Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 1 of 111
`
`Gupta
`Exhibit 2
`
`CANON KABUSHIKI KAISHA EXHIBIT 2110
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha
`IPR2016-01360
`
`

`
`
`
`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 2 of 111
`
`UNITED STATES DISTRICT COURT
`FOR THE NOTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`
`CASE NO. 1:11-CV-03855-RLV
`
`
`
`
`CANON, INC.,
`
`Plaintiffs,
`
`v.
`
`COLOR IMAGING, INC. and
`GENERAL PLASTIC INDUSTRIAL
`CO., LTD.,
`
`Defendants.
`
`
`
`AND RELATED COUNTERCLAIMS
`
`
`
`
`
`
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING INVALIDITY OF
`UNITED STATES PATENT NO. 7,647,012
`
`
`
`
`
`
`
`
`
`

`
`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 3 of 111
`E;;pERTEE%%%%c3%1;5 ."1;%°.‘ 1§R§R’éIn'I%8&k'R‘B8&‘é297'4 F"e°' 1°’1°’14 Page 3 °f 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
`
`
`I.
`I.
`
`
`II.
`II.
`III.
`III.
`
`INTRODUCTION .............................................................................................................. 1
`INTRODUCTION ............................................................................................................ .. 1
`A. BACKGROUND .......................................................................................................... 2
`A.
`BACKGROUND ........................................................................................................ .. 2
`B.
`MATERIALS CONSIDERED ........................................................................................ 5
`B.
`MATERIALS CONSIDERED ...................................................................................... .. 5
`SUMMARY OF OPINIONS .............................................................................................. 5
`SUMMARY OF OPINIONS ............................................................................................ .. 5
`LEGAL STANDARDS ...................................................................................................... 6
`LEGAL STANDARDS .................................................................................................... .. 6
`A.
`QUALIFICATION OF PRIOR ART ................................................................................ 6
`A.
`QUALIFICATION OF PRIOR ART .............................................................................. .. 6
`1.
`35 U.S.C. § 102(a) ...................................................................................... 6
`1.
`35 U.S.C. § 102(a) .................................................................................... .. 6
`2.
`35 U.S.C. § 102(b) ...................................................................................... 7
`2.
`35 U.S.C. § 102(b) .................................................................................... .. 7
`3.
`35 U.S.C. § 102(e) ...................................................................................... 7
`3.
`35 U.S.C. § 102(e) .................................................................................... .. 7
`4.
`35 U.S.C. § 102(g)(2) ................................................................................. 8
`4.
`35 U.S.C. § 102(g)(2) ............................................................................... .. 8
`ANTICIPATION .......................................................................................................... 8
`B.
`ANTICIPATION ........................................................................................................ .. 8
`B.
`OBVIOUSNESS .......................................................................................................... 8
`C.
`OBVIOUSNESS ........................................................................................................ .. 8
`C.
`THE INDEFINITENESS REQUIREMENT ................................................................... 144
`D.
`THE INDEFINITENESS REQUIREMENT ................................................................. .. 144
`D.
`CLAIM CONSTRUCTION .......................................................................................... 14
`E.
`CLAIM CONSTRUCTION ........................................................................................ .. 14
`E.
`LEVEL OF ORDINARY SKILL IN THE ART AND RELEVANT FIELD OF ART . 166
`LEVEL OF ORDINARY SKILL IN THE ART AND RELEVANT FIELD OF ART. 166
`OPINIONS CONCERNING THE ’012 .......................................................................... 177
`OPINIONS CONCERNING THE ’012 ........................................................................ .. 177
`A.
`OVERVIEW OF THE ‘012 PATENT ........................................................................ 177
`A.
`OVERVIEW OF THE ‘012 PATENT ...................................................................... .. 177
`B.
`THE INVALIDATING PRIOR ART FOR THE ‘012 PATENT ......................................... 34
`B.
`THE INVALIDATING PRIOR ART FOR THE ‘012 PATENT ....................................... .. 34
`C.
`ANTICIPATION AND OBVIOUSNESS ANALYSIS ..................................................... 108
`C.
`ANTICIPATION AND OBVIOUSNESS ANALYSIS ................................................... .. 108
`OTHER TOPICS ............................................................................................................ 108
`VI.
`OTHER TOPICS .......................................................................................................... .. 108
`VI.
`EXHIBIT A: CURRICULUM VITAE OF DR. B. E. SPRINGETT
`EXHIBIT A: CURRICULUM VITAE OF DR. B. E. SPRINGETT
`EXHIBIT B: TABLE OF PRIOR ART REFERENCES
`EXHIBIT B: TABLE OF PRIOR ART REFERENCES
`EXHIBIT C: PATENTS, PATENT PUBLICATIONS, REFERENCES AND OTHER MATERIALS
`EXHIBIT C: PATENTS, PATENT PUBLICATIONS, REFERENCES AND OTHER MATERIALS
`CONSIDERED
`CONSIDERED
`
`IV.
`IV.
`V.
`V.
`
`
`
`
`
`

`
`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 4 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Dr. Brian Springett and I have been retained by counsel for
`
`defendants Color Imaging, Inc. and General Plastic Industrial Co., Ltd. (collectively,
`
`"Defendants") to provide assistance in the above captioned matter, which I understand to be
`
`related to alleged infringement of certain claims in U.S. Patent No. 7,647,012 (the “’012
`
`Patent”), entitled “Sealing Member, Toner Accommodating Container and Image Forming
`
`Apparatus.”
`
`2.
`
`In this report I will set forth my opinions regarding the validity of the ’012
`
`Patent. This report contains my opinions formed in this case and provides the bases and reasons
`
`for those opinions. I make the following statements based on my own personal knowledge and,
`
`if called as a witness, I could and would testify to the following.
`
`3.
`
`I have summarized in this section my educational background, career history,
`
`and other relevant qualifications. A true and accurate copy of my curriculum vitae is attached
`
`hereto as Exhibit A.
`
`A.
`
`4.
`
`Background
`
`I received a B.A. with Honors in Physics and Mathematics from the University
`
`of Cambridge in Cambridge, England in 1960. I also received a M.S. in Physics from the
`
`University of Chicago in Chicago, Illinois in 1963, followed by a M.A. in Physics from the
`
`University of Cambridge in Cambridge, England in 1964. I earned a Ph.D. from the University
`
`of Chicago, Illinois in 1966 in Solid State and Low Temperature Physics. After receiving my
`
`Ph.D., I continued my education with short courses on Laser Beams from the University of
`
`Chicago, short courses in Optics & Lasers from the University of Rochester and a short course in
`
`Technology Management from the Sloan School, Massachusetts Institute of Technology.
`
`
`
`- 2 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 5 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
`
`5.
`
`After leaving Cambridge University and prior to attending the University of
`
`Chicago, I spent one year with Hoffman Semiconductor in Southern California working on solar
`
`cells and integrated circuits. After earning my Ph.D., I spent one year as a post-doctoral research
`
`associate at the University of Chicago before moving to the University of Michigan as an
`
`assistant professor in the Physics Department. Additional teaching positions have included
`
`visiting professor positions at the University of Oakland, in Rochester, Michigan, and the
`
`University of Quebec, in Trois-Rivières, Quebec.
`
`6.
`
`In 1974, following my academic positions, I worked for Xerox Corporation for
`
`twenty-seven years. During my first thirteen years at Xerox Corporation, I conducted research
`
`and development on new electrophotographic subsystems, the first Xerox laser printers, system
`
`integration of electrophotographic consumables, including work with multiple types of toners,
`
`photoreceptors, and charging systems. My work involved coordination of research and
`
`development and integration of planning with engineering groups around the world. During the
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`next fourteen years at Xerox, I worked in technology management and strategic planning,
`
`including research and development on system integration of electrophotographic consumables
`
`for new digital products, both black and white and color. This work included membership on
`
`standing research and development committees to monitor progress of technology investments
`
`and formulating strategy assessments and refinements, as well as consultation on international
`
`standards committees.
`
`7.
`
`My twenty-seven years of experience at Xerox Corporation, included working
`
`with photoreceptors, toners, developers, toner cartridges, liquid toners, media, and
`
`electrophotographic systems (including digital black and white and color printing). Since
`
`leaving Xerox Corp. my educational background has enabled me to work as a business and
`
`
`
`- 3 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 6 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
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`technology advisor and consultant for the past twelve years. My work as an advisor and
`
`consultant has generally but not exclusively related to electrophotography, including print
`
`cartridge remanufacturing, toner development and problem solving, other research and
`
`development projects, and business development projects with more than 20 companies in the
`
`USA and abroad. I have also made presentations on various aspects of electrophotography and
`
`the associated materials and components, such as photoreceptors, toners, carriers, and
`
`developers, at ten conferences since June 2001 and I served as the co-chairman of the Toner &
`
`Photoreceptors series of conferences run by Tiara Group from 2001 to 2010.
`
`8.
`
`I am named as inventor on thirteen United States and European patents relating
`
`to electrophotographic sub-systems, and methods and applications for photoconductors and
`
`toners. I have over 90 publications in various journals relating to low temperature quantum
`
`physics, amorphous semiconductors, charge transport in dense cold gases, charge transport in
`
`non-crystalline materials, electrophotographic photoconductors, toners and sub-systems,
`
`electrophotography and digital color printing. I have authored a chapter, “Brief Introduction to
`
`Electrophotography,” in the new edition of a Handbook of Imaging Materials, 2nd edition,
`
`revised and expanded, edited by Marcel Dekker, A. Diamond, & D. Weiss, 2002. I have co-
`
`authored a Technical Review Article on the Physics of Electrophotography, “Physics of
`
`Electrophotography,” D.M. Pai & B.E. Springett, Reviews of Modern Physics, Vol. 65, No. 1,
`
`1993, pp. 163-211. I have on three occasions presented a four-hour short course entitled “The
`
`Business of Toner: A Value-Chain Oriented Introduction” to classes of technical professionals
`
`from around the world at the series of International Non-Impact Printing Conferences run by the
`
`Society for Imaging Science & Technology. Other of my publications are detailed in the
`
`attached curriculum vitae.
`
`
`
`- 4 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 7 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
`
`9.
`
`During the previous four years, I have not testified in any other cases as an
`
`expert at trial or by deposition.
`
`10.
`
`I am compensated on an hourly basis for my study and testimony in this case at
`
`the rate of $200 per hour for all work and $100 per hour for travel time.
`
`B. Materials Considered
`
`11.
`
`I have considered the ’012 Patent, it’s respective file history, the cited
`
`references, the Special Master’s Claims Construction Report and Recommendations, Court’s
`
`Order adopting the Special Master’s Claims Construction Report and Recommendations (the
`
`“Claim Construction Order”), and the materials listed in Exhibit C.
`
`12.
`
`My analysis of the materials produced in this case is ongoing. As new material
`
`is presented to me, I will continue my review of such material. Therefore, this report represents
`
`only those opinions I have formed to date, and I reserve the right to revise, supplement, and
`
`amend the opinions stated herein based on new information and on my continuing analysis of the
`
`materials already produced.
`
`13.
`
`I am prepared to use any or all of the above-referenced materials, other
`
`materials that may be produced during the course of this proceeding, and supplemental charts,
`
`models, schematics, computer graphics/animation, and other demonstratives and representations
`
`based on those materials to support my testimony at trial.
`
`II.
`
`SUMMARY OF OPINIONS
`
`14.
`
`I understand that Plaintiff Canon, Inc. (“Canon”) has alleged that certain
`
`products infringe Claims 24, 25, and 30 of the ’012 Patent, as outlined in Plaintiffs’
`
`Supplemental and Amended Disclosure of Infringement Contentions.
`
`15.
`
`This report sets forth the opinions I have formed, the conclusions I have
`
`reached, and the bases for each. In support of my opinions and conclusions I expect to testify
`
`
`
`- 5 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 8 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
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`concerning my background and qualifications, and technical aspects of prior art to the ’012
`
`Patent.
`
`16.
`
`I have also been asked to provide my opinions on the field of art pertinent to the
`
`asserted patents.
`
`17.
`
`It is my opinion that all of the asserted claims of the ’012 Patent are invalid as
`
`being either anticipated or rendered obvious by the prior art references.
`
`III. LEGAL STANDARDS
`
`18.
`
`I understand that the following requirements of patentability or patentability
`
`factors are to be considered in determining whether the asserted claims of the ’012 Patent are
`
`invalid. I also understand that the claims of an issued patent are presumed valid, but those
`
`claims can be proved invalid by clear and convincing evidence that they fail to comply with one
`
`or more requirements of patentability.
`
`A.
`
`19.
`
`Qualification Of Prior Art
`
`It is my understanding that a publication, a patent, a product, or inventive
`
`activity may qualify as prior art under one or more subsections of 35 U.S.C. § 102 by meeting
`
`the following requirements.
`
`1.
`
`35 U.S.C. § 102(a)
`
`20.
`
`A printed publication is effective as prior art under subsection (a) if it was
`
`published in the United States or in a foreign country before the date of invention for the patent-
`
`in-suit. A United States or foreign patent is effective as prior art under this subsection if it issued
`
`prior to the date of invention for the patent-in-suit. A product or similar item is effective as prior
`
`art under this subsection if it was known or used by others in the United States before the date of
`
`invention for the patent-in-suit. I understand that the earliest date of invention alleged by Canon
`
`
`
`- 6 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 9 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`in its discovery responses is November 22, 2000. For the purposes of this report, I consider the
`
`earliest possible date of invention to be November 22, 2000.
`
`2.
`
`35 U.S.C. § 102(b)
`
`21.
`
`A printed publication is effective as prior art under subsection (b) if it was
`
`published in the United States or in a foreign country more than one year before the date of the
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`application for the patent-in-suit. A United States or foreign patent is effective as prior art under
`
`this subsection if it issued more than one year before the date of the application for the patent-in-
`
`suit. A product or similar item is effective as prior art under this subsection if it was in public
`
`use or on sale in the United States prior to more than one year before the date of the application
`
`for the patent-in-suit. I understand that the earliest effective date of application for the patent-in-
`
`suit is the filing date of a Japanese application, 2001-042536, on February 19, 2001, and one year
`
`prior to that is February 19, 2000.
`
`3.
`
`35 U.S.C. § 102(e)
`
`22.
`
`A United States patent application is effective as prior art under subsection (e) if
`
`it was filed before the date of invention for the patent-in-suit and subsequently issued as a patent
`
`or was published as a U.S. patent publication. An international patent application filed before
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`the date of invention for the patents-in-suit designating the United States and published in
`
`English has the same effect as a U.S. application under this section. A patent application may
`
`also qualify as prior art under this subsection if it claims priority under 35 U.S.C. § 120 to an
`
`application filed prior to the date of invention for the patent-in-suit, but only if the specification
`
`of the earlier filed application provides adequate support for the claims of the later filed
`
`application. For the purposes of this report, I consider the earliest possible date of invention to
`
`be November 22, 2000 (see discussion above for § 102(a)).
`
`
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`- 7 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 10 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
`
`4.
`
`35 U.S.C. § 102(g)(2)
`
`23.
`
`Inventive activity in the United States will qualify as prior art under subsection
`
`(g)(2) if another party made the invention in this country prior to the date of invention for the
`
`patent-in-suit, and did not abandon, suppress, or conceal it. For the purposes of this report, I
`
`consider the earliest possible date of invention to be November 22, 2000 (see discussion above
`
`for § 102(a)).
`
`B.
`
`24.
`
`Anticipation
`
`It is my understanding that a claimed invention is “anticipated” if each and
`
`every element of the claim has been disclosed in a single prior art reference.
`
`25.
`
`I understand that each element of a patent claim may be disclosed by a prior art
`
`reference either expressly or inherently. I understand that an element of a patent claim is
`
`inherent in a prior art reference if the element must necessarily be present and such would be
`
`recognized by one of ordinary skill in the art. However, I understand that inherency cannot be
`
`established by mere probabilities or possibilities.
`
`26.
`
`A means-plus-function limitation is construed under 35 U.S.C. § 112[6] as the
`
`function and corresponding structure, and a prior art reference anticipates if it discloses the
`
`identical function, and either the identical structure or an equivalent of the structure.
`
`C.
`
`27.
`
`Obviousness
`
`It is my understanding that a patent claim is invalid if 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 of ordinary skill in the art.
`
`When analyzing the issue of obviousness, I understand that I should consider the following
`
`factors:
`
`
`
`•
`
`the scope and content of the prior art;
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`- 8 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 11 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`the differences between the prior art and the claims;
`
`•
`•
`• secondary considerations of nonobviousness.
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`the level of ordinary skill in the pertinent art; and
`
`28.
`
`With respect to secondary considerations of non-obviousness, I have been
`
`informed that such evidence may include the following:
`
`• Commercial success: It is my understanding that a strong showing of
`
`commercial success that can be attributed to the merits of the invention should
`
`be considered an indication of non-obviousness. There are several major
`
`competitors in the field of electrophotographic systems who vie with Canon
`
`for market share. They all offer some variation of a convenient, easy to use
`
`toner (or developer) resupply system. As far as I am aware, the ’012 Patent
`
`and claims 24, 25, and 30 have not conferred a strong showing of commercial
`
`success such as would be indicated by a sudden increase in sales over the past
`
`dozen years due solely to the toner container; i.e.,, since the ’012 Patent
`
`issued and embodiments based upon it entered the market.
`
`• Copying: It is my understanding that evidence that an accused party copied
`
`the patented invention, as opposed to a prior art device, is an indication of
`
`non-obviousness. The patented invention according to the Court’s
`
`construction of the preamble to claim 24 consists of a toner container and its
`
`associated engagement assembly residing within the electrophotographic
`
`imaging system. As far as I am aware, neither the accused parties, or any
`
`other party, have copied this paired system.
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`
`
`- 9 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 12 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`• Long-standing problem or need: It is my understanding that evidence of a
`
`persistent problem or need in the art that was resolved by the patented
`
`invention is an indication of non-obviousness. The patent literature shows
`
`that there are a multitude of ways to provide for a customer or user of an
`
`electrophotographic imaging system (“EIS”) a convenient re-supply of toner.
`
`By ‘convenient’ is meant speedy, clean, intuitive and reliable. All major
`
`companies in the industry had methods to achieve this before and at the time
`
`of the issuance of the ’012 Patent.
`
`• Prior failure: It is my understanding that evidence that others have tried and
`
`failed to solve the problem or provide the need resolved by the claimed
`
`invention is an indication of non-obviousness. All major companies in the
`
`industry had methods to achieve this before and at the time of the issuance of
`
`the ’012 Patent. So it is not true that others have tried and failed to provide
`
`alternative ways for a customer or user of an EIS to have access to a
`
`convenient re-supply of toner.
`
`• Commercial acquiescence of competitors: It is my understanding that the
`
`willingness of industry to license the patent at issue is an indication of non-
`
`obviousness, though consideration must be given to distinguishing respect for
`
`the invention from a desire to avoid litigation. I understand that Canon has
`
`not entered into any license agreements with others expressly for the ’012
`
`Patent, but the ’012 Patent is included as part of at least nine (9) cross-license
`
`agreements. I further understand that all but one of those cross-license
`
`agreements expressly prohibit the licensee from making or selling toner bottle
`
`
`
`- 10 -
`
`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 13 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`products for use in a Canon EIS, and the one licensee that is not expressly so
`
`prohibited does not make or sell toner bottle products for use in Canon EIS.
`
`Thus, the evidence of cross-licensing relating to the ’012 Patent indicates, at
`
`most, a neutral factor with respect to obviousness. That is, I understand that
`
`Canon’s intent for entering into the license agreements are primarily to avoid
`
`litigation and provide access to the market.
`
`• Skepticism: It is my understanding that evidence that those of ordinary skill
`
`were skeptical as to the merits of the invention, or even taught away from the
`
`invention, are indications of non-obviousness. I do not know of any
`
`skepticism regarding the ‘012 Patent but, given the prior art aimed at ways to
`
`provide for a customer or user of an EIS a convenient re-supply of toner,
`
`others clearly thought that alternative methods were available to achieve this
`
`same aim.
`
`•
`
`Independent development: It is my understanding that evidence that others
`
`developed the claimed invention about the same time is an indication of
`
`obviousness. Their failure to do so, it follows, would be an indication of non-
`
`obviousness. Others have developed very similar methods in different
`
`contexts (for example, fluid conduit or electrical conductor connections)
`
`around the same time. Others also have developed alternative approaches
`
`around the same time to address or improve upon the same need as Canon;
`
`i.e., to provide a convenient re-supply of toner for a customer or user of an
`
`EIS.
`
`
`
`- 11 -
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`

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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 14 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
`
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`• Prior litigation: It is my understanding that prior litigation may support an
`
`argument of commercial success or copying. I understand that Canon alleged
`
`infringement of the ’012 Patent in the civil litigations known as: (a) Canon,
`
`Inc. v. Densigraphix Kopi Inc. and Densigraphix Inc., Case No. 1:10-cv-
`
`00034-CMH-IDD, United States District Court for the Eastern District of
`
`Virginia; and (b) Canon, Inc. v. Copylite Products Corp., Copylite Products,
`
`LLC, and Polek & Polek Inc., Case No. 2:10-cv-313-JBF-TEM, United States
`
`District Court for the Eastern District of Virginia. I further understand that
`
`both litigations were resolved early in the proceedings at the pleadings stage
`
`upon the entry of a Stipulation, Consent Judgment and Permanent Injunction,
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`whereby the defendants agreed to discontinue sales of accused products. Of
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`course, it should be well understood that patent litigation can be very
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`expensive, and parties often settle lawsuits for a variety of reasons, regardless
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`of the actual infringement concerns. Accordingly, although evidence of
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`settlement may sometimes indicate non-obviousness, the cost of litigation
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`versus the cost of settlement often favors settlement. Therefore, I understand
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`a large majority of litigation matters end in settlement and do not believe that
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`a few instances of settlement of prior litigation involving the ’012 Patent
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`constitute strong evidence of non-evidence. Further, the prior litigation of
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`which I am aware did not involve a major competitor, i.e.,, a company that
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`designs, manufactures, and sells a wide range of EIS and associated toner re-
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`supply items.
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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 15 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`• Unexpected results: It is my understanding that evidence that those of
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`ordinary skill in the art were surprised by the capabilities of the claimed
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`invention is an indication of non-obviousness. As far as I can tell, the ’012
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`Patent is obviously capable of being derived from prior art and the
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`introduction of toner containers based on it did not lead to resounding
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`commercial success, and thus there was nothing to surprise one of ordinary
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`skill in the art.
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`29.
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`It is my understanding that any assertion of the above indicia must be
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`accompanied by a nexus between the merits of the invention and the evidence offered, otherwise
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`the evidence does not actually tend to show that the invention was non-obvious. Further, I
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`understand that, even where evidence of non-obviousness exists, it may not be compelling
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`enough to overcome a strong showing of obviousness in light of the prior art.
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`30.
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`In determining whether the subject matter as a whole would have been obvious
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`at the time of the invention was made to a person having ordinary skill in the art, I have been
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`informed of several principles regarding the combination of elements of the prior art. First, a
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`combination of familiar elements according to known methods is likely to be obvious when it
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`yields predictable results.
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`31.
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`Second, if a person of ordinary skill in the art can implement a “predictable
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`variation” in a prior art device, and would see the benefit from doing so, such a variation is
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`obvious. In particular, when there is pressure to solve a problem and there are a finite number of
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`identifiable, predictable solutions, it would be reasonable for a person of ordinary skill to pursue
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`those options that fall within his or her technical grasp. If such a process leads to the claimed
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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 16 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`invention, then the later is not an innovation, but more the result of ordinary skill and common
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`sense.
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`32.
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`I understand that the “teaching, suggestion, or motivation” test is a useful guide
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`in establishing a rationale for combing elements of the prior art. This test poses the question as
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`to whether there is an explicit teaching, suggestion, or motivation in the prior art to combine
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`prior art elements in a way that realizes the claimed invention. Though useful to the obviousness
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`inquiry, I understand that this test should not be treated as a rigid rule. It is not necessary to seek
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`out precise teachings; it is permissible to consider the inferences and creative steps a person of
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`ordinary skill in the art would employ.
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`D.
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`33.
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`The Indefiniteness Requirement
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`It is my understanding that the second paragraph of 35 U.S.C. § 112 requires
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`that a patent claim “particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor regards as his invention.” Claim terms that are insolubly ambiguous
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`fail the definiteness requirement of § 112 because such terms that do not permit a person of
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`ordinary skill in the art to understand with precision what is within the scope of the claim.
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`Further, I understand that the standard for review of indefiniteness is currently under
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`consideration by the Supreme Court of the United States. (See Nautilus Inc. v. Biosig
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`Instruments Inc., No. 13-369). It is possible that the Court’s ruling in Nautilus may modify the
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`test for indefiniteness, which may modify some of my opinions expressed herein. I reserve the
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`right to update this report should I deem it necessary in light of the Nautilus decision, when it
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`issues.
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`E.
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`34.
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`Claim Construction
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`In connection with my opinions presented herein, I have adopted the following
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`from the Court’s Claim Construction Order:
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`Case 1:11-cv-03855-AT Document 297-4 Filed 10/10/14 Page 17 of 111
`EXPERT REPORT OF DR. B. E. SPRINGETT REGARDING
`INVALIDITY OF U.S. PATENT NO. 7,647,012
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`35.
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`The Special Master’s recommendation was that the Court find that the
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`preamble to Claim 24 of the ‘012 Patent is a limiting element of the claim. The court agreed
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`with the Special Master’s recommendation in this regard, and hence determined that the
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`preamble to Claim 24 is indeed a limiting element of the claim. In particular (and according to
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`my understanding of the Court’s adopted claim construction), Claim 24 requires that an assembly
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`of an EIS and the components of the EIS, including the hollow cylindrical driving member that
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`has a slot formed therein, a plurality of interior surfaces on the hollow cylindrical driving
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`member, and a hollow cylinder that is substantially concentric with the hollow cylindrical
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`driving member, are necessary and limiting parts of the claims. Accordingly, these EIS
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`components are necessarily part of the claimed assembly of Claim 24.
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`36.
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`The further construc