IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`CASE NO. 5:17-cv-02318
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`
`JUDGE SARA LIOI
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`Jury Trial Demanded
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`)))))))))))
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`FREE-FLOW PACKAGING
`INTERNATIONAL, INC.,
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`Plaintiff,
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`vs.
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`AUTOMATED PACKAGING SYSTEMS,
`INC.,
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`Defendant.
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`PLAINTIFF FREE-FLOW PACKAGING INTERNATIONAL, INC.’S
`VALIDITY AND ENFORCEABILITY CONTENTIONS
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`
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 1 of 74
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`

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`CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
`LOCAL PATENT RULE 3.7(A) .........................................................................................2
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`I.
`II.
`
`A.
`B.
`C.
`D.
`E.
`F.
`G.
`H.
`
`Automated’s Identification of Prior Art Is Deficient ...............................................3
`Automated’s Invalidity Contentions Are Insufficient ..............................................4
`Alleged Invalidity Based on Collateral Estoppel .....................................................8
`Level of Ordinary Skill in the Art ............................................................................9
`Legal Standards ......................................................................................................10
`FPI’s Responsive Charts Pursuant to Local Patent Rule 3.7(a) .............................12
`Objective Indicia of Non-Obviousness ..................................................................13
`Alleged Invalidity Based on Lack of Written Description, Enablement, or
`Indefiniteness .........................................................................................................16
`
`III.
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`LOCAL PATENT RULE 3.7(B) .......................................................................................62
`
`A.
`B.
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`The Alleged Withholding of the Virginia Court’s JMOL Decision ......................64
`The Alleged Withholding of the Federal Circuit’s Decision in Pregis .................67
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`IV.
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`LOCAL PATENT RULE 3.7(C) .......................................................................................70
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`
`i
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`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 2 of 74
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`

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`I.
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`INTRODUCTION
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`Pursuant to Local Patent Rule 3.7 and the Case Management Plan (Dkt. No. 135 at 2),
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`Plaintiff Free-Flow Packaging International, Inc. (“FPI”) hereby serves its Validity and
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`Enforceability Contentions (“Contentions”) for U.S. Patent Nos. 9,003,743 (“the ’743 patent”)
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`and 8,323,774 (“the ’774 patent”) (collectively, “asserted patents”).
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`FPI provides these Contentions based on its investigation to date, and without the benefit
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`of full discovery. As such, FPI’s Contentions are necessarily preliminary in nature. Moreover,
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`because Defendant Automated Packaging Systems, Inc.’s (“Automated”) Invalidity and
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`Unenforceability Contentions suggested it may disclose additional prior art and contentions, FPI
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`reserves the right to amend, modify, or supplement these Contentions in accordance with Local
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`Patent Rule 3.10 and to the extent permitted by the Federal Rules of Civil Procedure, this Court,
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`and its Local Patent Rules. FPI also reserves the right to rely on any facts, documents, or other
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`evidence that is subsequently discovered, determined to be relevant for any purpose, or omitted
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`from these Contentions or the accompanying production.
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`The Court has not yet construed any claim term of the asserted patents. Without a claim
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`construction order, FPI provides these Contentions based on the plain and ordinary meaning to a
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`person of ordinary skill in the art consistent with the intrinsic evidence of the asserted patents.
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). However, even if a more broad reading
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`of the asserted claims is used, they are still valid and not anticipated or rendered obvious by the
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`references Automated relies upon. FPI reserves the right to amend, modify, or supplement these
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`Contentions following the Court’s construction of any claim term of the asserted patents, or any
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`position that Automated, its fact witnesses, or its expert witnesses may take concerning claim
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`interpretation, infringement, invalidity, or enforceability. Nothing herein should be construed as
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`an admission regarding the construction of any claim term. FPI reserves the right to challenge
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`1
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`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 3 of 74
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`any of Automated’s proposed claim constructions and propose alternative constructions to those
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`that Automated has advocated for, may advocate for, or that it expressly or implicitly relies on.
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`FPI reserves the right to rely on expert testimony, including testimony from any expert
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`Automated identifies. FPI will produce documents related to expert testimony in accordance
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`with the Local Patent Rules and the Case Management Plan. See Dkt. No. 135 at 1-2.
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`Automated served its Invalidity and Unenforceability Contentions on February 16, 2018.1
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`As discussed in detail below, these contentions are deficient. FPI reserves the right to object,
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`strike, or otherwise exclude or respond to Automated’s indication that prior art not included in its
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`contentions, whether or not currently known to Automated, may become relevant depending on
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`the claim constructions ultimately adopted by the Court. See, e.g., IC at 3. FPI also reserves the
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`right to object, strike, or otherwise exclude or respond to Automated’s contentions because they
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`are merely “exemplary” and “representative” (see, e.g., id. at 9-10), and thus do not provide a
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`complete invalidity analysis as required by the Local Patent Rules. FPI further reserves the right
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`to object, strike, or otherwise exclude or respond to any additional obviousness combinations of
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`the references or references not already identified by Automated, as well as Automated’s ability
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`to use such references or combinations for any purpose in this litigation.
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`II.
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`LOCAL PATENT RULE 3.7(A)
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`For at least the reasons set forth in detail below, FPI contends that all claims of the
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`asserted patents are valid and enforceable.
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`1 FPI refers to the invalidity portion of Automated’s contentions as “Invalidity Contentions” or
`“IC”; to the unenforceability portion as “Unenforceability Contentions” or “UC”; and to them
`collectively as “Automated’s Invalidity and Unenforceability Contentions.”
`
`2
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 4 of 74
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`A.
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`Automated’s Identification of Prior Art Is Deficient
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`Automated’s identification of prior art pursuant to Local Patent Rule 3.5 is deficient for
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`myriad reasons, and FPI therefore provides the following objections and responses.
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`First, while Automated identifies 15 alleged prior art references in response to Local
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`Patent Rule 3.5(a), Automated’s charts only refer to eight distinct references.2 See IC at 7-8.
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`Automated’s disclosure of any other references is therefore incomplete, improper under the local
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`patent rules, and any allegations of invalidity with respect to these other references are not
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`properly disclosed. In addition, Automated attempts to reserve the right to asserted different
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`combinations of references that it did not provide charts for. See id. at 15-16. This disclosure is
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`also incomplete, improper under the local patent rules, and any allegations of invalidity with
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`respect to these unidentified and uncharted combinations are not properly disclosed. FPI objects
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`to any future attempt by Automated to rely on any other references not charted pursuant to Local
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`Patent Rule 3.5(c). However, to the extent the Court allows Automated to rely on an uncharted
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`reference, FPI reserves the right to respond and provide responsive charts.
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`Second, Automated contends that “there are statutory bars precluding patentability of the
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`subject matter of the ’774 and ’743 patents, including offers for sale and public uses or products
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`that qualify as prior art under 35 U.S.C. § 102(b).” IC at 8. Automated also contends that “FPI
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`may have offered for sale or publicly used products or systems qualifying as prior art under §
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`102(b).” Id. These disclosures are incomplete and violate Local Patent Rule 3.5(a) because they
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`do not, for example, identify prior art under 35 U.S.C. § 102(b) by specifying the item offered
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`for sale or publicly used or known, the date the offer or use took place or the information became
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`2 Automated did not chart seven references: (1) Japanese Unexamined Patent App. Pub. H7-
`291358; (2) U.S. Patent No. 5,427,830; (3) U.S. Patent No. 5,487,470; (4) WO 90/09320;
`(5) U.S. Patent No. 5,857,571; (6) U.S. Patent No. 5,314,086; and (7) U.S. Patent No. 4,096,306.
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`3
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 5 of 74
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`known, and the identity of the person or entity which made the use or which made and received
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`the offer, or the person or entity which made the information known or to whom it was made
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`known. Automated’s disclosure is incomplete and any future allegations of invalidity under 35
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`U.S.C. § 102(b) are not properly disclosed. FPI objects to any future attempt by Automated to
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`rely on any references not specifically identified or charted pursuant to Local Patent Rule 3.5(a)
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`and (c), respectively. However, to the extent the Court allows Automated to rely on unidentified
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`and uncharted references, FPI reserves the right to respond and provide responsive charts.
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`Third, Automated incorporates by reference “all prior art references of record” in the
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`prosecution of the asserted patents and their family members, as well as “each statement” from
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`the Patent Office “that one or more references disclose one or more limitation of the asserted
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`claims” or “that a person of ordinary skill in the art would have been motivated to combine or
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`modify such references.” IC at 8-9. This disclosure is incomplete and violates Local Patent Rule
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`3.5. FPI objects to any future attempt by Automated to rely on any unidentified and uncharted
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`references and any unidentified Patent Office statements. However, to the extent the Court
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`allows Automated to rely on these unidentified references or statements, FPI reserves the right to
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`respond and provide responsive charts.
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`B.
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`Automated’s Invalidity Contentions Are Insufficient
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`Automated’s Invalidity Contentions are deficient for various reasons, and FPI therefore
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`provides the following objections and responses.
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`FPI responds that to the extent an alleged reference has a priority date that post-dates
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`August 14, 2000, FPI contends that such a reference is not prior art to either asserted patent
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`because the priority date of the asserted patents is at least August 14, 2000. FPI’s Infringement
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`Contentions Pursuant to Local Patent Rule 3.1 (Dec. 13, 2017) at 5. FPI further responds that
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`none of the references identified or charted by Automated, taken alone or in combination,
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`4
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 6 of 74
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`

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`disclose each and every element of any asserted claim of the asserted patents. Automated also
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`has not overcome the presumption of validity. See 35 U.S.C. § 282.
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`Automated’s Invalidity Contentions are deficient under Local Patent Rule 3.5(b) because
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`they fail to identify whether each reference allegedly anticipates each asserted claim under 35
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`U.S.C. §102 or renders it obvious under 35 U.S.C. § 103. For example, Automated identifies at
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`least seven references without identifying, for example, whether they allegedly anticipate or
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`render obvious the asserted claims or which asserted claims the references allegedly anticipate or
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`render obvious. Moreover, Automated contends that “numerous prior art references disclose
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`each and every limitation of the asserted claims of the ’774 patent either explicitly or inherently
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`and therefore anticipate the asserted claims.” IC at 14. But Automated did not identify which
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`reference allegedly anticipates the ’774 patent, and did not provide a chart showing how the
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`unidentified reference allegedly anticipates the ’774 patent. These incomplete disclosures, in
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`effect, deprive FPI of notice as to which precise ground of invalidity Automated relies on or the
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`basis supporting that contention. FPI objects to any future attempt by Automated to rely on any
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`unidentified and uncharted references. However, to the extent the Court allows Automated to
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`rely on an unidentified or uncharted reference, FPI reserves the right to respond and provide
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`responsive charts.
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`Automated’s Invalidity Contentions are also deficient because they do not comply with
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`Local Patent Rule 3.5(c). For example, Automated contends Exhibits A1-A6 and B1-B8 provide
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`“exemplary reasons” that the asserted claims of the asserted patents are allegedly invalid. See,
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`e.g., IC at 9-10 and 18-19; see also id. at 10 (“The attached claim charts are intended to be a
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`representative sample of the art, and the disclosure found in the art, and is not intended to limit
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`Automated in any way from discussing the prior art. The attached claim charts . . . do not
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`5
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 7 of 74
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`

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`necessarily identify every disclosure of the same limitation in each item of prior art.”).
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`Automated also includes, in addition to their “exemplary” claim charts, sections titled “Other
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`Exemplary Grounds” which include conclusory invalidity contentions. See, e.g., id. at 16-17
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`(“Other Exemplary Grounds”), 20-21 (“Other Exemplary Grounds”). These “exemplary” and
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`“representative” disclosures are incomplete and violate Local Patent Rule 3.5. FPI reserves the
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`right to object, strike, or otherwise exclude or respond to any invalidity contention that
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`Automated did not identify or chart as Local Patent Rule 3.5 requires, whether or not currently
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`known to Automated.
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`FPI objects to Automated’s claim charts because they do not “identif[y] specifically
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`where each limitation of each asserted claims” is allegedly found in the relied upon references, as
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`Local Patent Rule 3.5(c) requires. Automated merely provides voluminous string cites to the
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`relied upon references without identifying with any level of specificity which cites are relevant
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`and allegedly disclose the identified claim element. See, e.g., IC, Ex. A1 at 1-2. As a result,
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`Automated has waived and is estopped from making any argument as to which precise
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`disclosures in the relied upon references allegedly disclose a particular limitation of the asserted
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`claims. In addition, because Automated fails to identify with any level of specificity the precise
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`disclosures it is relying upon, Automated has not raised a genuine issue of material fact as to the
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`validity of the asserted patents. FPI denies that the references Automated relies on invalidate the
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`asserted claims at least because Automated failed to specifically identify where each claim
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`element is found in the references or why such references should be combined.
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`Moreover, Automated’s obviousness allegations are deficient under the local patent rules
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`and governing law. For example, Automated’s allegations fail provide a detailed explanation as
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`to why under the Graham factors the references render the asserted claims obvious or why there
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`6
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 8 of 74
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`

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`is a motivation to combine the references. See, e.g., IC at 15. Instead, Automated relies upon
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`the same conclusory and generic argument that fails to specify any particular combination of
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`references, refers to an undefined level of ordinary skill in the art, and refers to unspecified
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`concepts and what appears to be non-analogous art. See, e.g., id. at 19.
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`FPI responds that Automated did not identify any prior art under 35 U.S.C. § 102(g) by
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`providing the identities of the person(s) or entities involved in and the circumstances surrounding
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`the making of the invention before the patent applicant(s). FPI further responds that Automated
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`did not identify any prior art under 35 U.S.C. § 102(f) by providing the name of the person(s)
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`from whom and the circumstances under which the invention or any part of it was derived as
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`required by Local Patent Rule 3.5(a). Automated has therefore waived and is estopped from
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`arguing that any claim is invalid based on 35 U.S.C. § 102(g) and/or (f), and FPI objects to any
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`future attempt by Automated to rely on such an argument or any prior art in support thereof.
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`FPI further responds that Automated did not identify any grounds of invalidity based on
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`35 U.S.C. § 101, as Local Patent Rule 3.5(d) requires. As a result, Automated has waived and is
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`estopped from making any argument that any claim is invalid based on 35 U.S.C. § 101. FPI
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`reserves the right to object, strike, or otherwise exclude or respond to any amendment,
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`modification, or supplementation related to alleged invalidity based on 35 U.S.C. § 101.
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`Automated’s contentions under Local Patent Rule 3.5(d) regarding invalidity under 35
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`U.S.C. § 112 based on written description, enablement, and indefiniteness are deficient. For
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`example, Automated’s allegations are conclusory and do not substantively analyze the claim
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`language, specifications, or prosecution histories of the asserted patents. In short, Automated’s
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`contentions are wholly unsupported and fail to provide FPI with sufficient notice of the basis for
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`such contentions. As a result, Automated has waived and is estopped from making any argument
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`7
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 9 of 74
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`

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`that any claim of the asserted patents is invalid based on 35 U.S.C. § 112. FPI denies that any
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`claim of the asserted patents is invalid based on 35 U.S.C. § 112. FPI reserves the right to
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`object, strike, or otherwise exclude or respond to any amendment, modification, or
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`supplementation related to 35 U.S.C. § 112.
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`FPI objects to the references Automated relies on that the Patent Office considered during
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`prosecution of at least one of the asserted patents including, for example, (1) U.S. Patent No.
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`4,017,351, (2) U.S. Patent No. 3,660,189, (3) U.S. Patent No. 3,868,285, (4) U.S. Patent No.
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`6,582,800, (5) U.S. Patent No. 6,015,047, (6) U.S. Patent No. 5,261,466, (7) U.S. Patent No.
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`5,487,470, and (8) U.S. Patent No. 4,096,306. FPI reserves the right to argue that those
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`references, and any invalidity arguments based on those references, are entitled to little or no
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`weight. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008). FPI
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`also objects to the references relied upon by Automated because they appear to be cumulative of
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`references the Patent Office considered during prosecution of at least one of the asserted patents.
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`FPI reserves the right to object, strike, or otherwise exclude or respond to any argument related
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`to the references relied upon by Automated based on these grounds.
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`C.
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`Alleged Invalidity Based on Collateral Estoppel
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`Automated contends that the asserted claims of the ’743 patent are invalid based on
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`collateral estoppel.3 See IC at 9. FPI contends that the asserted claims of the ’743 patent are not
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`invalid based on collateral estoppel for at least the reasons set forth in FPI’s Opposition to
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`Automated’s Partial Motion to Dismiss (see Dkt. No. 125 at 4-12), including the exhibits filed in
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`support thereof, all of which are expressly incorporated by reference herein.
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`3 Automated does not appear to contend that the ’774 patent is invalid under collateral estoppel.
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`8
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 10 of 74
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`D.
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`Level of Ordinary Skill in the Art
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`FPI provides the following disclosure of the level of ordinary skill in the art based on its
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`investigation to date and without the benefit of full discovery. FPI therefore reserves the right to
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`amend, modify, or supplement this disclosure. FPI further reserves the right to rely on, and
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`supplement in light of, expert testimony, including from any expert Automated identifies,
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`regarding the level of ordinary skill in the art.
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`Automated contends that a person of ordinary skill in the art in the field of the asserted
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`patents would possess a Bachelors-level degree in materials science, materials or mechanical
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`engineering, packaging science, or a comparable discipline and at least two years of experience
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`as a packaging engineer/designer, at least two years of experience as an engineer in developing
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`cushioning and packaging applications, or at least two years of machine design work experience.
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`IC at 13-14. Automated further contends that a person of ordinary skill in the art would have:
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`[A]n understanding of several basic concepts specific to air cushions and inflation
`machines [and] . . . possess the knowledge and ability to make and operate
`inflatable cushions and cushioning machines described in prior art patents, to
`assemble preexisting inflatable cushions and inflatable cushioning machine
`components in accordance with their known functions, to apply and adapt known
`solutions in the field of inflatable cushions and inflatable cushioning machines to
`achieve desired ends, to make routine adaptations to inflatable cushions and
`inflatable cushioning machines in the service of desired ends, and to adjust or
`adapt known inflatable cushions and inflatable cushioning machines in order to
`accommodate different shapes and configurations of films or to make inflatable
`cushioning products with particular shapes and sizes desired by end users.
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`See id.
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`Automated’s proposed level of ordinary skill in the art is wrong for several reasons.
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`First, it is too high. For example, a person of ordinary skill in the art would not necessarily have
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`an understanding of the concepts, or “possess the knowledge and ability” to perform the tasks
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`Automated identifies. See id. at 13-14.
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`9
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 11 of 74
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`E.
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`Legal Standards
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`1.
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`Anticipation
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`35 U.S.C. § 102(b) provides a person shall be entitled to a patent unless “the invention
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`was patented or described in a printed publication in this or a foreign country . . . more than one
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`year prior to the date of the application for patent in the United States.” Anticipation “requires
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`proof by ‘clear and convincing evidence that a single prior art reference discloses each and every
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`element of [the] claimed invention.’” Melchior v. Hilite Int’l, Inc., 665 F. App’x 894, 897 (Fed.
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`Cir. 2016) (quoting K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1377 (Fed. Cir. 2012)). To
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`anticipate, “there be no difference between the claimed invention and the referenced disclosure,
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`as viewed by a person of ordinary skill in the field of the invention.” Finisar Corp. v. DirecTV
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`Grp., Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (citation omitted).
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`Anticipation is a two-step inquiry. First, the Court must construe the claims. Medichem,
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`S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). Second, the finder of fact must
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`compare the properly construed claims against the prior art reference. Id.
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` “In determining whether a patented invention is anticipated, the claims are read in the
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`context of the patent specification in which they arise and in which the invention is described.”
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`Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir.
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`1995). “If needed to impart clarity or avoid ambiguity, the prosecution history and the prior art
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`may also be consulted in order to ascertain whether the patentee’s invention is novel or was
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`previously known to the art.” Id.
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`10
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`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 12 of 74
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`2.
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`Obviousness
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`35 U.S.C. § 103(a) provides that “[a] patent may not be obtained ... if the differences
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`between the subject matter sought to be patented and the prior art are such that the subject matter
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`as a whole would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art.” Obviousness is a question of law, which depends on underlying factual
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`inquiries:
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`Under § 103, the scope and content of the prior art are to be determined;
`differences between the prior art and the claims at issue are to be ascertained; and
`the level of ordinary skill in the pertinent art resolved. Against this background
`the obviousness or nonobviousness of the subject matter is determined. Such
`secondary considerations as commercial success, long felt but unsolved needs,
`failure of others, etc., might be utilized to give light to the circumstances
`surrounding the origin of the subject matter sought to be patented.
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`KSR lnt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co., 383
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`U.S. 1, 17-18 (1966)).
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`“[A] patent composed of several elements is not proved obvious merely by demonstrating
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`that each of its elements was, independently, known in the prior art.” Id. at 418. Likewise, an
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`accused infringer asserting obviousness in view of a combination of references must show that a
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`person of ordinary skill in the relevant field would have had a reason “to combine the elements
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`in the way the claimed new invention does.” Id. The Supreme Court has emphasized the need
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`for courts to value “common sense” over “rigid preventative rules” in determining whether a
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`motivation to combine existed. Id. at 419-20. “In addition to showing a reason to combine the
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`elements in the manner claimed, a defendant must also demonstrate that a person of ordinary
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`skill would have a reasonable expectation of success in combining the elements.” Senju Pharm.
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`Co. v. Lupin Ltd., 780 F.3d 1337, 1341 (Fed. Cir. 2015) (citation omitted).
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`“Because patents are presumed to be valid, see 35 U.S.C. § 282, an alleged infringer
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`seeking to invalidate a patent on obviousness grounds must establish its obviousness by facts
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`11
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`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 13 of 74
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`

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`supported by clear and convincing evidence.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963,
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`968 (Fed. Cir. 2006) (citation omitted). In conjunction with this burden, the Federal Circuit has
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`stated:
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`When no prior art other than that which was considered by the PTO examiner is
`relied on by the attacker, he has the added burden of overcoming the deference
`that is due to a qualified government agency presumed to have properly done its
`job, which includes one or more examiners who are assumed to have some
`expertise in interpreting the references and to be familiar from their work with the
`level of skill in the art and whose duty it is to issue only valid patents.
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`PowerOasis, 522 F.3d at 1304 (citation omitted).
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`F.
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`FPI’s Responsive Charts Pursuant to Local Patent Rule 3.7(a)
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`Pursuant to Local Patent Rule 3.7(a), attached as Exhibits A1-A6 are responsive charts
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`that identify each limitation of each asserted claim of the ’774 patent that is missing from the
`
`alleged prior art. In particular:
`
`• Exhibit A1: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 4,017,351 (“Larson”) in view of
`European Patent Application Publication No. 0,683,111 A1 (“Mitsuta”);
`• Exhibit A2: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 3,660,189 (“Troy ’189”) in view of
`Larson and Mitsuta;
`• Exhibit A3: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Great Britain Patent Specification Publication No.
`1,057,874 (“Bissell”) in view of Larson and Mitsuta;
`• Exhibit A4: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 6,582,800 (“Fuss”) in view of
`Mitsuta;
`• Exhibit A5: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 6,015,047 (“Greenland”) in view of
`Mitsuta;
`• Exhibit A6: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 5,261,466 (“Koyanagi”) in view of
`Mitsuta and Larson.
`
`12
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 14 of 74
`
`

`

`
`
`In addition, pursuant to Local Patent Rule 3.7(a), attached as Exhibit B1-B8 are
`
`responsive charts that identify each limitation of each asserted claim of the ’743 patent that is
`
`missing from the alleged prior art.
`
`• Exhibit B1: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on U.S. Patent No. 3,868,285 (“Troy ’285”) in view of
`Troy ’189 and Larson;
`• Exhibit B2: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Troy ’285 in view of Troy ’189 and Larson;
`• Exhibit B3: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Troy ’189 in view of Troy ’285 and Larson;
`• Exhibit B4: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 102
`Invalidity Contentions based on Fuss;
`• Exhibit B5: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Bissell in view of Larson;
`• Exhibit B6: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Greenland in view of Troy ’285;
`• Exhibit B7: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Koyanagi in view of Troy ’285 and Larson;
`• Exhibit B8: FPI’s Validity Contentions In Response to Automated’s 35 U.S.C. § 103
`Invalidity Contentions based on Troy ’285 in view of Larson.
`
`G.
`
`Objective Indicia of Non-Obviousness
`1.
`Legal Standard
`
`Evidence showing objective indicia of non-obviousness constitutes “independent
`
`evidence of nonobviousness.” Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir.
`
`2012) (citation omitted). When present, the Court must always consider this evidence in an
`
`obviousness analysis. Apple, Inc. v. Samsung Elect. Co., 839 F.3d 1034, 1052 (Fed. Cir. 2016)
`
`(citation omitted). Indeed, objective indicia of non-obviousness “may often be the most
`
`probative and cogent evidence in the record,” id., and can establish that “an invention appearing
`
`13
`
`Petitioner Automated Packaging Systems, Inc.
`Ex. 1148, Page 15 of 74
`
`

`

`to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling,
`
`Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted).
`
`2.
`
`Objective Indicia of Non-Obviousness Show the Asserted Patents
`Would Not Have Been Obvious
`
`Objective indicia of non-obviousness further support the conclusion that the asserted
`
`patents would not have been obvious at the time of their inventions. The following objective
`
`indicia of non-obviousness support the conclusion that the asserted patents would not have been
`
`obvious: praise of the invention, unexpected results, failure of others, long felt but unresolved
`
`need, and commercial success. As an illustrative non-exhaustive example, the following factors
`
`are indicative of non-obviousness of the asserted patents:
`
`• The technology disclosed in the asserted patents and reflected in the asserted claims
`solved a long felt but unresolved need to, for example, to provide a compact and
`efficient machine that operates continuously and an in uninterrupted manner to
`produce seals that are secure and do not leak. See, e.g., ’774 patent at 2:4-24. The
`fact that no other parties were able to resolve this long-felt need before FPI further
`shows that the asserted claims were not obvious at the time of their inventions. The
`solving of these long-felt and unresolved needs by FPI is supported by, for example,
`Automated’s infringement (see Dkt. No. 134 (Report of Parties’ Planning Meeting) at
`2) and the adoption of FPI’s products that practice at least one asserted claim of the
`asserted patents.4
`• The prior art taught away from the inventions of the asserted patents.
`• FPI incorporated the technology disclosed in the asserted patents into its products.
`See id.
`• The lack of non-in