Reply Brief in Support of KSR's Motion for Summary ... - Fried Frank

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just in case there could be an arguent that claim 15 does not cover thè control of a brakesystem. Accordingly, claim 24 isallowable for the same reasons claim 15 was allowed inparent patent 6,109,241" (see Exhibit 6 hereto, at 3).-- The prosecution history of the "parent patent 6,109,241" exhibits the samepattern as the prosecution history ofthe '565 Patent: Teleflex originally fied claimsreciting "an adjustable pedal assembly (22)" in combination with "an ~lectronic throttlecontrol attached to said support (18)" (see Exhibit 7 hereto, at 7); the claims, as originallyfied, were declared unpatentable under 35 U.S.C. § 103(a) in view ofRedding and priorar showing that "it would have been obvious at the time the invention was made to aperson having ordinary skill in the ar to provide the device ofRedding with theelectronic throttle control means attached to a support member" (see Exhibit 8 hereto);and once again, without disagreeing, at all, with the Examier's reasoning or conclusionsas to the obviousness and unpatentabilty ofmodifyng Redding to include an off-theshelfpedal position sensor, Teleflex amended what became Claim 15 of the parent '241Patent to exclude the Redding design from its coverage through addition of the claimlanguage, "wherein the position of said pivot (24) remains constant while said pedal arm(14) moves in fore and aft directions with respect to said pivot (24)" (see Exhbit 9hereto, at 2).-- Durng the prosecution ofthe '565 Patent and its parent, Teleflex submittedthree (3) separate InformationDisdosure Statements ("IDS's") purorting to discloseprior ar of which Teleflex and its patent counsel were aware (see Exhbit 10 hereto). Innot one of those statements did Teleflex disclose U.S. Patent No. 5,010,782 to Asano("Asano") or U.S. Patent No. 5,722,302 to Rixon ("Rixon '302"), notwithstanding that (a)7
Teleflex's counsel admittedly was aware ofboth references at relevant times (KSR MainBr. at 22 & n.12); and (b) both references disclosed adjustable pedal assemblies whosepedal pivots did not move durng pedal arm adjustment (see Wilemsen DecL. irir 34-37 &Exs.ll.,12; Krger DecL. irir 4-6,25-30 & Ex. 1).5Asano Combined With a Pedal Position Sensor-- Asano discloses each and every strctue recited in clai 4 ofthe '565 Patent,with the exception of"an electronic control (28) attached to said support (18) forcontrolling a vehicle systemii (see Exhibit 11 hereto; Wilemsen DecL. ir 35 & Ex. 12;'Krger DecL. ir 5 & Ex. 1). Unlike the Redding reference described above, Asano (KSRMain Br. at 22 & Exs. 1,6) discloses a position-adjustable pedal assembly (a)whoseentire pedal ar (74) moves in rectilinear, "fore and aft" directions along a guide'i; member, and (b) whose pedal pivot (54) remais in a constant position while the pedalar (74) moves in "fore and aft" directions with respect to the pivot (Kger Dee!. ir 5 &Ex. 1).65 Rion '302 issued on an application filed October 2, 1996, and unquestionablyconstituted prior ar to theparent '241 Patent under 35 U.S.C. lO2(e). Since the filig ofKSR's Motion for Sumar Judgment of Invalidity, Teleflex has produced documents(Thid Dabney DeeL. ir 12) which establish, clearly and convicingly, that the acceleratorpedals embodyig the RIxon '302 design were commercially offered for sale by no laterthan October 24, 1996, thus rendering that design prior ar to the '565 Patent under 35U.S.C. § 102(b). See Pfaffv. Wells Elecs., Inc., 525 U.S. 55,68-69 (1998) (offer ofproduct for sale trggers application of35 U.S.C. § 102(b)). Teleflex ironically cites andrelies on RIxon '302 in its opposition (see Declaration ofTimothy L. Andresen filedAugust 11, 2003, ~ 4).6Unlike the design embodied in the accused GMT -360 and GMT -800 pedal systemsmanufactued by KSR, Asano discloses an adjustable pedal system comprising a guidemember (52) and a pedal arm (74) that slides in its entirety along the guide member.8
Page 3 and 4: TABLE OF AUTHORITIESPaee(s)Altoona
Page 5 and 6: United Carbon Co. v. Binney & Smith
Page 7 and 8: invalidity under 35 U.S.C: § 103 (
Page 10 and 11: -- In an Offce Action dated Novembe
Page 14 and 15: -- Conventional, off-the-shelf peda
Page 16 and 17: Here there is no dispute as to any
Page 18 and 19: n. "OBVIOUSNESS" MUST BE DETERMIND
Page 20 and 21: Teleflex's argument is erroneous at
Page 22 and 23: Exs. 8-10; KSR Main Br. at 23-27).
Page 24 and 25: elements with no change in their re
Page 26 and 27: mx::0';:¡:-i
Page 28: ,e ePlaintiffTeleflex Incorporated
Page 31 and 32: .. ,). ../ IN THE UNTED STATES PATE
Page 33 and 34: REMAClais 20-23 remai in ths applic
Page 35 and 36: Offce Action Summaryo Responsive to
Page 37 and 38: Serial Number: 09/643,422Page 3Ar.U
Page 39 and 40: mx:J0-;: .t
Page 41 and 42: 'u.s. Patent . Oct. 24, 1995 Sheet
Page 43 and 44: u.s. Patent Oct. 24, 1995 Sheet 3 o
Page 45 and 46: , ,U .8. Patent Oct. 24, 1995 Sheet
Page 47 and 48: "/ )1ADJUSTABLE CONTROL PEDALAPPART
Page 49 and 50: 5adjuster member utizig the guide b
Page 51 and 52: 5,460,0619porton inboard of the slo
Page 53 and 54: PATENT NO. :DATEDJNVENTOA(S) : ,UNI
Page 55 and 56: United States Patent (19)Smith et a
Page 57 and 58: . u.s. Patent Nov. 12, 1991 Sheet 2
Page 59 and 60: , u.s. Patent Nov. 12, 1991 Sheet 4
Page 61 and 62: 1ACCELERATOR PEDAL ASSEMBLYTECHNICA
Page 63 and 64:
565,063,811FIG. 1 to the wide-open-
Page 65 and 66:
5,063,811910'above, the uppermeans-
Page 67 and 68:
"..._.. .~ --"N~Applicant:EngelgauS
Page 69 and 70:
, .Applicant: EngelgauSN: 09/643,42
Page 71 and 72:
-,.J.."(". ,to . ) , PTO/SS/26 (10-
Page 73 and 74:
5The subject inventionADJUSTABLE PE
Page 75 and 76:
S 3 'as set fort in clai l wherein
Page 77 and 78:
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Page 79 and 80:
--,.ApplicationOfficë Action Summa
Page 81 and 82:
Serial Number: 09/236,975Page 3Ar U
Page 83 and 84:
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Page 85 and 86:
",U.S.S.N 09/236,975 2..,. .~-,!.,0
Page 87 and 88:
US.S.N 09/236,975 4aft directions t
Page 89 and 90:
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Page 91 and 92:
Form PTO-1449 U.S. DEPARTMENT OF AT
Page 93 and 94:
L-Sheet -i of -i ==.5FORM l'O.1449
Page 95 and 96:
Sheet -- of -l.. b ~~ C'~ §g.' l:
Page 97:
DECLARATION OF JAMES w: DABNEY and
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Reply Brief in Support of KSR's Motion for Summary ... - Fried Frank

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