Free Motion for Miscellaneous Relief - District Court of California - California

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MELODY A. KRAMER, SBN 169984 9930 Mesa Rim Road, Suite 1600 San Diego, California 92121 Telephone (858) 362-3150 email: [email protected] J. MICHAEL KALER, SBN 158296 9930 Mesa Rim Road, Suite 200 San Diego, California 92121 Telephone (858) 362-3151 email: [email protected] Attorneys for Plaintiff JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA ) ) ) ) Plaintiff ) v. ) ) EMERSON ELECTRIC CO., a Missouri ) corporation; ONE WORLD TECHNOLOGIES, ) INC., a Delaware corporation; RIDGE TOOL ) COMPANY, an Ohio corporation; RIDGID, ) INC., a Delaware corporation; and ) DOES 1 ­ 100 ) ) Defendants. ) ) _______________________________________ ) and related counterclaims. ) ) ) ) JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Case No. 08cv00060 BTM CAB

DECLARATION OF MELODY A. KRAMER IN SUPPORT OF PLAINTIFF'S MOTION TO MODIFY PATENT LOCAL RULES SCHEDULE TO ACCELERATE IDENTIFICATION OF CLAIMED INVALIDATING PRIOR ART Date: May 23, 2008 Time: 11:00 a.m. Hon. Barry T. Moskowitz NO ORAL ARGUMENTS UNLESS ORDERED BY THE COURT

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I, MELODY A. KRAMER, declare: 1. I am not a party to the present action. I am over the age of eighteen. I have personal knowledge of the facts contained within the following paragraphs, and could and would competently testify thereto if called as a witness in a court of law. 2. matter. 3. Prior Art. 4. In July 2007 and December 2007, respectively, defendants in the related Black & Decker case1 filed requests for ex parte reexamination of the `184 patent with the USPTO. Attached hereto as Exhibit A and B are true and correct copies of relevant pages of said Requests for Ex Parte Reexamination. 5. The prior art cited in the second ex parte request contained several prior art references that had not been disclosed to Sorensen in either of the parties' Preliminary Invalidity Contentions served on February 2, 2007 (Exhibit C), nor the Amended Preliminary Invalidity Contentions served on March 5, 2007 (Exhibit D), nor the first ex parte request (Exhibit A). Attached hereto as Exhibits C and D are true and correct copies of Black & Decker's Preliminary Invalidity Contentions and Amended Preliminary Invalidity Contentions. 6. In the course of the present reexamination proceedings, Sorensen has, to our knowledge, identified to the USPTO all claimed invalidating prior art identified to Sorensen to date from any source. 7. Although Sorensen has been in contact with one of more of the Defendants/Counterclaimants in this case regarding the `184 patent since September This declaration is made in support of Plaintiff's Motion to Modify Patent Local Rules Schedule to Accelerate Identification of Claimed Invalidating At all times relevant herein I have been an attorney for Sorensen Research and Development Trust ("Sorensen"), Plaintiff in the above-captioned

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Sorensen v. Black & Decker Corporation, et al, Case No. 06cv1572 2.
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2004, none of the correspondence between the parties in this case has ever included any identification of any prior art or other basis for invalidity of the `184 patent. Thus, Sorensen has been unable to ensure that these Defendants' asserted prior art will be reviewed by the USPTO. 8. Attached hereto as Exhibit E is a true and correct copy of a document from the USPTO explaining a rule change regarding successive reexaminations on the same patent. DATED this Wednesday, March 26, 2008.

/s/ Melody A. Kramer Melody A. Kramer, Esq.

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EXHIBIT A

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EXHIBIT B

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EXHIBIT C

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EXHIBIT D

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J. Christopher Jaczko (149317) Allison H. Goddard (211098) JACZKO GODDARD LLP 4401 Eastgate Mall San Diego, California 92121 Phone: (858) 550-6150 Fax: (858) 225-3500 Raymond P. Niro, Jr. (Pro Hac Vice) Dina M. Hayes (Pro Hac Vice) Gregory P. Casimer (Pro Hac Vice) NIRO, SCAVONE, HALLER & NIRO 181 West Madison, Suite 4600 Chicago, Illinois 60602-4515 Phone: (312) 236-0733 Fax: (312) 236-3137 Attorneys for Defendant The Black & Decker Corporation UNITED STATES DISTRICT COURT

12 FOR THE SOUTHERN DISTRICT OF CALIFORNIA 13 14 15 16 17 18 19 20 Defendant The Black & Decker Corporation ("Black & Decker") makes the following 21 supplemental disclosure of its Preliminary Invalidity Contentions as required under Patent L.R. 22 3.3. Defendant states that this is the statement of The Black & Decker Corporation and not the 23 statement of any other defendant added to this action by the court's ruling on Plaintiff's motion 24 to join additional parties. 25 Plaintiff's preliminary infringement contentions pursuant to Patent L.R. 3.1 identify only 26 claim 1 of U.S. Patent No. 4,935,184 ("the '184 patent") as being asserted against Black & 27 Decker. If additional claims are asserted, Black & Decker reserves the right to supplement its 28 invalidity contentions to address all later asserted claims. -1Case No. 06cv1572 BTM (CAB) vs. THE BLACK & DECKER CORPORATION, Defendant. JENS ERIK SORENSEN, as Trustee of SORENSEN RESEARCH AND DEVELOPMENT TRUST, Plaintiff, Case No. 06cv1572 BTM (CAB) DEFENDANT'S AMENDED PRELIMINARY INVALIDITY CONTENTIONS PURSUANT TO PATENT L.R. 3.3

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Black & Decker contends that Plaintiff's own claim construction contentions (as set forth, for example, in Plaintiff's Memorandum in Support of Summary Determination of Infringement, Doc. #33) render claim 1 invalid over the prior art. Black & Decker does not agree with the Plaintiff's claim construction (in fact, Black & Decker contends that many of the terms are incapable of reasonable construction as described in Section D. below) but has applied it here so that the focus of the parties' dispute is on the technical substance of the prior art and not on collateral claim construction issues. Black & Decker will set forth its complete claim construction position in the time and manner required under Patent L.R. 4.1. A. The Identity of Prior Art

Black & Decker identifies the following categories of prior art: Prior Art Patents Patent Number 2,510,091 2,863,241 3,164,864 3,178,497 3,466,700 3,807,920 4,242,391 4,422,995 4,440,820 4,459,256 4,495,125 4,585,686 Country of Origin U.S. U.S. U.S. U.S. U.S. U.S. U.S. U.S. U.S. U.S. U.S. U.S. Date of Issue June 6, 1950 December 9, 1958 January 12, 1965 April 13, 1965 September 16, 1969 April 30, 1974 December 30, 1980 December 27, 1983 April 3, 1984 July 10, 1984 January 22, 1985 April 29, 1986

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Patent Number 4,676,941 4,743,422

Country of Origin U.S. U.S. Japan Japan Japan Japan UK PCT/Priority U.S. Germany

Date of Issue June 30, 1987 May 10, 1988 August 13, 1985 (Pub. Date) March 7, 1986 (Pub. Date) December 4, 1987 (Pub. Date) May 29, 1980 (Pub. Date) April 4, 1979 (Pub. Date) March 12, 1987 (Pub. Date) May 3, 1962 (Pub. Date)

4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Description of Item Prior Art Under 35 U.S.C. §102(b) Action Date First Party Second Party Title Multi-Color Injection Moulding Machines for the Processing of Thermoplastic Materials Promat 100-100/100 by Nestal New Vigor for Two-Shot Molding with Automation ... Versatility ... Ingenuity Prior Art Publications Date of Publication 1983 Author Reiner Jensen Publisher Krauss-Maffei AG 60-119520 (App. No. 59-7042) 61-47223 (App. No. 59-169665) 62- 279911 55-071541 (App. No. 53-144859) App. No. GB 2004 494 A Pub. No. WO 87/012329 Pub. No. 1 850 999

Nestal May 1968 Val Wright

Nestal Modern Plastics

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Parking Brake Grip Automotive pushbuttons Knob Infinite Switch Button Release Assembly S Series Camera Body Two Shot Knob Set-Coast Switch, No. B9207-C GM Part 16508729 GM Part 16508885 - 886 BMW 528i Part 63 21 1 361 603 Part No. No. No.

9/10/82 to 7/2/86 6/30/81 to 3/17/86 1/22/87 to 2/5/87 11/14/84 to 2/5/87 6/14/86 to 2/5/87 1/27/86 to 9/26/86 8/8/85 to 10/85 12/85 to 2/5/87 12/85 to 2/5/87 1979

Phillips Plastics Corp. Phillips Plastics Corp. Phillips Plastics Corp. Phillips Plastics Corp. Phillips Plastics Corp. Phillips Plastics Corp. Phillips Plastics Corp. Redoe Molding Hallmark Technologies Krauss-Maffei AG

Atwood Automotive Ford Motor Co. Jenn-Air Corp. Eastman Kodak Eastman Kodak TRW Methode Electronics General Motors General Motors BMW

B.

Whether each item of prior art anticipates each asserted claim or renders it obvious.

Black & Decker contends that the following references anticipate claim 1 of the '184 patent: see Section C, Table 1. Black & Decker contends that the following references in combination render obvious claim 1 of the '184 patent: see Section C, Table 2, and Table 3 Figures A, D, F and G.

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EXHIBIT E

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Notice of Changes in Requirement for a Substantial New Question of Patentability for a Second or Subsequent Request for Reexamination While an Earlier Filed Reexamination is Pending

A. Summary: The United States Patent and Trademark Office (Office) revised section 2240 of the Manual of Patent Examining Procedure (MPEP) in May of 2004 to set forth a new policy when a second or subsequent request for reexamination is filed while an "earlier filed reexamination" is pending, and the second or subsequent request cites only prior art (hereinafter "old art") which raised a substantial new question of patentability (SNQ) in the pending reexamination proceeding. See MPEP § 2240 (8th ed. 2001)(Rev. 2, May 2004). Under the new policy, the second or subsequent request for reexamination will be ordered only if that old prior art raises a substantial new question of patentability which is different than that raised in the pending reexamination proceeding. If the old prior art cited (in the second or subsequent request) raises only the same issues that were raised to initiate the pending reexamination proceeding, the second or subsequent request will be denied. It is to be noted that reliance on prior art cited in the pending reexamination (old art) does not preclude the existence of a SNQ that is based exclusively on that old art. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request. The presentation/viewing of old art in a new light, or in a different way, is discussed in Ex parte Chicago Rawhide, 223 USPQ 351 (Bd. Pat. App. & Inter. 1984). B. Background: A request for ex parte reexamination of a patent pursuant to 35 U.S.C. 302, and a request for inter partes reexamination of a patent pursuant to 35 U.S.C. 311, must raise a substantial new question of patentability (SNQ) in order for a reexamination of the patent to be initiated. More than one reexamination request may be filed for the same patent, and a second or subsequent reexamination request for reexamination of a patent, where a first reexamination proceeding is pending, has historically been granted based on the same prior art that raised the SNQ in a pending first reexamination proceeding. It has been the Office's experience, however, that both patent owners and third party requesters have used a second or subsequent reexamination request (based on the same substantial new question of patentability initially raised or existing in the pending reexamination proceeding) to prolong the reexamination proceeding, and in some instances, to turn it essentially into an inter partes proceeding. These actions by patent owners and third party requesters have resulted in multiple reexaminations taking years to conclude, thus making it extremely difficult for the Office to conclude reexamination proceedings with "special dispatch" as required by statute (35 U.S.C. 305 for ex parte reexamination, 35 U.S.C. 314 inter partes reexamination). For example, under the prior practice, a patent owner whose claims are rejected in a pending

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reexamination proceeding could repeatedly file multiple ex parte reexamination requests based on the same substantial new question of patentability raised, or existing, in the pending reexamination proceeding. By doing so, the patent owner could keep the reexamination proceeding pending indefinitely, to delay the issue of a reexamination certificate canceling the claims of the patent being reexamined. Additionally, a third party requester could file a second or subsequent reexamination request, while a first reexamination proceeding is pending, based on the same substantial new question of patentability raised, or existing, in the first reexamination proceeding, in order to address any responses to Office actions made by the patent owner. This use of a second or subsequent reexamination request has permitted third party requesters to, in effect, obtain an inter partes type of reexamination process in an ex parte reexamination proceeding. Moreover, concerns regarding lengthy ex parte reexamination pendency resulting from multiple reexamination request filings were raised by witnesses at the Office's Round Table on the Equities of Inter Partes Reexamination Proceedings held February 17, 2004. C. Implementation of New Policy: Responsive to these concerns, the Office revised its policy to be as is now set forth in the current (May 2004) revision of MPEP § 2240, that is: the SNQ for a second or subsequent request for reexamination must be new and different than any SNQ that was raised, or existed, during any prior pending or concluded reexamination proceeding for the patent. This revised policy is consistent with the statutory mandate of special dispatch and the intent of the ex parte reexamination statute (an ex parte reexamination proceeding is not an inter partes type of reexamination process). Further, 35 U.S.C. 303(a) states that "[w]ithin three months following the filing of a request for reexamination under the provisions of section 302 of this title, the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request." It is reasonable to interpret this provision as requiring each request for reexamination to raise its own substantial new question of patentability as compared not only to the original prosecution (in the application for the patent) and any earlier, concluded reexamination proceedings, but to pending reexamination proceedings as well. To accompany the revision of MPEP § 2240, MPEP § 2640, which was newly added to the MPEP in May of 2004 to address inter partes reexamination proceedings, was drafted to implement this revision of policy for inter partes reexamination proceedings. D. Transition Procedure: It is noted that, as a consequence of the changes made to MPEP § 2240, a patent owner will now be prevented from obtaining entry of an amendment and/or evidence not entered after final rejection in an ex parte reexamination proceeding by filing another request for reexamination based on the same substantial question of patentability raised/existing in the pending reexamination proceeding. In order to provide relief to the patent owner, the Office plans to propose a revision to the patent rules to provide for the filing of a request for continued reexamination (RCR) which would be similar to the request for continued examination (RCE) practice for applications. If the RCR practice is implemented, the patent owner, by filing an RCR, could obtain continued prosecution on the merits in the reexamination 2


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proceeding, including entry of an amendment and/or evidence that was denied entry after a final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding. Until these new rules become effective, however, patent owners are advised to use either: (1) the petition procedure under 37 CFR § 1.181 to seek review of a denial of entry of an amendment submitted after final rejection in an ex parte reexamination proceeding or after an action closing prosecution in an inter partes reexamination proceeding; or (2) the petition procedure under 37 CFR § 1.182 to seek relief that is not currently provided by an existing rule, but that would be provided when a new request for continued reexamination (RCR) practice is in effect. E. Inquiries: Inquiries regarding this matter may be directed to Kenneth M. Schor, Senior Legal Advisor, Office of Patent Legal Administration at telephone: (571) 272-7710.

Date:

2/2/05

Signed: /S/ JOSEPH J. ROLLA
Deputy Commissioner for Patent Examination Policy

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