Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 1 of 100
`
` CLERK'S OFFICE
`FILED
`U.S.D.C. Atlanta
`
`SEP 1 5 2015
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA ' °
`ATLANTA DIVISION
`
`CANON INC.,
`
`Plaintiff,
`
`V.
`
`COLOR IMAGING, INC. and
`GENERAL PLASTIC INDUSTRIAL
`CO., LTD.,
`
`Defendants.
`
`CIVIL ACTION NO.:
`I:ll-cv-03855-AT-JSA
`
`SPECIAL MASTER'S REPORT AND RECOMMENDATIONS:
`PLAINTIFF CANON INC.'S MOTION FOR SUMMARY JUDGMENT
`OF NO INVALIDITY OF U.S. PATENT NO. 7,646,012
`
`
`
` CLERK'S OFFICE
`FILED
`U.S.D.C. Atlanta
`
`SEP 1 5 2015
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA ' °
`ATLANTA DIVISION
`
`CANON INC.,
`
`Plaintiff,
`
`V.
`
`COLOR IMAGING, INC. and
`GENERAL PLASTIC INDUSTRIAL
`CO., LTD.,
`
`Defendants.
`
`CIVIL ACTION NO.:
`I:ll-cv-03855-AT-JSA
`
`SPECIAL MASTER'S REPORT AND RECOMMENDATIONS:
`PLAINTIFF CANON INC.'S MOTION FOR SUMMARY JUDGMENT
`OF NO INVALIDITY OF U.S. PATENT NO. 7,646,012
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 2 of 100
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`T A B L E OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION:
`
` OF THE
`
` PATENT
`
`A. The Subject Matter
`
` The Claimed Invention
`
`III. LEGAL PRINCIPLES
`
`A. Summary Judgment
`
`B. Validity
`
`IV. THE
`
` POSITIONS
`
`A.
`
` OPENING ARGUMENTS
`
` Background Information
`
`2. Defendants Cannot Establish Prima Facie
`
`Obviousness
`
`a.
`
`
`
`b. Kawamura '208
`
`c.
`
`
`
`d. Matsuoka'806
`
`e. Sundberg'990
`
`B. DEFENDANTS' RESPONSE
`
`1.
`
`Introduction
`
`a.
`
` Patent
`
`b. The Prior Art Toner Bottles
`
`c. The Prior Art Snap-Fit Connectors
`ii
`
`I
`
`2
`
`2
`
`14
`
`15
`
`19
`
`22
`
`25
`
`28
`
`31
`
`33
`
`37
`
`37
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`39
`
`42
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`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 3 of 100
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`d. The Prior Art Raises Genuine Issues of Fact as
`
`to the Obviousness of the
`
` Patent
`
`2. Argument
`
`a. Obviousness is an Expansive and Flexible
`Doctrine
`b. The Canon Inventors Used Existing
`
`Technology to Solve a Known Problem
`
`c. The Displacing Force Receiving Portion
`
`d. The Hollow Cylinder and Hollow Cylindrical
`Driving Member do not have Additional
`Novelty
`e. The Asserted Dependent Claims Add no
`Additional Novelty
`
`f Hilton '966 and Sundberg '990 are Analogous
`Art
`
`g. There are No Secondary Considerations of
`
`Non-Obviousness
`
`C. CANON'S REPLY
`
` Defendants Do Not Oppose Canon's Motion for
`Summary Judgment of No Invalidity Under
`U.S.C. §§ 101,
` 112
`2. Defendants' Obviousness Theory Fails as a Matter of
`Law
`
`a. References Essential to Defendants'
`Obviousness Theory Are Not Analogous Art
`
`b. Defendants' Alleged Reasons for Combining
`Yoshiki '079 and Hilton '966 Are
`Insufficient as a Matter of Law
`
`iii
`
`46
`
`46
`
`46
`
`49
`
`59
`
`62
`
`62
`
`63
`
`66
`
`66
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`66
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`67
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`67
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`76
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 4 of 100
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`c. Even When Combined, Defendants' Cited Art
`Fails to Disclose At Least a Displacing
`Force Receiving Portion
`
`d. Yoshiki '079 Teaches Away from the Claimed
`
`Invention
`
`V. SPECIAL
`
` ANALYSIS AND
`
` ATIONS
`
`A.
`
`Introduction
`
`B. The law to be applied
`
`C. Defendants fail to follow the law in selection of relevant
`prior art
`D. Defendants' obviousness theories fail for several other
`reasons
`
`E. Conclusion
`
`85
`
`85
`
`86
`
`88
`
`92
`
`93
`
`iv
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 5 of 100
`
`I.
`
`INTRODUCTION:
`
`This patent infringement action is now before the Court on Canon's Motion
`
`for Summary Judgment of No Invalidity of U.S. Patent No. 7,647,012 (hereafter
`
`"the
`
` patent") (the "Canon
`
` Initially, the Defendants, Color Imaging,
`
`Inc. and General Plastic Industrial Co., Ltd. (hereafter the "Defendants") took the
`
`position that the asserted claims (24, 25 and 30) were invahd under 35 U.S.C. §§
`
`101, 102, 103 and
`
` However, as the briefing on Canon's MSJ progressed, the
`
`Defendants conceded that summary judgment should be granted as to the 35
`
`U.S.C. §§
`
` and 102 defenses. In
`
` Defendants made no substantive
`
`arguments in support of the 35 U.S.C. §
`
` defense. As a result of the
`
`Defendants' only remaining invalidity defense rests on proving that the invention
`
`is obvious under 35 U.S.C. § 103. In brief, a party asserting obviousness must
`
`prove that the "differences between the [patented subject matter] and the prior art
`
`are such that the
`
` matter as a whole would have been obvious at the time of
`
`the invention was made to a person having ordinary skill in the art to which said
`
`subject pertains."
`
`In order to understand the issues involved in Canon's MSJ, the best starting
`
`point is a detailed review of the "subject matter" of the '012 patent. Such a
`
`1
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 6 of 100
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`summary was provided in the Special Master's Report and Recommendations
`
`relating to claims construction and, for the convenience of the Court, is duplicated
`
`below. Following this review, this report provides a brief summary of the
`
`governing legal principles; an edited version of the parties arguments, and finally,
`
`the Special Master's recommendation as to the disposition of Canon's MSJ.
`
`I I .
`
`OVERVIEW OF THE
`
` PATENT
`
`A.
`
`The Subiect Matter
`
`The following general description
`
` patented subject matter and its
`
`field of use, is a slightly edited version (eliminating any argument) of the
`
`description that Canon provided the Court in connection with the Markman claim
`
`construction briefings.
`
`The
`
` patent describes and claims a toner supply container that is usable
`
`in, for example, a copy machine. At a basic level, a copier works by adhering a
`
`fine powdery substance, called toner, to a sheet of paper in a pattem that matches
`
`the text or image being copied. Because toner is used each time a copy is made,
`
`from time to time a copier's toner supply must be replenished. Because toner is
`
`messy, manufacturers often supply toner in the form of a sealed container that can
`
`be installed in the copier whenever a fresh supply of toner is needed. This allows
`
`users to replenish their own toner, without getting the messy substance on their
`
`2
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 7 of 100
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`hands or clothing. When the toner supply is depleted, the user removes the
`
`container and replaces it with a full one, so that from the user's perspective,
`
`replenishing the copier's toner supply is as simple as switching out containers.
`
`The ideal toner supply container is one that is easily installable and
`
`removable for a user, reliably seals the toner within the container when the
`
`container is outside the copier, and discharges the proper amount of toner at the
`
`right time when installed in the copier.
`
`In FIG. 3 of the '012 patent, shown below, an exemplary toner supply
`
`container, is denoted by reference number 1 and a main assembly of a copier is
`
`denoted by reference number
`
` The toner supply container is installed in the
`
`copier by inserting it in the direction indicated by arrow a.
`
` 3
`
`3
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 8 of 100
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`The toner supply container has an opening la at one end. The opening is
`
`sealed when the toner supply container is outside of the copier. When the toner
`
`supply contamer is installed in the copier, two things happen: (1) the opening is
`
`unsealed; and (2) when the copier is bemg used, the toner supply container is
`
`rotated. The rotation of the toner supply container causes the toner inside of it to
`
`be fed out of the opening and into a toner hopper within the copier, so that the
`
`toner in the hopper can be used to make copies.
`
`The '012 patent discloses several examples of sealing members suitable for
`
`sealing and unsealing the opening in the container body. One such sealing member
`
`is shown in FIGS. 23A and 23B of the '012 patent, which are reproduced below.
`
`FIG. 23B
`FIG. 23A
`The sealing member, denoted generally by reference number 2, has two
`
`main portions: a sealing portion denoted generally by reference number 2b, and a
`
`coupling portion denoted generally by reference number 2c. The sealing portion
`
`4
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 9 of 100
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` snugly within the opening in order to seal the toner within the container body.
`
`The coupling portion is engageable with a hollow cylinder driving member and a
`
`hollow cylinder that is substantially concentric with the hollow cylindrical driving
`
`member on the copier (seen below in Figure
`
` and part
`
` claimed invention).
`
`This engagement is necessary in order to (1) move the sealing member and the
`
`container body relatively away from each other to unseal the opening, and (2)
`
`receive rotational drive force from the copier. To these ends, the coupling portion
`
`includes supporting portions 2f, engaging portions 3, and displacing force
`
`receiving portions 4, which are constructed as follows:
`
`(cid:129)
`
`The supporting portions 2f are elastically displaceable in an inward
`
`direction and elastically restorable in an outward direction.
`
`The engaging portions 3 are provided at the free ends of the
`
`supporting portions, and, as such, displace inwardly and outwardly along with the
`
`supporting portions. Each engaging portion has two
`
` rotational
`
`force receiving portion and a locking
`
` although not labeled in
`
`FIGS.
`
` and 23B, are labeled in other figures of the '012 patent, e.g., reference
`
`numbers 3a and 3b, respectively, in FIGS. 12 and 13.
`
`(cid:129)
`
`The displacing force receiving portions 4 lie between the engaging
`
`portions and the sealing portion, i.e., they are closer to the container body than are
`
`5
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 10 of 100
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`the engaging portions. Each of the displacing force receiving portions extends
`
`radially outwardly to a greater extent than the radially outermost part of each
`
`engaging portion.
`
`In the example shown in FIGS. 23A and 23B, there are four supporting
`
`portions, four engaging portions, and four displacing force receiving portions, but
`
`the precise number of each of these portions can vary. For example, in the
`
`example illustrated in FIGS. 35A, 35B, and 35C of the '012 patent, shown below,
`
`there are only two supporting portions, two engaging portions, and two displacing
`
`force receiving portions.
`
`FIG. 35C
`FIG. 35B
`FIG. 35A
`As noted above, the coupling portion is engageable with a part in the
`
` with a part referred to earlier as a hollow cylindrical drivmg
`
`member. An example of a hollow cylindrical driving member is depicted as item
`
`20 in FIG. 14 of the '012 patent (the left-hand portion of which is reproduced
`
`below). This driving member contains a slot 20h that extends in a circumferential
`6
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`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 11 of 100
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`direction. The slot is interrupted by a pair of ribs 20a, which in this example are
`
`spaced approximately
`
` degrees apart. A motor (not shown) within the copier
`
`rotates the driving member. That member, in tum, rotates the toner supply
`
`container through the abutment of one or both ribs with the rotational force
`
`receiving portion of one or more engaging portions of the sealing member.
`
`20a
`
`FIG.
`
`When the toner supply container is installed in the copier, the supporting
`
`portions of the sealing member first elastically displace inwardly so that the
`
`coupling portion can enter the driving member, and then elastically restore
`
`outwardly (that is, back to their original position) so that the engaging portions
`
`engage with the slot in the driving member. FIG. 24 of the '012 patent, shown
`
`below, provides a cross-sectional view of the state in which the coupling portion of
`
`7
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 12 of 100
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`the
`
` member has entered the driving member 20 and the engaging portions 3
`
`have engaged with the slot of the driving
`
`FIG. 24
`
`Once the engaging portions have engaged with the slot of the driving
`
`member, the driving member and the container body are moved relatively away
`
`from each other. This relative movement may be caused, for example, by a manual
`
`lever or by the closing of a cover on the copier. As the driving member and the
`
`container body move relatively away from each other, so too do the sealing
`
`member and the container body. This is because the locking portions of the
`
`engaging portions are abutted against an interior surface of the slot of the driving
`
`member. Therefore, as the driving member and the container body pull away from
`
`each other, the engaging portions remain engaged with the slot of the driving
`
`In addition to showing the toner supply container, the sealing member, and the driving
`
`member, FIG. 24 also shows a hollow cylinder 21. The hollow cylinder, not to be confused with
`the hollow cylindrical driving member 20, is a part of the copier that is concentric with and
`movable relative to the driving member. The hollow cylinder plays a role in disengaging the
`engaging portions from the slot in the driving member when the container is removed from the
`copier. This is discussed in more detail below.
`
`8
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 13 of 100
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`member and the sealing member is pulled out of the opening in the container body.
`
`FIG. 25A, shown below, illustrates the unsealed state in which the driving member
`
`20, and with it, the sealing member 2, have been moved relatively away from the
`
`container body.
`
`FIG. 25A
`
`In this state, with the opening unsealed, the driving member rotates the toner
`
`supply container through the abutment of one or both ribs with the rotational force
`
`receiving portion of one or more engaging portions of the sealing member. This
`
`rotation of the toner supply container causes the toner to be fed out of the opening
`
`in the container body and into the toner hopper within the copier.
`
`To remove the toner supply container from the copier, the engaging portions
`
`are disengaged from the slot in the driving member and the sealing portion of the
`
`sealing member is resealed within the opening of the container body. This is
`
`illustrated below in FIGS. 25B and
`
` which show the hollow cylinder 21
`
`9
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 14 of 100
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`advancing toward the container body in direction a. As the hollow cylinder
`
`advances toward the container body, two things happen: (1) the hollow cylinder
`
`forces the displacing force receiving portions 4 inwardly, causing the supporting
`
`portions to elastically displace in an inward direction and the engaging portions 3
`
`to disengage from the slot (shown in FIG. 25B); and (2) the hollow cylinder 21
`
`pushes the sealing member 2 toward the container body 1 and snugly fits the
`
`sealing portion back into the opening la (shown in FIG. 25C). At this point, the
`
`sealing member is disengaged from the driving member, the opening is resealed,
`
`and the toner supply container can be safely removed from the copier without
`
`spillage of any toner that may remain in the container.
`
`FIG. 25C
`FIG. 25B
`The '012 patent discloses that the toner supply container can be removed
`
`from the copier in other ways as well. For example, at column 8, line 57 through
`
`column 9, line
`
` the
`
` patent describes an embodiment in which the container
`
`body is moved toward the sealing member while the sealing member is locked in
`
`10
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 15 of 100
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`the copier to snugly
`
` the sealing portion back into the openmg. Next, the hollow
`
`cylinder applies a releasing force to the displacing force receiving portions to
`
`elastically displace the supporting portions inwardly and disengage the engaging
`
`portions from the slot in the driving member. The container body and sealing
`
`member then are retracted so that the toner supply container can be removed.
`
`As noted
`
` Canon has asserted only three claims of the '012 patent in
`
`this lawsuit, namely, independent claim 24 and dependent claims 25 and 30. Claim
`
`24 reads as follows:
`
`24. A toner supply container detachably mountable to an assembly of
`an electrophotographic imaging forming apparatus having a hollow
`cylmdrical driving member that has a slot formed therein, which slot
`extends in a circumferential direction and defines a plurality of
`interior surfaces of the hollow cylindrical driving member, and a
`hollow cylinder that is substantially concentric with the hollow
`cylindrical driving member, said toner supply container comprising:
`
`i) a contamer body configured to contain toner and rotatable about
`an axis thereof, said container body including an opening provided at
`one axial end portion thereof and configured to permit discharge of
`toner contained in said container body; and
`
`ii) a sealing member provided at the one axial end portion of said
`container body, said sealing member being movable relative to said
`
`11
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 16 of 100
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`container body in an axial
`sealing member including:
`
` of said container body, said
`
`ii-i a sealing portion provided at a side adjacent said container
`body and configured to seal said opening when said sealing member
`and said container body are in a first position relative to one another,
`said opening becoming unsealed by relative movement of said sealing
`member and said container body away from one another from the first
`position to a second position relative to one another; and
`
`ii-ii) a coupling portion provided at a side remote from said
`container body and configured and positioned to receive a rotational
`drive force, said coupling portion including:
`
`ii-ii-i) a supporting portion provided on said sealing portion,
`said supporting portion being elastically displaceable in an inward
`direction toward the axis of said container body and elastically
`restorable in an outward direction away from the axis of said
`container body;
`
`ii-ii-ii) an engaging portion provided at a free end of said
`supporting portion, said engaging portion configured and positioned
`to (a) displace in an inward direction with said supporting portion as
`said engaging portion enters the hollow cylindrical driving member
`and (b) engage with the slot of the hollow cylindrical driving member
`when said supporting portion elastically restores in an outward
`direction, said engaging portion including:
`
`12
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 17 of 100
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`ii-ii-ii-i) a rotational force receiving portion capable of
`being abutted in a circumferential direction of the hollow cylindrical
`driving member by at least a portion of a first interior surface of the
`hollow cylindrical driving member defined by the slot to receive a
`rotational drive force from the
` cylindrical driving member to
`rotate said container body; and
`
`ii-ii-ii-ii) a locking portion capable of being abutted in
`an axial direction of the hollow cylindrical driving member by at least
`a portion of a second interior surface of the hollow cylindrical driving
`member defined by the slot to prevent the sealing member from
`moving in the axial direction of said container body when said
`container body moves away firom the hollow cylindrical driving
`member, thus causing the relative movement of said sealing member
`and said container body from the first position, in which said opening
`is sealed, to the second position, in which said opening is unsealed;
`and
`
`ii-ii-iii) a displacing force receiving portion provided at a
`position closer to said container body than said engaging portion, said
`displacing force receiving portion configured and positioned to
`receive a force from the hollow cylinder and cause said supporting
`portion to elastically displace in an inward direction, wherein a
`radially outermost part of said displacing force receiving portion is
`more remote from a rotation axis of said coupling portion than a
`radially outermost part of said engaging portion.
`
`13
`
`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 18 of 100
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`B.
`
`The Claimed Invention
`
`Following submission of the Special Master's Report and Recommendations
`
`relating to the claim construction issues and a hearmg on the objections from the
`
`parties, the Court entered an order adopting the recommendations of the Special
`
`Master. In brief, the Court agreed with the Special Master that independent Claim
`
`24 was for a combination patent
`
`that
`
`included both the parts on the
`
`electrophotographic imaging forming apparatus and the parts on the toner bottle,
`
`fully described above. Defining the limitations of Claim 24 in this manner has a
`
`direct impact on the prior art to be considered as part of the §103 obviousness
`
`analysis. Also, as will be seen in connection with Defendants' motion for summary
`
`judgment, it is important in connection with Defendants' exhaustion defense.
`
`III.
`
`L E G A L PRINCIPLES
`
`A.
`
`Summary Judgment
`
`The Court is, of course, familiar with the law in this area but for the sake of
`
`completeness, the general principles governing summary judgment are included
`
`here. Summary judgment is appropriate when "there is no genuine dispute as to
`
`any material fact and the movant is entitled to judgment as a matter of law." Fed.
`
`R. Civ. P. 56(a); see also Celotex Corp. v.
`
` 477 U.S. 317, 322 (1986). A
`
`factual dispute is "genuine" if a reasonable jury could retum a verdict for the non-
`14
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`
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 19 of 100
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`movant and is "material" i f it would affect the outcome of the case. Anderson v.
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`Liberty Lobby, Inc., All U.S. 242, 248 (1986). "[T]he mere existence oi some
`
`alleged factual dispute between the parties will not defeat an otherwise properly
`
`supported motion for summary judgment." Id. at 247-48.
`
`Rule 56 "mandates the entry of summary judgment, after adequate time for
`
`discovery and upon motion, against a party who fails to make a showing sufficient
`
`to establish the existence of an element essential to that party's case, and on which
`
`that party will bear the burden of proof at trial." Celotex, All U.S. at 322. "[T]he
`
`burden on the moving party may be discharged by
`
` is, pointing out
`
`to the district
`
` there is an absence of evidence to support the nonmoving
`
`party's case." Id. at 325.
`
`B.
`
`Validity
`
`A patent is presumed valid, and the burden of establishing invalidity rests on
`
`the party asserting invahdity.
`
` U.S.C. § 282. Invalidity must be proved by clear
`
`and convincing evidence, Microsoft Corp. v. i4i Ltd.
`
` 131 S. Ct. 2238, 2242
`
` that is, evidence that "places in the fact finder 'an abiding conviction that
`
`the truth of [the] factual contentions are highly probable.'" Procter & Gamble Co.
`
`V. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quotmg Colorado
`
`V. New Mexico, 467 U.S.
`
` (1984)). The only remaining validity issue in
`
`15
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`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 20 of 100
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`Canon's MSJ relates to Defendants' assertion that the '012 patent is obvious under
`
`35 U.S.C. §103.
`
` U.S.C. § 103 requires that an invention be nonobvious. As noted earlier,
`
`a party asserting obviousness must prove that "the differences between the
`
`[patented subject matter] and the prior art are such that the subject matter as a
`
`whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains." 35 U.S.C.
`
`§
`
` Obviousness is a question of law based on underlying facts ,
`
`including the scope and content of the prior art, the difference between the claims
`
`and the prior art, the level of ordinary skill in the art, and any
`
` indicia of
`
`nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`
`(1966).
`
`It is well established that "a patent composed of several elements is not
`
`proved obvious merely by demonstrating
`
`that each of its elements was,
`
`independently, known in the prior art." KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
`
`398,
`
` (2007). "This is so because inventions in most, i f not all, instances rely
`
`Notwithstanding the hybrid legal/factual nature of the defense, courts regularly find nonobviousness as a
`
`matter of law. See, e.g., Cheese Sys., Inc. v. Tetra
` Cheese & Powder Sys., Inc., 725 F.Sd
` 1S56 (Fed. Cir.
`201S) (affirming grant of summary judgment of nonobviousness); ActiveVideo Networks, Inc. v. Verizon Comms.,
` 12, 1S28 (Fed. Cir. 2012) (affirming grant of JMOL of nonobviousness); Unigene Labs., Inc. v.
`Inc., 694 F.Sd
`Apotex, Inc., 655 F.Sd 1S52, 1364 (Fed. Cir.
` (affirming grant of summary judgment of nonobviousness); Star
`Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.Sd
` (Fed. Cir. 2011) (reversing denial of JMOL of no
`invalidity, including nonobviousness).
`
`16
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 21 of 100
`
`upon building blocks long since uncovered, and claimed discoveries almost of
`
`necessity will be combinations of what, in some sense, is already known." Id. at
`
`418-19. For this reason, the proper focus of § 103 is on the claimed invention as a
`
`whole, and not on the invention's individual elements. Ruiz v. A.B. Chance Co.,
`
`357 F.3d
`
` 1275 (Fed. Cir. 2004). Additionally, an obviousness analysis
`
`should not involve the use of hindsight, or a reading of the teachings of the
`
`invention into the prior art. Graham,
`
` U.S. at 36.
`
`IV.
`
`T H E PARTIES POSITIONS
`
`A.
`
`CANON'S OPENING ARGUMENTS
`
`1.
`
`Background Information
`
`Defendants first disclosed the bases for their
`
` invalidity assertions in an
`
`initial set of invalidity contentions that they served pursuant to Local Patent Rule
`
`4.3 on May 8, 2012. See D.I. 90. Following the Court's adoption
`
` Special
`
`Master's claim constructions, Defendants served an amended set of invalidity
`
`contentions ("Amended Invalidity Contentions") on April 9,
`
` See Huang Ex.
`
`2. With their Amended Invalidity Contentions, Defendants included claim charts
`
`purporting to show how claims 24, 25, and 30 of the '012 patent are obvious over
`
`nine alleged prior art references. See id. at Exs. A1-A4.
`
`On May 12, 2014, Defendants served the Expert Report of Dr. B. E.
`17
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 22 of 100
`
`Springett Regarding Invalidity of United States Patent No. 7,647,012 ("Springett
`
`Initial Report"). See Huang Ex. 5. In the Springett Initial Report, Defendants'
`
` Dr. Springett, purported to show where each limitation of the asserted
`
`claims can be found individually in the prior art (including but not limited to the
`
`nine references charted in the Amended Invalidity Contentions), but he did not
`
`identify any specific combination or modification of the prior art that would render
`
`the claims obvious. See id. at pp. 34-108.
`
`On June
`
` 2014, Canon served the Expert Report of Robert H. Sturges, Jr.,
`
`Ph.D., PE Regardmg the Validity of U.S. Patent No. 7,647,012 ("Sturges Validity
`
`Report"). See Huang Ex. 6. In the Sturges Validity Report, Canon's
`
` Dr.
`
`Sturges, explained in detail why the nine references that Defendants charted in
`
`their Amended Invalidity Contentions do not anticipate or render obvious the
`
`asserted claims of the '012 patent. See id. at pp. 29-255.
`
`On June 30, 2014, Defendants served the Rebuttal Expert Report of Dr. B.
`
`E. Springett Regardmg
`
`Invalidity of United States Patent No. 7,647,012
`
`("Springett Rebuttal Report"). See Huang Ex. 7. In this
`
` Dr. Springett
`
`conceded that the prior art does not anticipate any of the asserted claims, see id. at
`
`p. 29, 63, but nevertheless maintained that the claims are obvious.
`
`18
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 23 of 100
`
`On October
`
` 2014, Canon filed a motion to strike improper portions of
`
`the Springett Initial and Rebuttal Reports that relied on prior art not charted and
`
`indefiniteness
`
`theories not disclosed
`
`in Defendants' Amended
`
`Invalidity
`
`Contentions in violation of Local Patent Rule 4.3, and to exclude Dr. Springett
`
`from offering related testimony. See D.I. 297. The Court granted-in-part and
`
`denied-in-part Canon's motion, holding that Dr. Springett cannot testify regarding
`
`any references other than the nine references that Defendants charted in their
`
`Amended Invalidity Contentions. See D.I. 307; Huang Ex. 8 at 73:12-95:13.
`
`2.
`
`Defendants Cannot Establish Prima Facie Obviousness
`
`As noted above, merely arguing that each limitation of a patent claim was
`
`individually known or obvious is insufficient to establish the obviousness of the
`
`claim as a whole. KSR, 550 U.S. at
`
` see also
`
` v. Apotex,
`
`Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008) ("The determination of obviousness is
`
`made with respect to the subject matter as a whole, not separate pieces of the
`
`claim."). Here, Defendants (in their invalidity contentions) and Dr. Springett (in
`
`his expert reports) have argued only that individual
`
` limitations are known or
`
`obvious, and have not proposed a single specific combination or modification of
`
`the prior art that allegedly meets all of the limitations of claim 24.
`
`19
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 24 of 100
`
`Indeed, at his deposition Dr. Springett conceded that he wrote his report on
`
`an "element-by-element basis, recognizing that things had to marry backwards."
`
`Huang Ex. 14 at 157:12-15. This element-by-element, "marry backwards"
`
`approach (which Dr. Springett later characterized as "backward-looking," id. at
`
` is precisely the kind of hindsight-driven analysis that courts have
`
`instructed is improper. See, e.g., Ruiz, 357 F.3d at 1275 ("The 'as a whole'
`
`instruction in title 35 prevents evaluation of the invention part by part. Without
`
`this important requirement, an obviousness assessment might break an invention
`
`into its component parts (A + B + C), then find a prior art reference containing A,
`
`another containing B, and another containing C, and on that basis alone declare the
`
`invention obvious. This form of hindsight reasoning, using the invention as a
`
`roadmap to find its prior art components, would discount the value of combining
`
`various existing features or principles in a new way to achieve a new
`
`the very definition of invention.").
`
`As a separate and distinct reason why there can be no obviousness as a
`
`matter of
`
` Defendants and Dr. Springett have failed to show that each and
`
`every claim limitation is taught by the prior art or would have been obvious from
`
`the prior art. One (but not the only) limitation that the prior art does not teach is
`
`the "displacing force receiving portion" limitation of claim 24, which recites:
`
`20
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 25 of 100
`
`a displacing force receiving portion provided at a position closer to
`said container body than said engaging
` said displacing force
`receiving
` con
` and
` lo receive
` force from
` hollow
` and cause said
` portion to
`displace in an inward
` wherein a
` outermost part of
`said displacing force receiving portion is more remote from a rotation
`axis of said coupling portion than a radially outermost part of said
`engaging portion.
`
`During the claim construction phase of this case, the Court adopted the Special
`
`Master's recommendation and construed the portion of this claim limitation
`
`highlighted in yellow above to mean "a portion of the coupling portion that is
`
`provided at a position closer to the container body than the position of the
`
`engaging portion is to the container body," and determined that the portion of this
`
`limitation highlighted in green above should be given its plain meaning. D.I. 168
`
`at pp. 122-123, 129-130; D.I. 169. In each case, the Special Master and the Court
`
`adopted Canon's position and rejected Defendants' position.
`
`In the Amended Invalidity Contentions and the Springett Initial and Rebuttal
`
`Reports, Defendants and Dr. Springett asserted that the following
`
` references
`
`disclose the "displacing force receiving portion" limitation: (1) U.S. Patent No.
`
`5,765,079 ("Yoshiki
`
`'079") (Huang Ex. 9); (2) U.S. Patent No. 6,298,208
`
`("Kawamura '208") (Huang Ex. 10); (3) U.S. Patent No. 6,698,966 ("Hilton '966")
`
`(Huang Ex.
`
` (4) U.S. Patent No. 5,903,806 ("Matsuoka '806") (Huang Ex. 12);
`
`and (5) U.S. Patent No. 6,501,990 ("Sundberg '990") (Huang Ex. 13). But, as
`21
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 26 of 100
`
`explained below, none of these references discloses or makes obvious the
`
`"displacing force receiving portion" limitation.
`
`a.
`
`Yoshiki '079
`
`Yoshiki '079 discloses a toner bottle for use in an image forming apparatus
`
`such as a printer, copy machine, or facsimile machine. Before the invention of
`
`Yoshiki '079, toner tended to accumulate near the opening of the toner bottle, as
`
`depicted in Figure 2 of Yoshiki '079, which is shown on the left below.
`
`To solve this problem, the Yoshiki '079 inventors came up with a toner
`
`bottle cap design that prevents toner from blocking the opening of the toner bottle.
`
`An example of the cap is depicted in Figure 4 of Yoshiki '079, which is shown on
`
`the right above. In Figure 4, the cap is denoted by reference number 5. The side of
`
`the cap facing the toner bottle includes toner scraping members 20. The other side
`
`of the cap includes a tab portion 6. When the toner bottle is inserted into the copy
`
`machine, a chuck
`
` in the copy machine grasps tab portion 6 and pulls cap 5 away
`
`22
`
`
`
`Case 1:11-cv-03855-AT Document 370 Filed 09/15/15 Page 27 of 100
`
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