IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
`
`
`Plaintiff,
`
`v.
`
`
`LARSON ELECTRONICS LLC,
`
`
`
`Defendant.
`
`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
`
`
`Plaintiff,
`
`v.
`
`
`EDEN PARK ILLUMINATION, INC.,
`
`
`
`Defendant.
`
`HIGH ENERGY OZONE LLC d/b/a
`FAR-UV STERILRAY and
`S. EDWARD NEISTER,
`
`
`
`Plaintiff,
`
`v.
`
`
`FAR UV TECHNOLOGIES,
`
`Defendant.
`
`
`
`
`
`
`
`C.A. No. 3:21-CV-01166-M
`
`LEAD CASE
`
`
`
`
`
`
`
`C.A. No. 3:22-CV-00425-M
`
`
`
`
`
`
`
`
`
`C.A. No. 3:22-CV-00280-M
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
`
`EXHIBIT 1035
`
`1
`
`

`

`Pursuant to the Court’s Patent Scheduling Order (Dkt. 27) and Paragraphs 3-3 and 3-4 of
`
`the Second Amended Miscellaneous Order No. 62 (the “Patent Rules”), Defendants Larson
`
`Electronics LLC, Eden Park Illumination, Inc., and Far UV Technologies (collectively,
`
`“Defendants”) hereby serve their Invalidity Contentions with respect to asserted claims 1 of U.S.
`
`Patent No. 8,975,605 (the “’605 Patent”), asserted claims 1, 5, 7, 9, 12, 15, and 17 of U.S. Patent
`
`No. 9,700,642 (the “’642 Patent”), and asserted claims 1-4, 7, 10-14, and 16-17 of U.S. Patent No.
`
`11,246,951 (the “’951 Patent”) (collectively, the “Asserted Claims”) identified by Plaintiffs High
`
`Energy Ozone LLC d/b/a Far-UV Sterilray and S. Edward Neister (collectively, “HEO3” or
`
`“Plaintiffs”) in Plaintiff’s disclosures pursuant to Paragraphs 3-1 and 3-2 of the Patent Rules
`
`(“Infringement Contention”) served on November 24, 2021 and February 22, 2022. Defendants
`
`provide these Invalidity Contentions based in whole or in part on their present understanding of
`
`the Asserted Claims and on the constructions that Plaintiffs appear to be advancing based on
`
`Plaintiffs’ Initial Infringement Contentions and First Supplemental Infringement Contentions.
`
`With respect to each asserted claim and based on their investigation to date, Defendants
`
`hereby: (1) identify each prior art reference that anticipates each asserted claim or renders it
`
`obvious; (2) specify whether each such prior art reference anticipates each asserted claim or
`
`renders it obvious, and, if it renders it obvious, explain why the prior art renders the asserted claim
`
`obvious, including motivations for combining prior art references, and identify any combinations
`
`of prior art showing obviousness; (3) submit a chart identifying where specifically in each prior
`
`art reference each limitation of each asserted claim is found, including, for each limitation that is
`
`governed by 35 U.S.C. § 112(f), the identity of the structure(s), act(s), or material(s) in each prior
`
`art reference that performs the claimed function; and (4) identify any limitation of each asserted
`
`2
`
`

`

`claim that is indefinite under 35 U.S.C. § 112(b) or lacks enablement or written description under
`
`35 U.S.C. § 112(a).
`
`In addition, pursuant to Paragraph 3-4 of the Patent Rules, and based on their investigation
`
`to date, Defendants produce concurrently with these Invalidity Contentions documents within their
`
`possession, custody, and control required to accompany the Invalidity Contentions.
`
`I.
`
`RESERVATIONS
`
`Defendants reserve all rights to amend or supplement these Invalidity Contentions based
`
`upon the Patent Rules, after the Court issues its claim construction ruling, or if Plaintiffs are
`
`permitted to modify, supplement, alter, or amend Plaintiffs’ Infringement Contentions. The
`
`information and documents that Defendants produce are provisional and subject to further revision.
`
`Defendants reserve the right to amend these disclosures and the accompanying document
`
`production should Plaintiffs provide any information that they failed to provide in their
`
`Infringement Contentions, or should Plaintiffs amend their Infringement Contentions in any way.
`
`Further, as discovery is only beginning, Defendants reserve the right to revise, amend, and/or
`
`supplement the information provided herein, including identifying and relying on additional
`
`references, should Defendants’ further search and analysis yield additional information or
`
`references, consistent with the Patent Rules and the Federal Rules of Civil Procedure. Moreover,
`
`Defendants reserve the right to revise their ultimate contentions concerning the invalidity of the
`
`Asserted Claims, which may change depending upon the Court’s construction of the asserted
`
`claims, any findings as to the priority or invention date of the asserted claims, and/or positions that
`
`Plaintiffs or their expert witness(es) may take concerning claim construction, infringement, and/or
`
`invalidity issues.
`
`3
`
`

`

`Prior art not included in this disclosure, whether known or unknown to Defendants, may
`
`become relevant. In particular, Defendants are currently unaware of the extent, if any, to which
`
`Plaintiffs will contend that limitations of the Asserted Claims are not disclosed in the prior art
`
`identified by Defendants, or will contend that any of the identified references do qualify as prior
`
`art. The identification of any patent or patent publication shall be deemed to include any
`
`counterpart patent or application filed, published, or issued anywhere in the world. To the extent
`
`that such issues arise, Defendants reserve the right to identify additional teachings in the same
`
`references or in other references that anticipate or would have made the addition of the allegedly
`
`missing limitation to the device. In providing these Invalidity Contentions, Defendants have relied
`
`on the contents of Plaintiffs’ Infringement Contentions and the constructions that Plaintiffs appear
`
`to be advancing therein.
`
`Defendants’ claim charts in Exhibits A-1–A-10, B-1–B-13, C-1–C-13 cite to particular
`
`teachings and disclosures of the prior art as applied to features of the Asserted Claims. However,
`
`persons of ordinary skill in the art may view an item of prior art generally in the context of other
`
`publications, literature, products, and understanding of those skilled in the art. Accordingly, the
`
`cited portions are only examples, and Defendants reserve the right to rely on uncited portions of
`
`the prior art references and on other publications and expert testimony as aids in understanding
`
`and interpreting the cited portions, as providing context thereto, and as additional evidence that a
`
`claim limitation is known or disclosed. Citations to figures are inclusive of all discussion of those
`
`figures. Defendants further reserve the right to rely on uncited portions of the prior art references,
`
`other publications, documents explicitly or implicitly incorporated by reference, and testimony to
`
`establish bases for combinations of certain cited references that render the asserted claims obvious.
`
`If a contention that a prior use, sale, offer for sale, or invention is invalidating prior art under 35
`
`4
`
`

`

`U.S.C. § 102(a)(1) relies upon documents set forth in these contentions, Defendants also contend
`
`that those documents anticipate or render obvious the Asserted Claims, whether alone or in
`
`combination with other references, even if not explicitly listed in this document. Further, for any
`
`combination, Defendants reserve the right to rely additionally on information generally known to
`
`those skilled in the art and/or common sense.
`
`Defendants also reserve the right to rely on additional materials describing the ’605 Patent,
`
`the ’642 Patent, the ’951 Patent and/or corroborating that the ultraviolet (UV) lamps disclosed
`
`therein were publicly known, used, or sold and/or the materials describing it were known and/or
`
`publicly available prior to the effective filing date of the ’605 Patent, the ’642 Patent, and the ’951
`
`Patent, including materials that may be produced in response to several third-party subpoenas
`
`Defendants may serve on companies believed to have information regarding the disclosed UV
`
`lamps and related products and processes.
`
`The references discussed herein and in the claim charts in Exhibits A-1–A-10, B-1–B-13,
`
`C-1–C-13, or elsewhere identified, may disclose the elements of the Asserted Claims explicitly
`
`and/or inherently, and/or they may be relied upon to show the state of the art in the relevant
`
`timeframe. The suggested obviousness combinations are provided in the alternative to
`
`Defendants’ anticipation contentions and are not to be construed to suggest that any reference
`
`included in the combinations is not itself anticipatory. Furthermore, an explicit contention in the
`
`charts that a claim limitation would be obvious to a person of ordinary skill in the art, alone or in
`
`combination with other references, should not be construed as a suggestion or concession that other
`
`limitations without such an explicit contention would not be obvious to a person of ordinary skill
`
`in the art, alone or in combination with other references.
`
`5
`
`

`

`Furthermore, these Invalidity Contentions and the accompanying claim charts have been
`
`prepared prior to the Court’s claim construction ruling or service of claim construction positions
`
`from Plaintiffs. Defendants’ position on the invalidity of particular claims will depend on how
`
`those claims and terms therein are construed by the Court. In the absence of a claim construction
`
`ruling, these contentions are made in the alternative and are not necessarily intended to be
`
`consistent with each other. Nothing stated herein shall be treated as an admission or suggestion
`
`that Defendants agree with Plaintiffs regarding the scope of any Asserted Claim or the claim
`
`constructions Plaintiffs advance in their Infringement Contentions or anywhere else. To the extent
`
`that Defendants’ Invalidity Contentions reflect or suggest constructions of claim limitations
`
`consistent with or suggested by Plaintiffs’ Infringement Contentions, no inference is intended nor
`
`should any be drawn that Defendants agree with Plaintiffs’ claim constructions or Plaintiffs’ views
`
`concerning the scope of the claims. To be clear, the charts below do not necessarily indicate all
`
`instances where claim elements are discussed based on Plaintiffs’ apparent interpretation of the
`
`claims as evidenced by Plaintiffs’ Infringement Contentions. However, the omission or addition
`
`of indications based on Plaintiffs’ apparent interpretation is not to be construed as an admission as
`
`to the proper construction or scope of the claims. Defendants reserve the right to challenge
`
`Plaintiffs’ current, future, apparent, implicit, or explicit construction of all claim terms.
`
`In addition, nothing in these Invalidity Contentions shall be treated as an admission that
`
`Defendants’ accused technologies meet any limitation of any Asserted Claim. Defendants deny
`
`that they infringe any claims of the ’605 Patent, the ’642 Patent, and the ’951 Patent. To the extent
`
`that any prior art reference identified by Defendants contain a claim element that is the same as or
`
`similar to an element in an accused product, based on a claim construction inferred from Plaintiffs’
`
`Infringement Contentions, inclusion of that reference in Defendants’ Invalidity Contentions shall
`
`6
`
`

`

`not be deemed a waiver by Defendants of any claim construction or non-infringement position.
`
`Defendants expressly reserve the right to contest any claim constructions asserted by Plaintiffs and
`
`expressly reserve all non-infringement arguments.
`
`Depending on the Court’s construction of the Asserted Claims, and/or positions that
`
`Plaintiffs or their expert witness(es) may take concerning claim interpretation, infringement,
`
`and/or invalidity issues, different charted prior art references in Exhibits A-1–A-10, B-1–B-13, C-
`
`1–C-13, or otherwise identified herein, may be of greater or lesser relevance and different
`
`combinations of these references may be implicated. Given this uncertainty, the charts may reflect
`
`alternative applications of the prior art against the Asserted Claims. Nothing stated herein shall
`
`be construed as an admission or a waiver of any particular construction of any claim term.
`
`The identification of exemplary disclosures in or other evidence about prior art that
`
`anticipates or renders obvious a particular claim or claim element should in no way be construed
`
`as an admission that the claim element satisfies any of the requirements of 35 U.S.C. § 112. In
`
`those instances where Defendants assert that the Asserted Claims are invalid under 35 U.S.C. § 112
`
`(e.g., for failure to particularly point out and distinctly claim the invention and for failure to provide
`
`written description support in the specification and/or lack of enablement), Defendants have
`
`applied the prior art in part in accordance with its assumption that Plaintiffs contend the Asserted
`
`Claims are definite, find written description support in, and are enabled by the ’605 Patent, the
`
`’642 Patent, and the ’951 Patent. However, Defendants’ Invalidity Contentions do not represent
`
`Defendants’ agreement as to the meaning, definiteness, written description support for, or
`
`enablement of any claim contained therein. Accordingly, nothing stated herein shall be construed
`
`as a waiver of any argument available under 35 U.S.C. § 112.
`
`7
`
`

`

`II.
`
`PARAGRAPH 3-3(A)(1)—IDENTIFICATION OF PRIOR ART
`
`Defendants list the prior art now known to it and which it contends invalidates, alone or in
`
`combination, the Asserted Claims. In addition to the disclosures provided below, Defendants
`
`attach separate charts detailing their invalidity contentions on a claim-by-claim basis. See Exs. A-
`
`1–A-10, B-1–B-13, C-1–C-13. Moreover, Defendants hereby disclose and reserve the right to rely
`
`upon all references incorporated by reference into the references disclosed below and in the
`
`accompanying charts.1 Defendants reserve the right to rely on the earliest publication or priority
`
`dates to which each of the prior art references are entitled, including dates on which a claim of
`
`priority may be based for patent references that are any of a divisional, continuation, or
`
`continuation-in-part of an earlier filed patent application. Further, Defendants reserve the right to
`
`rely on other references reflecting the state of the art and/or knowledge of a person of ordinary
`
`skill in the art.
`
`At least as set forth in Exhibits A-1–A-10, B-1–B-13, C-1–C-13, the prior art disclosed by
`
`Defendants anticipates and/or renders obvious the Asserted Claims, either expressly or inherently
`
`as understood by a person having ordinary skill in the art. Each of these prior art patents,
`
`publications, inventions, knowledge, and activities anticipates and/or renders obvious the Asserted
`
`Claims. In some instances, Defendants treated certain prior art as anticipatory or as rendering the
`
`Asserted Claims obvious where certain elements are inherently present based on Plaintiffs’
`
`apparent claim construction in Plaintiffs’ Infringement Contentions.
`
`
`
`1 To the extent any of the cited references are found not to predate the ’605 Patent, the ’642 Patent,
`or the ’951 Patent for which it is cited, it remains relevant, for example, to show the technological
`background and/or to secondary considerations of obviousness and/or obviousness based on
`simultaneous/contemporaneous invention by others.
`
`8
`
`

`

`To the extent that they are prior art, Defendants also reserve the right to rely upon:
`
`(i) foreign counterparts of U.S. patents identified in these Invalidity Contentions; (ii) U.S.
`
`counterparts of foreign patents and foreign patent applications identified in these Invalidity
`
`Contentions; (iii) U.S. related applications and patents, including published patent applications, of
`
`U.S. patents identified in these Invalidity Contentions; (iv) prior art inventions, knowledge, or
`
`activities discussed in, or related to, patents and publications identified in these Invalidity
`
`Contentions; (v) inventions, activities or other work performed by named inventors or assignees
`
`of the patents and publications identified in these Invalidity Contentions; and (vi) U.S. and foreign
`
`patents and patent applications corresponding to articles and publications identified in these
`
`Invalidity Contentions.
`
`The persons or entities involved with making each item or occurrence of prior art available
`
`include the named inventors on the identified patents and applications, the authors listed on the
`
`identified publications, and the entities and individuals identified in connection with the identified
`
`prior art activities or availability. Investigation, analysis and discovery are ongoing in this matter,
`
`and Defendants reserve the right to supplement this information as appropriate.
`
`A.
`
`Prior Art Patent References
`
`The following prior art patent references anticipate and/or render obvious the Asserted
`
`Claim of the ’605 Patent:
`
`Exhibit
`1
`2
`3
`4
`5
`6
`7
`8
`
`Patent No. / Publication No.
`2005/0079096 (“Brown-Skrobot”)
`7,381,976 (“Coogan”)
`6,193,894 (“Hollander”)
`2,225,225 (“Sosnin 225”)
`2010/0175694 (“James”)
`2005/0173652 (“Ressler 652”)
`6,447,720 (“Horton”)
`2007/0102280 (“Hunter”)
`
`Country of Origin Date Issued / Published
`USA
`Apr. 14, 2005
`USA
`June 3, 2008
`USA
`Feb. 27, 2001
`RU
`Mar. 10, 2004
`USA
`July 15, 2010
`USA
`Aug. 11, 2005
`USA
`Sep. 10, 2002
`USA
`May 10, 2007
`
`
`
`9
`
`

`

`In addition, Defendants hereby incorporate by reference the prior art patent references identified
`
`in Healthe, Inc.’s Invalidity Contentions served in Healthe, Inc. v. High Energy Ozone LLC, No.
`
`6:20-cv-02233 (M.D. Fla.) and any future post-grant proceedings before the U.S. Patent and
`
`Trademark Office concerning the ’605 Patent, including without limitation, inter partes review,
`
`post-grant review, and ex parte reexamination.
`
`The following prior art patent references anticipate and/or render obvious the Asserted
`
`Claims of the ’642 Patent:
`
`Exhibit
`1
`2
`9
`10
`11
`12
`
`Patent No. / Publication No.
`2005/0079096 (“Brown-Skrobot”)
`7,381,976 (“Coogan”)
`2003/0031586 (“Eckhardt”)
`5,843,374 (“Sizer”)
`7,217,936 (“Ressler 936”)
`2004/011038 (“Tribelsky”)
`
`Country of Origin Date Issued / Published
`USA
`Apr. 14, 2005
`USA
`June 3, 2008
`USA
`Feb. 13, 2003
`USA
`Dec. 1, 1998
`USA
`May 15, 2007
`WO
`Feb. 5, 2004
`
`
`In addition, Defendants hereby incorporate by reference the prior art patent references identified
`
`in IPR2022-00381 and Healthe, Inc.’s Invalidity Contentions served in Healthe, Inc. v. High
`
`Energy Ozone LLC, No. 6:20-cv-02233 (M.D. Fla.).
`
`The following prior art patent references anticipate and/or render obvious the Asserted
`
`Claims of the ’951 Patent:
`
`Exhibit
`1
`2
`9
`10
`11
`12
`
`Patent No. / Publication No.
`2005/0079096 (“Brown-Skrobot”)
`7,381,976 (“Coogan”)
`2003/0031586 (“Eckhardt”)
`5,843,374 (“Sizer”)
`7,217,936 (“Ressler 936”)
`2004/011038 (“Tribelsky”)
`
`Country of Origin Date Issued / Published
`USA
`Apr. 14, 2005
`USA
`June 3, 2008
`USA
`Feb. 13, 2003
`USA
`Dec. 1, 1998
`USA
`May 15, 2007
`WO
`Feb. 5, 2004
`
`
`In addition, Defendants hereby incorporate by reference the prior art patent references identified
`
`in any future post-grant proceedings before the U.S. Patent and Trademark Office concerning the
`
`10
`
`

`

`’951 Patent, including without limitation, inter partes review, post-grant review, and ex parte
`
`reexamination.
`
`B.
`
`Prior Art Publications
`
`The following prior art publications anticipate and/or render obvious the Asserted Claim
`
`Author
`Marcus Clauß
`et al.
`
`Publisher
`Acta
`Hydrochimica
`et
`hydrobiological
`
`Date of Publication
`December 2005
`
`Edward A.
`Sosnin et al.
`
`Proceedings of
`SPIE
`
`May 2004
`
`of the ’605 Patent:
`
`Title
`Exhibit
`13 Marcus Clauß et al.,
`Photoreactivation
`of
`Escherichia
`coli
`and
`Yersinia enterolytica after
`Irradiation with a 222 nm
`Excimer Lamp Compared
`to a 254 nm Low-pressure
`Mercury Lamp, 33 ACTA
`HYDROCHIM.
`HYDROBIOL. 579 (Dec.
`2005) (“Clauss”)
`Edward A. Sosnin, Larisa
`V. Lavrent’eva, Mikhail
`V. Erofeev, Yana V.
`Masterova, Eugenia N.
`Kuznetzova, Victor F.
`Tarasenko,
`New
`Bactericidal UV Light
`Sources: Excilamps, 5483
`PROC. SPIE 317 (2004)
`(“Sosnin 2004”)
`
`14
`
`
`In addition, Defendants hereby incorporate by reference the prior art publications identified in
`
`Healthe, Inc.’s Invalidity Contentions served in Healthe, Inc. v. High Energy Ozone LLC, No.
`
`6:20-cv-02233 (M.D. Fla.) and any future post-grant proceedings before the U.S. Patent and
`
`Trademark Office concerning the ’605 Patent, including without limitation, inter partes review,
`
`post-grant review, and ex parte reexamination.
`
`The following prior art publications anticipate and/or render obvious the Asserted Claims
`
`of the ’642 Patent:
`
`
`
`11
`
`

`

`14
`
`15
`
`Title
`Exhibit
`13 Marcus Clauß et al.,
`Photoreactivation
`of
`Escherichia
`coli
`and
`Yersinia enterolytica after
`Irradiation with a 222 nm
`Excimer Lamp Compared
`to a 254 nm Low-pressure
`Mercury Lamp, 33 ACTA
`HYDROCHIM.
`HYDROBIOL. 579 (Dec.
`2005) (“Clauss”)
`Edward A. Sosnin, Larisa
`V. Lavrent’eva, Mikhail
`V. Erofeev, Yana V.
`Masterova, Eugenia N.
`Kuznetzova, Victor F.
`Tarasenko,
`New
`Bactericidal UV Light
`Sources: Excilamps, 5483
`PROC. SPIE 317 (2004)
`(“Sosnin 2004”)
`Kenneth F. McDonald &
`Randy
`D.
`Curry,
`Comparison of Pulsed
`and CW Ultraviolet Light
`Sources
`to
`Inactivate
`Bacterial
`Spores
`on
`Surfaces,
`30
`IEEE
`TRANSACTIONS
`ON
`PLASMA SCIENCE 1986
`(2002) (“McDonald”)
`E. A. Sosnin, S. M.
`Avdeev,
`E.
`A.
`Kuznetzova, and L.V.
`A
`Lavrent’eva,
`Bactericidal
`Barrier-
`Discharge
`KrBr
`Excilamp,
`48
`INSTRUMENTS
`&
`EXPERIMENTAL
`TECHNIQUES 663 (2005)
`(“Sosnin 2005”)
`Ian A. Ramsay et al., The
`Synergistic Effect
`of
`Excimer
`and
`Low-
`
`16
`
`17
`
`Author
`Marcus Clauß
`et al.
`
`Publisher
`Acta
`Hydrochimica
`et
`hydrobiological
`
`Date of Publication
`December 2005
`
`Edward A.
`Sosnin et al.
`
`Proceedings of
`SPIE
`
`May 2004
`
`Kenneth F.
`McDonald et
`al.
`
`IEEE
`Transactions
`on Plasma
`Science
`
`October 2002
`
`Edward A.
`Sosnin et al.
`
`Instruments
`and
`Experimental
`Techniques
`
`September 1, 2005
`
`Ian A. Ramsay
`et al.
`
`Journal of Food
`Protection
`
`November 1, 2000
`
`
`
`12
`
`

`

`18
`
`19
`
`Pressure Mercury Lamps
`on
`the Disinfection of
`Flowing Water, 63 J.
`FOOD PROT. 1529 (2000)
`(“Ramsay”)
`Guidelines on Limits of
`Exposure to Ultraviolet
`Radiation of Wavelengths
`Between 180 nm and 400
`nm (Incoherent Optical
`Radiation), 87 HEALTH
`PHYSICS
`171
`(2004)
`(“ICNIRP”)
`Sosnin et al., The Effects
`of UV Irradiation and Gas
`Plasma Treatment on
`Living Mammalian Cells
`and
`Bacteria:
`A
`Comparative Approach,
`32 IEEE TRANSACTIONS
`ON PLASMA SCI. 1544
`(Aug. 2004) (“Sosnin &
`Stoffels”)
`
`August 2004
`
`N/A
`
`Int’l.
`Commission on
`Non-Ionizing
`Radiation
`Protection
`
`Edward A.
`Sosnin et al.
`
`IEEE
`
`August 2004
`
`
`In addition, Defendants hereby incorporate by reference the prior art publications identified in
`
`IPR2022-00381 and Healthe, Inc.’s Invalidity Contentions served in Healthe, Inc. v. High Energy
`
`Ozone LLC, No. 6:20-cv-02233 (M.D. Fla.).
`
` The following prior art publications anticipate and/or render obvious the Asserted Claims
`
`Author
`Marcus Clauß
`et al.
`
`Publisher
`Acta
`Hydrochimica
`et
`hydrobiological
`
`Date of Publication
`December 2005
`
`of the ’951 Patent:
`
`Title
`Exhibit
`13 Marcus Clauß et al.,
`Photoreactivation
`of
`Escherichia
`coli
`and
`Yersinia enterolytica after
`Irradiation with a 222 nm
`Excimer Lamp Compared
`to a 254 nm Low-pressure
`Mercury Lamp, 33 ACTA
`HYDROCHIM.
`HYDROBIOL. 579 (Dec.
`2005) (“Clauss”)
`
`
`
`13
`
`

`

`14
`
`15
`
`16
`
`17
`
`18
`
`Edward A. Sosnin, Larisa
`V. Lavrent’eva, Mikhail
`V. Erofeev, Yana V.
`Masterova, Eugenia N.
`Kuznetzova, Victor F.
`Tarasenko,
`New
`Bactericidal UV Light
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`PROC. SPIE 317 (2004)
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`E. A. Sosnin, S. M.
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`(“Sosnin 2005”)
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`Synergistic Effect
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`and
`Low-
`Pressure Mercury Lamps
`on
`the Disinfection of
`Flowing Water, 63 J.
`FOOD PROT. 1529 (2000)
`(“Ramsay”)
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`
`Edward A.
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`May 2004
`
`Kenneth F.
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`
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`
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`
`
`
`14
`
`

`

`E. A. Sosnin et
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`
`In addition, Defendants hereby incorporate by reference the prior art publications identified in any
`
`future post-grant proceedings before the U.S. Patent and Trademark Office concerning the ’951
`
`Patent, including without limitation, inter partes review, post-grant review, and ex parte
`
`reexamination.
`
`C.
`
`Other Prior Art References
`
`All documents cited on the face of the ’605 Patent, the ’642 Patent, the ’951 Patent, and
`
`related patents, patent publications, file histories and applications, and all other documents cited
`
`herein and otherwise produced pursuant to Paragraph 3-4 anticipate and/or render obvious the
`
`Asserted Claims of the ’605 Patent, the ’642 Patent, and the ’951 Patent.
`
`III.
`
`PARAGRAPH 3-3(A)(2)—INVALIDITY GROUNDS UNDER §§ 102 AND 103
`
`A.
`
`ANTICIPATION AND OBVIOUSNESS
`
`Pursuant to Paragraph 3-3(a)(2), prior art references anticipating and/or rendering obvious
`
`one or more of the Asserted Claims alone and/or when viewed in combination with other prior art
`
`references are disclosed herein.
`
`To the extent that any prior art reference, activity, availability, system, or product identified
`
`by Defendants as anticipating is found not to expressly disclose any limitation(s) of the Asserted
`
`Claims, the prior art inherently discloses such limitations as would be understood to a person of
`
`
`
`15
`
`

`

`ordinary skill in the art before the effective filing date of the purported invention of the ’605 Patent,
`
`the ’642 Patent, and the ’951 Patent.
`
`Further, Defendants reserve the right to identify other prior art that, when combined with
`
`identified prior art, would render one or more of the Asserted Claims obvious. The suggested
`
`obviousness combinations are in addition to Defendants’ anticipation contentions and are not to
`
`be construed to suggest that any prior art reference, activity, availability, system, or product
`
`included in the combinations is not anticipatory on its own.
`
`Defendants further reserve the right to rely upon combinations disclosed within the
`
`prosecution history of the references cited herein. These obviousness combinations reflect
`
`Defendants’ present understanding of the potential scope of the claims that Plaintiffs appear to be
`
`advocating and should not be construed as Defendants’ acquiescence to Plaintiffs’ interpretation
`
`of the Asserted Claims.
`
`To be clear, the disclosures below do not necessarily indicate all instances where claim
`
`elements are discussed based on Plaintiffs’ apparent interpretation of the claims as evidenced by
`
`Plaintiffs’ Infringement Contentions. However, the omission or addition of indications based on
`
`these apparent interpretations is not to be construed as an admission as to the proper construction
`
`or scope of the claims. Defendants reserve the right to challenge Plaintiffs’ implicit or explicit
`
`construction of all claim terms.
`
`Under the standard for obviousness, claims must be found unpatentable where “the
`
`differences between the claimed invention and the prior art are such that the claimed invention as
`
`a whole would have been obvious before the effective filing date of the claimed invention to a
`
`person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103.
`
`
`
`16
`
`

`

`The U.S. Supreme Court clarified the standard for what types of inventions are patentable
`
`in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In particular, the Supreme Court emphasized
`
`that inventions arising from ordinary innovation, ordinary skill, or common sense should not be
`
`patentable. See id. at 401, 419–421, 427. In that regard, a patent claim may be obvious if the
`
`combination of elements was obvious to try or there existed at the time of the invention a known
`
`problem for which there was an obvious solution encompassed by the patent’s claims. In addition,
`
`when a work is available in one field of endeavor, design incentives and other market forces can
`
`prompt variations of it, either in the same field or a different one. If a person of ordinary skill can
`
`implement a predictable variation, Section 103 likely bars its patentability.
`
`The Supreme Court noted that the obviousness analysis must also allow for consideration
`
`of “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id.
`
`at 418. The Supreme Court mandated that the obviousness analysis allow for common sense and
`
`ordinary creativity without necessarily requiring “precise teachings directed to the specific subject
`
`matter of the challenged claim[s].” Id. According to the Supreme Court, “[t]he combination of
`
`familiar elements according to known methods is likely to be obvious when it does no more than
`
`yield predictable results.” Id. at 416. The Supreme Court also pointed out that “[a]lthough
`
`common sense directs one to look with care at a patent application that claims as innovation the
`
`combination of two known devices according to their established functions, it can be important to
`
`identify a reason that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed new invention does.” Id. at 418.
`
`To the extent that applicable law requires evidence of motivation to combine, motivation
`
`exists to combine one or more of the references or other items, actions, or availabilities of prior art
`
`included in these Invalidity Contentions with each other. Generally, motivation to combine any
`
`
`
`17
`
`

`

`of this prior art with other prior art disclosed herein exists within the references themselves, as
`
`well as within the knowledge of those of ordinary skill in the art at the relevant time. A person of
`
`ordinary skill would have been motivated to combine the above prior art based on their knowledge,
`
`the nature of the problem to be solved and the teachings of the prior art.
`
`Moreover, the Court recognizes that market pressures will motivate a person of ordinary
`
`skill to survey known art for solutions to problems. Id. at 1732 (“When there is a design need or
`
`market pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a person of ordinary skill in the art has good reason to pursue the known options within
`
`his or her technical grasp.”). When a person of ordinary skill uses an identified, predictable
`
`solution to solve a problem, “it is likely the product not of innovation but of ordinary skill and
`
`common sense.” Id.
`
`In addition, when a work is available in one field of endeavor, design incentives and other
`
`market forces can prompt variations of it, either in the same field or a different one. Id. at 1740.
`
`If a person of ordinary skill can implement a predictable variation, 35 U.S.C. § 103 bars its
`
`patentability. Id. The rationale to combine or modify prior art references is significantly stronger
`
`when references seek to solve similar problems, come from the same field, and correspond well.
`
`In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed. Cir. 2001).
`
`Motivations to combine, as well as the general state of the art, may be found in a variety
`
`of places including the references defined above, and the specification of the Asserted Patent. For
`
`example, each piece of prior art relates to m