Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 1 of 54 PageID #: 39580
`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 1 of 54 PagelD #: 39580
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`EXHIBIT 2
`EXHIBIT 2
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 2 of 54 PageID #: 39581
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 17-770-RGA
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`JURY TRIAL DEMANDED
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`WIRTGEN AMERICA, INC.
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`CATERPILLAR INC.
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`Defendant/Counterclaim-Plaintiff.
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`PLAINTIFF/COUNTERCLAIM-DEFENDANT WIRTGEN AMERICA, INC.’S
`INITIAL INVALIDITY CONTENTIONS, PURSUANT TO PARAGRAPH 4 OF THE
`DISTRICT OF DELAWARE’S DEFAULT STANDARD FOR DISCOVERY,
`INCLUDING DISCOVERY OF ELECTRONICALLY STORED INFORMATION
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`Pursuant to Paragraph 4(d) of the District of Delaware’s Default Standard for Discovery,
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`Including Discovery
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`of Electronically Stored
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`Information
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`(“Default Standard”),
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`Plaintiff/Counterclaim-Defendant Wirtgen America, Inc. (“Plaintiff” or “Wirtgen America”), by
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`its undersigned counsel, hereby provides these initial invalidity contentions (“Wirtgen America’s
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`Initial Invalidity Contentions”) to Defendant/Counterclaim-Plaintiff Caterpillar Inc. (“Defendant”
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`or “Caterpillar”), in response to Caterpillar’s initial infringement contentions, dated March 2, 2022
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`(“Caterpillar’s Initial Infringement Contentions”).
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`I. RESERVATION OF RIGHTS
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`A. Construction of Caterpillar’s Initial Infringement Contentions
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`Wirtgen America’s Initial Invalidity Contentions are directed only to the asserted claims
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`in Caterpillar’s Initial Infringement Contentions. Wirtgen America reserves the right to modify,
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`amend, or supplement these Initial Invalidity Contentions to show the invalidity of any additional
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`claims that the Court may allow Caterpillar to later assert in this civil action.
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`1
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`Wirtgen America’s Initial Invalidity Contentions are based upon Wirtgen America’s
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`current understanding of the asserted claims and Caterpillar’s apparent construction of those
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`claims, as reflected in Caterpillar’s Initial Infringement Contentions. Accordingly, Wirtgen
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`America’s Initial Invalidity Contentions, including the attached invalidity claim charts, may reflect
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`alternative positions as to claim construction and scope. By including prior art that would
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`anticipate or render obvious the asserted claims based on Caterpillar’s apparent claim construction
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`(or on any other particular claim construction), Wirtgen America is neither adopting Caterpillar’s
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`claim construction nor admitting to the accuracy of any particular claim construction. To the extent
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`Wirtgen America’s Invalidity Contentions reflect constructions of claim limitations consistent
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`with or implicit in Caterpillar’s Initial Infringement Contentions, neither by implication nor
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`interpretation should it be drawn that Wirtgen America agrees with Caterpillar’s interpretation or
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`understanding of any claim limitation under a theory of literal infringement or under a theory of
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`infringement by doctrine of equivalents, and Wirtgen America expressly reserves the right to
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`challenge, contest, or dispute Caterpillar’s reading, interpretation, or understanding of such claim
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`limitations.
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`Moreover, Caterpillar’s Initial Infringement Contentions, which were recently received,
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`lack proper and complete disclosure as to the purported infringement of each of the asserted claims,
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`with respect to Wirtgen America’s accused products. Accordingly, Wirtgen America reserves the
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`right to further modify, supplement, amend, or correct Wirtgen America’s Initial Invalidity
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`Contentions, including the prior art disclosed and the stated grounds of invalidity.
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`B. Claim Construction.
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`Wirtgen America reserves the right to modify, correct, amend, or supplement Wirtgen
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`America’s Initial Invalidity Contentions depending upon the Court’s construction of the asserted
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`2
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`claims, the parties’ proposed constructions of the asserted claims during the claim-construction
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`process, and/or positions that the parties or the parties’ expert witnesses may take concerning claim
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`construction, infringement, and/or invalidity issues.
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`C. Prior Art
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`Each of the asserted claims of U.S. Patent Nos. 7,523,995, 9,975,538, and 9,371,618
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`(collectively, the “Counter-Asserted Patents”) is anticipated by and/or obvious in view of one or
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`more items of prior art (alone and/or in combination thereof). The prior art discloses the elements
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`of the asserted claims of the Counter-Asserted Patents, either explicitly or inherently. Wirtgen
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`America may also rely upon the prior art to show the state of the art in the relevant timeframe for
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`each of the Counter-Asserted Patents. Prior art not included in these contentions, whether known
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`or not known to Wirtgen America, may become relevant. In particular, Wirtgen America is
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`currently unaware of the extent, if any, to which Caterpillar will contend that limitations of the
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`asserted claims are not disclosed in the prior art identified in Wirtgen America’s Initial Invalidity
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`Contentions. Accordingly, Wirtgen America reserves the right to identify other references that
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`would anticipate and/or render obvious the allegedly missing limitation(s) of the disclosed
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`apparatus(es), system(s), and/or method(s).
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`Investigation in this case is progressing and discovery is ongoing. As such, Wirtgen
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`America anticipates that additional prior art may be found. Wirtgen America expressly reserves
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`the right to modify, amend, supplement, and/or correct the information provided in Wirtgen
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`America’s Initial Invalidity Contentions, including identifying, charting, and relying on additional
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`references, should such prior art be found.
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`D. Other Reservations
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`Wirtgen America reserves the right to rely on inventor’s (or applicant’s or assignee’s)
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`3
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`admissions concerning the scope or state of the prior art relevant to the asserted claims of the
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`Counter-Asserted Patents; the prosecution histories for the Counter-Asserted Patents (including all
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`cited references), as well as related patents and/or patent applications; any deposition or trial
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`testimony of the named inventors on the Counter-Asserted Patents; and the papers filed and any
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`evidence produced or submitted by Caterpillar in connection with this or related litigation. Wirtgen
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`America also reserves the right to rely on the “Background of the Invention,” the “Summary of
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`the Invention,” and other relevant portions of the Counter-Asserted Patents, and fact and expert
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`testimony about the prior art to prove that the asserted claims are invalid.
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`E. General Reservations
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`Wirtgen America’s Initial Invalidity Contentions should not be construed, interpreted, or
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`understood: (i) to be a concession or admission that discovery of subject matter underlying or
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`pertaining to Caterpillar’s permissive counterclaims for patent infringement (see D.I. 62, at 47-55
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`(¶¶7-35)) is contemplated by this civil action or the Court’s Scheduling Order (see D.I. 28); or (ii)
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`as a concession of Wirtgen America’s motion to sever and transfer Caterpillar’s permissive
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`counterclaims from this civil action (see D.I. 56). Furthermore, Wirtgen America notes that its
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`disclosure obligations, pursuant to the Default Standard, are limited by the Federal Rules of Civil
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`Procedure, the Local Rules for the District of Delaware, and any governing case law.
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`Wirtgen America further reserves the right to modify, correct, supplement, or amend
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`Wirtgen America’s Initial Invalidity Contentions in response to: (i) any amendment or supplement
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`by Caterpillar of Caterpillar’s Initial Infringement Contentions, or any of Caterpillar’s
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`supplemental or final infringement contentions; (ii) arguments made and positions taken by
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`Caterpillar during fact or expert discovery; (iii) any original or rebuttal expert report; or (iv) any
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`rebuttal evidence offered or submitted by Caterpillar or as otherwise may be necessary or
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`appropriate under the circumstances.
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`II.
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`INVALIDITY
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`Each asserted claim of the Counter-Asserted Patents, as identified in Caterpillar’s Initial
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`Infringement Contentions, is invalid because each asserted claim: (i) fails to qualify as patent-
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`eligible subject matter under 35 U.S.C. § 101; (ii) is anticipated and/or rendered obvious under 35
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`U.S.C. §§ 102 and 103; and/or (iii) fails to satisfy the written description, definiteness, and/or
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`enablement requirements under 35 U.S.C. § 112.
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`A. Invalidity under 35 U.S.C. §§ 102 and 103
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`i. Identification of Prior Art
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`Caterpillar asserts permissive counterclaims of patent infringement against Wirtgen
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`America. Specifically, Caterpillar asserts that Wirtgen America infringes certain claims of the
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`Counter-Asserted Patents: U.S. Patent Nos. 7,523,995, 9,975,538, and 9,371,618. Each of the
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`asserted claims of the Counter-Asserted Patents is anticipated by, and/or obvious in view of, one
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`or more items of prior art (alone and/or in combination) identified herein.
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`Invalidity charts for the prior-art references (the “Invalidity Charts”), with respect to each
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`of the Counter-Asserted Patents, are attached in Exhibits A-C, respectively.
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`Exhibit A
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`Counter-Asserted Patents Claim Chart
`U.S. Patent No. 7,523,995
`(the “’995 Patent”)
`U.S. Patent No. 9,975,538
`(the “’538 Patent”)
`U.S. Patent No. 9,371,618
`(the “’618 Patent”)
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`The Exhibits identify prior art that anticipates, or renders obvious, one or more of the asserted
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`Exhibit B
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`Exhibit C
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`5
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`claims of the Counter-Asserted patents under 35 U.S.C. §§ 102 and/or 103.1 The Exhibits contain
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`a complete listing of the prior-art references identified to date. Wirtgen America reserves the right
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`to revise, correct, supplement, or amend Wirtgen America’s Initial Invalidity Contentions, or
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`subsequent invalidity contentions, by further mapping, charting, or identifying additional relevant
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`disclosures of prior-art references.
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`Wirtgen America’s Invalidity Charts identify exemplary and/or representative portions
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`and/or features of the prior art. However, the identified prior art may contain additional
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`descriptions of or alternative support for the claim limitations. Wirtgen America may also rely on
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`uncited portions or features of the identified prior art, other documents, and expert testimony, to
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`provide context or to aid in understanding the identified prior art and the state of the art. Citations
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`to a particular figure in a reference include the caption and description of the figure and any text
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`relating to the figure. Similarly, citations to particular text referring to a figure include the figure
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`and caption as well.
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`Unless otherwise stated, each identified prior-art reference is anticipatory and/or renders
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`obvious the asserted claims of the Counter-Asserted Patents, either alone or in combination with
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`one or more other identified items of prior art. To the extent that any of the prior art identified in
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`the Invalidity Charts is found not to anticipate particular claims of the patents-in-suit, and/or to the
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`extent Caterpillar contends that the prior art does not disclose one or more features of the asserted
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`claims, Wirtgen America may rely upon that prior art to render those claims obvious, either alone
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`in view of the knowledge of a person of ordinary skill in the art (a “POSITA”), or in combination
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`with other prior art disclosed therein.
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`1 35 U.S.C. §§ 102 and/or 103 (pre-AIA) shall be applied with respect to the ’995 Patent, and 35
`U.S.C. §§ 102 and/or 103 (post-AIA) shall be applied with respect to the ’538 Patent and the ’618
`Patent.
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`ii. Obviousness
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`The prior art, either alone or in combination with other prior-art references, may also render
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`obvious the asserted claims of the Counter-Asserted Patents. Each prior-art reference may also be
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`combined with information known to a POSITA at the time of the alleged invention, including
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`admissions describing the state of the art.
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`Applicable law does not require evidence of teaching(s), suggestion(s), and/or
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`motivation(s) to combine. Nevertheless, teaching(s), suggestion(s), and/or motivation(s) exist to
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`combine one or more prior-art references identified in the Exhibits and the Invalidity Charts
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`therein. Teachings, suggestions, and/or motivations to modify (or combine) one or more prior-art
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`references may derive or stem from, or be premised on: (i) the nature of the problem being solved;
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`(ii) the teachings (whether express or implied) of the prior art; (iii) the knowledge of a POSITA at
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`the time of the alleged invention; (iv) the fact that all of the prior-art references teach systems,
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`apparatuses, and methods related to the subject matter of the Counter-Asserted Patents or related
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`to a similar field of the patented technology covered in the Counter-Asserted Patents; and (v)
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`considerations of efficiency, effectiveness, convenience, cost-savings, and accessibility, to
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`combine the various teachings. Teachings, suggestions, and/or motivations to modify (or combine)
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`the one or more prior-art references may also derive from the problems or objectives identified in
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`the “Background,” “Summary of Invention,” and other relevant portions of the Counter-Asserted
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`Patents.
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`Combination of the one or more prior-art references identified in the Invalidity Chart may
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`also be supported by exemplary rationales supporting a conclusion of obviousness, including: (i)
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`a combination of prior art elements according to known methods to yield predictable results; (ii) a
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`substitution of one known element for another to obtain predictable results; (iii) use of a known
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`technique to improve similar systems, methods, and/or apparatuses in the same way; (iv) an
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`application of a known technique to known systems, methods, and/or apparatuses ready for
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`improvement to yield predictable results; (v) a choice of a finite number of identified, predictable
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`solutions, with a reasonable expectation of success; or (vi) a known work in one field of endeavor
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`prompting variations of it for use in either the same field or a different one based on design
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`incentives or other market forces.
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`Combination of the one or more prior-art references listed in the Exhibits, and identified in
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`the Invalidity Charts, may also be used to overcome any secondary considerations—objective
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`indicia—of non-obviousness2 advanced by Caterpillar. To the extent Caterpillar argues non-
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`obviousness on the basis of these secondary considerations, Wirtgen America reserves the right to
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`contest or combat these rationales. These rationales include: (i) the invention satisfied a long felt
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`but unmet need; (ii) the technology is contrary to the accepted teaching of experts in the field or
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`was received with skepticism by them; (iii) there is a long history of unsuccessful attempts to
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`overcome the problems solved by the new invention; (iv) the disclosed invention produced an
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`unexpected result; or (v) the invention is highly commercially successful.
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`B. Invalidity under 35 U.S.C. § 101
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`One or more of the asserted claims of the Counter-Asserted Patents are invalid because the
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`one or more claims fail to claim patent-eligible subject matter under 35 U.S.C. § 101.
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`Wirtgen America contends that the asserted claims of the ’538 Patent are directed to patent-
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`ineligible subject matter, including one or more abstract ideas and one or more laws of nature. In
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`particular, the claims are directed at least to the abstract idea of receiving data, using a database or
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`similar data structure, and outputting data, and to the idea of using a transmission to optimize fuel
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`2 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
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`efficiency. The claims are also directed to the laws of thermodynamics in a combustion engine.
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`The claims do not otherwise supply an inventive concept that transforms the abstract idea or law
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`of nature because the claims add nothing more than well-known, conventional, and routine
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`elements. Wirtgen America reserves the right to assert subject-matter ineligibility of the asserted
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`claims of the ’538 Patent based on other grounds during the normal course of discovery.
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`Wirtgen America further reserves the right to assert additional arguments of invalidity
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`under 35 U.S.C. § 101 based on the claim construction process, Caterpillar’s proposed claim
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`constructions, Caterpillar’s infringement contentions (including Caterpillar’s Initial Infringement
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`Contentions), Caterpillar’s expert reports, or other positions taken by Caterpillar in this case.
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`C. Invalidity under 35 U.S.C. § 112
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`One or more of the asserted claims of the Counter-Asserted Patents are invalid because the
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`one or more claims fail to satisfy the written description, definiteness, and/or enablement
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`requirements under 35 U.S.C. § 112.3
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`Wirtgen America contends that the asserted claims of the ’995 Patent are invalid under at
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`least 35 U.S.C. § 112, ¶1 and ¶2 for failing to inform, with reasonable certainty, a POSITA about
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`the scope of the invention. For example, claim 18 requires “a lifting column having a lifting column
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`axis and being adapted to controllably raise and lower said at least one ground engaging unit about
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`said axis relative to said machine frame.” ’995 Patent, 11:39-42. Additionally, claim 18 recites,
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`“said second actuator being positioned at a location linearly spaced apart from said first actuator
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`along said lifting column axis.” ’995 Patent, 11:50-52. Claim 45 similarly recites, “said second
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`actuatable means being positioned at a location spaced apart from said first actuatable means along
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`3 35 U.S.C. § 112 (pre-AIA) shall be applied with respect to the ’995 Patent, and 35 U.S.C. § 112
`(post-AIA) shall be applied with respect to the ’538 Patent and the ’618 Patent.
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 11 of 54 PageID #: 39590
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`an axis of said lifting column.” ’995 Patent, 14:45-48. Wirtgen America reserves the right to assert
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`invalidity of the asserted claims of the ’995 Patent under 35 U.S.C. § 112 on other grounds during
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`the normal course of discovery.
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`Wirtgen America contends that the asserted claims of the ’618 Patent are invalid under at
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`least 35 U.S.C. §§ 112(a)-(b) for failing to inform, with reasonable certainty, a POSITA about the
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`scope of the invention. For example, Caterpillar incorporates terms, such as the term “cold planer”
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`in independent claim 8 with no proper antecedent basis. As another example, Caterpillar alludes
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`to a second, third, fourth, fifth, and sixth plurality of nozzles and control valves, without proper
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`reference to these elements in the claims from which they depend. See ’618 Patent, at claims 2-6,
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`9-13. Wirtgen America reserves the right to assert invalidity of the asserted claims of the ’618
`Patent under 35 U.S.C. § 112 on other grounds during the normal course of discovery.
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`Wirtgen America further reserves the right to assert additional arguments of invalidity
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`under 35 U.S.C. § 112 based on the claim construction process, Caterpillar’s proposed claim
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`constructions, Caterpillar’s infringement contentions (including Caterpillar’s Initial Infringement
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`Contentions), Caterpillar’s expert reports, or other positions taken by Caterpillar in this case.
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`To the extent any of the asserted claims include terms governed by 35 U.S.C. § 112, ¶6
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`(pre-AIA) or 35 U.S.C. § 112(f) (post-AIA), Wirtgen America cites to corresponding structures in
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`the asserted prior-art references within the attached Invalidity Charts. Wirtgen America also sets
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`forth below terms that are subject to 35 U.S.C. § 112, ¶6. Caterpillar has not yet provided its
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`position on claim construction for any of the asserted claims. Wirtgen America therefore, cannot
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`provide a complete list of 35 U.S.C. § 112 defenses because Wirtgen America does not know
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`whether Caterpillar will proffer a construction for certain terms and phrases that is broader than,
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`or inconsistent with, the construction that would be supportable by the disclosure set forth in the
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`specification. Wirtgen America offers these contentions without prejudice to any position it may
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`ultimately take as to any claim construction issues. Accordingly, Wirtgen America reserves the
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`right to supplement, amend, and/or modify its contentions regarding 35 U.S.C. § 112, ¶6 (pre-
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`AIA) or 35 U.S.C. § 112(f) (post-AIA), as discovery progresses. Specifically, Claim 45 requires
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`“second actuatable means for rotating said at least one ground engaging unit between projecting
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`and retracted positions relative to said machine frame,” thus invoking § 112, ¶6.
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`D. Invalidity for Double Patenting
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`One or more of the asserted claims of the ’995 Patent are invalid based on non-statutory
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`double patenting, including (but not limited to) obviousness-type double patenting. Wirtgen
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`America contends that one or more of the asserted claims are invalid because the one or more of
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`the asserted claims are not patentably distinct from the claims of U.S. Patent No. 7,140,693 (“the
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`’693 Patent”).
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`Moreover, in an inter partes review (“IPR”) proceeding before the U.S. Patent and
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`Trademark Office, the Patent Trial and Appeal Board (“PTAB”) invalidated claims 1-3, 5, 6, 15-
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`19, 24-28, 36, and 38 of the ’693 Patent. See Case No. IPR2018-01201. Because one or more of
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`the asserted claims of the ’995 Patent are not patentably distinct from the claims of the ’693 Patent,
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`the asserted claims of the ’995 Patent are invalid on at least the grounds (and prior-art references
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`therein) asserted against the ’693 Patent in the IPR proceeding.
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`III. ACCOMPANYING DOCUMENT PRODUCTION
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`Pursuant to Paragraph 4 of the Default Standard, Wirtgen America shall produce to
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`Caterpillar the invalidating references listed and identified in the Invalidity Charts. Wirtgen
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`America reserves the right to continue to supplement its production as Wirtgen America obtains
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`additional prior-art references, documentation, and/or corroborating evidence concerning
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 13 of 54 PageID #: 39592
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`invalidity of the asserted claims of the Counter-Asserted Patents during the course of discovery.
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`
`
`YOUNG CONAWAY STARGATT & TAYLOR, LLP
`
`
`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
`
`Attorneys for Plaintiff Wirtgen America, Inc.
`
`
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`Dated: April 1, 2022
`
`OF COUNSEL:
`
`Ryan D. Levy
`Seth R. Ogden
`William E. Sekyi
`Scott M. Douglass
`Dominic A. Rota
`Mark A. Kilgore
`John F. Triggs
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`1600 Division Street, Suite 500
`Nashville, Tennessee 37203
`(615) 242-2400
`rdl@iplawgroup.com
`sro@iplawgroup.com
`wes@iplawgroup.com
`smd@iplawgroup.com
`dar@iplawgroup.com
`mak@iplawgroup.com
`jft@iplawgroup.com
`
`
`Daniel E. Yonan
`Paul A. Ainsworth
`R. Wilson Powers III
`Kyle E. Conklin
`Deirdre M. Wells
`Joseph H. Kim
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
`1100 New York Ave., NW, Suite 600
`Washington, DC 20005
`(202) 371-2600
`dyonan@sternekessler.com
`painsworth@sternekessler.com
`tpowers@sternekessler.com
`kconklin@sternekessler.com
`dwells@sternekessler.com
`josephk@sternekessler.com
`
`
`
`
`12
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 14 of 54 PageID #: 39593
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 1, 2022, true and correct copies of the foregoing document
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`were caused to be served upon Defendant/Counterclaim-Plaintiff Caterpillar Inc.’s counsel of
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`record in the manner indicated as follows:
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`
`
`Bindu A. Palapura
`POTTER ANDERSON & CORROON, LLP
`1313 N. Market Street, 6th Floor
`Wilmington, Delaware 19801
`bpalapura@potteranderson.com
`
`James C. Yoon
`Ryan R. Smith
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`650 Page Mill Road
`Palo Alto, California 94304
`jyoon@wsgr.com
`rsmith@wsgr.com
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`Lucy Yen
`WILSON SONSINI GOODRICH & ROSATI, P.C.
`1301 Avenue of the Americas
`40th Floor
`New York, New York 10019
`lyen@wsgr.com
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`Attorneys for Defendant Caterpillar, Inc.
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`YOUNG CONAWAY STARGATT & TAYLOR, LLP
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`/s/ Adam W. Poff
`Adam W. Poff (No. 3990)
`Samantha G. Wilson (No. 5816)
`Rodney Square
`1000 North King Street
`Wilmington, Delaware 19801
`(302) 571-6600
`apoff@ycst.com
`swilson@ycst.com
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`Attorneys for Plaintiff Wirtgen America, Inc.
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`13
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 15 of 54 PageID #: 39594
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`Invalidity of U.S. Patent No. 7,523,995
`
`EXHIBIT A
`
`
`Claims 18, 20, 21, 22, 23, 24, 26, 27, 29, 30, 31, 32, 33, 35, 45, 57, 58, 59, 60, 61, and 63 of U.S.
`Patent No. 7,523,995 (the “’995 Patent) are anticipated and/or rendered obvious under 35 U.S.C.
`§ 102 and 35 U.S.C. § 103(a) (pre-AIA).
`
`WO1997/042377A1 to Busley et al. (“Busley”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on November 13, 1997, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 4,541,652 to Deux et al. (“Deux”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on September 17, 1985, more than one year before
`the July 14, 2005 filing date of US 7,523,995.
`
`European Pat. Pub. No. 1039037A to Bitelli (“Bitelli ’037”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on September 27, 2000, more than one year
`before the July 14, 2005 filing date of US 7,523,995
`
`European Pat. Pub. No. 1001088A2 to Bitelli (“Bitelli ’088”) qualifies as prior art under at least
`35 U.S.C. §§ 102(a) and 102(b) because it was published on May 17, 2000, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 6,481,923 to Casters (“Casters”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on November 19, 2002, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 6,692,185 to Colvard (“Colvard”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on February 17, 2004, more than one year before
`the July 14, 2005 filing date of US 7,523,995.
`
`WO 2002/0103117A1 to Dubay (“Dubay”) qualifies as prior art under at least 35 U.S.C. §§ 102(a)
`and 102(b) because it was published on December 27, 2002, more than one year before the July
`14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 4,167,826 to Feliz (“Feliz”) qualifies as prior art under at least 35 U.S.C. §§ 102(a)
`and 102(b) because it was published on September 18, 1979, more than one year before the July
`14, 2005 filing date of US 7,523,995.
`
`U.S. Pat. No. 3,792,745 to Files (“Files”) qualifies as prior art under at least 35 U.S.C. §§ 102(a)
`and 102(b) because it was published on February 19, 1974, more than one year before the July 14,
`2005 filing date of US 7,523,995.
`
`U.S. Pat. No. 5,590,977 to Guntert (“Guntert”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on January 7, 1997, more than one year before the July
`14, 2005 filing date of US 7,523,995.
`
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`- 1 -
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 16 of 54 PageID #: 39595
`
`Invalidity of U.S. Patent No. 7,523,995
`
`U.S. Patent No. 3,843,274 to Gutman et al. (“Gutman”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on October 22, 1974, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 3,197,229 to Houlton (“Houlton”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on July, 27, 1965, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 3,236,324 to Levratto (“Levratto”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on February 22, 1966, more than one year before
`the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 4,237,994 to McColl (“McColl”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on December 9, 1980, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 4,566,553 to McCutcheon (“McCutcheon”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on January 28, 1986, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Pat. No. 4,029,165 to Miller (“Miller ’165”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on June 14, 1977, more than one year before the July
`14, 2005 filing date of US 7,523,995.
`
`U.S. Pat. No. 4,042,623 to Miller et al. (“Miller ’623”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on August 16, 1977, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 4,340,237 to Orlando (“Orlando”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on July 20, 1982, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Pat. Pub. No. 2003/0180092 to Piccoli (“Piccoli”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on September 25, 2003, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 6,106,073 to Simons et al. (“Simons”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on August 22, 2000, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 6,311,795 to Skotnikov et al. (“Skotnikov”) qualifies as prior art under at least 35
`U.S.C. §§ 102(a) and 102(b) because it was published on November 6, 2001, more than one year
`before the July 14, 2005 filing date of US 7,523,995.
`
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`- 2 -
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`Case 1:17-cv-00770-JDW Document 439-2 Filed 07/31/24 Page 17 of 54 PageID #: 39596
`
`Invalidity of U.S. Patent No. 7,523,995
`
`U.S. Patent No. 4,325,580 to Swisher, Jr. (“Swisher”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) because it was published on April 20, 1982, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 6,435,766 to Titford (“Titford”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on August 20, 2002, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 3,633,292 to Ulrich (“Ulrich”) qualifies as prior art under at least 35 U.S.C. §§
`102(a) and 102(b) because it was published on January 11, 1972, more than one year before the
`July 14, 2005 filing date of US 7,523,995.
`
`U.S. Pat. No. 4,360,293 to Wade (“Wade”) qualifies as prior art under at least 35 U.S.C. §§ 102(a)
`and 102(b) because it was published on November 23, 1982, more than one year before the July
`14, 2005 filing date of US 7,523,995.
`
`U.S. Patent No. 5,127,335 to Whitaker (“Whitaker”) qualifies as prior art under at least 35 U.S.C.
`§§ 102(a) and 102(b) b