throbber
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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`DEFENDANTS’ AMENDED INVALIDITY CONTENTIONS
`PURSUANT TO LOCAL PATENT RULE 4.3
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`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 Markman Order of January 10, 2014, adopting the August
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`26, 2013 Report and Recommendations of the Special Master (“Markman Order”),
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`Defendants General Plastic Industrial Co., LTD. and Color Imaging, Inc.
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`(“Defendants”) hereby provide their Amended Invalidity Contentions with respect
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`to the claims identified by Plaintiff Canon, Inc. (“Plaintiff”) in Plaintiff’s
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`Supplemental and Amended Disclosure of Asserted Claims and Infringement
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`Contentions to the Defendants. The Asserted Claims are claims 24, 25, and 30 (the
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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
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`INDUSTRIAL CO., LTD.,
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`Defendants.
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`)
`_________________________ )
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`“Asserted Claims”) of U.S. Patent No. 7,647,012 (“the ’012 patent” or “the Patent-
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`In-Suit”).
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`The following contentions are based on the claim constructions set forth in
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`the Markman Order. Defendants reserve the right to challenge the Court’s
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`Markman Order on appeal and to modify their contentions if the Markman Order is
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`modified in any manner. Nothing in these contentions shall be taken as an
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`admission by Defendants that the Markman Order is correct.
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`With respect to each asserted claim and based upon its investigation to date,
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`Defendants hereby: (a) identify each currently known item of prior art that either
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`anticipates or renders obvious each asserted claim; (b) specify 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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`identify the motivation to combine such items; (d) submit a chart identifying where
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`each element in each asserted claim is disclosed, described, or taught in the prior
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`art, and the identity of the structure(s), act(s), or material(s) in each item of prior
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`art that performs the claimed function; and (e) identify the grounds for invalidating
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`the Asserted Claims based upon indefiniteness under 35 U.S.C. § 112 ¶ 2 and 6. 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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`Defendants are producing documents under Patent L.R. 4.3(b) required to
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`accompany these Invalidity Contentions.
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`Defendants further reserve 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
`The information and documents that Defendants produce are provisional and
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`subject to further revision as follows: Defendants expressly reserve 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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`Defendants’ search for and analysis of relevant prior art is ongoing, Defendants
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`reserve the right to revise, amend, and/or supplement the information provided
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`herein, including identifying, charting, and relying on additional references, should
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`Defendants’ 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, Defendants reserve the right to revise their 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.
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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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`Defendants’ 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 24, 25, 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, Defendants specifically reserve the right to modify, amend,
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`or supplement their 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 Defendants’ discovery requests.
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`Defendants further reserve 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 Amended
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`Invalidity Contentions, whether known or unknown to Defendants, may become
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`relevant. In particular, Defendants are currently unaware of the extent, if any, to
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`which Plaintiff will contend that limitations of the Asserted Claims are not
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`disclosed in the prior art identified by Defendants. To the extent that such an issue
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`arises, Defendants reserve the right to identify other references that would
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`anticipate or render obvious the allegedly missing limitation(s) of the disclosed
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`system or method.
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`Defendants’ 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 Defendants
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`reserve 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. Defendants
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`further reserve 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 Defendants’
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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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`Defendants reserve the right to assert that the Asserted Claims are invalid
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`under 35 U.S.C. § 102(f) in the event Defendants obtain 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 Defendants
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`obtain such evidence, they 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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`Defendants also reserve all rights to challenge any of the claim terms herein
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`under 35 U.S.C. § 112, including by arguing that they are indefinite, not supported
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`by the written description and/or not enabled. Accordingly, nothing stated herein
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`shall be construed as a waiver of any argument available under 35 U.S.C. §§ 101
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`and 112.
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`Defendants do not adopt Plaintiff’s positions on the scope or construction of
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`the claims of the Patent-In-Suit. Defendants’ Amended Invalidity Contentions are
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`not adoptions or admissions by Defendants as to the accuracy of Plaintiff’s
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`allegations, admissions, positions, or constructions. These contentions are made in
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`the 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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`Defendants provide 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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`Defendants expressly reserve 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 their
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`Amended Invalidity Contentions set forth herein. Pursuant to Patent L.R. 4.3,
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`Defendants hereby provide disclosures and related documents pertaining only to
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`the Asserted Claims as identified by Plaintiff in its Infringement Contentions.
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`Defendants further reserve the right to supplement their Patent L.R. 4.3 document
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`production should they later find additional, responsive documents.
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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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`Defendants present these Amended Invalidity Contentions in response to the
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`claim construction ruling set forth in the Markman Order. In particular, these
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`Amended Invalidity Contentions
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`include citations
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`to additional prior art,
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`discussions of relevant motivation to combine, and further arguments as to the
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`invalidity of the Patent-In-Suit as a result of the Markman Order.
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`Although fact discovery ends on April 10, 2014, Expert discovery does not
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`end until July 30, 2014. Accordingly, Defendants reserve 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 expert discovery or further investigation. In
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`addition, Defendants reserve the right to assert invalidity under 35 U.S.C. § 102(c),
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`(d), or (f) to the extent that discovery or further investigation yield information
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`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 Defendants’ reservation of rights, Defendants hereby identify 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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`Patents and Patent Publications
`
`U.S. Patent No. 4,878,603, titled “Toner Replenishing Device,” to Ikesue et al.,
`issued November 7, 1989
`U.S. Patent No. 4,941,022, titled “Toner Recovery Device,” to Ohmura et al.,
`issued July 10, 1990
`U.S. Patent No. 4,979,645, titled “System for Introducing Additive into a
`Container,” to Groves et al., issued December 25, 1990
`U.S. Patent No. 4,990,964, titled “Toner Delivery System Having a Multi-
`Functional Toner Container for Non-Mechanical Printer and Copier Means,”
`to Kraehn, issued February 5, 1991
`U.S. Patent No. 5,089,854, titled “Apparatus for Supplementing Developing Agent
`into Image Forming Machine,” to Kaieda et al., issued February 18, 1992
`U.S. Patent o. 5,200,787, titled “Method and Apparatus for Supplying and
`Collecting Toner in an Image Forming Device,” to Nishiguchi, issued April 6,
`1993
`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. 5,248,847, titled “Developing Container Storing a Liquid
`Developer with Pump Dispenser,” to Aoyama, issued September 28, 1993
`U.S. Patent No. 5,383,502, titled “Automatic Toner Dispenser Lid Latching and
`Unlatching System,” to Fisk et al., issued January 24, 1995
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`Patents and Patent Publications
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`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. 5,495,323, titled “Clean Spiral Toner Cartridge,” to Meetze, Jr.,
`issued February 27, 1996
`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. 5,593,224, titled “Backrest Lock,” to Ruckert, issued January
`14,1997
`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. 5,692,652, titled “Self-Closing Valve for Bottles,” to Wise, issued
`December 2, 1997
`U.S. Patent No. 5,765,079, titled “Toner Bottle,” to Yoshiki et al., issued June 9,
`1998
`U.S. Patent No. 5,812,915, titled “Press Fit Fill Plugs with Uniform Sealing
`Ability,” to Farkash, issued September 22, 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. 5,823,814, titled “Connector Module Having Connector Positive
`Assurance Member and Internally Latching Connector Housings,” to Alwine,
`issued October 20, 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. 5,852,760 titled “Toner Container with Snap-On Torque Bearing
`Adapter,” to Harris et al., issued December 22, 1998
`U.S. Patent No. 5,903,806 titled “Developing Agent Replenishing Apparatus and
`Cartridge,” to Matsuoka et al., issued May 11, 1999
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`Patents and Patent Publications
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`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. 5,966,010, titled “Electrical Energy Meter with Snap Fit
`Interlocking Parts,” to Loy et al., issued October 12, 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
`October 19, 1999
`U.S. Patent No. 6,003,675, titled “Part Retainer for Holding a Part,” to Maruyama
`et al., issued December 21, 1999
`U.S. Patent No. 6,027,097, titled “Water Stop Hose Connector,” to Humphreys et
`al., issued February 22, 2000
`U.S. Patent No. 6,040,523, titled “Snap-Fit Design of an Airborne Missile Systems
`Seeker/Detector Section Using Engineering Plastics,” to Cunningham, issued
`March 21, 2000
`U.S. Patent No. 6,079,593, titled “Storage Container for Stackable Consumer
`Articles,” to Konrad, issued June 27,2000
`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
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`Patents and Patent Publications
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`U.S. Patent No. 6,131,961, titled “Quick Connector for the Connecting of Hoses
`and Pipes,” to Heilmann, issued October 17, 2000
`U.S. Patent No. 6,152,304, titled “Component Holder,” to Hikita et al., issued
`November 28, 2000
`U.S. Patent No. 6,168,467, titled “Receptacle Connector,” to Chiou, issued January
`2, 2001
`U.S. Patent No. 6,199,913, titled “Fast Connector for Gardening Hose,” to Wang,
`issued March 13, 2001
`titled “Recording Apparatus with Resilient
`U.S. Patent No. 6,249,501,
`Displacement Member and Limiter Mechanism,” to Nakamura et al., issued
`June 19, 2001
`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. 6,412,163, titled “Method For Gear Mounting Using Tubing and
`Snap-Fit Caps,” to Russell, issued July 2, 2002
`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 No. 6,501,990, titled “Extendable and Retractable Lead Having a
`Snap-Fit Terminal Connector,” to Sundberg et al., issued December 31, 2002
`U.S. Patent No. 6,648,715, titled “Snap-Fit Construction System,” to Wiens et al.,
`issued November 18, 2003
`U.S. Patent No. 6,659,680, titled “Snap Fit Stud,” to Wyer, issued December 9,
`2003
`U.S. Patent No. 6,698,966, titled “Fastenings,” to Hilton et al., issued March 2,
`2004
`U.S. Patent No. 6,874,220, titled “Method and Apparatus for Mounting an
`Acoustic Transducer,” to Jones, issued April 5, 2005
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`Patents and Patent Publications
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`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
`E.P. Patent No. 0796405, titled “Squeeze-To-Release Quick Connector with Snap-
`In Retainer,” to Jackowski, issued February 2, 2001
`
`
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`Defendants are 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, Defendants are 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 their
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`investigation, Defendants may identify additional prior art documents describing
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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 Defendants 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)
`
`“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)
`
`“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)
`
`Identification of Representative Prior Art
`
`A.
`
`Subject to Defendants’ reservation of rights, and based upon Defendants’
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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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`art patents), alone or in combination. Although Defendants reserve the right to rely
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`on other references disclosed or incorporated by reference in these Invalidity
`
`Contentions, representative references from the above sections include the
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`following:
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`1.
`
`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; U.S. Patent No. 5,903,806 to Matsuoka et al.; U.S.
`Patent 6,412,163 to Russell; U.S. Patent No. 6,698,966 to
`Hilton et al.; U.S. Patent No. 6,501,990 to Sundberg et al.
`
`U.S. Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”) in combination
`
`with U.S. Patent No. 6,298,208 to Kawamura et al. (“Kawamura ‘208”), U.S.
`
`Patent No. 5,218,407 to Matsushita et al. (“Matsushita ‘795”), U.S. Patent No.
`
`5,903,806 to Matsuoka et al. (“Matsuoka ‘806”), U.S. Patent 6,412,163 to Russell
`
`(“Russell ‘163”), U.S. Patent No. 6,698,966 to Hilton et al. (“Hilton ‘966”) and/or
`
`U.S. Patent Pub. No. 2002/0044795 to Kato (“Kato ‘795”) are invalidating prior art
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`under 35 U.S.C. § 103. See Exhibit A1.
`
`2.
`
`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 No. 5,765,079
`to Yoshiki et al.; U.S. Patent Pub. No. 2002/0044795 to
`Kato; U.S. Patent No. 5,903,806 to Matsuoka et al.; U.S.
`Patent 6,412,163 to Russell; U.S. Patent No. 6,698,966 to
`Hilton et al.; U.S. Patent No. 6,501,990 to Sundberg et al
`
`U.S. Patent No. 6,298,208 to Kawamura et al. (“Kawamura ‘208”) in
`
`combination with U.S. Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”),
`
`U.S. Patent No. 5,218,407 to Matsushita et al. (“Matsushita ‘795”), U.S. Patent No.
`
`5,903,806 to Matsuoka et al. (“Matsuoka ‘806”), U.S. Patent 6,412,163 to Russell
`
`(“Russell ‘163”), U.S. Patent No. 6,698,966 to Hilton et al. (“Hilton ‘966”) and/or
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`U.S. Patent Pub. No. 2002/0044795 to Kato (“Kato ‘795”) are invalidating prior art
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`under 35 U.S.C. § 103. See Exhibit A2.
`
`3.
`
`U.S. Patent Pub. No. 2002/0044795 to Kato; 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 No. 5,765,079 to Yoshiki et al.;
`U.S. Patent No. 5,903,806 to Matsuoka et al.; U.S. Patent
`6,412,163 to Russell; U.S. Patent No. 6,698,966 to Hilton et
`al.; U.S. Patent No. 6,501,990 to Sundberg et al
`
`U.S. Patent Pub. No. 2002/0044795 to Kato (“Kato ‘795”) in combination
`
`with U.S. Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”), U.S. Patent No.
`
`5,218,407 to Matsushita et al. (“Matsushita ‘795”), U.S. Patent No. 5,903,806 to
`
`Matsuoka et al. (“Matsuoka ‘806”), U.S. Patent 6,412,163 to Russell (“Russell
`
`‘163”), U.S. Patent No. 6,698,966 to Hilton et al. (“Hilton ‘966”) and/or U.S.
`
`Patent No. 6,298,208 to Kawamura et al. (“Kawamura ‘208”) are invalidating prior
`
`art under 35 U.S.C. § 103. See Exhibit A3.
`
`4.
`
`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; U.S. Patent No. 5,903,806 to Matsuoka et al.; U.S.
`Patent 6,412,163 to Russell; U.S. Patent No. 6,698,966 to
`Hilton et al.; U.S. Patent No. 6,501,990 to Sundberg et al
`
`U.S. Patent No. 5,966,574 to Ui et al. (“Ui ‘574”) in combination with U.S.
`
`Patent No. 5,765,079 to Yoshiki et al. (“Yoshiki ‘079”), U.S. Pat. No. 6,298,208 to
`
`Kawamura et al. (“Kawamura ‘208”), U.S. Patent No. 5,903,806 to Matsuoka et al.
`
`8720024 v1
`
`Page 16
`
`
`
`16
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`

`
`(“Matsuoka ‘806”), U.S. Patent 6,412,163 to Russell (“Russell ‘163”), U.S. Patent
`
`No. 6,698,966 to Hilton et al. (“Hilton ‘966”) and/or U.S. Patent Pub. No.
`
`2002/0044795 to Kato (“Kato ‘795”) are invalidating prior art under 35 U.S.C. §
`
`103. See Exhibit A4.
`
`B.
`
`Invalidity Charts: Exhibit A
`
`Defendants have attached charts identifying examples of prior art that
`
`anticipate and/or render obvious each of the Asserted Claims of the Patent-In-Suit
`
`in Exhibit A (the ’012 patent) (collectively referred to as the “Invalidity Charts”).1
`
`Further, the combinations of references demonstrating the obviousness of the
`
`Asserted Claims of the Patent-In-Suit under 35 U.S.C. § 103 are merely exemplary
`
`and are not intended to be exhaustive.
`
`To the extent that Defendants’ contentions reflect constructions of claim
`
`elements consistent with or implicit in Plaintiff's Infringement Contentions, no
`
`inference is intended nor should any be drawn that Defendants agree with
`
`Plaintiff's claim constructions, and Defendants expressly reserve the right to
`
`contest such claim constructions. Defendants offer such contentions in response to
`
`Plaintiff's Infringement Contentions and without prejudice to any position they
`
`
`1 To the extent not identified above, Defendants 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.
`
`8720024 v1
`
`Page 17
`
`
`
`17
`
`

`
`may ultimately take as to any claim construction issues. The narratives, citations
`
`and exhibits are exemplary and do not limit Defendants’ right to rely upon the
`
`entirety of the prior art reference to demonstrate anticipation and/or obviousness.
`
`C. Obviousness Combinations
`
`Numerous prior art references, including those identified above pursuant to
`
`Patent L.R. 4.3 and in Exhibit A reflect common knowledge and the state, scope
`
`and content of the prior art before the priority dates of the Patent-In-Suit. See
`
`Graham v. John Deere Co., 383 U.S. 1, 35-36 (1966). The combinations cited in
`
`Exhibit A and below are illustrative and not exhaustive. Though these
`
`combinations provide illustrative citations to where each element may be found in
`
`the prior art references or in their combination, the cited references may contain
`
`other disclosures of each claim element as well, and Defendants reserve the right to
`
`argue any claim elements of the Asserted Claims of the Patent-In-Suit are
`
`disclosed in non-cited portions of these references.
`
`Defendants believe that no showing of a specific motivation to combine
`
`prior art is required to combine the references disclosed above and in the attached
`
`charts, as each combination of art would have no unexpected results, and at most
`
`would simply represent a known alternative to one of ordinary skill in the art. See
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-17, 127 S. Ct. 1727, 1739-40
`
`8720024 v1
`
`Page 18
`
`
`
`18
`
`

`
`(2007) (rejecting the Federal Circuit’s “rigid” application of the teaching,
`
`suggestion, or motivation to combine test, instead espousing an “expansive and
`
`flexible” approach). Indeed, the Supreme Court held that a person of ordinary skill
`
`in the art is “a person of ordinary creativity, not an automaton” and “in many cases
`
`a person of ordinary skill in the art will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle.” Id. at 1742. In assessing the level of
`
`ordinary skill in the relevant art, the court may consider several factors including:
`
`(1) the purported inventors’ educational levels; (2) the types of problems
`
`encountered in the art of toner bottle and toner replenishing apparatus design; (3)
`
`prior art solutions to those problems; (4) rapid pace of innovation; (5)
`
`technological sophistication; and (6) educational level of active workers in the
`
`toner bottle and toner replenishing apparatus field. Daiichi Sankyo Co. v. Apotex,
`
`Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`Nevertheless, in keeping with the Patent Rules, and in addition to the
`
`information contained in the section immediately above and elsewhere in these
`
`contentions, Defendants hereby identify additional motivations and reasons to
`
`combine the cited art.
`
`1. Motivation to Combine All References
`
`8720024 v1
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`Page 19
`
`
`
`19
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`

`
`Generally, it would have been obvious to one of ordinary skill in the art to
`
`combine any of the References listed in Section IV.A (also charted in Exhibit A) to
`
`arrive at the claimed purported invention of the Patent-In-Suit. The combination of
`
`familiar elements according to known methods is obvious here because it would
`
`have yielded predictable and entirely unsurprising results. Motivation to combine
`
`any two or more of the identified references comes, at least in part, from the fact
`
`that most of the references teach toner bottles, toner containers, or other toner
`
`replenishment devices that can be operatively connected to image forming
`
`apparatuses, such as copiers or printers. Other references not in the toner bottle or
`
`toner replenishment device field utilize similar structures or functions as the
`
`Patent-In-Suit. For example, the newly-identified references include snap-fit
`
`mechanisms (as discussed by the Special Master in the Markman Order) that have
`
`similar functionality to that in the Asserted Claims. 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
`
`8720024 v1
`
`Page 20
`
`
`
`20
`
`

`
`Provided below is an exemplary list of combinations of references, and a
`
`motivation to combine each of the references:
`
`Combination and Basis for
`Combination
`
`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
`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
`8720024 v1
`
`Prior Art References
`
`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
`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.
`
`No.
`
`Page 21
`
`
`
`21
`
`

`
`Combination and Basis for
`Combination
`forming apparatuses).
`
`
`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
`liste

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