Free Statement - District Court of Delaware - Delaware

Case 1:07-cv—00190-SLR Document 164 Filed 08/26/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SIEMENS MEDICAL SOLUTIONS USA, )
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Plaintiff/Counter—Defendant, g C- A- NO- O7`l9O'SLR
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v. )
SAINT-GOBAIN CERAMICS & g
PLASTICS, INC., )
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Defendant/Cotinterclaim-Plaintiff )
SAINT-·GOBAIN’S PROFFER REGARDING CERTAIN EVIDENCE
By Memorandum Order dated August 20, 2008 (the “Order"), the Court directed
defendant Saint-Gobain Ceramics 8: Plastics, Inc. ("Saint—Gobain") to make a proffer of the
evidence it proposes to admit at trial in support of the fourth affinnative defense pled in Saint-
Gobain’s answer to the complaint of plaintiff Siemens Medical Solutions USA, Inc. ("Siemens").
(DI. 160). The Court has required such a proffer in order to assist it in assessing the merits of
Siemens’ motion to strike Saint—Gobain’s fourth affirmative defense, which the Court has held in
abeyance pending the pretrial conference scheduled for August 28, 2008. Saint-Gobain now
submits a proffer confirming the scope of such evidence.
By its fourth affirmative defense, Saint—Gobain has alleged that: n
[Siemens is] estopped from construing any claim of the ‘080 Patent
to be infringed or to have been infringed, either literally or by application
of the doctrine of equivalents, by any method or product manufactured,
used, imported, sold or offered for sale by Saint—Gobain in view of the
prior art and/or because of admissions and statements made to the United
States Patent and Trademark Office during prosecution ofthe application
leading to the issuance of the ‘080 Patent because of disclosure or
language in the specification of the ‘080 Patent, and/or because of
limitations in the claims of the ‘080 Patent.
Rrri-3315996-1

Case 1 :07-cv—00190-SLR Document 164 Filed 08/26/2008 Page 2 of 4 ·
(D.I. 114, 4/7/08 Saint-Gobain’s Answer to Siemens’ Amended Complaint, see also D.l. 7,
5/14/07 Saint-Gobain’s Answer to Siemens’ Complaint (emphasis added)).
Saint-Gobain’s evidence will show that the fact that Charles Melcher, the applicant for
the patent-in-suit (the "‘080 Patent"), amended his claims during the prosecution of the
application that matured into the ‘080 Patent limited the scope of the claim for equivalents
captured by the patent and, accordingly, surrendered ground to gain allowance. Documents
establishing this defense will include (1) the ‘080 Patent; (2) the prosecution history of the ‘08O
Patent (‘080 Patent Prosecution History, Patent Application Serial No. 07/389502); (3) a
published article entitled "Boron Nitride, A Neutron Scintillator With Deiiciencies," IEEE Trans.
Nucl. Sci. N3 5-31 (2005) 13l8); and (4) the non-infringement opinion originally provided bythe
Foley & Lardner law firm to Saint—Gobain in February 2006 and amended in March 2006 (the
"Non—lnfringement Opinion").
As the prosecution history shows, and as further discussed in the Non-Infringement
Opinion, the ‘080 applicant amended original Claim 1 in response to an Examiner’s rejection to
recite that the claimed scintillator crystal compound must be "transparent," and thus modified the
range of claimed crystals to those that are "transparent," surrendering non—transparent
scintillators. (The Boron Nitride article, together with the testimony of Joel Karp and Kemieth
McClellan, will establish that the term “scintillator" includes both optically transparent and non-
transparent compositions, and that they have different properties). This same evidence also
shows that Dr. Melcl1er’s December 27, 1989 amendment narrowed the scope ofthe scintillator
composition to recite a cerium concentration in the transparent single crystal scintillator taught
by the ‘080 Patent instead of reciting the cerium concentration in the melt from which the crystal
was pulled, an amendment that also narrowed the claim to surrender previously claimed
- 2 -
nrrrssissas-1

Case 1 :07-cv—00190-SLR Document 164 Filed 08/26/2008 Page 3 of 4
elements. The Non-Infringement Opinion discusses and analyzes Dr. Melcher’s amendments in
greater detail and establishes that these amendments were substantive in nature and made for
reasons of patentability to gain issuance ofthe ‘080 Patent.
Saint-Gobain will further establish its fourth affirmative defense through the testimony of
Leon Radomsky, the author of the Non-Infringement Opinion, who is prepared to discuss the
prosecution history analysis contained in the Non-Infringement Opinion andthe facts underlying
and supporting that analysis.
/s/ Jeffrey L. Moyer (#3309)
OF COUNSEL! Jesse A. Finkelstein (#1090)
Finkelstein@rlfcom
Frederick L. Whitmer Jeffrey L. Moyer (#3309)
John C. Ohnian Moyer@rlf com
Thelen Reid Brown Raysman & Steiner LLP Kelly E_ Faman (#4395)
875 Third Avenue Farnan@r1fcom
New Y01`k, NY 10022 Richards, Layton & Finger, P.A.
(212) 603-2000 One Rodney Square, P.O. BOX 551
Wilmington, DE 19899
(302) 651 -7700
August 26, 2008
Aitorneysfor Defendant/Counterclaim—Pfairiiyj'
Saint-Gobain Ceramics & Plastics, Inc.
, 3 -
1>,Ls1-ssis99s-1

Case 1 :07-cv—00190-SLR Document 164 Filed 08/26/2008 Page 4 of 4
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CERTIFICATE OF SERVICE
I hereby certify that on August 26, 2008, I electronically filed the foregoing document
with the Clerk of the Court using CM/ECF which will send notification of such filing to the
following and which has also been served as noted:
BY HAND DELIVERY & E-MAIL
Jack B. Blumenfeld
Maryellen Noreika
Morris, Nichols, Arsht & Tunnell LLP
1201 North Market Street
Wilmington, DE 19899
BY E-MAIL
Gregg F. LoCascio ~
Charanj it Brahma
Sean M. McEldowney
Kirkland & Ellis LLP
655 15th Street, N.W.
Washington, DC 200056793
/s/ Jeffrey L. Moyer {#3309)
Jeffrey L. Moyer (#3309)
RLFI-3151112-i