Free Claim Construction Chart - District Court of Delaware - Delaware

Case 1:04-cv-01507-SLR

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE LP MATTHEWS, L.L.C., Plaintiff, v. BATH & BODY WORKS, INC.; LIMITED BRANDS, INC.; KAO BRANDS CO. (f/k/a THE ANDREW JERGENS COMPANY); and KAO CORPORATION, Defendants. ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 04-1507-SLR

PARTIES' PROPOSED ELEMENT-BY-ELEMENT CLAIM CONSTRUCTION CHART

Of Counsel: Ronald J Schutz Robert A. Auchter Jason R. Buratti Robins, Kaplan, Miller & Ciresi L.L.P. 1801 K Street, Suite 1200 Washington, D.C. 20006 Tel: (202) 736-2717 Fax: (202) 223-8604

ASHBY & GEDDES Steven J. Balick (I.D. # 2114) John G. Day (I.D. # 2403) Lauren E. Maguire (I.D. #4261) 222 Delaware Avenue, 17th Floor P.O. Box 1150 Wilmington, DE 19899 Tel: (302) 654-1888 Fax: (302) 654-2067 [email protected] [email protected] [email protected]

Attorneys for Plaintiff LP Matthews, Inc. Of Counsel: Arthur I. Neustadt Richard L. Chinn Oblon, Spivak, McClelland, Maier & Neustadt, P.C. 1755 Jefferson Davis Highway Arlington, VA 22202 Tel: (703) 413-3000 Fax: (703) 413-2220 POTTER ANDERSON & CORROON LLP Richard L. Horwitz (I.D. # 2246) David E. Moore (I.D. # 3983) 1313 N. Market Street Wilmington, DE 19899-0951 Tel: (302) 984-6000 Fax (302) 658-1192 [email protected] [email protected]

Attorneys for Defendants Kao Corporation and Kao Brands Company

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Of Counsel: John F. Ward David M. Hill Michael Zinna Ward & Olivo 708 Third Avenue New York, NY 10017 Tel: (212) 697-6262 Fax: (212) 972-5866

FOX ROTHSCHILD L.L.P Francis G.X. Pileggi (I.D. # 2624) Sheldon K. Rennie (I.D. # 3772) 919 North Market Street, Suite 1300 Wilmington, DE 19801 Tel: (302) 654-7444 Fax: (302) 654-8920 [email protected] [email protected]

Dated: June 15, 2006

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Claim Chart: Parties' Proposed Element-by-Element Claim Construction Claim Term "Skin cleaning composition for external use on human tissues" (6) & "Cleaning composition for use on human skin" (9) LP Matthews Ordinary Meaning: composition that has an effect of treating unwanted substances so that the unwanted substance is easier to remove from the skin INTRINSIC EVIDENCE "The present invention generally relates to cleaning compositions suitable for external application to human skin tissue in order to remover unwanted substances...." (`062 patent at 1:5-7) "effective in cleaning compounds otherwise difficult to remove from the tissues of the skin" (id. at 1:59-61) "Still a further object of the present invention is to provide a skin cleaning composition that not only removes unwanted substances from the human skin but also acts to help clean and revitalize the human skin." (id. at 2:22-25) "Applicants determined that Kao Defendants a skin cleaning compound suitable for cleaning non-water soluble products such as grease, caulking, adhesives, sealants, tar, oils, ink, cosmetics and the like INTRINSIC EVIDENCE "Another object of the present invention is to provide a skin cleaning compound suitable for cleaning non-water soluble products such as grease, caulking, adhesives, sealants, tar oils, ink and the like. Yet another object of the present invention is to provide a skin cleaning composition which is non-toxic. Limited Defendants a composition for removing unwanted non-water soluble substances from the skin having as little as 5% orange oil, but preferably at least 25% orange oil INTRINSIC EVIDENCE "Applicants concluded that, with respect to cosmetics, a composition according to the present invention could have as little as 5% by volume of orange oil although it was preferable to have a cleaning composition having at least 25% by volume of orange oil." Col. 6, lns. 56-61.

"The present invention generally relates to cleaning compositions suitable for external application to It is a further object of the present human skin tissue in order to remove invention is to provide a skin unwanted substances such as tar, cleaning composition that is caulking compounds, sealants, derived from natural vegetable and adhesives and the like." Col. 1, lns. plant sources. 5-9; see also Col. 1, lns. 11-14. Still a further object of the present invention is to provide a skin cleaning composition that not only removes unwanted substances "The present invention, then, provides a skin cleaning composition which is adapted for external use on human tissues. Broadly, this

Case 1:04-cv-01507-SLR Claim Term LP Matthews

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Kao Defendants from the human skin but also acts to help clean and revitalize the human skin." Col. 2, ll. 12-25.

Sample V offered the best compromise among emulsion stability, cleaning effectiveness, and skin effect." (id. at 5:28-30) "softening effect of the hand cleaning composition" (id. at 7:26-27)

composition comprises a first ingredient being between five percent (5%) and sixty percent (60%) by volume of orange oil, a second ingredient being a pharmaceutically Also, see examples at col. 6, ll. 29- acceptable moisturizer for human 55 and col. 8, ll. 2-8. skin and a third ingredient being an emulsifying agent." Col. 2, lns. 2533; see also Col. 8, lns. 39-46. "The present invention is directed to a cleaning composition utilized on skin tissues and having, as its cleaning ingredient, the commercially available substance known as orange oil derived from the rinds of oranges." Col. 2, lns 64-67. "In order to evaluate cleaning properties as a function of percent volume of orange oil, additional samples were prepared wherein the weight percentages of the ingredients other than orange oil was held constant while the amount of orange oil was varied to provide differing volume percentages of orange oil." Col. 6, lns. 30-35.

"Orange oil" (6) & "forty- Ordinary Meaning: non-water at least 5% by volume of orange five percent (45%) or less soluble fraction of an orange (any oil by volume of orange oil" reddish-yellow fruit of the Genus Citrus, including mandarin INTRINSIC EVIDENCE

the non-water soluble liquid derived from the rind of oranges INTRINSIC EVIDENCE

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Case 1:04-cv-01507-SLR Claim Term (9) LP Matthews oranges) with no minimum percentage required for either claim INTRINSIC EVIDENCE

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Page 5 of 9 Limited Defendants "Orange oil, as a natural product derived from the rind of oranges, has been recognized in the past to have some cleaning capabilities." Col. 1, lns. 50-52. "The present invention is directed to a cleaning composition utilized on skin tissues and having, as its cleaning ingredient, the commercially available substance known as orange oil derived from the rinds of oranges." Col. 2, lns 64-67.

Kao Defendants "From these tests, Applicants concluded that, with respect to cosmetics, a composition according to the present invention could have as little as 5% by volume of orange oil although it was preferable to have a cleaning composition having at least 25% by volume of orange oil." Col. 6, ll. 56-61.

"A cleaning composition for cleaning the skin contains orange oil...." (id. at Abstract) "orange oil alone or in combination with other substances could prove effective in cleaning compounds otherwise difficult to remove from the tissues of the skin" (id. at 1:5861) "In the more specific composition according to the preferred embodiment, the cleaning composition comprises forty-five percent (45%) or less by volume of orange oil..." (id. at 2:45-48) "the composition includes orange oil..." (id. at 2:68) "Oat grain derivative product" (6) Ordinary Meaning: material derived from the grain of an oat (which consists of the kernel and the husk of the grain)

oat gum or oatmeal INTRINSIC EVIDENCE

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Case 1:04-cv-01507-SLR Claim Term LP Matthews INTRINSIC EVIDENCE

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Page 6 of 9 Limited Defendants "In order to determine if a natural ingredient could act as an emulsifying agent, the Applicants selected a grain base derivative as an emulsifying agent. To this end, Applicants tested oatmeal gum and oatmeal to act as the primary emulsifier." Col. 4, lns. 22-27.

Kao Defendants

"In order to determine if a natural ingredient could act as an emulsifying agent, the Applicants selected a grain base derivative as an emulsifying agent. To this end, Applicants tested oatmeal gum and oatmeal to act as the primary emulsifier." (id. at 4:2227. Relatively equal parts of orange oil and oat derivatives were used...." (id. at 4:55-65) "Emulsifying agent" (6) Ordinary Meaning: material that has both hydrophilic and lipophilic regions and that by itself or in concert with other emulsifying agents helps to stabilize a dispersion of oil in water (whether the composition is an emulsion, solubilization, micro-emulsion, or dispersion) INTRINSIC EVIDENCE "A cleaning composition for cleaning the skin contains...an emulsifying agent." (id. at Abstract)

the primary ingredient added to form and stabilize an emulsion INTRINSIC EVIDENCE "Applicants tested oatmeal gum and oatmeal to act as the primary emulsifier." Col. 4, lns. 25-27; see also Col. 3, ln. 64 through Col. 5 ln. 27.

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Kao Defendants

"the composition includes...an emulsifying agent...." (id. at 2:68-3:1) "the Applicants selected a grain based derivative as an emulsifying agent." (id. at 4:2425) "it became necessary to determine whether the oil orange and moisturizer emulsion could be stabilized so that it would not break over a period of time" (id. at 4:19-22) "Oatmeal" (9) Ordinary Meaning: material that is derived from the kernel of an oat grain (including liquid extracts and powders) INTRINSIC EVIDENCE "In Sample IV, oatmeal gum was prepared by boiling rolled oats in water and straining the resultant mass to remove the hulls. In Sample V, rolled oats were boiled in water and the resulting mass (containing approximately 50% water) was used to prepare the composition. Relatively equal parts of orange oil and oat rolled oats boiled in water INTRINSIC EVIDENCE "In Sample V, rolled oats were boiled in water and the resulting mass [i.e., oatmeal] (containing approximately 50% water) was used to prepare the composition." Col. 4, lns. 57-60; see also Col. 4, lns. 5355.

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derivatives were used...." (id. at 4:55-65) "In particular, those claims including the use of oat-grain derivatives and oatmeal [are believed allowable]. Here it has been found that the oatmeal may lend cleaning properties in that oatmeal acts as a drawing agent to help remove certain oils or other materials from the surface to be cleaned. It also adds an abrasive quality to the cleaning compound to enhance the scrubbing ability." (`062 File Paper 5 at 4) "PharmaceuticallyOrdinary Meaning: material that acceptable moisturizer" (6 has the effect of adding moisture and 9) to or keeping moisture in human skin that is also safe and effective for use on human skin INTRINSIC EVIDENCE "A cleaning composition for cleaning the skin contains...a pharmaceutically acceptable moisturizer...." (id at Abstract) "the composition includes...a pharmaceutically acceptable a naturally occurring moisturizing substance INTRINSIC EVIDENCE "More specifically, however, the present invention is directed to a natural cleaning composition that utilizes only plant based ingredients." Col. 1, lns. 9-10. "It is a further object of the present invention is to provide a skin cleaning composition that is derived from natural vegetable and plant

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Page 9 of 9 Limited Defendants sources." Col. 2, lns. 18-20.

Kao Defendants

moisturizer...." (id. at 2:68-3:1) "One example of such a moisturizer is glycerin stearate." (id. at 8:53-54) "pH in a range 4.5 to 6.0, inclusively" (6) measure of hydrogen ions (pH) of 4.0-6.5 (with that range at least available under the doctrine of equivalents) INTRINSIC EVIDENCE pH "approximate" (e.g., `062 patent at 3:5, 59, 4:62-65, 5:286:27, 7:59-8:10)

"inclusively" means including but not exceeding the endpoints of the range INTRINSIC EVIDENCE "These empirical observations lead Applicants to conclude that an acidity of at least ph 6.0 is desirable." Col. 5, lns. 60-63; see also, Col. 5, lns. 35-60. "Applicants accordingly concluded that it was desirable that the emulsified composition have a pH that is approximately 4.5. Thus, Applicants further concluded that the composition according to the preferred embodiment of the present invention should have a pH of between 4.5 and 6.0, inclusively." Col. 6, lns. 22-27; see also, Col. 5, ln. 64 through Col. 6, ln. 21. "The composition is constituted to have a pH of between 4.5 and 6.0." Abstract.

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