IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF GEORGIA
`Atlanta Division
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` CASE NO. 1:11-cv-03855-RLV
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`
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`DEFENDANT GENERAL PLASTIC INDUSTRIAL CO., LTD.’S
`INVALIDITY CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 4.3
`
`INTRODUCTION
`Pursuant to Rule 4.3 of the Local Patent Rules of the Northern District of
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`I.
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`Georgia, and the Court’s Order dated April 20, 12 (Dkt. No. 78), Defendant
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`General Plastic Industrial Co., LTD., (“Defendant” or “General Plastic”) hereby
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`provides its Invalidity Contentions with respect to the claims identified by Plaintiff
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`Canon, Inc. (“Plaintiff”) in Plaintiff’s Disclosure of Asserted Claims and
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`Infringement Contentions to the Defendant. The Asserted Claims are claims 1-5, 8,
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`10, 23-27, and 30 (the “Asserted Claims”) of U.S. Patent No. 7,647,012 (“the ’012
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`patent” or “the Patent-In-Suit”).
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`Page 1
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`CANON, INC.,
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`Plaintiff,
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`v.
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`)
`)
`)
`)
`)
`)
`COLOR IMAGING, INC. and )
`GENERAL PLASTIC
`
`)
`INDUSTRIAL CO., LTD.,
`)
`Defendants.
`)
`)
`_________________________ )
`
`
`1
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`
`NORTHERN DISTRICT OF GEORGIA
`Atlanta Division
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`
`
`
`
`
`
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` CASE NO. 1:11-cv-03855-RLV
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`
`
`
`DEFENDANT GENERAL PLASTIC INDUSTRIAL CO., LTD.’S
`INVALIDITY CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 4.3
`
`INTRODUCTION
`Pursuant to Rule 4.3 of the Local Patent Rules of the Northern District of
`
`I.
`
`
`Georgia, and the Court’s Order dated April 20, 12 (Dkt. No. 78), Defendant
`
`General Plastic Industrial Co., LTD., (“Defendant” or “General Plastic”) hereby
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`provides its Invalidity Contentions with respect to the claims identified by Plaintiff
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`Canon, Inc. (“Plaintiff”) in Plaintiff’s Disclosure of Asserted Claims and
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`Infringement Contentions to the Defendant. The Asserted Claims are claims 1-5, 8,
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`10, 23-27, and 30 (the “Asserted Claims”) of U.S. Patent No. 7,647,012 (“the ’012
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`patent” or “the Patent-In-Suit”).
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`Page 1
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`CANON, INC.,
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`
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`Plaintiff,
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`v.
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`
`
`
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`
`)
`)
`)
`)
`)
`)
`COLOR IMAGING, INC. and )
`GENERAL PLASTIC
`
`)
`INDUSTRIAL CO., LTD.,
`)
`Defendants.
`)
`)
`_________________________ )
`
`
`1
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`With respect to each asserted claim and based upon its investigation to date,
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`Defendant hereby: (a) identifies each currently known item of prior art that either
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`anticipates or renders obvious each asserted claim; (b) specifies whether each such
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`item of prior art (or a combination of several of the same) anticipates each asserted
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`claim and/or renders it obvious; (c) for each combination of items of prior art,
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`identifies the motivation to combine such items; (d) submits a chart identifying
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`where each element in each asserted claim is disclosed, described, or taught in the
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`prior art, and the identity of the structure(s), act(s), or material(s) in each item of
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`prior art that performs the claimed function; and (e) identifies the grounds for
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`invalidating the Asserted Claims based upon indefiniteness under 35 U.S.C. § 112
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`¶ 2 and 6, and enablement or written description under 35 U.S.C. § 112 ¶ 1. In
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`addition, pursuant to Patent L.R. 4.3(b) and based upon its investigation to date,
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`Defendant is producing documents under Patent L.R. 4.3(b) required to accompany
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`these Invalidity Contentions.
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`Defendant further reserves the right to rely on any documents produced, and
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`invalidity contentions made, by defendants in the other past, pending or future
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`litigations brought involving the ’012 patent.
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`II. RESERVATIONS
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`Page 2
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`2
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`The information and documents that Defendant produces are provisional and
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`subject to further revision as follows: Defendant expressly reserves the right to
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`amend the disclosures and document production herein should Plaintiff provide
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`any information that it failed to provide in its Patent L.R. 4.1 disclosures or should
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`Plaintiff amend its Patent L.R. 4.1 disclosures in any way. Furthermore, because
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`limited discovery has only recently begun and because Defendant has not yet
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`completed its search for and analysis of relevant prior art, Defendant reserves the
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`right to revise, amend, and/or supplement the information provided herein,
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`including identifying, charting, and relying on additional references, should
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`Defendant’s further search and analysis yield additional information or references,
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`consistent with the Patent Rules and the Federal Rules of Civil Procedure.
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`Moreover, Defendant reserves the right to revise its ultimate contentions
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`concerning the invalidity of the Asserted Claims, which may change depending
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`upon the Court’s construction of the Asserted Claims, any findings as to the
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`priority date of the Asserted Claims, and/or positions that Plaintiff or expert
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`witness(es) may
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`take concerning claim construction,
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`infringement, and/or
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`invalidity issues. Consistent with Patent L.R. 4.5, Defendant reserves the right to
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`amend these Invalidity Contentions after a claim construction order in this case.
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`Page 3
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`3
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`Moreover, Plaintiff’s disclosures under Patent L.R. 4.1 are deficient in
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`numerous respects. For example, Plaintiff has failed to show where or how
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`Defendant’s accused toner bottle products meet each and every limitation of the
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`‘012 patent. Further, Plaintiff has not complied with the Local Patent Rules by, at
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`a minimum, failing to provide a “chart identifying where each element of each
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`asserted claim (i.e., claims 1-5, 8, 10, 23-27 and 30) is found within each Accused
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`Instrumentality….” Patent L.R. 4.1. Because such deficiencies may lead to further
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`grounds for invalidity, Defendant specifically reserves the right to modify, amend,
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`or supplement its contentions as Plaintiff modifies, amends, or supplements its
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`disclosures under Patent L.R. 4.1 and/or 4.5 and/or produces the required
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`documents and any other documents responsive to Defendant’s discovery requests.
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`In particular, Plaintiff has not produced any documents from any past or current
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`related litigations, should they exist, including, but not limited to, prior art,
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`invalidity contentions, expert reports, infringement contentions, claim construction
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`documents,
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`relevant correspondence, deposition
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`transcripts and exhibits,
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`dispositive motions, interrogatory responses, etc. Defendant incorporates by
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`reference any such document in Plaintiff’s possession, custody, or control, and
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`reserves the right to amend its contentions after Plaintiff produces these
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`Page 4
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`4
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`documents. Defendant also reserves the right to amend or supplement its invalidity
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`contentions following the Court's construction of any disputed claim limitations.
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`Defendant further reserves the right to rely upon applicable industry
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`standards and prior art cited in the file history and possible re-examination history
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`of the ’012 patent and related U.S. and foreign patent applications as invalidating
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`references or to show the state of the art. Prior art not included in these Invalidity
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`Contentions, whether known or unknown to Defendant, may become relevant. In
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`particular, Defendant is currently unaware of the extent, if any, to which Plaintiff
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`will contend that limitations of the Asserted Claims are not disclosed in the prior
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`art identified by Defendant. To the extent that such an issue arises, Defendant
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`reserves the right to identify other references that would anticipate or render
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`obvious the allegedly missing limitation(s) of the disclosed system or method.
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`Defendant further intends to rely on inventor admissions concerning the
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`scope of the prior art relevant to the asserted patents found in, inter alia: the patent
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`prosecution history for the asserted patents and related patents and/or patent
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`applications; any deposition testimony of the named inventors on the asserted
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`patents; and the papers filed and any evidence submitted by Plaintiff in connection
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`with this litigation or other of its past, current or future litigations concerning or
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`relating to the Patent-In-Suit.
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`Page 5
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`5
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`Defendant’s claim charts in Exhibit A (for the ’012 patent) cite to particular
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`teachings and disclosures of the prior art as applied to features of the Asserted
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`Claims. However, persons having ordinary skill in the art generally may view an
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`item of prior art in the context of other publications, literature, products, and
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`understanding. As such, the cited portions are only examples, and Defendant
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`reserves the right to rely on uncited portions of the prior art references and on other
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`publications and expert testimony as aids in understanding and interpreting the
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`cited portions, as providing context thereto, and as additional evidence that the
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`prior art discloses a claim limitation or the invention as a whole. Defendant further
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`reserves the right to rely on uncited portions of the prior art references, other
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`publications, and testimony, including expert testimony, to establish bases for
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`combinations of certain cited references that render the Asserted Claims obvious.
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`The references discussed in the claim charts in Exhibit A may disclose the
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`elements of the Asserted Claims explicitly and/or inherently, and/or they may be
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`relied upon to show the state of the art in the relevant time frame. The suggested
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`obviousness combinations are provided
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`in
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`the alternative
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`to Defendant’s
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`anticipation contentions and are not to be construed to suggest that any reference
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`included in the combinations is not by itself anticipatory.
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`Page 6
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`6
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`Defendant reserves the right to assert that the Asserted Claims are invalid
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`under 35 U.S.C. § 102(f) in the event Defendant obtains evidence that the
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`inventors named in the Patent-In-Suit did not invent (either alone or in conjunction
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`with others) the subject matter claimed in the Patent-In-Suit. Should Defendant
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`obtain such evidence, it will attempt to provide the name of the person(s) from
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`whom and the circumstances under which the invention or any part of it was
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`derived.
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`Defendant also reserves all of its rights to challenge any of the claim terms
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`herein under 35 U.S.C. § 112, including by arguing that they are indefinite, not
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`supported by the written description and/or not enabled. Accordingly, nothing
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`stated herein shall be construed as a waiver of any argument available under 35
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`U.S.C. §§ 101 and 112.
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`Defendant does not adopt Plaintiff’s positions on the scope or construction
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`of the claims of the Patent-In-Suit. Defendant’s Invalidity Contentions are not
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`adoptions or admissions by Defendant as to the accuracy of Plaintiff’s allegations,
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`admissions, positions, or constructions. These contentions are made in the
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`alternative, are not necessarily intended to be consistent with each other, and
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`should not be otherwise construed.
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`Page 7
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`7
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`Defendant provides the information below, as well as the accompanying
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`production of documents, for the sole purpose of complying with Patent L.R. 4.3.
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`The information provided shall not be deemed an admission regarding the scope of
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`any claims or the proper construction of those claims or any terms contained
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`therein. Nothing contained in these Invalidity Contentions should be understood or
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`deemed to be an express or implied admission or contention with respect to the
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`proper construction of any terms in the asserted claim, or with respect to the
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`alleged infringement of that claim. Furthermore, the information provided shall
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`not be deemed an admission regarding Plaintiff’s allegations of infringement of
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`any claims.
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`Defendant expressly reserves the right to take positions with respect to claim
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`construction or infringement issues that are inconsistent with, or even contradictory
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`to, claim construction or infringement positions expressed or implied in its
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`Invalidity Contentions set forth herein. Pursuant to Patent L.R. 4.3, Defendant
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`hereby provides disclosures and related documents pertaining only to the Asserted
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`Claims as identified by Plaintiff in its Infringement Contentions. Defendant
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`further reserves the right to supplement its Patent L.R. 4.3 document production
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`should it later find additional, responsive documents.
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`Page 8
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`8
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`III.
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`IDENTIFICATION OF PRIOR ART PURSUANT TO PATENT L.R.
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`4.3(a)(1)
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`Discovery is ongoing, and Defendant’s prior art investigation and third-party
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`discovery is therefore not yet complete. Defendant reserves the right to present
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`additional items of prior art under 35 U.S.C. § 102(a), (b), (e), and/or (g), and/or §
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`103 located during the course of discovery or further investigation. For example,
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`Defendant expects to issue subpoenas to third parties believed to have knowledge,
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`documentation and/or corroborating evidence concerning some of the prior art
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`listed in Section III.A and/or additional prior art. These third parties include
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`without limitation the authors, inventors, or assignees of the references listed in
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`these disclosures. In addition, Defendant reserves the right to assert invalidity
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`under 35 U.S.C. § 102(c), (d), or (f) to the extent that discovery or further
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`investigation yield information forming the basis for such invalidity.
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`A.
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`Prior Art Patents and Patent Publications
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`Subject to Defendant’s reservation of rights, Defendant hereby identifies the
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`prior art patents and patent publications that anticipate or render obvious the
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`Asserted Claims of the Patent-In-Suit under 35 U.S.C. §§ 102(a), (b), and/or (e)
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`and/or 35 U.S.C. § 103:
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`Page 9
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`9
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`Patents and Patent Publications
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`U.S. Patent No. 5,218,407, titled “Apparatus for Initial Set-Up of Developer Unit
`In an Image Forming Apparatus,” to Matsushita et al., issued June 8, 1993
`U.S. Patent No. 5,455,662, titled “Developer Replenishing Device and Developer
`Container for Use Therewith,” to Ichikawa et al., issued October 3, 1995
`U.S. Patent No. 5,557,382, titled “Toner Replenishing Device for a Developing
`Device,” to Tatsumi et al., issued September 17, 1996
`U.S. Patent No. 5,598,254, titled “Cartridge for Replenishing Two-Ingredient
`Developer to an Image Forming Apparatus and a Replenishing Device Using
`the Same,” to Ikesue et al., issued January 28, 1997
`U.S. Patent No. 5,765,079, titled “Toner Bottle,” to Yoshiki et al., issued June 9,
`1998
`U.S. Patent No. 5,822,663, titled “Developer Replenishing Device and Developer
`Container for Use Therewith,” to Ichikawa et al., issued October 13, 1998
`U.S. Patent No. 5,828,935, titled “Image Forming Apparatus, Toner Supply Unit,
`and Toner Bottle Attached Thereto,” to Tatsumi et al., issued October 27,
`1998
`U.S. Patent No. 5,909,609, titled “Image Forming Apparatus with Provisions for
`Supplying Toner Therein,” to Yahata et al., issued June 1, 1999
`U.S. Patent No. 5,915,155, titled “Toner Replenishing and Developer Replacing
`Device for a Developing Unit of an Image Forming Apparatus,” to Shoji et
`al., issued June 22, 1999
`U.S. Patent No. 5,918,090, titled “Developer Replenishing Device and Developer
`Container for Use Therewith,” to Ichikawa et al., issued June 29, 1999
`U.S. Patent No. 5,953,567, titled “Screw Pump, Toner Conveying Device Using
`the Same and Toner Filling System,” to Muramatsu et al., issued September
`14, 1999
`U.S. Patent No. 5,966,574, titled “Developer Replenishing Apparatus,” to Ui et al.,
`issued October 12, 1999
`U.S. Patent No. 5,970,290, titled “Image Forming Apparatus with Toner Housing
`Container Which Promotes Efficient Toner Supply,” to Yoshiki et al., issued
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`Page 10
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`10
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`Patents and Patent Publications
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`October 19, 1999
`U.S. Patent No. 6,097,903, titled “Toner Supplying Device, Toner Container
`Therefor and Image Forming Apparatus Using Same Toner Supplying Device
`and Toner Container,” to Yahata et al., issued August 1, 2000
`U.S. Patent No. 6,289,195, titled “Developer Replenishing Device and Developer
`Container for Use Therewith,” to Ichikawa et al., issued September 11, 2001
`U.S. Patent No. 6,298,208, titled “Toner Container for an Image Forming
`Apparatus,” to Kawamura et al., issued October 2, 2001
`U.S. Patent No. 6,418,293, titled “Developer Replenishing Device and Developer
`Container for Use Therewith,” to Ichikawa et al., issued July 9, 2002
`U.S. Patent Pub. No. 2001/0008593, titled “Toner Storing Container and Toner
`Replenishing Device Therewith,” to Tsuji et al., published July 19, 2001
`U.S. Patent Pub. No. 2002/0044795, titled “Toner Bottle,” to Kato, published April
`18, 2002
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`
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`Defendant is currently investigating information relating to dates that
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`various toner bottle or toner replenishing products were first made, first publicly
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`used, offered for sale and/or sold and at least further establishing if necessary that
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`such making, public use, offer for sale and/or sale of these products occurred prior
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`to the priority date of the Patent-in-Suit. In addition, Defendant is currently
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`investigating the dates of conception and reduction to practice of these products
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`and when these products were first known or used by others. In the course of its
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`investigation, Defendant may identify additional prior art documents describing
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`Page 11
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`11
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`these products that may also anticipate and/or render obvious as invalidating
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`printed publications. Any citation to one or more of these prior art references, or
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`other prior art references regarding these products should be construed to constitute
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`not only a citation to the prior art reference itself, but also a reference to the
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`product itself. Discovery is ongoing in the case, and Defendant will supplement
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`these Invalidity Contentions if and when more information becomes available.
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`IV. LOCAL PATENT RULES 4.3(a)(2) and (a)3
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`“For each item of prior art disclosed, whether each
`item of prior art anticipates each asserted claim or
`renders it obvious. If the disclosing party contents
`that a combination of items of prior art makes a
`claim obvious, each such combination, and the
`motivation
`to combine such
`items, shall be
`identified.” Patent L.R. 4.3(a)(2)
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`“A chart identifying where specifically in each
`alleged item of prior art each element of each
`asserted claim is found[.]” Patent L.R. 4.3(a)(3)
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`Identification of Representative Prior Art
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`A.
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`Subject to Defendant’s reservation of rights, and based upon Defendant’s
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`present understanding of the Asserted Claims of the Patent-In-Suit, each of the
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`Asserted Claims of the Patent-In-Suit is anticipated by and/or obvious in view of
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`one or more of the items of prior art identified above in Section III.A (list of prior
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`Page 12
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`12
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`art patents), alone or in combination. Although Defendant reserves the right to rely
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`on other references disclosed or incorporated by reference in these Invalidity
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`Contentions, representative references from the above sections include the
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`following:
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`1.
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`U.S. Patent No. 5,765,079 to Yoshiki et al.; U.S. Patent No.
`6,298,208 to Kawamura et al.; U.S. Patent No. 5,218,407 to
`Matsushita et al.; U.S. Patent Pub. No. 2002/0044795 to
`Kato.
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`U.S. Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”) in combination
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`with U.S. Pat. No. 6,298,208 to Kawamura et al. (“Kawamura ‘208”), U.S. Pat.
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`No. 5,218,407 to Matsushita et al. (“Matsushita ‘795”), and/or U.S. Patent Pub.
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`No. 2002/0044795 to Kato (“Kato ‘795”) are invalidating prior art under 35 U.S.C.
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`§ 103. See Exhibits A1-A3.
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`2.
`
`U.S. Patent No. 5,966,574 to Ui et al; U.S. Patent No.
`5,765,079 to Yoshiki et al.; U.S. Patent No. 6,298,208 to
`Kawamura et al.; U.S. Patent Pub. No. 2002/0044795 to
`Kato.
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`U.S. Patent No. 5,966,574 to Ui et al. (“Ui ‘574”) in combination with U.S.
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`Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”), U.S. Pat. No. 6,298,208 to
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`Kawamura et al. (“Kawamura ‘208”), and/or U.S. Patent Pub. No. 2002/0044795
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`to Kato (“Kato ‘795”) are invalidating prior art under 35 U.S.C. § 103. See
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`Page 13
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`Exhibits A4.
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`13
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`B.
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`Invalidity Charts: Exhibit A
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`Defendant has attached charts identifying examples of prior art that
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`anticipate and/or render obvious each of the Asserted Claims of the Patent-In-Suit
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`in Exhibit A (the ’012 patent) (collectively referred to as the “Invalidity Charts”).1
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`Further, the combinations of references demonstrating the obviousness of the
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`Asserted Claims of the Patent-In-Suit under 35 U.S.C. § 103 are merely exemplary
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`and are not intended to be exhaustive.
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`To the extent that Defendant’s contentions reflect constructions of claim
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`elements consistent with or implicit in Plaintiff's Infringement Contentions, no
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`inference is intended nor should any be drawn that Defendant agrees with
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`Plaintiff's claim constructions, and Defendant expressly reserves the right to
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`contest such claim constructions. Defendant offers such contentions in response to
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`Plaintiff's Infringement Contentions and without prejudice to any position it may
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`ultimately take as to any claim construction issues. The narratives, citations and
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`exhibits are exemplary and do not limit Defendant’s right to rely upon the entirety
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`of the prior art reference to demonstrate anticipation and/or obviousness.
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`C. Obviousness Combinations
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`1 To the extent not identified above, Defendant identifies all references listed in the Invalidity
`Charts as prior art references anticipating and/or rendering obvious one or more Asserted Claims
`of the Patent-In-Suit.
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`Page 14
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`14
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`Numerous prior art references, including those identified above pursuant to
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`Patent L.R. 4.3 and in Exhibit A reflect common knowledge and the state, scope
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`and content of the prior art before the priority dates of the Patent-In-Suit. See
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`Graham v. John Deere Co., 383 U.S. 1, 35-36 (1966). The combinations cited in
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`Exhibit A and below are illustrative and not exhaustive. Though these
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`combinations provide illustrative citations to where each element may be found in
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`the prior art references or in their combination, the cited references may contain
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`other disclosures of each claim element as well, and Defendant reserves the right to
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`argue any claim elements of the Asserted Claims of the Patent-In-Suit are
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`disclosed in non-cited portions of these references.
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`Defendant believes that no showing of a specific motivation to combine
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`prior art is required to combine the references disclosed above and in the attached
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`charts, as each combination of art would have no unexpected results, and at most
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`would simply represent a known alternative to one of ordinary skill in the art. See
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-17, 127 S. Ct. 1727, 1739-40
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`(2007) (rejecting the Federal Circuit’s “rigid” application of the teaching,
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`suggestion, or motivation to combine test, instead espousing an “expansive and
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`flexible” approach). Indeed, the Supreme Court held that a person of ordinary skill
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`in the art is “a person of ordinary creativity, not an automaton” and “in many cases
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`Page 15
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`15
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`a person of ordinary skill in the art will be able to fit the teachings of multiple
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`patents together like pieces of a puzzle.” Id. at 1742. In assessing the level of
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`ordinary skill in the relevant art, the court may consider several factors including:
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`(1) the purported inventors’ educational levels; (2) the types of problems
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`encountered in the art of toner bottle and toner replenishing apparatus design; (3)
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`prior art solutions to those problems; (4) rapid pace of innovation; (5)
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`technological sophistication; and (6) educational level of active workers in the
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`wireless networking field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254,
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`1256 (Fed. Cir. 2007).
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`Nevertheless, in keeping with the Patent Rules, and in addition to the
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`information contained in the section immediately above and elsewhere in these
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`contentions, Defendant hereby identifies additional motivations and reasons to
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`combine the cited art.
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`1. Motivation to Combine All References
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`Generally, it would have been obvious to one of ordinary skill in the art to
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`combine any of the References listed in Section IV.A (also charted in Exhibit A) to
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`arrive at the claimed purported invention of the Patent-In-Suit. The combination of
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`familiar elements according to known methods is obvious here because it would
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`have yielded predictable, and entirely unsurprising results. Motivation to combine
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`Page 16
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`16
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`any two or more of the identified references comes from the fact that all of the
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`references teach toner bottles, toner containers, or other toner replenishment
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`devices that can be operatively connected to image forming apparatuses, such as
`
`copiers or printers. At least as early as the priority date of the Patent-In-Suit, one
`
`would have been motivated by considerations of efficiency, effectiveness, feature
`
`desirability, convenience, cost-savings, and/or accessibility, to combine the various
`
`features and teachings of these references in the no longer novel ways set out in the
`
`anticipated and obvious Asserted Claims.
`
`
`
`2. Motivation to Combine Specific References
`
`Provided below is an exemplary list of combinations of references, and a
`
`motivation to combine each of the references:
`
`Prior Art References
`
`Combination and Basis for
`Combination
`
`The Ricoh Patents: The Ricoh Patents
`include
`1. U.S. Pat. No. 5,455,662
`2. U.S. Pat. No. 5,557,382
`3. U.S. Pat. No. 5,765,079
`4. U.S. Pat. No. 5,822,663
`5. U.S. Pat. No. 5,828,935
`6. U.S. Pat. No. 5,909,609
`7. U.S. Pat. No. 5,915,155
`
`Motivation to Combine: To the extent
`the Ricoh Patents are considered
`separate references, it would have been
`obvious for a person having ordinary
`skill in the art to combine the teachings
`of the several, related Ricoh patents.
`Each of the Ricoh Patents is directed to
`the same technology (toner bottles and
`toner replenishment devices in image
`forming apparatuses), during the same
`time period, assigned
`to
`the same
`assignee, many
`including common
`
`Page 17
`
`
`
`17
`
`
`
`
`
`Combination and Basis for
`Combination
`inventors. Further, many of the Ricoh
`Patents claim priority to each other.
`Thus, not only would it have been
`obvious to one of ordinary skill in the
`art to combine these references at the
`time of the filing of the Patent-In-Suit,
`in practice many of these references
`were combined.
`
`Motivation to Combine: It would have
`been obvious for a person of ordinary
`skill in the art to combine the teachings
`of the several Ricoh Patents with the
`prior art listed immediately to the left in
`this table, as each of the Ricoh Patents
`and the listed references are directed to
`the same technology (toner bottles and
`toner replenishment devices in image
`forming apparatuses).
`
`
`Prior Art References
`
`8. U.S. Pat. No. 5,918,090
`9. U.S. Pat. No. 5,953,567
`10. U.S. Pat. No. 5,970,290
`11. U.S. Pat. No. 6,097,903
`12. U.S. Pat. No. 6,289,195
`13. U.S. Pat. No. 6,418,293
`
`Exemplary Combinations: The Ricoh
`Patents anticipate and/or render obvious
`all of the Asserted Claims of the Patent-
`In-Suit in view of one or more of the
`below references:
`1. U.S. Pat. No. 6,298,208
`2. U.S. Pat. No. 5,218,407
`3. U.S.
`Pat.
`Pub.
`2002/0044795
`
`No.
`
`
`
`Exemplary Combinations: U.S. Patent
`No. 6,298,208 to Kawamura et al.
`(“Kawamura ‘208”) anticipates and/or
`renders obvious all of the Asserted
`Claims of the Patent-In-Suit in view of
`one or more of the below references:
`1. U.S. Pat. No. 5,765,079
`2. U.S. Pat. No. 5,218,407
`3. U.S.
`Pat.
`Pub.
`2002/0044795
`
`No.
`
`Motivation to Combine: It would have
`been obvious for a person of ordinary
`skill in the art to combine the teachings
`of Kawamura ‘208 with the prior art
`listed immediately to the left in this
`table, as Kawamura ‘208 and the listed
`references are directed to the same
`technology (toner bottles and
`toner
`replenishment devices in image forming
`apparatuses).
`
`
`Page 18
`
`
`
`18
`
`
`
`
`
`Prior Art References
`
`Combination and Basis for
`Combination
`
`Exemplary Combinations: U.S. Patent
`No. 5,966,574 to Ui et al. (“Ui ‘574”)
`anticipates and/or renders obvious all of
`the Asserted Claims of the Patent-In-
`Suit in view of one or more of the below
`references:
`1. U.S. Pat. No. 5,765,079
`2. U.S. Pat. No. 6,298,208
`3. U.S.
`Pat.
`Pub.
`2002/0044795
`
`No.
`
`Motivation to Combine: It would have
`been obvious for a person of ordinary
`skill in the art to combine the teachings
`of Ui ‘574 with the prior art listed
`immediately to the left in this table, as
`Ui ‘574 and the listed references are
`directed to the same technology (toner
`bottles and toner replenishment devices
`in image forming apparatuses).
`
`
`Motivation to Combine: It would have
`been obvious for a person of ordinary
`skill in the art to combine the teachings
`of Kato ‘795 with the prior art listed
`immediately to the left in this table, as
`Kato ‘795 and the listed references are
`directed to the same technology (toner
`bottles and toner replenishment devices
`in image forming apparatuses).
`
`
`
`
`Exemplary Combinations: U.S. Patent
`Pub. No. 2002/0044795 to Kato (“Kato
`‘795”)
`anticipates
`and/or
`renders
`obvious all of the Asserted Claims of
`the Patent-In-Suit in view of one or
`more of the below references:
`1. U.S. Pat. No. 5,765,079
`2. U.S. Pat. No. 5,218,407
`3. U.S. Pat. No. 6,298,208
`
`
`
`As previously discussed, each of the references identified in the attached
`
`chart (see Exhibit A) independently anticipate the Asserted Claims of the Patents-
`
`in- Suit. To the extent that Plaintiff contends that the disclosure in a chart for a
`
`Page 19
`
`
`
`19
`
`
`
`
`
`particular claim or claim element does not anticipate that claim element, that
`
`particular claim or claim element is rendered obvious in view of at least the
`
`combinations listed above.
`
`For at least the reasons described above and below in the examples provided
`
`as well as in the claim charts of Exhibit A, it would have been obvious to one of
`
`ordinary skill in the art to combine any of a number of prior art references,
`
`including any combination of those identified in Exhibit A to meet the elements of
`
`the Asserted Claims. As such, Defendant’s inclusion of exemplary combinations,
`
`in view of the factors and motivations identified in the preceding paragraph, does
`
`not preclude Defendant from identifying other invalidating combinations as
`
`appropriate.
`
`In addition to the specific combinations of prior art and the specific
`
`combinations of groups of prior art disclosed, Defendant reserves the right to rely
`
`on any other combination of any prior art references disclosed herein. Defendants
`
`further reserve the right to rely upon combinations disclosed within the prosecution
`
`history of the references cited herein. These obviousness combinations reflect
`
`Defendant’s present understanding of the potential scope of the claims that
`
`Plaintiff appears to be advocating and should not be seen as Defendant’s
`
`acquiescence to Plaintiff’s interpretation of the Asserted Claims.
`
`Page 20
`
`
`
`20
`
`
`
`
`
`V. LOCAL PATENT RULE 4.3(a)(4)
`
`“Any grounds of invalidity based on any
`applicable provision of 35 U.S.C. § 112.” Patent
`L.R. 4.3(a)(4).
`
`Defendant sets forth the following invalidity contentions without the benefit
`
`of the Court’s construction of the claims at issue, and for the sole purpose of
`
`complying with Patent L.R. 4.3(a)(4). The following contentions shall not be
`
`deemed as admissions, whether express or implied, regarding the scope of any
`
`claims, the proper constructions of those claims or any terms recited in those
`
`claims.
`
`Discovery is ongoing, and Defendant has not had the opportunity to take any
`
`of the depositions of the named inventors of the Patent-In-Suit or other persons
`
`having relevant information. Defendant reserves the right to revise, amend or
`
`supplement these contentions pursuant to Federal Rule of Civil Procedure 26(e)
`
`and the Orders of record in this matter to the extent appropriate in light of further
`
`investigation and discovery regarding the defenses, the review and analysis of
`
`expert witnesses, supplemental contentions or claim construction positions by
`
`Plaintiff and/or the Court’s construction of the claims at issue.
`
`To the extent the following contentions reflect constructions of claim
`
`limitations consistent with or implicit in Plaintiff's Infringement Contentions, no
`
`Page 21
`
`
`
`21
`
`
`
`
`
`inference is intended, nor should any be drawn that Defendant agrees with
`
`Plaintiff’s claim constructions, and Defendant expressly reserves the right to
`
`contest such claim constructions. Defendant offers such contentions in response to
`
`Plaintiff's Infringement Contentions and without prejudice to any position it may
`
`ultimately take as to any claim construction issues. Subject to Defendant’s
`
`reservation of rights, Defendant contends that the Asserted Claims of the Patent-In-
`
`Suit are invalid under 35 U.S.C. § 112, paragraphs 1, 2, and 6 for the following
`
`reasons.
`
`A.
`
`35 U.S.C. § 112(1)
`
`Defendant is in the process of propounding discovery on Plaintiff
`
`concerning whether the Asserted Claims are invalid under § 112 due to a lack of
`
`enablement and/or lack of written description. Defendant reserves the right to
`
`modify, supplement, or amend its disclosure of invalidity contentions when
`
`additional information bearing on these issues is obtained.
`
`B.
`
`35 U.S.C. § 112(2)
`
`All of the Asserted Claims of the Patent-In-Suit are invalid because they fail
`
`to meet the “definiteness” requirement of 35 U.S.C. § 112.
`
`“configured and positioned to contain toner… configured
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