IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`CYTONOME/ST, LLC,
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`Plaintiff/Counterclaim-Defendant,
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`v.
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`NANOCELLECT BIOMEDICAL, INC.,
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`Defendant/Counterclaim-Plaintiff,
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`CASE NO.: 1:19-cv-00301-RGA
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`DEMAND FOR JURY TRIAL
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`DEFENDANT/COUNTERCLAIM-PLAINTIFF
`NANOCELLECT BIOMEDICAL, INC.’S INITIAL INVALIDITY CONTENTIONS
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`Pursuant to Paragraph 3(f)(v) of the Court’s Scheduling Order (D.I. 15), Defendant
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`NanoCellect Biomedical, Inc., (“Defendant” or “NanoCellect”) hereby provides its Initial
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`Invalidity Contentions for U.S. Patent Nos. 6,877,528 (“the ’528 patent”), 8,623,295 (“the ’295
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`patent”), 9,011,797 (“the ’797 patent”), 9,339,850 (“the ’850 patent”), 10,029,263 (“the ’263
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`patent”) 10,029,283 (“the ’283 patent”), and 10,065,188 (“the ’188 patent”) (collectively, the
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`“asserted patents”). Plaintiff Cytonome/ST, LLC (“Plaintiff” or “Cytonome”) has asserted
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`claims 1-4, 7-11, 13, and 17-26 of the ’528 patent, claims 1-18 of the ’295 patent, claims 1-19 of
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`the ’797 patent, claims 1-12 of the ’850 patent, claims 1, 2, 5-8, and 12-21 of the ’263 patent,
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`claims 1, 2, 4-6, and 11 of the ’283 patent, and claims 1, 10-12, 15, and 17 of the ’188 patent
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`(collectively, the “asserted claims”).
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`NanoCellect contends that each of the asserted claims are invalid under one or more of 35
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`U.S.C. §§ 101, 102, 103 or 112. NanoCellect reserves its right to supplement these Invalidity
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`Contentions pursuant to the Federal Rules of Civil Procedure, the Court’s Local Rules, or any
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`other order or schedule entered by the Court.
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`1
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`Cytonome/ST, LLC Exhibit 2007
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`I.
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`PRELIMINARY STATEMENT AND RESERVATION OF RIGHTS
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`NanoCellect makes the following initial invalidity contentions based upon its current
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`knowledge, its current understanding of Plaintiff’s initial claim charts pursuant to Paragraph
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`3(f)(iv) of the Court’s Scheduling Order, and its investigations to date. NanoCellect’s
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`investigation into the facts of this action is still ongoing. NanoCellect has not completed its
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`investigation of the facts relating to this case, discovery in this action, or its preparation for trial.
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`This disclosure is without prejudice to NanoCellect’s right to produce evidence of any additional
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`prior art references. Accordingly, NanoCellect reserves its right to amend, alter or supplement
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`the contentions made herein as new, additional, or different information is learned and
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`discovered.
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`Further, these contentions, including the accompanying claim charts, were prepared prior
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`to the Court’s claim construction ruling and disclosure of claim construction positions from
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`Plaintiff. NanoCellect’s positions on the invalidity of particular claims may depend on how the
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`claims are construed by the Court. NanoCellect’s contentions herein are not, and should in no
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`way be seen as, admissions or adoptions as to any particular claim scope or construction, or as
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`any admission that any particular element is met in any particular way. NanoCellect objects to
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`any attempt to imply claim construction from the charts attached hereto. In the absence of a
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`claim construction ruling, these contentions are made in the alternative and are not necessarily
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`intended to be consistent with each other. See Fed. R. Civ. P. 8(d). These contentions are made
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`out of an abundance of caution to reflect the potential scope of the claims that Plaintiff appears to
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`be advocating or could advocate, as suggested in Plaintiff’s initial claim charts. NanoCellect’s
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`contentions should not be seen as a suggestion that Plaintiff’s reading of the patent claims is
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`correct, and NanoCellect applies the prior art in light of Plaintiff’s improper assertion of
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`2
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`Cytonome/ST, LLC Exhibit 2007
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`infringement and improper application of the asserted claims. NanoCellect reserves the right to
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`supplement or amend the disclosures made herein following disclosure by Plaintiff of its
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`positions regarding claim construction and following receipt of the Court’s claim construction
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`order construing the claims of the asserted patents.
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`The citations provided in NanoCellect’s contentions are intended to be exemplary, not
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`exhaustive. NanoCellect has endeavored to cite to the most relevant portions of the identified
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`prior art. Other portions of the identified prior art may additionally disclose, either expressly or
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`inherently, and/or render obvious one or more elements or limitations of the asserted claims.
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`NanoCellect reserves the right to rely on uncited portions of the identified prior art to establish
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`the invalidity of the asserted claims. Moreover, NanoCellect reserves the right to rely on uncited
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`portions of the identified prior art, other art, or testimony to provide context to or aid in
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`understanding the cited portions of the identified prior art. NanoCellect also reserves the right to
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`rely upon treatises, published industry standards, and similar documents to demonstrate the
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`knowledge of one of ordinary skill in the relevant art. Where NanoCellect cites to a particular
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`drawing or figure, the citation encompasses the description of the drawing or figure, as well as
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`any text associated with the drawing or figure. Similarly, where NanoCellect cites to particular
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`text concerning a drawing or figure, the citation encompasses that drawing or figure as well.
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`Also, where NanoCellect cites to any portion of prior art as disclosing a particular limitation, that
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`citation applies with equal force to all similar or identical limitations in each of the asserted
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`claims.
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`NanoCellect’s Invalidity Contentions and the accompanying charts are set forth in the
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`alternative and do not constitute any concession for purposes of determining infringement or any
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`3
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`other issue in this case. See, e.g., Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366 (Fed.
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`Cir. 2000).
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`Furthermore, the identification of anticipatory references and obviousness combinations
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`of references provided below under 35 U.S.C. §§ 102 and 103 is merely exemplary and is not
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`intended to be exhaustive. In particular, NanoCellect is currently unaware of the extent to which
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`Plaintiff may contend that limitations of the claims at issue are not disclosed in the art identified
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`by NanoCellect as anticipatory. To the extent that an issue arises with any such limitation,
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`NanoCellect reserves the right to identify other references which make obvious the addition of
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`the allegedly missing limitation to the disclosed system or method. NanoCellect reserves the
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`right to use references identified in obviousness combinations as anticipatory references.
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`NanoCellect reserves the right to use any reference disclosed herein as an anticipatory reference
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`or in an obviousness combination.
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`Along with these contentions, NanoCellect discloses information as required by the Local
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`Patent Rules. Nevertheless, NanoCellect objects to the disclosure of information that is
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`protected by the attorney-client privilege, the attorney work-product immunity, the common
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`interest privilege or any other applicable privilege or immunity. To the extent that NanoCellect
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`inadvertently discloses information that may be protected from discovery under the attorney-
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`client privilege, the attorney work-product immunity, the common interest privilege or any other
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`applicable privilege or immunity, such inadvertent disclosure does not constitute a waiver of any
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`such privilege or immunity.
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`By these contentions, NanoCellect does not waive its right to raise different or additional
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`bases for the invalidity of the asserted claims, including under 35 U.S.C. §§ 101 and 112,
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`disclosure of which is not required in these contentions under the Scheduling Order. The
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`4
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`information set forth below is provided without waiving: (1) the right to object to the use of any
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`statement for any purpose, in this action or any other action, on the grounds of privilege,
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`relevance, materiality or any other appropriate grounds; (2) the right to object to any request
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`involving or relating to the subject matter of the statements herein; or (3) the right to revise,
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`correct, supplement or clarify any of the statements provided below at any time. NanoCellect
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`reserves the right to amend and/or supplement these contentions in accordance with the Federal
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`Rules of Civil Procedure and the Rules of this Court.
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`NanoCellect reserves the right to allege the invalidity of the asserted claims on bases
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`other than those disclosed herein.
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`II.
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`INCORPORATION BY REFERENCE
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`In addition to the prior art identified below, NanoCellect incorporates by reference the
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`supporting Exhibits and the prosecution file histories of the patents-in-suit and any related patents or
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`applications, including any arguments, cited prior art, or claim rejections made by the Patent and
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`Trademark Office (“PTO”) set forth in such prosecution histories. In addition, NanoCellect
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`incorporates by reference any art listed on the face of the patents-in-suit or any related patents or
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`applications, as well as any art listed on the face of any patents or applications listed as prior art
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`below.
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`III.
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`PRIOR ART
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`There is ample prior art demonstrating the invalidity of the patents-in-suit. Exemplary
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`prior art is set forth in this section below and throughout these contentions and the supporting
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`Exhibits. Further, in connection with the contentions set forth herein, NanoCellect may rely, and
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`reserve the right to rely, on common sense and/or the general knowledge of a person of ordinary
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`skill in the art at the time of the alleged inventions.
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`5
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`Each Asserted Claim is invalid for obviousness under 35 U.S.C. §§ 102, 103(a) and/or 112.
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`NanoCellect’s statements herein are subject to the Preliminary Statement and Reservation of Rights
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`set forth above.
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`A.
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`Priority Dates
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`1.
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`Priority Date of the ’528, ’295, ’797, ’263, ’850, and ’283 Patents
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`The ’528 patent issued from U.S. Application Serial No. 10/179,586, (“the ’586
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`application”) which is a continuation of abandoned Provisional Application Serial No.
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`60/373,256 (“the ’256 application”), which was filed on April 17, 2002.
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`The ’295 patent issued from U.S. Application Serial No. 13/245,331, which is a
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`continuation of Application Serial No. 11/433,781 (“the ’781 application”) filed May 12, 2006,
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`and issued as U.S. Patent 8,210,209 (“the ’209 patent”). The ’781 application is a continuation
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`of Application Serial No. 11/021,251 (“the ’251 application”) filed December 21, 2004, and
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`issued as U.S. Patent 7,069,943 (“the ’943 patent”). The ’251 application is a continuation of the
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`’586 application filed June 24, 2002, and issued as the ’528 patent. The ’528 patent issued from
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`the ’586 application which claims priority from the ’256 application filed on April 17, 2002.
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`The ’797 patent issued from U.S. Application Serial No. 13/527,331, which is a
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`continuation of Application Serial No. 11/433,781 (“the ’781 application”) filed May 12, 2006,
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`and issued as the ’209 patent. The ’781 application is a continuation of the ’251 application filed
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`December 21, 2004, and issued as the ’943 patent. The ’251 application is a continuation of the
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`’586 application filed June 24, 2002, and issued as the ’528 patent. The ’528 patent issued from
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`the ’586 application which claims priority from the ’256 application filed on April 17, 2002.
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`The ’850 patent issued from U.S. Application Serial No. 14/828,238, which is a
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`continuation of Application Serial No. 14/281,303 (“the ’303 application”) filed May 19, 2014,
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`and issued as U.S. Patent 9,550,215. The ’303 application is a continuation of Application Serial
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`No. 13/245,132 (“the ’132 application”) filed September 26, 2011, and issued as U.S. Patent
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`8,727,131 (“the ’131 patent”). The ’132 application is a continuation of Application Serial No.
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`12/499, 254 (“the ’254 application”) filed July 8, 2009, and issued as U.S. Patent 8,567,608 (“the
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`6
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`’608 patent”). The ’254 application is a continuation of Application Serial No. 11/101,038 (“the
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`’038 application”) filed April 6, 2005, and issued as U.S. Patent 7,569,788 (“the ’708 patent”).
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`The ’038 application is a division of Application Serial No. 10/329,008 (“the ’008 application”)
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`filed December 23, 2002, and issued as U.S. Patent 6,976,590 (“the ’590 patent”). The ’008
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`application claims priority from abandoned Provisional Application Serial No. 60/411,058 (“the
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`’058 application”) filed September 16, 2002. The ’058 application is a continuation-in-part of
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`Application Serial No. 10/179,488 (the ’488 application”) filed June 24, 2002, and issued as U.S.
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`Patent 6,808,075 (“the ’075 patent”). The ’488 application claims priority from the ’256
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`application filed on April 17, 2002.
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`The ’263 patent issued from U.S. Application Serial No. 13/849,365, which is a
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`continuation of Application Serial No. 13/158,960 (“the ’960 application”) filed June 13, 2011,
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`and issued as U.S. Patent 8,408,399 (“the ’399 patent”). The ’960 application is a continuation
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`of Application Serial No. 12/537,802 (“the ’802 application”) filed August 7, 2009, and issued as
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`U.S. Patent 7,963,399 (“the ’3399 patent”). The ’802 application is a continuation of
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`Application Serial No. 11/499,953 (“the ’953 application”) filed August 7, 2006, and issued as
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`U.S. Patent 7,584,857 (“the ’857 patent”). The ’953 application is a continuation of Application
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`Serial No. 10/940,143 (“the ’143 application”) filed September 13, 2004, and issued as U.S.
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`Patent 7,104,405 (“the ’405 patent”). The ’143 application is a division of the ’488 application
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`filed June 24, 2002, and issued as the ’075 patent. The ’488 application claims priority from the
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`’256 application filed on April 17, 2002.
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`The ’283 patent issued from U.S. Application Serial No. 14/828,252, which is a
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`continuation of the ’303 application filed May 19, 2014, and issued as U.S. Patent 9,550,215.
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`The ’303 application is a continuation of the ’132 application filed September 26, 2011, and
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`issued as the ’131 patent. The ’132 application is a continuation of the ’254 application filed
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`July 8, 2009, and issued as the ’608 patent. The ’254 application is a continuation of the ’038
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`application filed April 6, 2005, and issued as the ’708 patent. The ’038 application is a division
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`of the ’008 application filed December 23, 2002, and issued as the ’590 patent. The ’008
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`7
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`application claims priority from the abandoned provisional ’058 application filed September 16,
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`2002. The ’058 application is a continuation-in-part of the ’488 application filed June 24, 2002,
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`and issued as the ’075 patent. The ’488 application claims priority from the ’256 application
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`filed on April 17, 2002.
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`Therefore, assuming sufficient disclosure to support a proper priority claim, the earliest
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`possible date of which the ’528, ’295, ’797, ’263, ’850, and ’283 patents could claim benefit is
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`April 17, 20021. For the analysis herein, this date has been used as the priority date of the issued
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`claims. Accordingly, any reference published prior to April 17, 2002, qualifies as prior art to the
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`’528, ’295, ’797, ’263, ’850, and ’283 patents under 35 U.S.C. § 102(a), and any reference
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`published prior to April 17, 2001 qualifies as prior art to the ’528, ’295, ’797, ’263, ’850, and
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`’283 patents under 35 U.S.C. § 102(b). References may also be prior art under other pre-AIA
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`section of § 102, such as § 102(e).
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`2.
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`Priority Date of the ’188 Patent
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`The ’188 patent issued from U.S. Application Serial No. 15/042,996, which is a
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`continuation of Application Serial No. 14/517,396 (“the ’396 application”) filed October 17,
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`2004, and issued as U.S. Patent 9,260,693. The ’396 application is a continuation-in-part of
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`Application Serial No. 14/179,760 (“the ’760 application”) filed February 13, 2014, and issued
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`as U.S. Patent 9,823,252. The ’760 application is a continuation-in-part of Application Serial
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`No. 13/371,277 (“the ’277 application”) filed February 10, 2012, and issued as U.S. Patent
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`8,863,962. The ’277 application is a continuation of Application Serial No. 13/240,521 (“the
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`’521 application”) filed September 22, 2011, and issued as U.S. Patent 8,679,422. The ’521
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`application is a continuation of Application Serial No. 11/800,469 (“the ’469 application”) filed
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`May 4, 2007, and issued as U.S. Patent 8,123,044. The ’469 application claims priority from
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`1 Defendant believes the earliest possible priority date is June 23, 2002, because this is the
`first date on which Plaintiff disclosed a device teaching a “second reservoir” or second “bubble
`valve.” However, Defendant’s invalidity contentions rely on references qualifying as prior art
`under 35 U.S.C. § 102(b) even if the Court determines the earliest possible priority date is April
`17, 2002.
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`abandoned Provisional Application Serial No. 60/798,154 (“the ’154 application”) filed May 5,
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`2006. The ’154 application is a continuation of Application Serial No. 11/295,183 (“the ’183
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`application”) filed December 5, 2005, and issued as U.S. Patent 8,277,764. The ’183 application
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`claims priority from abandoned Provisional Application Serial No. 60/633,396 (“the ’396
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`application”) filed December 3, 2004.
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`Therefore, assuming sufficient disclosure to support a proper priority claim, the earliest
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`possible date of which the ’188 patent could claim benefit is December 3, 2004. For the analysis
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`herein, this date has been used as the priority date of the issued claims. Accordingly, any
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`reference published prior to December 3, 2004, qualifies as prior art to the ’188 patent under 35
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`U.S.C. § 102(a), and any reference published prior to December 3, 2003 qualifies as prior art to
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`the ’188 patent under 35 U.S.C. § 102(b). References may also be prior art under other pre-AIA
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`section of § 102, such as § 102(e).
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`B.
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`Identification of Prior Art
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`Pursuant to Paragraph 3(f)(v) of the Scheduling Order, NanoCellect identifies the
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`following prior art references that anticipate and/or render obvious the asserted claims. The
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`following patents and publications are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (f),
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`and/or (g). Whether a prior art reference anticipates or renders obvious the asserted claims may
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`depend upon claim construction. NanoCellect has identified each prior art patent publication by
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`its number, country of origin, and date of publication and/or date of issue. Each prior art
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`publication is identified by its title, date of publication, and where feasible, author and publisher.
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`For prior art under 35 U.S.C. § 102(b), NanoCellect has identified the item offered for sale or
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`publicly used or known, the date the offer or use took place or the information became known,
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`and the identity of the person or entity which made the use or which made and received the offer,
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`or the person or entity which made the information known or to whom it was made known, to the
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`full extent currently known. For prior art under 35 U.S.C. § 102(f), NanoCellect has identified
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`the name of the person from whom and the circumstances under which the invention or any part
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`of it was derived, to the full extent currently known. For prior art under 35 U.S.C. § 102(g),
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`NanoCellect has identified the identities of the person or entity involved in and the circumstances
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`surrounding the making of the invention before the asserted patents’ applicants, to the full extent
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`currently known. To the extent any prior art reference is found not to anticipate any of the
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`asserted claims or Plaintiff contends that the reference is not anticipatory, NanoCellect contends
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`that the reference nevertheless renders all of the asserted claims obvious either individually or in
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`combination with other references and/or in view of the general knowledge in the art and/or
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`common sense. NanoCellect reserves the right to present additional items of prior art under 35
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`U.S.C. § 102 or § 103 discovered or otherwise identified or appreciated during the course of
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`discovery or further investigation and also reserve the right to rely on background information,
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`such as but not limited to information contained in dictionaries, handbooks, treatises,
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`encyclopedias, and the like.
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`1.
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`Prior Art Patents and Patent Publications
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`NanoCellect contends that the asserted claims are invalid under 35 U.S.C. §§ 102 and/or
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`103 based on the following prior art patent publications. These patent publications constitute
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`prior art under 35 U.S.C. § 102, and their patent numbers, countries of origin, and dates of
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`publication and/or issue are included on the face of those documents. NanoCellect reserves the
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`right to supplement this list as it learns in the course of discovery of other prior art patent
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`publications that would anticipate and or render the asserted claims obvious. NanoCellect also
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`includes each of the cited references listed in the asserted patents in its identification of prior art.
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`U.S. Patents and Patent Publications
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`1. U.S. Patent No. 3,289,687 (“Dunaway”), filed February 13, 1964, and issued
`December 6, 1966
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`2. U.S. Patent No. 4,426,451 (Columbus) filed January 28, 1981, and issued January 17,
`1984
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`3. U.S. Patent No. 4,676,274 (“Brown”), filed February 28, 1985, and issued June 30,
`1987
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`4. U.S. Patent No. 4,908,112 (“Pace”), filed June 16, 1988, issued March 30, 1990
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`5. U.S. Patent No. 5,065,978 (“Albarda et al.”), filed September 19, 1990, and issued
`November 19, 1991
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`6. U.S. Patent No. 5,092,972 (“Ghowsi”), filed July 12, 1990, and issued March 3, 1992
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`7. U.S. Patent No. 5,777,649 (“Otsuka et al.”), filed August 19, 1996, and issued July 7,
`1998
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`8. U.S. Patent No. 5,789,045 (“Wapner et al.”), filed May 10, 1996, and issued August 4,
`1998
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`9. U.S. Patent No. 6,048,734 (“Burns et al.”), filed July 3, 1997, and issued April 11, 2000
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`10. U.S. Patent No. 6,062,681 (“Field et al.”), filed July 14, 1998, and issued May 16, 2000
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`11. U.S. Patent No. 6,102,530 (“Kim et al.”), filed January 22, 1999, and issued August 15,
`2000
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`12. U.S. Patent No. 6,152,181 (“Wapner et al.”), filed January 8, 1998, and issued
`November 28, 2000
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`13. U.S. Patent No. 6,196,525 (“Ganan-Calvo”), filed November 13, 1998, and issued
`March 6, 2001
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`14. U.S. Patent No. 6,273,553 (“Kim et al.”), filed March 24, 2000, and issued August 14,
`2001
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`15. U.S. Patent No. 6,360,775 (“Barth et al.”), filed December 23, 1998, and issued March
`26, 2002
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`16. U.S. Patent No. 6,561,224 (“Cho”), filed February 14, 2002, and issued May 13, 2003
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`17. U.S. Patent No. 3,370,538 (“ Hines”), February 11, 1966, and issued February 27, 1968
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`18. U.S. Patent No. 3,508,654 (“Glaettli”), filed February 1, 1967, and issued April 28,
`1970
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`19. U.S. Patent No. 3,560,754 (“Kamentsky”), filed November 17, 1965, and issued
`February 2, 1971
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`20. U.S. Patent No. 3,791,517 (“Friedman”), filed March 5, 1973, and issued February 12,
`1974
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`21. U.S. Patent No. 3,827,555 (“Kamentsky et al.”), filed March 5, 1973, and issued
`August 6, 1974
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`22. U.S. Patent No. 3,984,307 (“Kamentsky et al”), filed August 5, 1974, and issued
`October 5, 1976
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`23. U.S. Patent No. 4,153,855 (“Feingold”), filed December 16, 1977, and issued May 8,
`1979
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`24. U.S. Patent No. 4,175,662 (“Zöld 662”), filed March 22, 1978, and issued November
`27, 1979
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`25. U.S. Patent No. 4,581,624 (“O’Connor”), filed March 1, 1984, and issued April 8, 1986
`
`26. U.S. Patent No. 4,636,149 (“Brown”), filed April 29, 1986, and issued January 13,
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