Free Reply to Response to Motion - District Court of Colorado - Colorado

Case 1:02-cv-02394-RPM

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No.: 02-cv-02394-RPM SCOTT PIVONKA and JOHN TOTTLEBEN, Plaintiffs, vs. CENTRAL GARDEN & PET COMPANY, NYLABONE CORPORATION and TFH PUBLICATIONS, INC., Defendants.

TFH'S REPLY TO PLAINTIFFS' RESPONSE TO TFH'S SUMMARY JUDGMENT RECONSIDERATION SUBMISSION

INTRODUCTION 1. Plaintiffs have completely ignored the impact of the PTO's final decision and the meat of

TFH's arguments and have instead regurgitated arguments previously rejected by the PTO in what is akin to an appellate brief to the Federal Circuit. Despite the repeated opportunity to do so, Plaintiffs have failed to present any evidence to rebut the PTO's unanimous finding that Plaintiffs' `797 patent is merely an obvious combination of known prior art leading to its cancellation. 2. Further, plaintiffs summarily dismiss TFH's arguments regarding the preclusive effect of the

PTO's decision on Plaintiffs' `638 patent and offer nothing to rebut the compelling facts presented by TFH that the `638 and `797 patents are indistinct. Indeed, since the PTO's initial finding in its August 30, 2007 decision that the `797 patent should be cancelled, Plaintiffs have presented nothing to the PTO and now this Court other than the argument of counsel. Just as the PTO rejected the

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naked arguments of counsel, this Court should not accept such arguments as a substitute for facts. Such arguments are insufficient to survive a motion for summary judgment, especially in light of the PTO's final determination. ARGUMENT I. Plaintiffs Have Failed to Present Any Evidence to Refute Invalidity; Therefore, the Court Should Grant Summary Judgment in Favor of TFH. A. The PTO has Declared the `797 Patent Invalid 3. Plaintiffs have utterly failed to present any evidence to refute the PTO's finding that the `797

patent is recited unpatentable subject matter and remains cancelled. "Once a challenger has presented a prima facie case of invalidity, the patentee has the burden of going forward with rebuttal evidence." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,1360 (Fed. Cir. 2007). "[E]ven though a patentee never must submit evidence to support a conclusion by a judge or jury that a patent remains valid, once a challenger introduces evidence that might lead to a conclusion of invalidity, what is called a prima facie case, the patentee would be well advised to introduce evidence sufficient to rebut that of the challenger." Id. (internal quotations omitted). 4. The PTO's August 30, 2007 Show Cause Order directed Plaintiffs to rebut the PTO's

determination of a prima facie case of obviousness. Plaintiffs elected not to do so, as the PTO pointed out in its March 11, 2008 final decision. Burnside Decl., Exs. A and C, p.4. Here, in response to TFH's motion, Plaintiffs were offered a second opportunity to present rebuttal evidence and, even in the face of the PTO's admonition, again elected not to do so. Despite ample opportunity in two different forums, Plaintiffs have presented neither a shred of evidence nor their own expert to refute the finding of Dr. Sam Shina that the Plaintiffs' claimed invention is obvious to one skilled

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in the art. Therefore, Dr. Shina's testimony, as relied upon by the PTO remains undisputed.1 Instead in both forums, Plaintiffs have relied solely upon argument of counsel. It is elementary that "arguments of counsel cannot take the place of factually supported rebuttal evidence." See In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Accordingly, the evidence of invalidity remains undisputed requiring summary judgment to be granted in favor of TFH. B. The Undisputed Evidence Shows that the PTO's Final Decision is Equally Applicable to the `638 Patent

5. that:

TFH has presented a prima facie showing that the `638 patent is also invalid by establishing

(1) the PTO found that all of the claims of the `797 patent were unpatentable over the prior art and properly revoked, Burnside Declaration dated March 27, 2008 ("Burnside Decl.), Ex. C; (2) during the prosecution of the `797 patent, the PTO conducted a claims analysis and found that the `638 patent was patently indistinct from the `797 patent, Id., Ex. G ; (3) Plaintiffs consented to the PTO's finding that the claims of both patents were patentably indistinct and filed a terminal disclaimer, Id., Ex. H; and (4) Plaintiffs own deposition testimony demonstrates that as goes the `797 patent so goes the `638 patent, Id., Ex. J. (5) This Court's recent summary judgment decision observed that the Plaintiffs' now revoked `797 patent is a continuation application tied to the `638 patent that includes 9 claims directed to a collapsible pet housing structure and a method for creating a collapsible pet housing structure.

Plaintiffs argue that Dr. Shina is not an expert in the case before this Court; however, Dr. Shina's unrebutted testimony before the PTO is now part of the official prosecution record for the `797 patent, which prosecution record is necessarily before this Court. -3-

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Burnside Decl., Exs. I and B at p.1. Plaintiffs have not taken issue with this finding. 6. Plaintiffs have failed to present even a scintilla of evidence to refute the invalidity of the `638

patent. Instead, Plaintiffs' summarily dismiss TFH's well grounded argument by arguing that TFH did not present a claims analysis between the `797 and `638 patents. However, what Plaintiffs have completely ignored is that a claims analysis was already conducted by the PTO during the prosecution of the `797 patent. As a result of that analysis, the PTO concluded that the `638 patent was patently indistinct from the `797 patent. Burnside Decl., Ex. G. Plaintiffs did not dispute this conclusion but instead consented to the PTO's finding and filed a terminal disclaimer. Id., Ex. H. More recently, Plaintiffs deposition testimony reaffirmed the PTO's conclusion. Id., Ex. J. 7. Therefore, any claim analysis by TFH would be unnecessary and repetitive. Rather, it is

Plaintiffs that failed to present a claim analysis to refute the aforesaid undisputed evidence. If Plaintiffs believe that a distinction between the two subject patents exists, it is they who should present a claim analysis in the face of the overwhelming evidence to the contrary. 8. Plaintiffs' silence is telling in the sense that, with respect to the invention recited in both the

`797 and `638 patent claims, the only feature of all such claims which Plaintiffs argue as being distinct from the prior art was the use of wall panels that move from a first position where the wall panels are at an acute angle to one another to a second position where the wall panels are at an angle of greater than 180 degrees relative to one another. See Plaintiff's Opp., p.5, ¶7. However, the PTO properly identified this as nothing more than the use of a known "barn-like" shape in the known collapsible devices of the prior art, and as such the combination is completely obvious in the combined teachings of the prior art. See Burnside Decl., Ex. C. Accordingly logic dictates that the claims of the `638 patent must be found invalid. -4-

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C. 9.

Plaintiffs Have Misinterpreted and Improperly Construed the Law

Furthermore, Plaintiffs' reliance on an isolated statement from Ortho-McNeil

Pharmaceutical, Inc. v. Mylan Labratories, Inc., 520 F.2d 1358 (D.N.J. 2008) is misplaced and should be rejected. In Ortho-McNeil, the Court stressed the complexity of the subject matter and the unlimited number of options finding that "the challenges of [the] inventive process would have prevented one of ordinary skill in [the] art from traversing the multiple obstacles to easily produce the invention in light of the evidence available at the time of the invention." Id. at 1363. That situation stands in stark contrast to the situation here involving the combination of basic mechanical principles. See Burnside Decl., Ex. C, p.4. 10. Further, in Ortho-McNeil significant independent evidence of nonobviousness existed, none

of which is present here. Id. at 1363-64. The facts of Ortho-McNeil are inapposite and therefore do not provide guidance with regard to the application of the TSM test to the present facts. 11. However, Ortho-McNeil does reiterate the underlying principle that was previously cited by

TFH and relied upon by the PTO from KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007), namely that courts and patent examiners should use a flexible approach to the TSM test. KSR International Co., 127 S.Ct. at 1739-1740; Ortho-McNeil Pharmaceuticals, Inc., 520 F.3d at 1363. "As KSR requires, those teachings, suggestions or motivations need not always be written references but may be found within the knowledge and creativity of ordinarily skilled artisans." Ortho-McNeil Pharmaceutical, Inc., 520 F.3d at 1363. Here, as pointed out by Dr. Sam Shina and the PTO, they are found in a combination of the prior art and within the knowledge and creativity of ordinarily skilled artisans. Therefore, the claims of Plaintiffs' patents are obvious.

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II.

In the Alternative the Court Should Stay the Matter Pending Plaintiffs' Appeal of the PTO Decision. Although the Federal Circuit reviews the PTO's ultimate legal conclusion de novo, it reviews

12.

the underlying findings of fact under the substantial evidence standard; i.e. whether a reasonable person might find that the evidentiary record supports the PTO's conclusion. In re Majestic Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). Since the PTO's decision is supported by the uncontradicted testimony of Dr. Sam Shina, it is highly unlikely that it will be overturned on appeal. 13. However, if the Court is not inclined to grant summary judgment in favor of TFH on the

remaining claims, despite the overwhelming evidence in support thereof, the Court should grant a stay while Plaintiffs appeal the PTO's decision. In the interest of judicial economy and preservation of resources, Courts seek to avoid simultaneous proceedings on the same subject matter and piecemeal litigation. To do otherwise here would result in a jury considering evidence pertaining to a now non-existent `797 patent and/or an indistinct `638 patent while plaintiffs simultaneously seek, by way of appeal, the restoration of the patent the jury is considering. Piecemeal and

proceedings and inconsistent results would be inevitable. Therefore, as TFH has argued and to which Plaintiffs have consented by their silence, if this Court is not inclined to grant summary judgment in favor of TFH on all remaining claims, the Court should stay the matter pending Plaintiffs' appeal of the PTO's decision. CONCLUSION 14. Plaintiffs' response to TFH's submission does nothing to alter the conclusion that this case

screams out for summary judgment in light of the PTO's final decision. Based on the undisputed facts and compelling legal arguments set forth in all of its summary judgment submissions, TFH is

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entitled to summary judgement as a matter of law. Dated: May 8, 2008 Respectfully submitted CENTRAL GARDEN & PET COMPANY, NYLABONE CORPORATION [SIC] TFH PUBLICATIONS, INC. By Their Attorneys, Daniel E. Evans, Esq. Godin & Baity, LLC 1050 Seventeenth Str., Suite 1610 Denver, CO 80265 Telephone: (303) 572-3100 and By:____/s/____________________________ Russell S. Burnside, Esq. Greenberg Dauber Epstein & Tucker A Professional Corporation One Gateway Center Suite 600 Newark, New Jersey 07102-5311 Telephone: (973) 643-3700

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