Free Claim Construction Opening Brief - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE COLGATE-PALMOLIVE COMPANY, Plaintiff, v. RANIR, L.L.C., Defendant. ) ) ) ) ) ) ) ) )

Civil Action No. 06-417-GMS

DEFENDANT'S OPENING CLAIM CONSTRUCTION BRIEF ASHBY & GEDDES Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) Tiffany Geyer Lydon (I.D. #3950) 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 302-654-1888 [email protected] [email protected] [email protected] Attorneys for Defendant Of Counsel: Charles E. Burpee James Moskal Chad E. Kleinheksel WARNER NORCROSS & JUDD LLP 900 Fifth Third Center 111 Lyon Street, N.W. Grand Rapids, Michigan 49503 (616) 752-2000 [email protected] [email protected] [email protected] Dated: May 8, 2007

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TABLE OF CONTENTS Table of Citations ........................................................................................................................... ii Introduction .....................................................................................................................................1 Principles of Utility Patent Claim Construction ............................................................................. 1 Construction of Claim 27 of the `591 Patent ..................................................................................3 Principles of Design Patent Claim Construction ............................................................................6 Claim Construction for the Design Patents......................................................................................8 Conclusion ....................................................................................................................................17

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TABLE OF CITATIONS Cases: Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997) ...............................................5 Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004) .....................9 Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996) .............................................10 Hosley Int'l Trading Corp. v. Kmart Corp., 237 F. Supp. 2d 907 (N.D. Ill. 2002)...................... 10 In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)................................................................................... 9 Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001) .....................5 Lee v. Dayton-Hudson Corp., 833 F.2d 1186 (Fed. Cir. 1988) ....................................................11 Liquid Dynamics Corp. v. Vaughn Corp., 355 F.3d 1361 (Fed. Cir. 2004) ...................................4 Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) .........................................6 Minka Lighting, Inc. v. Pan Air Electric Co., 93 Fed. Appx. 214; 2004 U.S. App. Lexis 770, (Fed. Cir. 2004) .............................................................................................................................10 Oddzon Prods., Inc. v. Just Toys Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) ...................9, 10, 11 PHG Technologies, L.L.C. v. St. Johns Cos., Inc., 469 F.3d 1361 (Fed. Cir. 2006) ....................11 Phillips v. AWH Corp., 415 F. 3d 1303 (Fed. Cir. 2005) ...............................................................5 Precor Inc. v. Life Fitness, 13 Fed. Appx. 913; 2001 U.S. App. Lexis 15497 (Fed. Cir. 2001) ..10 Puritan-Bennett Corp. v. Penox Technologies, Inc., 297 F. Supp. 2d 1110 (S.D. Ind. 2003) ......10 Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ..........................5 Spotless Enterprises, Inc. v. Spotless Plastics Pty. Ltd., 294 F. Supp. 2d 322 (E.D. N.Y. 2003) .....................................................................................................................10, 11 Stryker Corp. v. Davol Inc., 234 F.3d 1252 (Fed. Cir. 2000) ..........................................................6 Sun Race Roots Enter. Co. v. SRAM Corp., 336 F. 3d 1298 (Fed. Cir. 2003) ................................6 ii

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The Massachusetts Institute of Technology & Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006) ......................................................................................5 Transmatic, Inc. v. Gulton Industries, Inc., 53 F.2d 1270 (Fed. Cir. 1995) ...................................6 STATUTE: 35 U.S.C. § 112 ...............................................................................................................................8

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Defendant Ranir, L.L.C. ("Ranir") submits this opening brief to address issues of patent claim construction. INTRODUCTION This is a patent case involving toothbrushes. Plaintiff Colgate-Palmolive

Company ("Colgate") asserts against Ranir one utility patent, U.S. Patent 7,047,591 ("the `591 patent"), and seven design patents, U.S. Patent D513,882; U.S. Patent D514,812; U.S. Patent D516,818; U.S. Patent D516,819; U.S. Patent D517,812; U.S. Patent D517,813 and U.S. Patent D520,753 (collectively, the "design patents"). The asserted patents are on file as Exhibits A-H to Colgate's amended complaint. The parties in their Joint Disputed Claim Terms Chart (D.I. 34, the "Chart") have identified disputed terms in the claims of the utility patent, and have set forth proposed constructions for the disputed terms, as well as proposed constructions for the claims of the design patents. After review of Colgate's proposed constructions for the `591 utility patent, Ranir agrees to accept Colgate's proffered constructions for all of the claim terms in the Chart, except for the terms in claim 27, which are discussed below. All of Colgate's proposed

constructions for the design patents, however, are improper and should be rejected in favor of Ranir's constructions, also addressed below. PRINCIPLES OF UTILITY PATENT CLAIM CONSTRUCTION The starting point for the claim construction of a utility patent is the language of the claims. Liquid Dynamics Corp. v. Vaughn Corp., 355 F.3d 1361, 1367 (Fed. Cir. 2004). When construing claim terms, "the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to `particularly point[] out and distinctly claim[] the subject matter which the patentee regards as 1

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his invention.'" Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). "[T]he claims define the scope of the right to exclude; the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). "[T]he language of the claim frames and ultimately resolves all issues of claim interpretation." Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). Claim terms "are generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005) (en banc). "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e. as of the effective filing date of the patent application." Id. at 1313. The terms should be interpreted "in the context of the entire patent, including the specification." Id. Where, however, the specification contains a number of embodiments, it is erroneous to "confin[e] the claims to those embodiments." Id. at 1323. "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. In addition, where particular terms are not defined explicitly or implicitly in the specification, "it is appropriate for us to look to dictionary definitions of the terms." The Massachusetts Institute of Technology & Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1351 (Fed. Cir. 2006) (citing Phillips). In addition to the claim language itself, the Court may also look at other "intrinsic" evidence, consisting of the specification and prosecution history, if in evidence. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). "In construing a 2

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claim, the claim terms are given their ordinary and accustomed meaning unless examination of the specification, prosecution history, and other claims indicates that the inventor intended otherwise." Stryker Corp. v. Davol Inc., 234 F.3d 1252, 1258 (Fed. Cir. 2000) (citing

Transmatic, Inc. v. Gulton Industries, Inc., 53 F.2d 1270, 1278 (Fed. Cir. 1995)). Extrinsic evidence should be considered only when an ambiguity cannot be resolved by consulting the intrinsic evidence. Sun Race Roots Enter. Co. v. SRAM Corp., 336 F. 3d 1298, 1307 (Fed. Cir. 2003). CONSTRUCTION OF CLAIM 27 OF THE `591 PATENT Although Ranir is willing to accept the claim interpretations set forth by Colgate in the Chart for the bulk of the disputed terms, Ranir does not accept Colgate's proposed definition of claim 27. Claim 27 of the '591 patent states as follows (the underlined terms are those where the parties' proposed claim interpretations differ): 27. An oral care brush comprising:

a base with a gripping region and an oral engaging region, the gripping region including a rear segment and a front segment inclined relative to the rear segment wherein the front segment is inclined relative to the rear segment at about 20-40 degrees thereby defining the inclined portion; a resilient grip surface being disposed on the rear segment; and a grip body extending through an aperture in the base and spaced from the grip surface, the grip body forming opposite finger gripping surfaces on the inclined portion of the base. The basic claim construction issues for claim 27 are (1) the portions of the brush that comprise the "front segment" and the "rear segment," and (2) the measurement of the angle between those two segments. In particular, Colgate's proposed construction, Chart at 3, is empty and merely paraphrases the claim language. It does not even attempt to define what the "rear segment" and the "front segment" consist of, and it does not attempt to define how the angle of 3

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incline between the two segments is calculated. In contrast, Ranir's proposed construction, Chart at 3-4, does define the rear and front segments in light of the specification, and it sets forth the only logical way to define the angle, given the absence of any specification disclosure regarding angle calculation. Accordingly, Ranir's proposed construction should be adopted. Regarding the front and rear segments, the '591 patent states that "[a] rear segment 115 forms a portion that generally fits comfortably within the palm of the user. A front segment 111 forms a portion that generally fits comfortably between the user's thumb and index finger." Col. 2, lines 53-56. Fig. 2 of the '591 patent (left) indicates the points of demarcation for each segment. These points provide the only intrinsic evidence of the identification of the front and rear segments, so their locations are critical. These points correspond to specific physical features of the brush. In particular, the rear segment (115) is the portion of the brush from the tip of the base to the center of the top-most finger opening (415) in the grip surface. The front segment (111) is the portion of the brush from the lowermost edge of the base material surrounding the grip body to the top-most portion of the grip surface. Ranir's proposed constructions of "front segment" and "rear segment" ­ which are based on these physical features ­ are thus correct because there is simply no support in the `591 patent for any alternative construction. Regarding the angle of incline in claim 27, in the context of measuring an angle in degrees, an angle is defined as "a measure ...of the amount of turning necessary to bring one line or plane into coincidence or parallel with another." MerriamWebster's Collegiate Dictionary, p. 44 (10th ed. 2001). Therefore, in order to measure the angle 4

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of a front segment relative to a rear segment, it is necessary to identify lines that extend through each of these segments. In this case, however, the '591 specification is completely lacking of a written description of how to identify the necessary lines. The specification merely states that "front segment 111 is inclined relative to rear segment 115 to define an inclined portion positioned for comfortable gripping and to facilitate a desired offset positioning of the head relative to the palm gripping region 115. The angle of the incline is preferably 23 degrees, but may range approximately between 5-40 degrees." Col. 2, lines 58-64. This statement, of course, does not describe how the lines are identified or how the angle is calculated. Making matters worse, the drawings also do not show the angle or provide any illustration of how it might be defined or measured. Although the validity issue with respect to claim 27 is not yet before the Court, these deficiencies in the specification render claim 27 and its dependent claims invalid for lack of written description under 35 U.S.C. § 112. And Colgate's proposed claim construction highlights the invalidity, since it simply repeats claim language and conspicuously ignores the real issue of angle calculation. Ranir's proposed definition ­ albeit a "best guess" in view of the invalidity of claim 27 ­ should be adopted, because it is the only one that makes sense. The surfaces of the front and rear segments are curved, so they cannot be used to reliably define lines extending through the front and rear segments. Therefore, the angle of inclination of the front segment to the rear segment can only plausibly be defined by the angle of the intersection of the midpoints of the front and rear segments, with each midpoint being defined by the midpoints of the thickness of the brush at each end of the respective segments, as illustrated below.

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This method for angle calculation is incorporated into Ranir's proposed claim construction Chart at 3-4. Any other method for choosing these lines for angle calculation requires arbitrarily picking a point on the curved surface of the handle within the front or rear segment, and using a line tangent to that point to measure the angle, which is nonsensical. For these reasons, the Court should adopt Ranir's proposed construction of claim 27 and reject Colgate's meaningless interpretation. PRINCIPLES OF DESIGN PATENT CLAIM CONSTRUCTION The protection afforded the holder of a design patent is very narrow, for two reasons. First, "[d]esign patents have almost no scope." In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988). The claim of a design patent is strictly "limited to what is shown in the application drawings." Id. Second, a design patent only protects the ornamental, as opposed to the

functional, features of the design shown in the patent. As a matter of claim construction for a design patent: Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1383 (Fed. Cir. 2004) (quoting Oddzon Prods., Inc. v. Just Toys Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)). This 6

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construction requires the Court to set forth, in narrative form, the non-functional features of the design. The Court should "translate visual descriptions into words" that "evoke the visual image of the design." Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 & n. 2 (Fed. Cir. 1996).1 Importantly, it is improper for the Court in claim construction of a design patent simply to conclude that the patent covers the design as shown in the drawings, such that the factfinder later is asked merely to compare the accused product to the drawings. This is the approach that Colgate advocates in the Chart for each of the design patents, and it is wrong. In Oddzon, supra, the patentee, like Colgate here, argued that "a simple comparison of the accused products with the figures in the design patent is all that is required in an infringement inquiry." 122 F.3d at 1404. In other words, the patentee argued that "the scope of a design patent is effectively determined by deciding infringement, rather than by construing the claim." Id. The Federal Circuit squarely rejected this approach. constructions of the design patents must be rejected. In addition, "the process of distinguishing the ornamental features is merely a form of claim construction and is distinct from the functionality analysis of invalidity." Spotless, 297 F. Supp. 2d at 344. In other words, whereas the functionality test for invalidity of a design patent may be somewhat "stringent," the feature-by-feature analysis for claim construction is not. Although the Federal Circuit has not issued many published decisions having detailed examples of design patent claim construction, it has issued several unpublished decisions. See, e.g., Minka Lighting, Inc. v. Pan Air Electric Co., 93 Fed. Appx. 214; 2004 U.S. App. Lexis 770, **5 (Fed. Cir. 2004) (noting that "an extensive verbal claim construction may be helpful particularly if the drawings contain features that are not part of the patented design, e.g., if the drawings contain functional features"); Precor Inc. v. Life Fitness, 13 Fed. Appx. 913; 2001 U.S. App. Lexis 15497 (Fed. Cir. 2001). There are also a number of district court cases showing the narrative separation of functional and non-functional features. See, e.g., Puritan-Bennett Corp. v. Penox Technologies, Inc., 297 F. Supp. 2d 1110 (S.D. Ind. 2003); Spotless Enterprises, Inc. v. Spotless Plastics Pty. Ltd., 294 F. Supp. 2d 322 (E.D.N.Y. 2003); Hosley Int'l Trading Corp. v. Kmart 7
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Id.

Accordingly, Colgate's proposed

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"Accordingly, even elements that are not solely dictated by function are not included in the [infringement] comparison to the extent they are functional." Spotless, 297 F. Supp. 2d at 345 (citing Oddzon, supra; Lee v. Dayton-Hudson Corp., 833 F.2d 1186 (Fed. Cir. 1988)). Finally, in determining the functional features of a design, the Court should consider statements made by the patentee in corresponding utility patent documents. See, e.g., PHG Technologies, L.L.C. v. St. Johns Cos., Inc., 469 F.3d 1361 (Fed. Cir. 2006) (considering statements in utility patent file history, albeit for validity purposes); Spotless, 294 F. Supp. 2d at 346 (considering statements in utility patent specification). CLAIM CONSTRUCTION FOR THE DESIGN PATENTS In this case, Colgate owns a utility patent, U.S. Patent 7,089,621 ("the `621 patent"), and a published U.S. patent application, Publication No. 2006/0026784 ("the `784 application"), directed to the subject toothbrush. Copies of these references are reproduced at Exhibits A and B. The `621 patent and the `784 application define functional features of the brush, and these functional features must therefore be excluded from the scope of the design patents. For ease of reference, a list identifying all of the features of the brush shown in the Colgate design patents is provided at Exhibit C. Below, Ranir will demonstrate how the `621 patent and the `784 application necessarily eliminate certain all these overall features from possible protection in the design patents, leaving as the possible ornamental features those features set forth in Ranir's proposed constructions for each of the design patents. Chart at 5-15. Starting with the bristles, the `621 patent discusses the functional considerations that dictated each feature of the bristles. Fig. 2 of the `621 patent, a top view of the bristle

Corp., 237 F. Supp. 2d 907 (N.D. Ill. 2002). 8

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pattern discussed in the patent (and clearly the same bristle pattern shown in the design patents), is shown at left: As stated by Colgate in the `621 patent, the Colgate toothbrush includes at least one loop configuration 214 "to better retain dentifrice among the tooth cleaning elements 200 and specifically between the contact of the cleaning elements and the teeth." Col. 2, lines 49-54. Although the loop configuration may be a variety of different shapes, "the loop configuration is preferably a circle," and "it is believed that the use of interior concave wall surfaces within the loop will best retain and move the dentifrice on the teeth." Col. 2, lines 54-59. "Each loop construction is defined by four elastomeric wall members 209a-d each defining an arc segment that is approximately a quarter circle." Col. 3, lines 10-12. "Adjacent arc segments are spaced apart to define gaps 212 that permit a limited outward flow of dentifrice and independent flexing of each wall member. The gaps also aid in the cleaning of cleaning elements 209 by permitting water to flush through the loops." Col. 3, lines 12-18. "The preferred embodiment includes three loops 214a-c that are each positioned front to back along longitudinal axis a--a. In this way, a large portion of the dentifrice applied to the tooth cleaning elements can be retained to clean the user's teeth." Col. 3, lines 28-32. Based on these statements regarding the function of the loop configurations 214, Ranir submits that the use of loop configurations that have a circular shape formed from four arcshaped elastomers, and the positioning of three loop configurations spaced longitudinally along 9

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the head (elements (36) and (37) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of these features. Thus, the design patents showing the loop configurations must therefore be construed so as not to include features (36) and (37) in the claimed design. With regard to the central cleaning elements 207, Colgate states in its `621 patent that "in a preferred construction, a central cleaning element 207 is disposed within each loop 214," and that "[w]ith this arrangement, dentifrice stays near the tips of cleaning elements 207 during a brushing operation for efficient cleaning." Col. 3, lines 36-40. "The central cleaning elements 207 are each preferably formed as bristle tufts for effectively cleaning the teeth." Col. 3, lines 45-46. "In the preferred construction, central cleaning elements 207a and 207c are shorter than cleaning elements 209 forming loops 214a, 214c to facilitate enhanced brushing of the lingual and facial tooth surfaces with the dentifrice." Col. 4, lines 18-22. Based on these statements regarding the function of the central cleaning elements 207, Ranir submits that the use of three central bristle tufts, each located in the center of one of the loop configurations (element (42) in the list of features provided in Exhibit C), was chosen for primarily functional reasons, and that the use of an alternative design would adversely impact the utility of the central bristle tufts. The design patents showing the central bristle tufts must therefore be construed so as not to include feature (42) in the claimed design. Colgate further states in its `621 patent that the outer ring cleaning elements 211 "surround the loop cleaning elements 209a-b in the central region of head 105 to effectively use this space on the head." Col. 4, lines 3-6. The cleaning elements 211 are positioned so that "the dentifrice flowing through the gaps 212 in the sides of the loop 214b will be used by outer cleaning elements 211." Further, the peripheral cleaning elements 205a-c and 215a-c are 10

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"generally configured to enable the user to clean along the gum line and in the crevices between the teeth." Col. 5, lines 7-8. As stated at col. 5, lines 14-28: The tips of the peripheral cleaning elements 205a-c and 215a-c protrude higher from base surface 109 than the tips of the interior cleaning elements 207, 209, 211. In a preferred embodiment, two groups of peripheral cleaning elements 205, 215 are arranged along each side 108 of the head 105. Each group of peripheral cleaning elements includes three generally aligned tufts of bristles, although other numbers of tufts could be used. The center tuft of cleaning elements 205b, 215b in each group of peripheral cleaning elements protrudes outward farther from base surface 109 that the others [sic] tufts 205a, 205c, and 215a, 215c. This arrangement allows for deeper engagement of the tooth surfaces along the gum line with cleaning elements 205b or 215b, while stimulating the gums with cleaning elements 205a, 205c and 215a, 215c. Based on these statements regarding the function of the outer ring cleaning elements 211 and the peripheral cleaning elements 205, Ranir submits that the use of bristles in an outer ring arranged in two opposing arc-shaped tufts, and the arrangement of the peripheral tufts such that the middle tuft of each group of three peripheral tufts is taller than the outer two tufts (elements (41) and (46) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of the outer ring cleaning elements and the peripheral tufts. The patents showing the outer ring cleaning elements and the peripheral tufts must therefore be construed so as not to include features (41) and (46) in the claimed design. Turning to the handle, Colgate describes the functional nature of features of the handle of the toothbrush in the `784 application, Exhibit B. The `784 application discloses a variety of Colgate toothbrushes, including essentially the exact toothbrush handle claimed in its design patents (see Figs. 81 and 82 below).

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With respect to the features of the handle, Colgate states in the `784 application that: Handle 8103 is provided for the user to reliably grip and manipulate the toothbrush. Handle 8103 includes ergonomic features which provide a high degree of control for the user while maintaining comfort. In a preferred construction (Figs. 81-89), handle 8103 includes a base 8300, a grip body 8403, and a gripping member 8407. These components cooperatively form a grip portion 8400 by which the user holds and manipulates the toothbrush. For optimum comfort and control, grip portion 8400 includes three segments 8111, 8113, 8115. A rear segment 8115 forms a portion that generally fits comfortably within the palm of the user. A front segment 8111 forms a portion that generally fits comfortably between the user's thumb and index finger. A narrow transition segment connects the front and rear segments. Page 19, paragraph 0264. Specifically, Colgate states that the "front segment 8111 is inclined relative to the rear segment 8115 to define an inclined portion for comfortable gripping and to facilitate a desired offset positioning of the head relative to the palm gripping region 8115." Exhibit B, Page 19, paragraph 0265. "This feature allows improved control of the handle during brushing 12

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in which the head 8105 can be more desirably positioned within the mouth to engage the tooth cleaning elements 8200 against the teeth." Id. "In a preferred embodiment, front and rear segments 8111, 8115 are widened sections that are joined by a narrowed portion 8113 to form an undulating structure which is more reliably and comfortably held within the user's hand. Further, this wide construction of the palm and finger gripping regions 8111, 8115 requires less fine motor control by the user and is, hence, easier to hold and manipulate." Page 19, paragraph 0266. Based on these statements regarding the function of the shape of the handle, Ranir submits that the front handle segment that is inclined relative to the neck and has a bulbous shape that is wider than the neck, the transition handle segment that is narrower than the front segment and the rear segment, and the rear handle segment that is wider than the transition segment, (elements (3), (5) and (7) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of the handle. The design patents showing the handle must therefore be construed so as not to include features (3), (5) and (7) in the claimed design. Colgate also addresses the thumb and finger grips in its utility application. The thumb and finger grips, referred to collectively as "grip body 8403 having opposing sides 8405, 8404," are "preferably for engaging the thumb and index finger during use." Page 19, paragraph 0267. The thumb and finger grips are made from a soft, resilient elastomer "to provide optimum comfort as well as control benefits." Page 20, paragraph 0268. The bulbous shape of the thumb and finger grips "enables the user to reliably roll and control the handle 8103 between the thumb and index fingers during use." Page 20, paragraph 0270. The thumb and finger grips include

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"finger grip protrusions 8411" that are "preferably provided in a desired conical or frusto-conical shape for improved grip performance." Page 20, paragraph 0273. Based on these statements regarding the function of the thumb and finger grips 8404 and 8405, Ranir submits that the use of a thumb grip on the upper surface of the front handle segment, a finger grip on the lower surface of the front handle segment, the formation of the thumb and finger grips from a different material than the handle and the grip material, the convex, bulbous shape of the thumb grip, the convex, bulbous shape of the finger grip, and the use of a plurality of round nubs extending outwardly from the surfaces of the thumb and finger grips, (elements (16)-(19), (21) and (23) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of the thumb and finger grips. The design patents showing the finger grips must therefore be construed so as not to include features (16)-(19), (21) and (23) in the claimed design. The utility patent application further describes the grip material. The grip

material, or "gripping member 8407," is "fixed to base 8300 to provide several gripping features to improve performance. In one aspect, gripping member 8407 has a grip surface 8410 with at least one and preferably a plurality of spaced openings, preferably in the form of elongate transverse slots 8415, which expose portions of the base 8300." Page 21, paragraph 0277. "These transverse slots 8415 prevent slippage of the handle 8103 by enabling portions of the user's fingers to slightly protrude into the depth of the slot 8415. Additionally, slots 8415 channel water away from the fingers [sic] tips during wet operational conditions. Air is also able to enter the slots during brushing to provide some evaporative effect." Page 21, paragraph 0278.

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"The grip surface 8410 includes concave regions between each slot 8415 to further improve grip performance of the handle 8103." Page 21, paragraph 0279. Based on these statements regarding the function of the gripping member 8407, Ranir submits that the grip material overlying the lower surface of the front, transition and rear portions of the handle, the series of nine transverse slots forming apertures in the grip material, and the concave regions in the grip material between each of the transverse slots (elements (10), (12) and (15) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of the gripping member. The design patents showing the handle must therefore be construed so as not to include features (10), (12) and (15) in the claimed design. The `784 application also describes the functional considerations that dictated the design of the tongue scraper. For instance, Colgate states that the tongue scraper, or "tissue engaging element 4800" is "designed to significantly reduce a major source of bad breath in people and improve hygiene." Page 14, paragraph 0218. The nubs on the tongue cleanser "enable removal of microflora and other debris from the tongue and other soft tissue surfaces within the mouth." Page 14, paragraph 0218. "In one preferred arrangement of tissue cleanser 4800, nubs 4803 are preferably conically shaped." Page 14, paragraph 0219. "The smaller width or diameter of the tip portion 4807 in conjunction with the length of the conically shaped nub 4803 enable the nubs to sweep into the recesses of the tongue and other surfaces to clean the microbial deposits and other debris from the soft tissue surfaces." Page 14, paragraph 0219. "Tip 4807 of the nubs is 0.127 mm and preferably within a range from about 0.10 mm to about 0.75 mm for optimal penetration between the recesses of papillae of a user's tongue." Page 14, paragraph 0219. The nubs are arranged on the tongue cleanser in a high density pattern, and 15

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"preferably disposed in longitudinal rows in a direction generally parallel to the longitudinal axis a--a." Page 14, paragraph 0222. "The surface density features in conjunction with the height of the nubs 4803 enables the tissue cleanser to provide enhanced cleaning of the soft tissue surfaces with improved comfort." Page 14, paragraph 0221. Based on these statements regarding the function of the tongue scraper 4800, Ranir submits that the positioning of a tongue cleanser on the lower surface of the head, and the inclusion of a plurality of nubs extending outwardly from the tongue cleanser (elements (27) and (30) in the list of features provided in Exhibit C), were chosen for primarily functional reasons, and that the use of alternative designs would adversely impact the utility of the tongue scraper. The design patents showing the tongue scraper must therefore be construed so as not to include features (27) and (30) in the claimed design. In summary, because of Colgate's statements in the `621 patent and the `784 application regarding the functionality of various features of the toothbrush shown in the design patents, the only proper construction of the design patents is to remove the functional features from the scope of the claimed designs. A list of the functional features, described above, that must be removed from the features shown in the design patents to properly construe the design patents is provided in Exhibit D. Ranir's proposed constructions for each of the design patents properly include only the features listed in Exhibit C that are shown in the patent (and not disclaimed by being illustrated in broken lines), except for the functional features noted above and listed in Exhibit D. In contrast to Colgate's proposed constructions, Ranir's constructions identify the elements shown in the Colgate design patents, while removing the functional features. Ranir's constructions are correct and should be adopted.

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CONCLUSION With respect to the `591 utility patent, Ranir accepts Colgate's proposed constructions, except for claim 27. For claim 27, the Court should adopt Ranir's proposed construction over Colgate's meaningless proffered construction. With respect to the design patents, Colgate makes no attempt to construe the claims properly. Ranir, in contrast, removes the functional features of the designs and thus properly limits the claim scope to non-functional features. The Court should adopt Ranir's constructions.

ASHBY & GEDDES /s/ Tiffany Geyer Lydon _______________________________ Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) Tiffany Geyer Lydon (I.D. #3950) 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 302-654-1888 [email protected] [email protected] [email protected] Of Counsel: Charles E. Burpee James Moskal Chad E. Kleinheksel WARNER NORCROSS & JUDD LLP 900 Fifth Third Center 111 Lyon Street, N.W. Grand Rapids, Michigan 49503 (616) 752-2000 [email protected] [email protected] [email protected] Dated: May 8, 2007
180297.1

Attorneys for Defendant

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EXHIBIT A

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EXHIBIT B

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Exhibit D

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