Free Declaration in Support - District Court of California - California

Case 3:07-cv-02385-PJH

Document 48-4

Filed 02/19/2008

Page 1 of 12

Case 3:07-cv-02385-PJH 3:07-cv-02385-MJJ

Document 30 48-4 Filed 12/21/2007 Page Iof of 12 Filed 02/19/2008 Page 2 4

BEI-IROOZ SHARIATI (State Bar No. 174.1-36) bshariatigjonesdaj .corn JONES DAY 1755 Embarcadero Road Pa10 Alto, CA 94303 Telephone: (650) 739-3939 Facsimile: 1650) 739-3400 Attorneys for Plaintiff :Vordic ilbttrrats, Inc. U'ILLIAbl G. GAEDE I11 (State Bar No. 136184) \;cgaedegmv+e.com MCDERMOTT WILL & EMERY LLP 3 150 Porter Drive Palo Alto, CA 94304-1212 Telephone: (650) 8 13-5000 Facsimile: (650) 8 13-5 I00 Attorneys for Defendants J. R. Cnrlson Laboratories, Inc. and Metagenics, Inc. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

Case No. C-07-2385 MJJ .NORDIC NATURALS, ISC. Plaintiff,
V.
I

I
I I

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT

I
I

J.R. CARLSO3 LABOR4TORIES, INC. and blETAGENICS, h C . Defendants.

Case 3:07-cv-02385-MJJ Case 3:07-cv-02385-PJH

Document 30 Document 48-4 Filed 12/21/2007 Page 2 3 of 12 Filed 02/19/2008 Page of 4

(together the "Parties") hereby submit the Parties' Joint Claim Construction and Prehearing Statement. There are two patents at issue in this lav+suit:U S . Patent No. 6,346,23 1 and its continuation, U S . Patent No. 6,652,879. The Parties jointly agree and propose that similar terms in the claims of both patents be construed in similar fashion. As such, a consolidated list of terms and constructions is presented belo\+ in Sections I and 11: and in Exhibit A.

I. Agreed Upon Claim Constructions
The Parties have agreed upon the following constructions: TERM Dose AGREED UPON CONSTRUCTION
I

1

I

"Dose" means "the contents contained within the gelatin
.

I caosule shell."
Flabored, Flavered
I I

II These terms are typographical errors and should be

1 "Flavored". / ..Fla\iored."
But
1

The Parties disagree as to the proper definition of See Exhibit A for the Parties' positions.

1 This term is a typographical error and should be '.Nut" and
/
given its ordinary meaning.
i This term is a typographical error and should be "sofiener."

Sofener Conponents

i This term is a tjpographical error and should be
I 3hnponents." and given its ordinary meaning.
I
1

Fo

This term is a typographical error and should be "of," and

Case 3:07-cv-02385-PJH 3:07-cv-02385-MJJ

Document 48-4 Filed 12/21/2007 Page 3 of of 12 30 Filed 02/19/2008 Page 4 4

if. Disputed Claim Constructions and Identified References

The Court has limited the Parties to ten 110) claim terms to be construed. Exhibit h attached hereto contains a listing of each of the claim terms upon \xihich the parties request a construction along with each party's proposed construction and supporting references. In addition. the Parties each resene the right to relj upon an? intrinsic or extrinsic ekidznce identified by an opposing part), or a third part). and anj evidence obtained, or that may be obtained, through claim construction discoverq.
1 1 Anticipated Length of Time for Claim Construction Hearing 1.

The Court has set the date for the Claim Construction Hearing on March 12, 2008, The Parties jointly propose the Hearing begin at 9:00 a.m. on that date, and, barring unforeseen circumstances, it conclude on the same day. The Parties propose that each side be given one (1) hour for argument. 1V. Expert Witnesses The Parties do not currently intend to call any witnesses, including technical experts, at the CIaim Construction Hearing. The Partizs each reserve the right to present like testimony if the opposing party is permitted to present h e testimony at the Claim Construction Hearing.
V. Other Issues for a Prehearing Conference

The Parties are not aware of any other issues that need to be addressed at a Prehearing

e GLaii-n Constructi
n current;) nccessar:. unless desir s

o m . The Court ir

Case 3:07-cv-02385-PJH Case 3:07-cv-02385-MJJ

Document 48-4 Filed 12/2112007 Page 4 5 of 12 Filed 02/19/2008 Page of 4 Document 30

Dated: December 2 1. 2007 RespectfUtl_csubmitted, Rsspeethlly submitted,
, sl Behrooz Shariati Behrooz Shariati Counsel for Plaintiff Counter-Defendant Nordic Naturals, inc.

By:

'LViltiamG.Gaede William G . Gaede III Co~insel Defendants, Coiinrer-Plaintiffs for J .R. Carlson Laboratories, Inc., Metagenics, Inc.
IS,

Bj:

Case 397-cv-02385-MJJ Document 30-2 Case 3:07-cv-02385-PJH Document 48-4

Filed 12/21/2007 Page 16of 712 Filed 02/19/2008 Page of

Case 3:07-cv-02385-PJH

Document 48-4

Filed 02/19/2008

Page 7 of 12

Document 30-2 t~led 121211i1007 Page 3 ot 7 Case 3:07-cv-02385-PJH Document 48-4 Filed 02/19/2008

Page 8 of 12

---

"Flavored gelatin capsule" means "a capsule shell comprising gelatin, or equivalent thereof, whose natural taste has been altered by a F'lavoring," as Flavoring is defined above. Intrinsic Evidence: See Specification: Col. 1 :58-6 1, 2: 17-27,2:5 1 53, 3:7-8, 3:28-32. See f'rosecution t Iistory of 0914 16017:. Amendnient A, at 5; Amendment H, at 5.

- -

--

"Flavored gelatin capsule" nieans a gelatin capsule in which flavoring is present throughout thc gelatin capsule shell in the concentration spccificd hy the claims. Intrinsic Evidence: See - Clairns See Specification: col. 1, 11. 10- IS, col. 2, 11. 10-2 I, 3 1-33, 43-50; COI.3, 11. 7-8, 19-27 See Prose~ca~on ljiHitq~w~O9/4 16,O I 7: 06115/00 Aniendment A at p. 4; 07/14/00 Office Action at pp. 3-4; 06/12/00 Opheirn Decl., 09/18/00 'I'able to Request fbr Telephone for Interview; 10108100 Opheini Ikcl., pp. 1-4 and exhibits thereto; Duynlioven Decl.; 1 0/20/00 An~ctrdmcntR at pp. 1-1 2; 1 1/20/00 Supplemental Rep 1 1/27/00 Office Action at pp. 4-6; 02/28/01 Interview summary; 03/28/0 1 Oplleini 1)ecl.; 0410410 1 Amendment C:, at pp. 1-5; 0511 810 1 Office Action at pp. 2-3; 07/26/01 Notice of Allowability. See Prosecution I f istory of 1 0/QMiL82J: 09116/02 Office Action at pp. 3-4; 02/27/03 Aniendnrent A at pp. 1-3 and 10/08/00 Opheirn Ilecl. at pp. 1-3 and Exhibit 1; 02/27/03 Amendment A at pp. 1-3 and Exhibit 1. Extrinsic Evidence: Staliley, Sqft Gc1utit;rCupsulcs Z'hsory and Pruc~ice I~tdustriu~ of I'hum~ncy(I 986), pp. 39940 1 .'Wherein said water solublc flavoring is present in said flavored gelatin capsule in a conccntratiot~ which is in the range between about 0.25% and about 1.5% of said flavored gelatin capsule" means

-- - - - - - - - -"About" means "to within acceptable ~iiariufacturing tolerances."
-

"f3xsent in" nieans "present as part of the

Case 3:07-cv-02385-PJH

Document 48-4

Filed 02/19/2008

Page 9 of 12

- --

-- - - - -- - -- - -"a flavoring substance iliati5 soluble in water a i d

is present throughout the gelatin capsule shell in the concentration of 0.25% to 1.5%" "Present in" and "about" should not be construed separately fiom the claim eleriient "wl~crcinsaid water soluble flavoring is present in said flavored gelatin capsule in a concentration which is in the range between about 0.25% and about 1.5% of said "Wherein said water soluble flavoring is present flavored gelatin capsule." as part of said flavored gelatin capsule in a Intrinsic Evidence: concentration which is in the range betwecn .25% and 1.5% of said flavored gelatin See Claims capsule, within acceptab e manufacturing See Prosecution History ofIOW4 16,Ol7: 10/20/00 tolerances." Amendment R at pp. 3-5; 10/8/00 Oplicim Ileci. at pp. 2-3; 09/04/00 van Iluynlioven I3ecl.; 1 1/20/00 Extrinsic Evidence: Supplement Reply, at pp. 2-3; 04/04/01 Amendment C, at p. 2; Notice of Allowability, at p. 2; 02/27/03 Amendment A, at pp. 2-7. 09116/02 See Prosecutiorx &sggxcvf 1_)/@_! Office Action at pp. 3-4; 02/27/03 Amendment A at pp. 1-3 and 10/08/00 Opheini Ikcl. at pp. 1-3 and Exhibit 1 ;05/02/03 Amendtnent tZ at pp. 1-3; Notice of Allowability at p. 2. ---- - - - -- - - - -- - --- --- -- - Nordic does not believe that this phrase needs "Wherein said water is present in said flavored ;onstruction as a whole as it is clear from its gelatin capsule in a concentration in thc rangc plain meaning. f lowever, applying Nordic's between about 6% and about 10% of said flilvored definitions of "present in" and "abbot" above, gelatin capsule" means "wlierei~iwater is included the phrase would be defined as: throughout the gelatin capsule shell in the ;oncentration from 6% to 10%" 'Wherein said water is present as part of said flavored gelatin capsule in a concentration in 'Present in" and "about" 4iouId riot be construed .he range between 6?40and 10% of said flavored separately from the claim element "wherein said :elatin capsule, within acceptable water is present in said flavorcd gelatin capsule in iianufacturing tolerances." 1 concentration in the range bctwccn about 6% and bout 10% of said flavored gclatin capsule." Extrinsic Evidence: Nordic does not believe that this phrase needs co~istruction a whole as it is clear from its as plain meaning. flawever, applying Nordic's definitions above, the phrase would be defined as:

Case 3:07-cv-02385-PJH

Document 48-4

Filed 02/19/2008

Page 10 of 12

lnt r
See Specification: col. 3 , 11. 53-57 of . 0 See Prosecution I l i s t o-- 0914 16"A- 17: 0911 8/00 ~ communication to P'IO; Examiner's Interview Summary; 10/20/00 A~nendtnent3 at pp. 3-5. 1 See Prosecution 1 listmy of 1 O/jO4 1 .877: 09116/02 Office Action at pp. 3-4; 02/27/03 An~cnd~~ient A at pp. 1-3 and 10/08/00 Opheim Ilecl. at pp. 1-3 and Exhibit 1; 02/27/03 Arncndnxnt A at pp. 1-3 3 and Exhibit 1; 05/02/03 Anicndment l at pp. 1-3; Notice of Allowability at p. 2. "Wherein the gelatin sctfencr is present in a concentration in the range between 10% and 35% of said flavored gelatin capsule" means "wlierein the gelatin softener, also called a plasticizer, is included throughout the gelatin capsule shell in the concentration of 10% to 3596." The term "sofener" is a misspelling of "softener."

- . -- - - --- -- - -- - -- - "Nrdicdoes not believe that this phrase needs construction as a whole as it is clear from its plain meaning. Iiowever, applying Nordic's definitions of "present in" and "about" above, the phrase would be defined as:

"Wherein the gelatin softener is present as part of said flavored gelatin capsule in a concentration in the range between 10% and 35% of said flavored gelatin capsule."

Intrinsic Evidence:
See Clainls

Extrinsic Evidence: Anwricun Herilcxgc~Collegiute Dictionury. 31d ed. (1W7), at 4.
See Specificafion: col. 2, 11. 28-30; col. 2, 1 . 461 47; col. 3, 11. 21-23. See Prosecution H istory-of 0914 I 6,017: 0312 1/00 Office Action, at p. 3.

Extrinsic Evidence:

Document 30-2 f-fled 12/21/2001 P a g e 6 of 7 Case 3:07-cv-02385-PJH Document 48-4 Filed 02/19/2008

Page 11 of 12

-

'"Palatable''~neans"having a pleasant or acceptable taste." "'Palatability" is "the property of being palatable."
Intrinsic Evidence:

- -

-

-

Sce-S3cification: (:ol. I: 12-30, - - --.. See --- Prosecution Ilistory of 09/4 1 6,0 17: . Aniendment B, at 6. Extrinsic Evidence: Atncrican Ifcritagc (~ollcgiutc Dicqtionary, 3'" ed (1997), at 982. Ansel, I loward C:., ct al., eds., Pharn7aceuticul Ilosa e Forms cxtzd Drug Delivery S I J S I P I ~ S , 9395 (7 ed., Lippincott Williams & Wilkins, 1999).

8

- - A -

"Palatability" means the quality of acceptability to the taste. Intrinsic Evidence: See Specification: col. I, 11. 02-65; col. 2, 11. 17-2 1. F,xtrinsic Evidence: Wchster 3 7hird New lnrcrnat~ontxl Illctmcxry ( 1 993) at p. 1623; W ~ h s f c3~N m World ('ollego r llictioncxry, 3rd Ed. (1995) at p. 972; The American Iferilage ('allege Plic.fionary, 3"' 1-d., (1 9 9 )at p. 93 982. "Palatable" means the quality of acceptability to the taste. Intrinsic Evidence: See Claims

See Specification: cot. I, 11. 24-25. Extrinsic Evidence: Wehstrr's Third Ncw It~ternn/ional l)ic/ionixry (1 993) at p. 1623; Wehsfer'sN w World ('ollego Dictionary, 31d Ed. (I 995) at p. 972; The Anwricun Ikrituge College Dictionary, 3'?t:d., (1 993) at p. 982.

- --

"Gelswatch" means "a mass of mixed shell LLCelswatch" means a rnixtwe of gelatin, gelatin ingredients ready fbr use in the encapsulation of softener, water and any additional components of the f i l l material, typically formed in sheets or the gelatin capsule shell. ribbons." Intrinsic Evidence: Intrinsic Evidence: See C:laims See S~ecification: - Cot. 3: 1 1-1 5, 3: 19-27, 3:34See Speciticatio~j: 3, 11. 1 1-15; col. 3. 11. 19-27. col. 38. See Prosecution I iistoryof O 4 16L-I--. W 0 7. _____------Attachment to Exhibit 1 of 10/20/00 Opheint Dccl.

-

------

---

Case 3:07-cv-02385-PJH

Document 48-4

Filed 02/19/2008

Page 12 of 12