69. Like the HDI Product,
`
`these later products had all the same features as the product that CSP has accused of
`
`infringement in this litigation when the claims of the ‘137 Patent are construed as CSP proposes.
`
`Thus, these products also anticipate the asserted claims of the ‘137 Patent.
`C.
`31.
`
`CSP’s and Other Early Vial Designs
`
`Like Süd-Chemie, CSP has also been designing and developing sealed container
`
`and lid assemblies for a number of years. By 2000, Capitol Vial, Inc. was marketing a container
`
`and lid assembly product under the name “Capitol Vial Three Seal Design.” See SC00000905-
`
`911. It is my understanding that Capitol Vial, Inc. and CSP are related entities. As discussed in
`
`more detail below, with respect to the elements of the asserted claims of the ‘137 Patent as
`
`construed by CSP, this product had all the same features as the product CSP has accused of
`
`infringement in this litigation. Thus, it also anticipates the asserted claims of the ‘137 Patent.
`32.
`
`In addition to marketing a product that anticipates all the asserted claims of the
`
`‘137 Patent, Capitol Vial, Inc. was also made aware of prior art references during an earlier
`
`patent litigation (97-cv-499-ACM, Triple S Plastics, Inc. v. Capitol Vial, Inc., et al.) related to
`
`sealed container and lid assemblies. One of these prior art references was the “50cc Snap Top
`
`Vial” by Van Sickle Plastics Co. from 1980. See SC00000445:
`
`
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`10
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`Highly Confidential
`Pursuant to Protective Order
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`000011
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`CSP Ex. 2004
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`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 13 of 303 PageID #:
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`Highly Confidential
`Pursuant to Protective Order
`
`000012
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`CSP Ex. 2004
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`

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`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 14 of 303 PageID #:
` 2185
`
`As discussed below in more detail, with respect to the elements of most of the asserted claims of
`
`the ‘137 Patent as construed by CSP, this product had all the same features as the product CSP
`
`has accused of infringement in this litigation. Thus, it also anticipates those claims.
`IX. OPINIONS REGARDING THE ‘137 PATENT
`A.
`33.
`
`The ‘137 Patent
`
`The ‘137 Patent entitled “Resealable Moisture Tight Container Assembly for
`
`Strips and the Like Having a Lip Snap Seal,” was filed as Application No. 11/171,171 (“the ‘171
`
`Application”) on June 30, 2005, and issued as a patent on May 26, 2009. The ‘137 Patent lists
`
`Jean-Pierre Giraud as its sole inventor, and has seven total claims, three of which are
`
`independent.
`34.
`
` The ‘137 Patent is a continuation-in-part (CIP) of U.S. Patent No. 7,213,720
`
`(“the ‘720 Patent”). The ‘720 Patent was filed as Application No. 10/683,311 (“the ‘311
`
`Application”) on October 10, 2003. Both the ‘137 Patent and the ‘720 Patent claim priority to
`
`provisional Application No. 60/417,533 (“the ‘533 Provisional Application”), which was filed on
`
`October 10, 2002. In addition, International Application No. PCT/US2003/032052, which also
`
`claims priority to the ‘533 Provisional Application, was filed on October 10, 2003. This
`
`International Application published on April 22, 2004 as WO 2004/033339.
`35.
`
`The ‘533 Provisional Application and the ‘720 Patent have similar specifications.
`
`See Exhibit H. Likewise, the specifications of the ‘137 Patent and the ‘720 Patent are similar.
`
`The differences between the ‘720 Patent specification and the ‘137 Patent specification are
`
`shown in Exhibit I. In addition, Figure 14 of the ‘137 Patent is a new drawing that is not in the
`
`‘720 Patent.
`
`
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`12
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`
`36.
`
`Apparently, the USPTO did not print all of the specification of the ‘137 Patent
`
`when issuing the ‘137 Patent. The portions of the specification of the ‘137 Patent that were not
`
`printed are shown in Exhibit J. For purposes of this report/declaration, I have treated the ‘137
`
`Patent as if its entire specification had been properly printed. Accordingly, I refer and cite to the
`
`‘720 Patent (by column and line number) for portions of the ‘137 Patent specification that were
`
`not printed.
`37.
`
`The ‘137 Patent is generally directed to a container and lid assembly with an
`
`opening in the top surface of the container that is spaced inward (or away) from the container
`
`sidewall, and two seals—an inner seal and an outer seal. Figures 1-4 illustrate the invention
`
`claimed in the ‘137 Patent:
`
`"
`
`"
`
`"
`
`ETn
`
`FIG.3
`
`t!V"
`
`FIG.4
`
`::!--_20
`
`22
`
`"
`FIG. 1
`
`
`
`FIG.2
`
`
`
`38.
`
`The elements of each of the asserted claims are set forth in the claim charts
`
`submitted herewith as Exhibits K-S.
`
`
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`13
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`39.
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`As previously indicated, for purposes of this report/declaration and my opinions
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`regarding the validity of the asserted claims of the ‘137 Patent, I have used CSP’s proposed
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`claim constructions (Exhibit F), which are reflected in CSP’s preliminary infringement
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`contentions (Exhibit G). To the extent that CSP did not offer a claim construction for a
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`particular claim term or element, I used the plain and ordinary meaning of the words, as would
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`be understood by one of ordinary skill in the art in the context of the field of the invention at the
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`time of the invention, to construe such a claim term or element.
`40.
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`For example, the claim term “snap-fit” has not been construed by CSP and the
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`‘137 Patent does not associate or mention the term “snap-fit” with respect to the claimed “snap-
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`fit configuration” between “the inwardly facing extension of the skirt of the lid and the
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`outwardly facing extensions (sic) of the lip.” See Exhibit F; ‘137 Patent. In fact, the ‘137 Patent
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`refers only to a “snap-fit” when describing an entirely different engagement—the connection
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`between the upper housing portion and separate base portion of the container. See, e.g., ‘137
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`Patent, Abstract (“the upper housing portion is capable of being snap-fit into the base portion”);
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`2:26-31 (“The assembly comprises a base and an upper housing that can be molded separately,
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`the base can be loaded with the item to be retained in the container, and then the base and upper
`
`housing can be snap-fit together employing a lip seal in order to provide moisture-tightness.”);
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`4:7-14 (“In yet another embodiment, the container assembly comprising the base and upper
`
`housing portion can be molded separately. As such, in one example, the base portion can be
`
`loaded with the item(s) to be retained in the container assembly, and then the upper housing
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`portion can be snap-fit with the base by employing a lip seal mechanism in order to provide
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`moisture-tightness.”); and 4:27-28 (“when the base portion is snap sealed with the upper housing
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`portion”).
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`41.
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`Therefore, because neither CSP nor the ‘137 Patent define the claimed “snap-fit,”
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`I have applied the plain and ordinary meaning of “snap-fit” in the context of the field of the
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`invention, namely that a “snap-fit” is a simple and well-known assembly method that joins two
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`parts without using additional components or fasteners. See Designing Plastic Parts for
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`Assembly (SC00001437-43); see also Plastic Part Design for Injection Molding (SC00001444-
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`51); Plastic Injection Molding (SC00001452-56). The essence of a “snap-fit” is the temporary
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`deflection or deformation of one of the parts, after which it returns at least partially to its original
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`state. There is no noise or audible attribute inherent in this tried-and-true permanent or
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`reversible assembly method.
`B.
`42.
`
`Prosecution History
`
`All the originally filed claims of the ‘137 Patent were directed to “substantially
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`moisture tight container and lid assembl[ies]” having an opening in the top surface of the
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`container that extended inward from the container sidewall. See Claims 1-7, filed June 30, 2005.
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`In other words, the opening was spaced inward (or away) from the container sidewall. After
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`some back and forth between the Examiner and CSP, the Examiner issued a Notice of Allowance
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`for claims that included the limitation requiring an opening in a top surface that was spaced
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`inward from the sidewall of the container. See Notice of Allowance, dated June 10, 2008;
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`Amendment/Remarks, dated July 19, 2007.
`43.
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`Instead of paying the issue fee, however, CSP filed a Request for Continued
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`Examination followed by an Amendment in which CSP removed the claim limitation requiring
`
`an opening that was spaced inward from the sidewall of the container. See Request for
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`Continued Examination, dated July 17, 2008; Amendment/Remarks, dated August 21, 2008.
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`The Examiner then rejected the pending claims over prior art references disclosing container and
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`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 18 of 303 PageID #:
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`lid assemblies having openings that are in line with the sidewall, for example, U.S. Patent No.
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`5,677,094 to Rapchak et al. (“the ‘094 Patent”). See Interview Summary, dated September 23,
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`2008. In order to overcome such prior art, CSP was required to add back a limitation that spaced
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`the opening inward from the sidewall of the container. See Id. (“It was suggested by the
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`Examiner to include the limitation that the opening being spaced away from the side wall of the
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`container.”).
`44.
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`All pending claims except claim 10 (now issued claim 7) were amended thereafter
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`by CSP to include an opening that was “spaced away from an outer surface of the sidewall of the
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`container.” See Amendment/Remarks, dated November 10, 2008. Although CSP tried to obtain
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`allowance of pending claim 10 without this limitation, the Examiner refused to allow the claim
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`and required CSP to include this limitation via an Examiner’s Amendment. See Examiner’s
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`Amendment, dated April 6, 2009. All claims with this limitation were then allowed. See Notice
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`of Allowance, dated April 6, 2009.
`45.
`
` This added limitation unmistakably narrowed the claims to embodiments having
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`an opening spaced inward from the container sidewall as shown in Figures 1 and 2 of the ‘137
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`Patent. The difference between the claimed container and lid assembly (as amended and
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`allowed) and the prior art that CSP distinguished during prosecution can be seen by comparing
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`Figure 1 of the ‘137 Patent and Figure 1 of the ‘094 Patent (which is prior art):
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`Case 4:11-cv-00029-RLY-WGH Document 108-8 Filed 11/12/12 Page 19 of 303 PageID #:
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`The ‘137 Patent, Figure 1
`
`
`Showing a container with an opening spaced
`inward from the container sidewall.
`"
`
`The ‘094 Patent, Figure 1
`
`
`Showing a container without an opening
`spaced inward from the container sidewall.
`
`
`"
`
`"..
`.----,.
`
`"
`
`,,- -.....,....
`
`"
`FIG. 1
`
`
`
`FIG.
`
`,.
`
`
`
`
`
`46.
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`In view of the prosecution history, the claim limitation that the “opening is spaced
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`away from an outer surface of the sidewall of the container” requires that the opening be spaced
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`inward from the container sidewall—not merely “spaced away from an outer surface of the
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`sidewall.” Otherwise, the claims of the ‘137 Patent would not be distinguishable over the prior
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`art, and would not have been allowed. Nevertheless, CSP has construed this claim limitation as
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`“the opening is spaced away from an outer surface of the sidewall of the container by at least the
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`thickness of the sidewall of the container,” which reads on the exact same prior art that CSP
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`distinguished during prosecution. See Exhibit F.
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`C.
`Level of Ordinary Skill in the Art
`47. With respect to the invention claimed in the ‘137 Patent, one of ordinary skill in
`
`the art would have a mechanical engineering, industrial design, or similar technical degree or
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`equivalent work experience, and five to ten years of working in the field.
`D.
`48.
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`Priority Date
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`As stated above, the ‘171 Application, filed on June 30, 2005, now the ‘137
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`Patent, is a continuation-in-part (“CIP”) of the ‘311 Application, filed on October 10, 2003, now
`
`the ‘720 Patent, and claims priority to the ‘533 Provisional Application, filed on October 10,
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`2002. However, as explained below, the ‘533 Provisional Application and the ‘311 Application
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`do not satisfy the written description requirement of 35 U.S.C. § 112, ¶1 for the “moisture tight”
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`claim element of the asserted claims of the ‘137 Patent because the term “moisture tight” has a
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`narrower meaning in the ‘533 Provisional Application and the ‘311 Application than in the
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`asserted claims of the ‘137 Patent.
`49.
`
`The claim element “moisture tight” is expressly defined in the ‘137 Patent as “the
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`moisture ingress of the container (after three days) was less than about 1500 micrograms of
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`water, in another embodiment, about 500 micrograms of water, in a further embodiment, about
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`300 micrograms of water, in yet another embodiment, about 150 micrograms of water.” ‘137
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`Patent, 6:32-38. Thus, the claims of the ‘137 Patent cover not only containers that are
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`hermetically sealed but also cover containers that allow some ingress or egress of water.5 This
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`particular definition of “moisture tight” was disclosed for the first time in the ‘171 Application,
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`which was filed on June 30, 2005, and issued as the ‘137 Patent. In fact, in the ‘171 Application,
`
`
`5 One skilled in the art would understand that, without an express quantitative limitation, a
`container that is described as “moisture tight,” “air tight,” “water tight,” “sealed,” “hermetically
`sealed,” etc. is a container t