Free Motion to Amend/Correct - District Court of Connecticut - Connecticut

E p Case 3:03-cv-00169-AVC Document 79-3 Filed 05/20/2004 Page 1 of 4
UNITED STATES DISTRICT COURT F Ham E D `
DISTRICT OF CONNECTICUT mu MM- -20 [3 \= 2b
AHLSTROM WINDSOR LOCKS LLC, 3 U5, UXSTRICT CS_PM
Plaintiff, ) ll ARTFORB ·
v. g CIVIL ACTION NO. 3:03-CV-0169 (AVC)
SCHOELLER & HOESCH, N.A., INC. and ) C`/ONl\/ _
P.H. GLATFELTER COMPANY, ) . {
Defendants. )
DECLARATION OF SIDNEY R. BRESNICK, ESQ.
Sidney R. Bresnick declares and says:
1) I am a member of the bars 0f the State of New York and the United
States District Court for the District of Connecticut. I am of counsel with the law firm of
Cohen, Pontani, Lieberman & Pavane, 551 Fifth Avenue, New York, New York 10176,
attorneys for plaintiff Ahlstrom Windsor Locks, LLC. I make this declaration in support
of Plaintiffs Motion Pursuant To Rule 15, Fed.R.Civ.P., For Leave To File An Amended
Complaint.
2) Plaintiffs motion to amend is based on the results of its experts' f
(Dr. Hsu and Dr. Hoagland) findings that the surfactant in defendants', Schoeller & }
Hoesch, N.A., Inc. and P. H. Glatfelter Company (collectively, "Defendants"), tea bag 1
paper is very rapidly and easily removed (less than 2 seconds) in hot water rendering the
paper hydrophobic as claimed in U.S. patent No. 5,431,997 (the "997 patent"). Drs. Hsu {
and Hoagland also found that the surfactant in Defendants tea bag papers had little or no
effect on the paper other than to raise its water climb level.

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Case 3:03-cv-00169-AVC Document 79-3 Filed 05/20/2004 Page 2 of 4
3) As a consequence of the experts' findings, it became clear that i
Plaintiff had grounds for additional claims of inducement of infringement under 35 2
U.S.C. § 27l(b) and for contributory infringement under 35 U.S.C. § 27l(c) against
Defendants. The basis for these two additional alternative claims of infringement is
discussed in Plaintiffs memorandum of law in support of the motion to amend, but in
i summary, they are as follows: l
i a) When the ultimate consumer of tea bags made with
Defendants' paper puts the tea bag into hot water the surfactant coated on the surface of
the paper immediately dissolves and washes off and the paper exhibits all of the
hydrophobic properties claimed in the '997 patent. Thus the ultimate consumer is a direct
infringer by "using" an infringing product. Obviously, a patentee, such as Plaintiff, can
not and would not even attempt to sue the individual consumers who use its patented
product, which is why the patent law provides that a person who induces another to
infringe (as by selling a product knowing that it will be used in an infringing manner) is
liable for the act of inducement under 35 U.S.C. § 27l(b). Defendants have knowingly
i and actively engaged in such illegal activities and are liable to Plaintiff for inducement of l
infringement;
b) Defendants also contribute to the ultimate consumers' i
infringement by manufacturing and selling an article of commerce that becomes an
infringing product when it is placed in hot water (which it must if it is to become tea) and
the surfactant washes out. With the masking effect of the surfactant having been washed
away, the tea bag paper becomes hydrophobic, and the ultimate consumer becomes a
direct infringer, Defendants have thus contributed to the ultimate consumers' direct
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I Case 3:03-cv-00169-AVC Document 79-3 Filed 05/20/2004 Page 3 of 4 (
infringement by manufacturing and selling a product that is a component of a patented
material (the tea bag paper) that constitutes a material part of the invention, knowing the
same to be especially made or adapted for use in an infringement ofthe patent, and not a
staple article of commerce suitable for substantial noninfringing use.
I 4) The information on which the additional alternative claims of
I infringement have been made became known to Plaintiffs counsel through their experts, Q
I who have studied and analyzed Defendants' tea bag papers in connection with the I
litigation. Dr. Shaw Ling Hsu and Dr. David A. Hoagland were retained by Plaintiff in
. mid-to-late February 2004, after plaintiff received information in January concerning
I defendants' method of manufacture of the accused infringing products through the
depositions of their personnel in Germany. Drs. Hsu and Hoagland commenced their
work in March 2004, and their report, dated May 14, 2004, is attached as exhibit A.
I declare under penalty of perjury that that the foregoing is true and
correct. Executed on this 19th day of May, 2004.
1
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Sidney R. resniclx, Esq. (ct 16295) I
I

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Case 3:03-cv—00169-AVC Document 79-3 Filed 05/20/2004 Page 4 of 4 {
CERTIFICATE OF SERVICE
This is to certify that a copy of the foregoing Declaration Of Sidney R.
j Bresnick, Esq. has been sent by first class mail, postage prepaid, this ‘L0V"day of May,
2004 to:
Dina S. Fisher, Esq.
Robinson & Cole LLP
280 Trumbull Street
Hartford, CT 06103-3597
—and—
q Marc J. Farrell, Esq.
Buchanan Ingersoll PC
One South Market Square, 3rd Floor
Harrisburg, PA 1710]. -2121
.4 Q