SCOTT S. HOFFMANN
`Nevada Bar No. 8498
`LEWIS AND ROCA LLP
`50 West Liberty Street, Ste. 410
`Reno, Nevada 89501
`(775) 823-2900
`(775) 823-2929 (fax)
`shoffmann@lrlaw.com
`
`MARK T. GARRETT (Pro Hac Vice)
`BRANDON J. KARAM (Pro Hac Vice)
`FULBRIGHT & JAWORSKI L.L.P.
`98 San Jacinto Boulevard
`Suite 1100
`Austin, TX 78701-4255
`(512) 474-5201
`(512) 536- 4598
`mark.garrett@nortonrosefulbright.com
`brandon.karam@nortonrosefulbright.com
`
`Attorneys for Defendants Euro-Pro Operating LLC;
`Target Corporation; Bed Bath & Beyond Inc.;
`Sears, Roebuck and Co.; Kmart Corporation;
`Macy’s Retail Holdings, Inc.; BJ’s Wholesale Club, Inc.;
`Kohl’s Department Stores, Inc.; and Amazon.com, Inc.
`
`UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF NEVADA
`
`ACORNE ENTERPRISES, LLC,
`
`
`
`vs.
`
`Plaintiff,
`
`LLC;
`OPERATING
`EURO-PRO
`INC.; WAL-MART
`AMAZON.COM,
`STORES, INC.; TARGET CORPORATION;
`BED BATH & BEYOND INC.; SEARS,
`ROEBUCK
`AND
`CO.;
`KMART
`CORPORATION;
`MACY’S
`RETAIL
`HOLDINGS, INC.; KOHL’S DEPARTMENT
`STORES, INC.; BJ’S WHOLESALE CLUB,
`INC.
`
` Defendants.
`
`Case No. 3:12-cv-00602-RCJ-WGC
`
`DEFENDANTS’ FIRST AMENDED
`DISCLOSURE OF INVALIDITY
`CONTENTIONS
`
`DEFENDANTS’ FIRST AMENDED DISCLOSURE OF INVALIDITY
`CONTENTIONS
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`Pursuant to Local Rule 16.1-8 and the Stipulation and Order to Amend the Discovery Plan
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`and Scheduling Order (Dkt. 94), Defendants Euro-Pro Operating LLC, Target Corporation, Bed
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`Bath & Beyond Inc., Sears, Roebuck and Co., Kmart Corporation, Macy’s Retail Holdings, Inc.,
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`BJ’s Wholesale Club, Inc., Kohl’s Department Stores, Inc., and Amazon.com, Inc. (collectively
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`“Defendants”) provide their First Amended Disclosure of Invalidity Contentions (“Invalidity
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`Contentions”) in Exhibits A-F and the accompanying document production. Defendants’
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`Invalidity Contentions and accompanying document production demonstrate that claims 1, 13, and
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`14 of U.S. Patent No. 6,515,262 (“the ’262 Patent”) and claims 1 and 12 of U.S. Patent No.
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`6,624,392 (“the ’392 Patent”) (collectively “the Asserted Claims”) are invalid.
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`Defendants do not know what Acorne intends to contend qualifies as “corresponding
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`structure” under 35 U.S.C. § 112(6) for the three means-plus-function elements in claim 1 of the
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`’262 and ’392 Patents. Acorne has not shared this information. Nevertheless, Defendants provide
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`detailed Invalidity Contentions based on how Acorne may be interpreting the claims. Defendants
`
`reserve the right to modify these Invalidity Contentions should Acorne be given an opportunity to
`
`amend its Infringement Contentions. Defendants further reserve the right to modify these
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`Invalidity Contentions with information learned during discovery, such as from Acorne and/or
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`third parties.
`
`I.
`
`STATE OF THE PRIOR ART
`
`Cookers like those disclosed in the ’262 Patent and the ’392 Patent have existed for nearly
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`a century. Two of Defendants’ four charted prior art references were filed in 1936, which serves
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`to highlight the age of the concepts that Acorne contends were inventive in 2001. See U.S. Patent
`
`Nos. 2,138,706 (“Myers”); 2,187,888 (“Nachumsohn”). In 1936, Myers and Nachumsohn both
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`recognized a need to provide a single cooking appliance that could perform various cooking
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`functions to, for example, maximize space in a kitchen. See, e.g., Myers, 1:6-10 (disclosing a
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`cooking appliance that can “perform a variety of cooking operations which [were previously]
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`obtainable only by the use of several appliances or by the use of a cooking range of much greater
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`capacity”); Nachumsohn, 1:15-19 (disclosing “an improved cooking means capable of meeting the
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`diversified phases in the general art of cooking, such as baking, searing, scalloping, steaming,
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`stewing and so forth”).
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`Only a few structural variations are available to heat a single cooking appliance such that it
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`can perform multiple cooking functions. For this reason, numerous prior art cooking appliances
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`with the same objective have disclosed the same or similar features for years prior to the filing of
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`the ’262 Patent and the ’392 Patent. For example, one can vary: (1) the location of the heating
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`element(s) (e.g., to be located at the bottom and/or side of the cooking appliance), (2) which
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`heating element to energize and for how long (e.g., energizing only a bottom heating element, only
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`a side heating element, and/or both a bottom and a side heating element), (3) the power provided
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`to the heating element(s) (e.g., to raise and lower temperature), and (4) the type of heating
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`element(s) (e.g., inductive or resistive).
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`It is a combination of these limited variations that Acorne contends is inventive. However,
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`each of these variations is reflected in prior art that was well-known years before the filing of
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`Acorne’s patents. Moreover, combinations of these variations in a single cooking appliance was
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`also well-known in the art years before the filing of Acorne’s patents. Acorne cannot now
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`credibly contend that its claimed cooker—comprised of a combination of well-known cooker
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`components that have been used in predictable ways for the same or similar reasons since the early
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`1900s—is inventive.
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`II.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`A person having ordinary skill in the art is someone with multiple years of experience
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`designing cooking appliances such as cookers, including designing control systems and/or heating
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`elements for cooking appliances such as cookers, such as primarily engineers (electrical and/or
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`mechanical) but also others with equivalent experience.
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`III.
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`ALL CLAIM ELEMENTS WERE WELL-KNOWN COOKER COMPONENTS
`THAT FUNCTIONED PREDICTABLY
`
`A.
`
` Bottom and Side Heating Elements Were Well-Known in the Art and
`Functioned Predictably to Heat Cookers
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`Bottom and side heating elements are prevalent heating elements for cookers, and
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`positioning heating elements at bottom and side locations has been well-known in the art at least
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`since the 1930s. Claim 15 of both the ’262 Patent and the ’392 Patent is written in Jepson form
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`and highlights Acorne’s admission that a cooker having a bottom heating element was known in
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`the prior art. This admission is well-supported by the prior art cited in Defendants’ Invalidity
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`Contentions.
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`Claim 15 of both the ’262 Patent and the ’392 Patent also indicates the claim elements that
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`Acorne believes to be inventive, which include the addition of a wrap-around side heating element
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`to a cooker that has a bottom heating element.1 But as early as 1936, the prior art discloses
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`numerous cookers having both bottom and wrap-around side heating elements. See, e.g., Myers
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`and Nachumsohn. In 1952, a publication discussing roasters describes roasters as having “heating
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`elements placed around the sides and on the bottom so that the entire inside of the roaster, and the
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`food in it, is brought up to cooking temperature.” William H. Crouse, Everyday Household
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`Appliance Repairs 88 (1952) (emphasis added). And again in 1976, an article about slow cookers
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`indicated that a heating element can be “located either on the bottom of the shell, or along the
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`sides and bottom, distributing heat evenly to all outside areas of the liner.” Janice M. Weber,
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`Choosing and Using a Slow Cooker, Oregon State University Extension Service, Extension
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`Circular 896 (June 1976) (emphasis added).
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`Thus, the prior art makes clear that cookers having both a bottom and a wrap-around side
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`heating element have been well-known since at least as early as the 1930s, and the bottom and
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`1 Notably, every reference cited by the inventor to the USPTO did not disclose a cooker having
`both a bottom and a wrap-around heating element, further evidencing the inventor’s view that this
`combination was inventive.
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`wrap-around side heating elements functioned predictably to heat the cooker in the respective
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`location.
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`B.
`
` Enabling Multiple Heating Elements to Be Selectively Energized Was
`Well-Known in the Art and Functioned Predictably to Provide Various
`Cooking Functions
`
`It is also not new that the ’262 Patent and the ’392 Patent claim a bottom and wrap-around
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`heating element that are enabled to be selectively energized. Again, the Jepson form of claim 15
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`of both the ’262 Patent and the ’392 Patent indicates that the inventor believed multi-function
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`control switch element to be part of his allegedly inventive combination.
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`However, providing a cooking appliance with multiple heating elements that can be
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`selectively energized was well-known in the art as one way of allowing a single cooking appliance
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`to have various cooking functions. For example, in 1954, prior art relating to electric range ovens
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`disclosed upper and lower heating elements and a manual switch “selectively operative to
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`establish different electrical heating connections between the heating elements and the source of
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`current supply.” See U.S. Patent No. 2,778,914 (the ’914 Patent), 1:14-21. This enabled the
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`ovens to “carry out different broiling and baking operations.” See U.S. Patent No. 2,778,914,
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`1:24-26.
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`Enabling selective energization of heating elements was similarly present in cooker prior
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`art for the same reason. For example, U.S. Patent No. 6,274,847 (“Hlava”) discloses a manual
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`switch that enables Hlava’s heating elements to be selectively energized. See, e.g., Hlava, 7:64-67
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`– 8:1-32. Which of Hlava’s heating elements is energized distinguishes between Hlava’s slow
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`cook function and roaster function. See, e.g., Hlava, 7:64-67 – 8:1-32; see also 1:57-59 (“[I]t is
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`desirable to have both a roaster and slow cooker in order to accommodate a wide variety of
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`cooking situations.”). Similarly, U.S. Patent No. 5,512,733 (“Takikawa”) discloses a manual
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`switch that enables Takikawa’s heating elements to be selectively energized. See Takikawa, 10:63
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`– 11:27. Takikawa’s selective energization of its heating elements makes it possible to “set
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`complicated cooking programs,” and distinguishes between sautéed food and curry cooking
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`modes. See Takikawa, 11:24-27.
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`Therefore, it was well-known in the prior art that a cooker could enable multiple heating
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`elements to be selectively energized, and enabling such selective energization functioned
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`predictably to heat the cooker in various locations in various combinations to provide various
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`cooking modes.
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`C.
`
` Regulating the Power (and Thus Temperature) of Heating Element(s) Was
`Well-Known in the Art and Functioned Predictably to Provide Various
`Cooking Functions
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`Yet another well-known way to enable a single cooking appliance to provide more than
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`one cooking mode was to regulate the temperature of a cooking appliance’s heating elements. The
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`’914 Patent filed in 1954, which was previously discussed because it disclosed the ability to
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`selectively energize heating elements, also disclosed temperature regulation of the cooking
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`appliance’s heating elements. The ’914 Patent elaborates on how a temperature control can assist
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`in providing a cooking appliance with various cooking operations. See, e.g., the ’914 Patent, 5:41-
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`75 (comparing the broiling operation and the baking operation).
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`Temperature regulation was well-known with respect to cookers as well. For example, as
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`early as 1936, cookers comprised thermostatic elements that enabled a user to control the
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`temperature of the cooker’s heating elements. See Myers, 3:65-71; Nachumsohn, 3:31-34. Hlava
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`similarly discloses a thermostat that is controllable by a knob, permitting a user to set a
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`temperature. The ability to set a temperature distinguishes Hlava’s slow cooking function from its
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`roasting function. See Hlava, 6:40-42.
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`Thus, it was well-known in the prior art that a cooker could provide a user with a control to
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`regulate temperature, and this control functioned predictably to permit regulation of the
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`temperature of a cooker’s heating elements to allow for various cooking modes.
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`D.
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` The Heating Element Types and Configurations Disclosed in Acorne’s
`Patents Were Well-Known in the Art and Functioned Predictably to Heat
`Cookers
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`It was also well-known in the art that the type and configuration of cooker heating
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`elements could be varied. For example, it was well-known in the art that a cooker could use
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`resistive heating elements (e.g., Hlava, Myers, Nachumsohn) or inductive heating elements (e.g.,
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`Takikawa). Resistive heating elements are often less expensive to use than inductive heating
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`elements, see, e.g., U.S. Patent No. 5,580,594; however, inductive heating elements have a greater
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`efficiency and heat in a shorter period of time. See, e.g., U.S. Patent No. 6,150,636. Both
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`resistive and inductive heating elements function predictably to heat cookers, and the choice of
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`which to use would have likely been a product of design preference and/or market forces.
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`The ’262 Patent and the ’392 Patent jointly disclose three types of heating elements: (1) a
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`mica heating element, (2) a hot plate heater, and (3) an inductive heater. However, these three
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`types of heating elements are not inventive and are well known to heat cookers – and, in some
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`cases, have been for decades. See, e.g., Nachumsohn (disclosing a sheathed mica heating element
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`for a cooker in 1936). For example, one of the two resistive heating elements recommended for
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`slow cookers in “Integrating Electrical Heating Elements in Appliance Design” is a sheathed mica
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`heating element, which is the same as or equivalent to the mica heating element structure recited
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`in the ’262 Patent and the ’392 Patent. Compare Thor Hegbom, Integrating Electrical Heating
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`Elements in Appliance Design, 315, 379 (Marlin O. Thurston et al. eds., 1997) with the ’392
`
`Patent, 4:50 – 5:33. As another example, the second of two resistive heating elements
`
`recommended for slow cookers in “Integrating Electrical Heating Elements in Appliance Design”
`
`is a metal-sheathed tubular heating element that can be casted into a plate, which is the same as or
`
`equivalent to the hot plate heater recited in the ’392 Patent. Compare Thor Hegbom, Integrating
`
`Electrical Heating Elements in Appliance Design, 297, 379 (Marlin O. Thurston et al. eds., 1997)
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`with the ’392 Patent, 6:30-35 (“[T]ubular heating element 121 is contained within semicircular
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`channels 125 formed within a cast aluminum heating plate 122 . . . .”). Finally, the disk-like
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`induction heater described in the ’392 Patent (and any other structures deemed to be
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`“corresponding” (e.g., a fan, a heat sink, and the like)), was similarly disclosed in the prior art as a
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`cooker heating element. See, e.g., U.S. Patent No. 5,430,273, 3:57-59 (“The induction generating
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`or producing means 14 comprise an induction coil 30 in the form of a flat, disk-like or circular
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`plate . . . .”).
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`Therefore, each of the heating element types and configurations disclosed in the ’262
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`Patent and the ’392 Patent were well-known in the art long before the filing of the ’262 Patent and
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`the ’392 Patent, and each of them functioned predictably to heat cookers.
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`IV.
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`NONE OF THE ASSERTED CLAIMS RECITES ANY ENGINEERING OR
`MANUFACTURABILITY STANDARDS
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`Euro-Pro is in the business of making and selling goods, like cookers, that are well-made
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`and that consumers enjoy. The process of designing, developing, and manufacturing goods that
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`function well and that consumers trust can be time-consuming and expensive. None of the
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`engineering limitations on what it takes for a company like Euro-Pro to produce a mass-
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`manufacturable, commercially-successful product are present in Acorne’s asserted patent claims.
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`See Geo. M. Martin Co. v. Alliance Mach. Sys. Int'l, LLC, 618 F.3d 1294, 1302-03 (Fed. Cir.
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`2010) (noting absence of “engineering details” or “commercial production standard” in claims
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`held to be obvious); Wyers v. Master Lock Co., 616 F.3d 1231, 1243 (Fed. Cir. 2010) (rejecting
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`patent owner’s argument that one of ordinary skill in the art would not have had a reasonable
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`expectation of success in arriving at the claimed invention because of an expectation related to the
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`shear forces that could be expected in practice, and noting that “the claims do not require any
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`particular resistance to shear forces or any particular towing strength associated with the towing
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`pin or sleeve”).
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`V.
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`PHYSICAL COMBINABILITY
`OBVIOUSNESS
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`IS NOT REQUIRED TO ESTABLISH
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`Even though the law does not require physical combinability of references to establish
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`obviousness, In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012), it would have been a
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`straightforward task for someone of ordinary skill in the art to modify the charted references as
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`discussed in those charts. The Supreme Court’s obvious analysis in KSR shows why any
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`contention that prior art references must be physically combinable is improper. The patent claim
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`at issue there was for a mechanical device – a vehicle control pedal with several mechanical
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`components. KSR v. Teleflex, 550 U.S. 398, 410-11 (2007). The Court combined the teachings of
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`four different references in finding the claim obvious. Id. at 422-26. However, in doing so, the
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`Court did not analyze what engineering steps would have been necessary to actually physically
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`combine the different components of the four references. Id.
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`VI.
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`CONCLUSION
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`There are a finite number of ways to heat a single cooking appliance such that it can
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`provide various cooking functions. The ’262 Patent and the ’392 Patent claim well-known
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`combinations of well-known components that function predictably. Each of the four charted
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`references discloses an objective to perform various cooking functions (much like an objective of
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`the ’262 Patent and the ’392 Patent); and therefore, due to the finite number of ways to achieve
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`such an objective, each of the four charted references discloses nearly every element of the
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`Asserted Claims – even the two references filed almost 80 years ago. To the extent that an
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`element is not disclosed in a charted reference, it would have been obvious to someone of ordinary
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`skill in the art at whatever time Acorne alleges the claimed invention(s) to have been made (which
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`is a contention that is common among all of the claim charts) to modify the reference with any
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`number of references (as detailed in Defendants’ Invalidity Contentions) because the components
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`and combinations of components were well known and functioned in predictable ways to those of
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`ordinary skill in the art. For at least the reasons described above and in Defendants’ Invalidity
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`Contentions, each of the Asserted Claims in the ’262 Patent and the ’392 Patent is invalid.
`
`September 20, 2013
`
`By: __/s/ Mark T. Garrett _____________
`
`SCOTT S. HOFFMANN, ESQ.
`Nevada Bar No. 8498
`LEWIS AND ROCA LLP
`50 West Liberty Street, Ste. 410
`Reno, Nevada 89501
`(775) 823-2900
`(775) 823-2929 (fax)
`shoffmann@lrlaw.com
`
`MARK T. GARRETT (Pro Hac Vice)
`BRANDON J. KARAM (Pro Hac Vice)
`FULBRIGHT & JAWORSKI L.L.P
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`Tel: 512.474.5201
`Fax: 512.536.4598
`mark.garrett@nortonrosefulbright.com
`brandon.karam@nortonrosefulbright.com
`
`Attorneys for Defendants Euro-Pro Operating
`LLC; Target Corporation; Bed Bath & Beyond
`Inc.; Sears, Roebuck and Co.; Kmart
`Corporation; Macy’s Retail Holdings, Inc.;
`BJ’s Wholesale Club, Inc.; Kohl’s Department
`Stores, Inc.; and Amazon.com, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 20, 2013, I served by electronic mail a true and accurate
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`copy of the foregoing document entitled, DEFENDANTS’ FIRST AMENDED DISCLOSURE
`
`OF INVALIDITY CONTENTIONS, on the following counsel for Plaintiff:
`
`(cid:120) Brian R. Irvine (birvine@gordonsilver.com)
`(cid:120) Andrew G. Hamill (ahamill@bchllp.com)
`(cid:120) Bradford J. Black (bblack@bchllp.com)
`(cid:120) Peter H. Chang (pchang@bchllp.com)
`
`Dated: this 20th day of September, 2013.
`
`/s/
`
`Mark T. Garrett_____
`Mark T. Garrett
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`53002821.1
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`-11-
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`

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`MYERS 1936 COOKER INVALIDITY CLAIM CHARTS – EXHIBIT B
`
`Exhibit B demonstrates that the Myers 1936 cooker renders each of the asserted claims obvious. Myers was filed June 18, 1936 by inventor Joseph W.
`Myers (“Myers”) and issued November 29, 1938 as U.S. Patent No. 2,138,706. This chart is written in greater detail than would be required for
`someone of ordinary skill to understand. The claim language issues identified in Euro-Pro’s Non-Infringement Claim Chart for a given claim element
`are incorporated below with respect to the same element, even if not explicitly identified. Throughout this exhibit, the statement “IT WOULD HAVE
`BEEN OBVIOUS” and “WOULD HAVE BEEN OBVIOUS” are shorthand for “It would have been obvious to one of ordinary skill in the pertinent art
`at the time at which Acorne asserts the inventor made the alleged invention.”
`
`All of the asserted claim limitations and the prior art components discussed in the claim charts are simple mechanical or electrical parts that were well
`known in the pertinent art prior to 2001 and that functioned predictably in all combinations.
`
`Acorne’s U.S. Patent No. 6,515,262
`(“the ’262 Patent”)
`
`Claim 1
`1. A deep well cooker comprising:
`
`Myers (U.S. Patent No. 2,138,706) (filed June 18, 1936)
`
`
`Myers discloses a cooker that has a deep well member (receptacle 1b). See, e.g., Myers, FIG. 2.
`
`Though Myers discloses the deep well cooker of claim 1, Acorne contends that the claim 1 preamble
`of the ’262 Patent does not limit the scope of claim 1. Third Amended Infringement Contentions,
`Ex. A. Therefore, the claim 1 preamble should not be considered a claim limitation that Myers
`must disclose to render the ’262 Patent invalid.(cid:3)
`
`(cid:3)
`
`(cid:3)
`
`1
`
`

`
`an outer housing having a lid member(cid:31)
`
`Myers discloses an outer housing (receptacle 1a) having a lid member (lid 8), as depicted below.
`See, e.g., Myers, FIGS. 6 (cid:31) 12. Lid 8 can be “hingedly operated in respect to the vessel.” Myers,
`2:3(cid:31)-(cid:31)0.1
`
`a deep well member residing within said
`housing, said deep well member having a bottom
`surface with integrally formed sidewalls and an
`open top(cid:31)
`
`Myers discloses a deep well member (receptacle 1b) residing within an outer housing (receptacle
`1a). See Myers, FIG. 2. Further, Myers’s deep well member (receptacle 1b) has a bottom surface
`(labeled below) with integrally formed sidewalls (labeled below) and an open top (in which
`receptacle 1c is disposed). See FIG. 2. Without conceding the meaning of “sidewalls,” which is
`unclear as described in Euro-Pro’s Non-Infringement Claim Chart, receptacle 1b is no different than
`the structure of the Accused Products that Acorne has accused of meeting the claimed “deep well
`member,” and thus also meets the claimed deep well member.
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`1(cid:3) In this document, a notation such as 2:3(cid:31)-(cid:31)0 is shorthand for column 2, lines 3(cid:31)-(cid:31)0. In certain cases, a given notation may have been hand-counted from the top of the column(cid:31) in
`other cases, the notation may be provided based on the location of the line numbers alongside the column, and may not be accurate. Defendants reserve the right to amend any of the
`notations provided in this document if an ob(cid:31)ection is raised about their clarity.(cid:3)
`
`2
`
`

`
`heating means including a bottom heating
`element and a wrap-around heating element
`radially disposed about said deep well member
`and positioned intermediate said housing and
`said deep well member(cid:31)
`
`Outer(cid:3)Housing
`
`Deep(cid:3)Well(cid:3)
`Member
`
`Integrally(cid:3)Formed(cid:3)
`Sidewalls(cid:3)
`
`Bottom(cid:3)Surface
`
`Myers discloses heating means including a bottom heating element (heating unit 7). See Myers,
`FIG. 2(cid:31) 1:(cid:31)1-(cid:31)(cid:31) (“(cid:31)A(cid:31) second electrical heating unit 7 is disposed within the bottom of the vessel
`ad(cid:31)acent receptacle 1b and extends substantially throughout the area of the bottom.”). Acorne
`appears to contend that claim 1 of the ’262 Patent covers the Accused Products, even though the
`bottom heating element of the Accused Products is positioned above any alleged deep well member
`(cid:31)(cid:31)(cid:31)(cid:31)“intermediate” any alleged housing and deep well member. Third Amended Infringement
`Contentions, Ex. A. Moreover, even if the claim language does not explicitly require that the
`bottom heating element be positioned intermediate the outer housing and the deep well member, the
`claim is limited to such a bottom heating element under 3(cid:31) U.S.C. (cid:31) 112(6) as explained in
`Euro-Pro’s Non-Infringement Claim Chart. Therefore, based on Acorne’s infringement
`contentions (which operate as an admission usable against Acorne), prior art that discloses (cid:31)(cid:31)(cid:31)
`bottom heating element (cid:31) regardless of the bottom heating element’s position relative to the housing
`and the deep well member (cid:31) discloses the bottom heating element of claim 1 of the ’262 Patent.
`
`Nevertheless, Myers’s bottom heating element (heating unit 7) is positioned intermediate Myers’s
`outer housing (receptacle 1a) and deep well member (receptacle 1b) in accordance with the claim
`language and as depicted below. See Myers, FIG. 6.
`
`Further, Myers discloses heating means including a wrap-around heating element (heating unit 6).
`See Myers, FIG. 2(cid:31) 1:(cid:31)8-(cid:31)1 (“An electrical heating unit 6 is disposed within the side wall ad(cid:31)acent
`receptacle 1b and surrounds the interior space of the vessel . . . .”). Myers’s wrap-around heating
`3
`
`

`
`element (heating unit 6) is positioned intermediate Myers’s outer housing (receptacle 1a) and deep
`well member (receptacle 1b), as depicted below. See Myers, FIG. 2.
`
`Outer(cid:3)Housing
`
`Wrap(cid:882)Around(cid:3)
`Heating(cid:3)Element(cid:3)
`
`Deep(cid:3)Well(cid:3)
`Member
`
`
`
`
`
`Bottom(cid:3)Heating(cid:3)Element(cid:3)
`To the extent the bottom heating element and the wrap-around heating element required by claim 1
`must be the same as or equivalent to the heating elements in Myers that qualify as “corresponding
`structure” under 3(cid:31) U.S.C. (cid:31) 112(6) (which are heating elements 38 and (cid:31)0, as more fully explained
`in Euro-Pro’s Non-Infringement Claim Chart), IT WOULD HAVE BEEN OBVIOUS to use
`wire-wrapped mica heating element for Myers’s bottom heating element (heating unit 7) and
`wrap-around heating element (heating unit 6) that is the same as or equivalent to such corresponding
`structure. First, Myers makes clear that heating units 6 and 7 “may take any suitable form and may,
`for example, comprise units of the general type employed in appliances of this general nature.” See
`Myers, 1:(cid:31)(cid:31) (cid:31) 2:1-3. Additionally, sheathed mica heating elements were well-known in the
`pertinent art. For example, as far back as 1936, cooker patent applicants were disclosing
`wire-wrapped mica heating elements to heat cookers. See, e.g., U.S. Patent No. 2,292,8(cid:31)(cid:31), 1:(cid:31)1-(cid:31)(cid:31)
`(cid:31)2:1-(cid:31) (“The heating element . . . comprises a strip of mica 29 having spaced notches 30 in its upper
`and lower edges, a ribbon 31 of suitable heat resisting metal being wound upon this mica strip and
`through the notches 30.”). U.S. Patent No. 2,292,8(cid:31)(cid:31) further discloses “(cid:31)s(cid:31)trips 33 of mica or the
`like (cid:31)(cid:31) located upon each side of the (cid:31)wire-wrapped mica(cid:31) heating element” (cid:31) the same or equivalent
`configuration as the corresponding structure recited in the ’262 Patent. (cid:31)(cid:31)(cid:31)(cid:31)(cid:31)(cid:31)e U.S. Patent No.
`2,292,8(cid:31)(cid:31), 1:(cid:31)1-(cid:31)(cid:31) (cid:31) 2:1-8 (cid:31)(cid:31)(cid:31)(cid:31) the ’262 Patent, (cid:31):28 (cid:31) (cid:31):11.
`
`(cid:31)
`
`

`
`The(cid:3)’262(cid:3)Patent(cid:3)
`
`U.S.(cid:3)Patent(cid:3)No.(cid:3)2,292,854(cid:3)
`
`Furthermore, one of the two heating elements recommended for slow cookers in “Integrating
`Electrical Heating Elements in Appliance Design” is a sheathed mica heating element. Thor
`Hegbom, Integrating Electrical Heating Elements in Appliance Design 379 (Marlin O. Thurston et
`al. eds., 1997). In fact, the “most common” sheathed mica heating element (cid:31) “a ribbon of
`resistance material wound around a mica strip and insulated on both sides by mica strips” (cid:31) is the
`same as or equivalent to the corresponding structure recited in the ’262 Patent. (cid:31)(cid:31)(cid:31)(cid:31)(cid:31)(cid:31)e (cid:31)(cid:31). at 31(cid:31)
`(cid:31)(cid:31)(cid:31)(cid:31)the ’262 Patent, (cid:31):28 (cid:31) (cid:31):11.
`
`Rationale for O(cid:31)(cid:31)iousness(cid:31)
`
`Simple Substitution of One (cid:31)nown Element for Another to Obtain Predictable (cid:31)esults:
`
`Myers makes clear that its heating elements “may take any suitable form and may, for example,
`comprise units of the general type employed in appliances of this general nature.” See Myers, 1:55
`– 2:1-3. IT WOULD HAVE BEEN OBVIOUS for a person of ordinary skill in the art to substitute
`Myers’s bottom heating element (heating unit 7) and wrap-around heating element (heating unit 6)
`with either of the well-known sheathed mica heating element configurations identified above, and
`the combination would yield nothing more than predictable results to that person (i.e., heating the
`cooker). See KSR International Co. v Teleflex Inc., 550 U.S. 398, 416 (2007); compare Third
`Amended Infringement Contentions, Ex. A at 6 (describing the function of the Accused Products’
`alleged wrap-around heating element as “heating”) with Myers, 4:23-24. (describing Myers’s
`heating units 6 and 7 as able to be “energized to heat the vessel”).
`
`Obvious to Try:
`
`IT WOULD HAVE BEEN OBVIOUS to try a sheathed mica heating element for Myers’s bottom
`heating element (heating unit 7) and wrap-around heating element (heating unit 6) because of the
`finite number of heating elements available to heat cookers. A person of ordinary skill in the art
`
`(cid:31)
`
`

`
`temperature controlling means electrically
`interconnected to said heating means for
`regulating the temperature of said heating
`elements; and
`
`has good reason to pursue the known options within his or her technical grasp. See KSR
`International Co. v Teleflex Inc., 550 U.S. 398, 421 (2007). There are a finite number of heating
`elements that a person of ordinary skill in the art can select for cooking appliances. See(cid:31) e.(cid:31)., Thor
`Hegbom, Integrating Electrical Heating Elements in Appliance Design 379 (Marlin O. Thurston et
`al. eds., 1997). It is not the product of innovation, but of ordinary common sense, to use the
`well-known sheathed mica heating element selected from a finite number of heating elements for
`cooking appliances for Myers’s bottom heating element (heating unit 7) and wrap-around heating
`