Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 2 of 8 PageID #: 1773
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Paul J. Luckem
`Admini.strative Law Judge
`
`IN THE MAITER OF
`
`CERTAIN FL.IP-TOP VIALS AND
`PRODUCTS USING THE SAME
`
`Investigation No. 337-TA-779
`
`RESPONSE AND AFFIRMATIVE DEFENSES OF SOO·CHEMIE AG, SOD-CHEMIE
`INC•• AND AIRSEC S.A.S. TO COMPLAINT AND NOTICE OF INVESTIGATION
`
`Respondents:
`
`Counsel for Respondents:
`
`S·UU-CHEMIE AG
`Lenbachplatz 6
`80333 Munich
`Germany
`
`SUD-CHEMIE INC.
`1600 West Hill Street
`P.O. Box 32370
`Louisville, KY 40232
`
`AlRSEC S.A.S.
`6 Rue Louise Michel
`94600 Choisy Ie Rai
`France
`
`Tom M. Schaumberg
`Michael L. Doane
`Deborah S. Strauss
`ADDUCI MASTRIANI & SCHAUMBERG LLP
`1200 Seventeenth Street, N.W., Fifth Floor
`Washington, DC 20036
`Telephone: 202-467-6300
`Facsimile:
`202-466-2006
`
`Paul H. Berghoff
`Sean M. Sullivan
`Alison J. Baldwin
`Eric R. Moran
`Paula S, Fritsch, Ph.D.
`Y. Elaine Chang, Ph.D.
`J. Dan Smith
`McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone:
`312-913-0001
`Facsimile:
`312-913-0002
`
`000001
`
`CSP Ex. 2006
`
`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 3 of 8 PageID #: 1774
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`The HAT line offlip-top tubes is [an] ideal package for diagnostic test strips, as well as
`pharmaceuticals such as effervescent tablets, chewables and lozenges. II Exhibit 14b.
`
`26.
`
`Sud-Chemie admits that CSP has attached, as Exhibit 14b to the Complaint, a
`
`document that CSP purports to be a copy of the "Handy Active Tubes® (HAT®) Product
`
`Profile," and that Exhibit 14b states that "Sud-Chemie's Handy Active Tubes® (HAT®), are
`
`durable, rigid containers with a convenient flip-top and built-in desiccant. The HAT line of
`
`flip-top tubes is ideal package for diagnostic tes.t strips, as well as pharmaceuticals such
`
`as effervescent tablets, chewables and lozenges."
`
`On inf(Jrmation and belief, Sad-Chemie, directly or indireqtly, has imported, sold
`27.
`for importation, and/or sold within the United States.after importation ihe Handy Active TubeS®
`or HAT® tubes.
`For example,
`the Sad-Chemie literature attached as Exhibit 14 is
`copyrighted by SCI and li$ts a US. phone number in the contact information for the accused
`See Exhibit 14.
`flip-top vial product.
`
`27.
`
`SUd-Chemie admits that CSP has attached, as Exhibits 14a and 14b to the
`
`Complaint, documents that it purports to be copies of the "Advanced De1Siccant Polymer Profile"
`
`and the "Handy Active Tubes® (HAT®) Product Profile," respectively, and that Exhibits
`
`14a and 14b are copyrighted by SCI and list a U.S. phone number on the documents.
`
`SUd-Chemie also admits that it has brought a very small and limited number of samples of
`
`Airsec's HAT-IN® vials into the United States. SUd-Chemie otherwise denies the remaining
`
`allegations set forth in Paragraph 27, including to the extent that they allege, directly or indirectly,
`
`that any product of SUd-Chemie infringes any valid claim ofthe '137 patent.
`
`B.
`
`Downstream Products Using the Accused Flip-top Vials
`
`Sild-Chemie sells and offers for sale the accused Handy Active Tubes® or HA 1®
`28.
`tubes to pharmaceutical distributors.!or packaging products in the accused vials.
`
`28.
`
`SUd-Chemic admits that Airsec sells (and offers for sale) HAT-IN® vials to
`
`LifeScan UK in Scotland. Siid-Chemie denies the remaining allegations set forth in Paragraph
`
`-10 -
`
`000002
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`CSP Ex. 2006
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`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 4 of 8 PageID #: 1775
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`46.
`
`SUd-Chemie admits the allegations in Paragraph 46.
`
`Proposed Respondent Airsec filed another peT patent application No.
`47.
`PC'TIEP20091050832 with the title "Process For making An' Injection Molded Vial" on January
`26, 2009, which claims priority to a U.S. patent application No. 121024,69Jfiled on February 1,
`2008.
`See Exhibit 16c.
`This PCT application was published on August 6, 2009, as
`W020091095367 Al ("WO 20091095367''). Exhibit I6c.
`
`47.
`
`SUd-Chemie admits the allegations in Paragraph 47.
`Us. patent application No. 121024,691 was also published on August 6, 2009. as
`48.
`U.S. Pat. App. Pub. No. 2009/0194904 (the "'904 application'? Exhibit 16d
`
`48.
`
`SUd-Chemie admits the allegations in Paragraph 48.
`
`In addition, before the filing of the above applications, Proposed
`49.
`Respondent Airsecfiled a European patent application No. 07006145.2 t'EP 07006145.2'') with
`the title "Container" on March 26, 2007.
`See Exhibit I6e.
`This European patent application
`was first published on October 1, 2008, and then granted on June 23, 2010 as EP I 975 078
`81 (the "EP '078 patent''). Exhibit 16e.
`
`49.
`
`Siid-Chemie admits the allegations in Paragraph 49.
`
`50.
`A peTpatent application No. PCTIEP200B!05358I with the title "Container" was
`filed on March 26, 2008, and claims priority to EP 07006145.2.
`See Exhibit I6j This PCT
`application was published on October 2, 2008, as WO 20081116888 Al ("WO 2008/116888'').
`Exhibit I6j
`
`50.
`
`SUd-Chemie admits the allegations in Paragraph SO.
`WO 20()81116888 entered u.s. national phase on November 5; 2009, and was
`51.
`published on March 4, 2010,
`'as US. Pat. App. Pub. No. 201010051636 Al (the
`'11636 application'').
`See Exhibit 16g.
`
`51.
`
`SUd-Chemie admits the allegations in Paragraph 51.
`
`52.
`On information and belief, the accused Handy Active Tubes® or HAT® tubes are
`depict~d and described in WO 20091063089, the: '930 f,lpp!ication, WO 20091095$67, the '904
`application, EP 07006145.2, which issued as the EP .r078 patent, WO 2008/116S88. and the '636
`application.
`See Exhibits 16a-g.
`
`52.
`
`SUd-Chemie admits that one or more features of Handy Active Tubes@ (or
`
`HAT®) are depicted andlor described in oile or more of W02009/063089, the '930 application,
`
`WO 2009/095367, the '904 application, EP 07006145.2, which issued as the EP '078 patent, WO
`
`- 16-
`
`000003
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`CSP Ex. 2006
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`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 5 of 8 PageID #: 1776
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`2008/116888, and the '636 application. SUd-Chemie denies the remaining allegations set forth
`
`in Paragraph 52.
`
`IV.
`
`THE PATENT AT ISSUE AND NON-TECHNICAL DESCRIPTION OF
`THE PATENTED TECHNOLOGY
`
`A.
`
`The '137 Patent
`
`The '137 patent, entitled "Resealable Moisture Tight Container Assembly For
`53.
`Strips And The Like Having A Lip Snap Seal, " issued on May 26, 2009, to inventor Jean-Pierre
`Giraud ofPari~, Fra.nce.
`See exhibit 1.
`
`53.
`
`SUd-Chemie admits the '137 patent appears on its face to be entitled "Resealable
`
`Moisture Tight Container Assembly For Strips And The Like Having A Lip Snap SeaLII
`
`SUd-Chemie further admits that the face of the '137 patent indicates that it issued on May 26,
`
`2009, and lists Jean-Pierre Giraud of Paris, France as the inventor. SUd-Chemie further admits
`
`that CSP has attached, as Exhibit 1 to the Complaint, a document that it purports to be a certified
`
`copy of the '137 patent. SUd-Chemie denies the remaining allegations set tbrth in Paragraph 53,
`
`and in particular, SUd-Chemie denies that the '137 patent was properly issued.
`
`The patent application that led to the '137 patent is application No. !l1l7},}7},
`54.
`filed on June 30, 2005, which was first published on November 24, 2005, as U.S. Pat. App. Pub.
`See Exhibit }.
`No. 200510258174 AI.
`
`54.
`
`SUd-Chemie admits that the face of the '137 patent indicates that the application
`
`that led to the '137 patent waS application No. 11/171,171 (lithe '171 application"), that the '171
`
`application was filed on June 30, 2005, and that the '171 application published on November 24,
`
`2005 as U.S. Pat. App. Pub. No. 2005/0258174 AI. SUd-Chemie timher admits that CSP has
`
`attached, as Exhibit 1 to the Complaint,a document that it purports to be a certified copy of the '137
`
`patent. Sild"Chemie is without knowledge or information sufficient to form a belief as to the
`
`truth ot'the remaining allegations set forth in Paragraph 54, and therefore denies the same.
`
`- 17"
`
`000004
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`CSP Ex. 2006
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`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 6 of 8 PageID #: 1777
`
`WHEREFORE, SUd·Chemie respectfully requests that the Commission:
`
`CONCLUSION
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`
`(6)
`
`Determine that SUd·Chemie has not violated Section 337;
`
`Determine that SUd-Chemie has not infringed any asserted claims ofthe 1137 patent;
`
`Determine that the '137 patent is invalid;
`
`Determine that the '137 patent is unenforceable;
`
`Terminate the Investigation;
`
`Deny CSP's requests for permanent exclusion and permanent cease and desist
`
`orders with respect to SUd-Chemie's. products; and
`
`(7)
`
`Grant SUd-Chemie such further relief as the Commission deems just and proper.
`
`Date:
`
`July 11,2011
`
`As to Objections,
`
`P
`ho ,
`can M. Su ivan,
`q.
`Paula S. Frits
`,Ph.D.
`McDonnell Boehnen Hulbert & BergllOlfLLP
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: 312.913.0001
`Facsimile: 312.913.0003
`
`Tom M. Schaumberg
`Michael L. Doane
`Deborah S. Strauss
`ADDUCI MASTRIANI & SCHAUMBERG LLP
`1200 Seventeenth Street, N.W., Fifth Floor
`Washington, DC 20036
`Telephone:
`(202) 467~6300
`Facsimile:
`(202) 466-2006
`Counsel!Qr Respondent Sud-Chemie AG.
`Sud-Chemie, Inc. and Air Sec 8.A.S.
`
`VIALS7013 I I
`
`000005
`
`CSP Ex. 2006
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`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 7 of 8 PageID #: 1778
`
`EXHIBIT 1
`
`000006
`
`CSP Ex. 2006
`
`

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`Case 4:11-cv-00029-RLY-WGH Document 105-6 Filed 11/12/12 Page 8 of 8 PageID #: 1779
`
`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington~ D.C.
`
`Before the Honorable Paul J. Luckern
`Chief Administrative Law Judge
`
`Investigation No. 337-TA-779
`
`))))))
`
`In the Matter of
`
`CERTAIN FLIP-TOP VIALS AND
`PRODUCTS USING THE SAME
`
`EXIDBIT 1
`
`Pursuant to Rule 210.13(b) (19 C.F.R. § 210.13(b» of the U.S. International Trade
`
`Commission's Rules ()fPractice and Procedure, Respondents SUd-Chemie AG, SUd-Chemie Inc.,
`
`and Airsec S.A.S. (two or more of which may be collectively referred to as "SUd-Chemie")
`
`make the following statements.
`
`1.
`
`SUd-Chemie has imported samples of Airsec S.A.S.'s HAT-IN® vials into the
`
`United States.
`
`In the period from May 2009 (the issue date of the patent at issue) through May
`
`2011 (the filing date of the Complaint), SUd-Chemie has imported [
`
`] units of the Airsec
`
`S.A.S.'s HAT..IN® vials, valued at[
`
`], into the United States.
`
`2.
`
`3.
`
`At present, SUd-Chemie has not sold the HAT-IN® vials in the U.S. marketplace.
`
`SUd-Chemie's current total annual manufacturing capacity for Airsec S.A.S.'s
`
`HAT-IN® vials is approximately [ ] units.
`
`000007
`
`CSP Ex. 2006
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`