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IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MISSOURI
`
`AMSTED RAIL COMPANY, INC.,
`
`Plaintiff,
`
`v.
`
`HUM INDUSTRIAL TECHNOLOGY,
`INC., and BRENT WILSON,
`
`Defendants.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Case No. 4:22-cv-00445-AGF
`
`JURY TRIAL DEMANDED
`
`STIPULATION REGARDING INVALIDITY CONTENTIONS
`
`Defendants Hum Industrial Technology, Inc. (hereinafter “Hum”) and Dr. Brent Wilson
`
`(hereinafter “Dr. Wilson”) (collectively “Defendants”) submit this stipulation of invalidity
`
`contentions.
`
`Hum is challenging certain claims of U.S. Patent No. 9,365,223 (the “’223 Patent”) in
`
`Inter Partes Review petition IPR2023-00538. The Petition asserts the following grounds of
`
`invalidity:
`
`(1)
`
`Claims 2–10, 18, 20, 21, 23, and 25–32 of the ’223 Patent are unpatentable under
`
`35 U.S.C. § 103(a) over U.S. Patent Publication No. 2007/0152107 A1 to LeFebvre et al.
`
`(“LeFebvre”).
`
`(2)
`
`Claims 13–17, 22, and 24 of the ’223 Patent are unpatentable under 35 U.S.C.
`
`§ 103(a) over LeFebvre in view of U.S. Patent Publication No. 2007/0208841 A1 to
`
`Barone et al. (“Barone”).
`
`(3)
`
`Claims 1 and 24 of the ’223 Patent are unpatentable under 35 U.S.C. § 103(a)
`
`over LeFebvre in view of U.S. Patent No. 5,633,628 to Denny et al. (“Denny”) and U.S.
`
`1
`
`EX1017
`Petitioner Hum (223)
`
`

`

`Patent No. 4,282,754 to Provasnik (“Provasnik”).
`
`(4)
`
`Claims 2, 3, 5, 7, 13–18, 20–22, 26–28, and 32 of the ’223 Patent are unpatentable
`
`under 35 U.S.C. § 103(a) over U.S. Patent Publication No. 2011/0282540 A1 to Armitage
`
`et al. (“Armitage”).
`
`(5)
`
`Claims 4, 6, 8, 9, 10, 23, 25, and 29–31 of the ’223 Patent are unpatentable under
`
`35 U.S.C. § 103(a) over Armitage in view of LeFebvre.
`
`(6)
`
`Claims 1 and 24 of the ’223 Patent are unpatentable under 35 U.S.C. § 103(a)
`
`over Armitage in view of LeFebvre, Denny, and Provasnik.
`
`Hum is challenging certain claims of U.S. Patent No. 9,981,673 (the “’673 Patent”) in
`
`Inter Partes Review petition IPR2023-00539. The Petition asserts the following grounds of
`
`invalidity:
`
`(1)
`
`Claims 1–7, 10–18, and 20–22 of the ’673 Patent are unpatentable under 35
`
`U.S.C. § 103(a) over LeFebvre.
`
`(2)
`
`Claims 8 and 9 of the ’673 Patent are unpatentable under 35 U.S.C. § 103(a) over
`
`LeFebvre in view of Barone.
`
`(3)
`
`Claims 1, 2, 4, 6–11, and 13 of the ’673 Patent are unpatentable under 35 U.S.C.
`
`§ 103(a) over Armitage.
`
`(4)
`
`Claims 3, 5, 12–18, and 20–22 of the ’673 Patent are unpatentable under 35
`
`U.S.C. § 103(a) over Armitage in view of LeFebvre.
`
`Hum is challenging certain claims of U.S. Patent No. 10,137,915 (the “915 Patent”) in
`
`Inter Partes Review petition IPR2023-00540. The Petition asserts the following grounds of
`
`invalidity:
`
`
`
`2
`
`

`

`(1)
`
`Claims 1, 22, 24-25, 27-30, 36, and 37 of the ’915 Patent are unpatentable under
`
`35 U.S.C. § 103(a) in view of Armitage and Barone.
`
`(2)
`
`Claim 21 of the ’915 Patent is unpatentable under 35 U.S.C. § 103(a) in view of
`
`Armitage, Barone, and LeFebvre.
`
`(3)
`
`Claims 23 and 26 of the ’915 Patent are unpatentable under 35 U.S.C. § 103(a) in
`
`view of Armitage, Barone, and U.S. Patent No. 7,706,213 to Winfree et al. (“Winfree”).
`
`(4)
`
`Claims 1, 21-22, 25, 27-30, 36, and 37 of the ’915 Patent are unpatentable under
`
`35 U.S.C. § 103(a) in view of LeFebvre and Barone.
`
`(5)
`
`Claims 24 and 37 of the ’915 Patent are unpatentable under 35 U.S.C. § 103(a)
`
`over LeFebvre in view of Barone and Armitage.
`
`(6)
`
`Claims 23 and 26 of the ’915 Patent are unpatentable under 35 U.S.C. § 103(a)
`
`over LeFebvre in view of Barone and Winfree.
`
`In each Petition identified above, Hum identified Defendant Brent Wilson as a real party
`
`in interest subject to 37 C.F.R. § 42.8(b)(1).
`
`Defendants hereby stipulate that if the Patent Trial and Appeal Board institutes IPR on
`
`Petition No. IPR2023-00538, Petition No. IPR2023-00539, or Petition No. IPR2023-00540, then
`
`Defendants will not pursue in this case the specific grounds identified above in connection with
`
`the referenced patent(s) and claim(s) as originally issued on the instituted inter parties review
`
`petition, or on any other ground for a given patent for which the Board institutes, that was raised
`
`or could have been reasonably raised in an IPR.
`
`This stipulation is not intended, and should not be construed, to limit Defendants’ ability
`
`to assert invalidity of the asserted claims of the ’223 Patent, ’673 Patent, or ’915 Patent in this
`
`case on any other ground, regardless of whether inter parties review is instituted. Likewise, this
`
`
`
`3
`
`

`

`stipulation is not intended, and should not be construed, to limit Defendants’ ability to use the
`
`asserted prior art references for any purpose other than invalidity under §§ 102 or 103, regardless
`
`of whether inter parties review is instituted.
`
`
`
`
`
`Dated: January 30, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully Submitted
`
`
` /s/ Eric J. Rakestraw
` Michael R. Annis, 47374MO
`Eric J. Rakestraw, 63182MO
`Paul L. Smelcer, 69351MO
`HUSCH BLACKWELL LLP
`190 Carondelet Plaza, Suite 600
`St. Louis, Missouri 63105
`314-480-1500 Telephone
`mike.annis@huschblackwell.com
`eric.rakestraw@huschblackwell.com
`paul.smelcer@huschblackwell.com
`HB-Hum@huschblackwell.com
`
`Attorneys for Defendant Hum Industrial
`Technology, Inc.
`
`
`
`
`/s/ Jason C. Schmidt
`Jason C. Schmidt, 59615MO
`McPherson Moore, 26056MO
`SANDBERG PHOENIX
` & von GONTARD P.C.
`120 S. Central Avenue, Suite 1600
`Clayton, MO 63105
`314-725-9100 Telephone
`jschmidt@sandbergphoenix.com
`mmoore@sandbergphoenix.com
`jselinger@sandbergphoenix.com
`
`Attorneys for Defendant Brent Wilson
`
`4
`
`

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