`
`
`Christopher S. Marchese (SBN 170239)
`marchese@fr.com
`FISH & RICHARDSON P.C.
`633 West Fifth Street, 26th Floor
`Los Angeles, CA 90071
`Tel: (213) 533-4240 / Fax: (858) 678-5099
`
`Thad C. Kodish (pro hac vice)
`tkodish@fr.com
`Jacqueline Tio (pro hac vice)
`tio@fr.com
`FISH & RICHARDSON P.C.
`1180 Peachtree Street, N.E., 21st Floor
`Atlanta, GA 30309
`Tel: (404) 892-5005 / Fax: (404) 892-5002
`
`Attorneys for Defendants
`TIDE INTERNATIONAL (USA), INC., et al.
`[Additional attorneys listed on signature page.]
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
`
`
`
`
`UPL NA INC.,
`
` Plaintiff,
`
`
`v.
`
`
`TIDE INTERNATIONAL (USA), INC.,
`ZHEJIANG TIDE CROPSCIENCE CO.,
`LTD., and NINGBO TIDE IMP. & EXP.
`CO., LTD.,
`
` Defendants.
`
`
`Case No. 8:19-CV-01201-RSWL-KS
`
`DEFENDANTS’ PRELIMINARY
`INVALIDITY CONTENTIONS
`
`District Judge: Ronald S.W. Lew
`Magistrate Judge: Karen L. Stevenson
`
`
`
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`Case No. 8:19-cv-01201-RSWL-KS
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`Pursuant to the Court’s Scheduling Order (Dkt. 49) and the Standing Patent
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`Rules (“S.P.R.”) established by Judge Andrew J. Guilford, as agreed to by the parties
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`(Dkt. 37 at 4), Defendants Tide International (USA), Inc., Zhejiang Tide CropScience
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`Co., Ltd., and Ningbo Tide Imp. & Exp. Co., Ltd. (collectively, “Tide”) hereby
`
`disclose their Preliminary Invalidity Contentions regarding U.S. Patent No. 7,473,685
`
`(“Patent-in-Suit”). According to Plaintiff UPL NA, Inc. (“UPL”), the Asserted
`
`Claims are claims 1 and 4 (collectively, “Asserted Claims”). Tide contends that the
`
`patent claims asserted UPL are invalid under at least 35 U.S.C. §§ 102, 103, and 112.
`
`I.
`
`RESERVATIONS
`
` General Reservation of Right
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`UPL has prejudiced Tide’s ability to proffer these Preliminary Invalidity
`
`Contentions due to UPL’s improper Infringement Contentions which lack the
`
`information required by the Federal Rules of Civil Procedure, the Court’s Local Rules,
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`the Standing Patent Rules, this Court’s Orders, and Tide’s discovery requests and
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`interrogatories. The Preliminary Invalidity Contentions asserted herein are based on
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`the apparent claim constructions advanced in UPL’s November 25, 2019 Infringement
`
`Contentions, and to the extent that those constructions can be understood in light of
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`the positions taken during prosecution of the Patent-in-Suit. These Preliminary
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`Invalidity Contentions are not, and nothing in these disclosures should be seen as, an
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`endorsement, acquiescence, and/or acceptance of any of UPL’s apparent claim
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`constructions, nor as an assertion of particular constructions by Tide. Tide expressly
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`reserves the right to propose alternative constructions to those advocated by UPL and
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`to challenge and contest UPL’s claim construction positions.
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`Prior art not included in these disclosures, whether or not now known to Tide,
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`may become relevant depending on the positions UPL asserts and/or the claim
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`constructions the Court adopts. Tide’s ongoing investigations may also uncover
`
`additional prior art. Tide reserves the right to modify these disclosures, including
`
`without limitation, by adding or withdrawing prior art to or from these disclosures
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`1
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`Case No. 8:19-cv-01201-RSWL-KS
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`and/or modifying the charts herein in light of the Court’s claim construction ruling,
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`any revised or supplemented infringement contentions by UPL, and/or positions taken
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`by UPL in this or related litigation, post-grant proceeding, reexamination or other
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`prosecution, and/or as otherwise appropriate. To the extent that Tide obtains
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`additional or further information, it reserves the right to amend and/or supplement
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`these Preliminary Invalidity Contentions.
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`Additional obviousness combinations of the references identified in these
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`disclosures are also possible, and Tide reserves the right to use any such
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`combination(s) in this litigation. For example, Tide is currently unaware of the extent,
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`if any, to which UPL will contend that limitations of the claims at issue are not
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`disclosed in the art identified by Tide as anticipatory, and the extent to which UPL
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`will contend that elements not disclosed in the asserted patent specification and related
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`applications would have been known to persons of ordinary skill in the art at the
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`relevant time. To the extent that an issue arises with any such limitations, Tide
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`reserves the right to identify other references that would have made such limitations
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`obvious in view of the relevant disclosures.
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`Accordingly, Tide reserves the right to supplement or modify these Preliminary
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`Invalidity Contentions based on further discovery and in a manner consistent with the
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`Federal Rules of Civil Procedure and the Court’s rules, including the agreed-upon
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`20
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`S.P.R.
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`Tide’s discovery and investigation in connection with this litigation are
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`continuing, and thus, these disclosures are based on information obtained to date.
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`Tide expects that further discovery will reveal additional prior art, including related
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`disclosures and corresponding evidence for many of the prior art references identified
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`below.
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`These Preliminary Invalidity Contentions are based on the Asserted Claims for
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`which UPL provided claim charts in its November 25, 2019 Infringement
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`Contentions. In other words, for purposes of these disclosures, Tide views an
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`2
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`Case No. 8:19-cv-01201-RSWL-KS
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`“Asserted Claim” to be one for which UPL has provided a claim chart in its
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`Infringement Contentions. To the extent UPL is ordered to and/or seeks to modify
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`and/or amend its infringement contentions to assert and/or provide claim charts for
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`any additional claims (or for any other reason), and is permitted to do so by the Court,
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`Tide reserves the right to amend and/or supplement these disclosures.
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`These disclosures, including the accompanying claim charts, were prepared
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`prior to the Court’s claim construction ruling. Tide’s positions on the invalidity of
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`particular claims will depend on how those claims are construed by the Court. In the
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`absence of a claim construction ruling, these preliminary contentions are made in the
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`alternative and are not necessarily intended to be consistent with each other and other
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`preliminary invalidity contentions herein. These contentions are made out of an
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`abundance of caution to reflect the potential scope of the claims that UPL appears to
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`be advocating or could advocate. Tide’s contentions herein should not be seen as a
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`suggestion that UPL’s reading of the patent claims is correct. Tide reserves the right
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`to amend these contentions upon receipt of the Court’s claim construction order.
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`Tide also reserves the right to amend these contentions upon the Court’s
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`determination of the priority date(s) of any properly asserted claims.
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` UPL’s Infringement Contentions
`
`UPL’s disclosures under S.P.R. 2.1 and 2.2 are deficient in numerous respects,
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`including, without limitation: lack of any basis to support the anti-foaming element;
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`lack of any basis to support the stabilizer element; lack of any basis to support
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`assertion of claim 4; and lack of any basis to support satisfaction of the “consisting
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`of” language.
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`Because such deficiencies may lead to further grounds for invalidity, Tide
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`specifically reserves the right to modify, amend, or supplement its contentions as
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`UPL, to the extent permitted by the governing rules, modifies, amends, or
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`supplements its disclosures and/or produces documents in discovery.
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`3
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`Additionally, UPL has presented no contentions of any alleged infringement
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`under the doctrine of equivalents in its infringement contentions. As a result, UPL has
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`waived any doctrine of equivalents theory. If UPL is permitted to provide this and
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`other information relating to infringement under the doctrine of equivalents, albeit
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`over Tide’s objections, Tide may amend and supplement these Preliminary Invalidity
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`Contentions as appropriate.
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` The Intrinsic Record
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`Tide further reserves the right to rely on applicable industry standards and prior
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`art cited in the file histories of the Patent-in-Suit and any related U.S. and foreign
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`patent applications as invalidating references or to show the state of the art. Tide
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`further reserves the right to rely on the patent applicants’ admissions concerning the
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`scope of the prior art relevant to the Patent-in-Suit found in, inter alia: the patent
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`prosecution history for the Patent-in-Suit and any related patents and/or patent
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`applications or reexaminations (or inter partes proceedings); any deposition testimony
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`of the named patent applicants on the Patent-in-Suit; and the papers filed and any
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`evidence submitted by UPL in connection with this litigation.
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` Rebuttal Evidence
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`Prior art not included in these Preliminary Invalidity Contentions, whether
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`known or not known to Tide, may become relevant. In particular, Tide is currently
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`unaware of the extent, if any, to which UPL will contend that limitations of the
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`Asserted Claims of the Patent-in-Suit are not disclosed in the prior art identified
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`herein. To the extent that such an issue arises, Tide reserves the right to identify
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`other references that would render obvious the allegedly missing limitation(s) or the
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`disclosed device or method, or otherwise rebut UPL’s argument.
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` Contextual Evidence
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`Tide’s claim charts cite particular teachings and disclosures of the prior art as
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`applied to the limitations of each of the Asserted Claims. However, persons having
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`ordinary skill in the art generally may view an item of prior art in the context of his
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`4
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`or her experience and training, other publications, literature, products, and
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`understandings. As such, the cited portions are only examples, and Tide reserves the
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`right to rely on uncited portions of the prior art references and on other publications
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`and expert testimony as aids in understanding and interpreting the cited portions, as
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`providing context thereto, and as additional evidence that the prior art discloses a
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`claim limitation or the claimed subject matter as a whole. Tide further reserves the
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`right to rely on uncited portions of the prior art references, other publications, and
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`testimony, including expert testimony, to establish bases for combinations of certain
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`cited references that render the Asserted Claims obvious. The references discussed
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`in the claim charts may disclose the elements of the Asserted Claims explicitly
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`and/or inherently, and/or they may be relied upon to show the state of the art in the
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`relevant time-frame. The suggested obviousness combinations are provided in the
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`alternative to anticipation contentions and are not to be construed to suggest that any
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`reference included in the combinations is not by itself anticipatory.
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`Invalidity Under 35 U.S.C. § 102(f)
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`Tide has not yet taken depositions of the named inventors, and reserves the
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`right to assert that the Asserted Claims of the Patent-in-Suit are invalid under 35
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`U.S.C. § 102(f) in the event Tide obtains evidence that any of the inventors named
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`on the Patent-in-Suit or related patents, did not themselves “invent” the subject
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`matter claimed. Should Tide obtain such evidence, it will provide the name(s) of the
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`person(s) from whom and the circumstances under which the claimed subject matter
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`or any part of it was derived.
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`23
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`II.
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`S.P.R. 2.5 INVALIDITY CONTENTIONS
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`Identification of Prior Art
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`At least the prior art listed in Table 1 below, individually or in combination,
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`invalidates the Asserted Claims. Appendices 1-A through 1-H provide detailed
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`claim charts showing where each claim element may be found in the particular
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`reference being charted.
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`5
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`Case No. 8:19-cv-01201-RSWL-KS
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`The identification of prior art below is not exclusive, and Tide’s
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`accompanying production contains additional references that render the Asserted
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`Claims invalid. Appendix 2 identifies additional prior art from which disclosure is
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`not specifically identified in Appendix 1 due to one or more of the following
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`reasons: (i) the art indicates and/or describes the state of the art during the relevant
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`time; (ii) the art has substantially similar disclosures to other prior art of which
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`disclosure is reflected in Appendices 2; (iii) the prior art was discovered recently,
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`and Tide has not had a fair opportunity to analyze the art; (iv) the prior art is used as
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`supporting references in an obviousness combination; and/or (v) Tide awaits further
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`information regarding the prior art in order to better understand its disclosure.
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`However, Tide reserves the right to rely upon both the listed and unlisted references,
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`as well as other art that may become known and/or relevant during the course of this
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`or related litigation.
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`For those references for which detailed claim charts are provided in
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`Appendices 1-A through 1-H, a reference to the particular Appendix Number is
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`provided in Section II.C below. References for which Appendix Numbers do not
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`appear are additional prior art references that are either included as secondary
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`references in charts contained in the appendices, or are otherwise pertinent to the
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`invalidity of the Patent-in-Suit, either alone or in combination with other references.
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`At this time, Tide is not providing claim charts for each of these additional
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`references, either because they are cited in conjunction with primary references for
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`which charts have already been provided and are cited therein, and/or because these
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`references have similar disclosures to the prior art references for which invalidity
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`charts have been provided and/or may be used to show the state of the art.
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`Tide also incorporates as if fully set forth herein the complete file histories for
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`the Patent-in-Suit and related patents, including any prior art or supporting
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`documents cited therein.
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`6
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
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`Tide also adopts and incorporates by reference herein (1) any and all materials
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`contained in documents produced thus far by UPL to Tide in this case, and (2) any
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`and all additional materials regarding invalidity that should have been produced to
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`Tide by UPL but which have not been produced to date, to the extent that any exist.
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`Tide not only relies upon the prior art disclosed herein, but also relies on any
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`commercial embodiments and accompanying literature of the various assignees that
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`correspond to the respective disclosures found within the prior art disclosed herein.
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`The assignees’ various and respective commercial embodiments and/or
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`corresponding literature anticipate and/or render obvious the claims of the Patent-in-
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`Suit for at least the reasons disclosed in these Preliminary Invalidity Contentions and
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`claim charts, as well as for other independent reasons found within the commercial
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`embodiments and corresponding literature. Tide also reserves the right to rely on
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`related patents, published applications, foreign patents or publications, and other
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`patent documents as necessary to establish prior art status or clarify the disclosures
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`cited.
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`Tide further reserves the right to rely on the earliest publication or priority
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`dates to which each of the prior art references are entitled, including dates on which
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`a claim of priority may be based for patent references that are any of a divisional,
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`continuation, or continuation-in-part of an earlier filed patent application.
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`Tide reserves the right to revise its claim charts to rely on any of these
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`references to prove the invalidity of the claims of the Patent-in-Suit in a manner
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`consistent with the Federal Rules of Civil Procedure, the Court’s Local Rules, the
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`Standing Patent Rules, and this Court’s Orders.
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`7
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
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`Table 1 – Invalidating Prior Art References
`
`Country
`of Origin
`
`Number
`
`Inventor
`
`Date Filed
`
`Date Issued (for
`patents) /
`Published (for
`applications)
`
`United
`States
`
`United
`States
`
`PCT
`
`China
`
`United
`States
`
`Japan
`
`U.S. Patent No.
`6,387,388
`("Misselbrook")
`
`U.S. Patent No.
`6,030,924
`(“Mayer”)
`
`WO90/12503
`A1 (“Marks”)
`CN1127588A
`(“CN ’588”)
`
`U.S. Patent No.
`6,617,301
`(“Fornara”)
`
`JP9315902 A2
`(“JP ’902”)
`
`European
`Patent
`
`EP0862856 A1
`(“Schindler”)
`
`China
`
`CN 1104194
`(“CN ’194”)
`
`John
`Misselbrook,
`Robert F.
`Peterson, Jr.
`Winfried
`Mayer,
`Christian
`Wassmer,
`Sandra Doerr
`John
`Misselbrook
`Masahiro
`Yamada,
`Yasuyuki
`Katayama,
`Toshiro
`Ohtsubo,
`Dario Fornara,
`Peter Bohus,
`Alberto
`Colombo
`Junichi Murai,
`Masatoshi
`Sawamura
`Frederick
`James
`Schindler, Yili
`Guo, Gregory
`C. Pierce,
`James Allen
`Quinn
`Akihiko
`Kunitomo,
`Masayuki
`
`5/25/1999
`
`5/14/2002
`
`5/1/1998
`
`2/29/2000
`
`4/25/1990
`
`11/1/1990
`
`12/20/1994
`
`7/31/1996
`
`5/16/2000
`(PCT)
`
`9/9/2003 (issued)
`11/23/2000
`(published)
`
`5/24/1996
`
`12/9/1997
`
`2/19/1998
`
`9/5/2003
`
`5/25/1999
`
`5/14/2002
`
`8
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
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`Country
`of Origin
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`Number
`
`Inventor
`
`Date Filed
`
`Date Issued (for
`patents) /
`Published (for
`applications)
`
`United
`States
`
`U.S. Patent No.
`6,270,025
`(“Geigle”)
`
`Nakagawa,
`Kinji Tanizawa
`William
`Lawrence
`Geigle, Steve
`Irwin Gleich
`
`3/9/1998
`
`8/7/2001
`
`Based on a diligent search of the prior art and information obtained to date,
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`the Asserted Claims are invalid because the prior art listed in Table 1 anticipates the
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`Asserted Claims and/or because the prior art listed in Table 1, individually or in
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`combination, renders the Asserted Claims invalid.
`
`Tide’s Invalidity Charts, attached as Appendices 1-A through 1-H and
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`incorporated by reference as if fully set forth herein, as well as the text in this pleading,
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`(1) identify whether each item of prior art anticipates each identified claim or renders
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`it obvious; (2) identify where in each item of prior art each element of the identified
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`claims is found; and (3) identify combinations of prior art that make each claim
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`obvious.
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`
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`Prior Art Under 35 U.S.C. §102
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`The prior art listed below anticipates the Asserted Claims of the Patent-in-Suit
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`either expressly or inherently as understood by a person having ordinary skill in the
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`art. The specific anticipation assertions with respect to each claim are set forth in the
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`accompanying Appendices.
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`Table 2 –Prior Art References Under 35 U.S.C. §102
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`Appendix No. Reference
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`1-A
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`1-B
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`1-C
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`Misselbrook
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`Fornara
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`Mayer
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`CN ’588
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`Tide has endeavored to identify the most relevant portions of identified
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`references.
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`The references may contain additional support, however, for a particular claim
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`element. Tide may rely on uncited portions of the prior art references and/or other
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`publications and fact or expert testimony to provide context and as aids to
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`understanding and interpreting the portions that are cited.
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`The references discussed in the claim charts may disclose the elements of the
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`claims explicitly and/or inherently, and/or they may be relied upon to show the state
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`of the art in the relevant time-frame. The suggested obviousness combinations are
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`provided in the alternative to Tide’s anticipation contentions and are not to be
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`construed to suggest that any reference included in any combination is not by itself
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`anticipatory. Also, the suggested obviousness combinations are provided as
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`examples, and it should be understood that other combinations of the prior art
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`disclosed and cited herein could be used in such combinations.
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`Prior Art Under 35 U.S.C. § 103
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`Each anticipatory prior art reference, either alone or in combination with other
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`prior art, also renders the Asserted Claims obvious to one of ordinary skill in the art.
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`In particular, each anticipatory prior art reference on its own renders obvious the
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`claimed inventions, and also may be combined with (i) information known to
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`persons skilled in the art at the time of the alleged invention, and/or (ii) any of the
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`other anticipatory prior art references. To the extent that UPL contends that any of
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`the anticipatory prior art fails to disclose explicitly or inherently one or more
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`limitations of the Asserted Claims, Tide reserves the right to argue that any
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`difference between the reference and the corresponding patent claims would have
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`been obvious to one of ordinary skill in the art even if it has not specifically denoted
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`that the reference is to be combined with the knowledge of a person of ordinary skill
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`in the art. Further, Tide reserves the right to identify other prior art references that,
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`when combined with anticipatory prior art, would render the claims obvious.
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`1.
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`Prior Art References
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`Should any individual prior art reference be deemed not to disclose, explicitly
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`or inherently, any element of a claim, Tide contends that the below combinations
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`would render each Asserted Claim of the Patent-in-Suit obvious:
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`First, Tide identifies within each claim chart exemplary disclosures that
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`disclose each limitation of the claim.
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`Table 3 –Prior Art References Under 35 U.S.C. §103
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`Appendix No. Reference
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`1-A
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`1-B
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`1-C
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`1-D
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`1-E
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`1-F
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`1-G
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`1-H
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`---------
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`Misselbrook
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`Fornara
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`Mayer
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`CN ’588
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`CN ’159
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`JP ’902
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`Schindler
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`Marks
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`Geigle
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`Second, Tide identifies the limitations of the Asserted Claims disclosed by
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`each reference:
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`Table 4 –Limitations Disclosed by 35 U.S.C. §103 Prior Art References
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`Claim # References Disclosing Claim Element for Combination
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`1[pre]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• Schindler (Appx. 1-G)
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`• CN ’588 (Appx. 1-D)
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`• Marks (Appx. 1-H)
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`• Geigle
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`1[i]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• JP ’902 (Appx. 1-F)
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`• Schindler (Appx. 1-G)
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`• CN ’588 (Appx. 1-D)
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`1[ii]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• Schindler (Appx. 1-G)
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`• CN ’588 (Appx. 1-D)
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`• Marks (Appx. 1-H)
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`1[iii]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• Schindler (Appx. 1-G)
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`• CN ’588 (Appx. 1-D)
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`• Marks (Appx. 1-H)
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`1[iv]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• Mayer (Appx. 1-C)
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`• Schindler (Appx. 1-G)
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`1[v]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• CN ’588 (Appx. 1-D)
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`1[vi]
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`• Misselbrook (Appx. 1-A)
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`• Fornara (Appx. 1-B)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• Schindler (Appx. 1-G)
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`• CN ’588 (Appx. 1-D)
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`• Marks (Appx. 1-H)
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`1[vii]
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`• Misselbrook (Appx. 1-A)
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`• CN ’194 (Appx. 1-E)
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`• Mayer (Appx. 1-C)
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`• JP ’902 (Appx. 1-F)
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`• Marks (Appx. 1-H)
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`• Geigle
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`4
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`• Misselbrook (Appx. 1-A)
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`• Mayer (Appx. 1-C)
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`Using the above disclosures, any combination of references would render
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`obvious the Asserted Claims of the Patent-in-Suit.
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`These combinations, in addition to those disclosed in the charts, are not
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`exhaustive, and Tide reserves the right to supplement the obviousness arguments
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`listed below, using any references listed above and any references that may become
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`known to Tide during the course of discovery.
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`2. General Motivation to Combine
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`The United States Supreme Court clarified the standard for what types of
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`inventions are patentable. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007). In
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`particular, the Supreme Court emphasized that inventions arising from ordinary
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`innovation, ordinary skill, or common sense should not be patentable. Id. at 1732,
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`1738, 1742-1743, 1746. In that regard, a patent claim may be obvious if the
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`combination of elements was obvious to try or there existed at the time of the
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`invention a known problem for which there was an obvious solution encompassed
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`by the patent’s claims. In addition, when a work is available in one field of
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`endeavor, design incentives and other market forces can prompt variations of it,
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`either in the same field or a different one. If a person of ordinary skill can implement
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`a predictable variation, Section 103 likely bars its patentability.
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`“[T]he combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results.” Id. at
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`1731. Because the Patent-in-Suit simply arranges old elements with each performing
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`the same function it had been known to perform and yields no more than what one
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`would expect from such an arrangement, the combination is obvious. Id. at 1742.
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`The Asserted Claims are therefore invalid under 35 U.S.C. § 103 because they do
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`nothing more than combine known techniques and ingredients according to their
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`known and ordinary uses to yield predictable results.
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`The Supreme Court further held that, “[w]hen a work is available in one field
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`of endeavor, design incentives and other market forces can prompt variations of it,
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`either in the same field or a different one. If a person of ordinary skill can implement
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`a predictable variation, § 103 likely bars its patentability. For the same reason, if a
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`technique has been used to improve one device, and a person of ordinary skill in the
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`art would recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill . . . .” Id.
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`at 1740. Accordingly, a person of ordinary skill in the art at the time of the alleged
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`invention would have been motivated to combine or adapt known or familiar
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`methods in the art, especially where market forces prompt such variations.
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`Thus, each of the references describes methods that were known to offer
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`improvements and benefits to the art, and, accordingly, one of skill in the art would
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`have been motivated to combine or modify the references as identified in each of the
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`combinations above.
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`Moreover, since there was a finite number of predictable solutions, a person
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`of ordinary skill in the art had good reason to pursue the known options. Id. The
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`above-identified prior art references merely use those familiar elements for their
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`primary or well-known purposes in a manner well within the ordinary level of skill
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`in the art. Accordingly, common sense and the knowledge of the prior art render the
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`claims invalid under either Section 102 or Section 103.
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`A person of ordinary skill would have been motivated to combine the above
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`prior art based on his or her knowledge, the nature of the problem to be solved, and
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`the teachings of the prior art. The identified prior art addresses the same or similar
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`technical issues and suggests the same or similar solutions to those issues.
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`Moreover, some of the prior art refer to or discuss other prior art, illustrating the
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`close technical relationship among the prior art.
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`By way of further example, the references listed above are directed to the
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`same or similar technology. Thus, for example, for the Patent-in-Suit, one of
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`ordinary skill in the art would have been motivated to combine known prior art
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`solutions described in these references relating to the formulation of a granular
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`insecticide.
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`Moreover, as detailed herein, many of the claim elements were already known
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`as admitted by the applicants in the specification of the Patent-in-Suit. These
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`elements represented design choices available to a person of ordinary skill. When
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`there is a design need or market pressure to solve a problem such as identified
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`previously and/or described in the Patent-in-Suit, and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill would be motivated to
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`combine the known options that are within his or her technical grasp. For the
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`Patent-in-Suit, for example, there were a finite number of antifoaming agents known
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`in the art at the time.
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`3.
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`Exemplary Motivations to Combine
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` In some of the paragraphs below, exemplary combinations are listed for
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`purposes of explaining and exemplifying which references would be combined
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`under the motivation cited in that particular paragraph. These combinations are not
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`intended to be limiting but rather intended to provide notice of the reasoning behind
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`particular motivations to combine and the references that would be combined
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`thereunder. In many instances, multiple different motivations would apply to a
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`particular combination (for example, if multiple references were both authored by
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`the same person and referred to the same product/system, then both of those
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`motivations would apply) and the specific combinations were not duplicated.
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`Should any prior art cited above be deemed not to disclose, explicitly or
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`inherently, any limitation of a claim, Tide reserves the right to argue that any such
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`difference between that prior art and the corresponding claim would have been
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`obvious to one of ordinary skill in the art. To the extent that such an argument is
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`deemed a “combination” analysis for purposes of obviousnes