Free Notice (Other) - District Court of Federal Claims - federal

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IN THE UNITED STATES COURT OF FEDERAL CLAIMS __________________________________________ ) SEVENSON ENVIRONMENTAL ) SERVICES, INC., ) ) Plaintiff, ) ) Case No.: 05-1075C ) Judge Thomas C. Wheeler vs. ) ) THE UNITED STATES, ) ) Defendant, ) and ) ) SHAW ENVIRONMENTAL, INC., ) ) Defendant-Intervenor. ) ______)

SEVENSON ENVIRONMENTAL SERVICES, INC.'S LODGING OF MATERIALS USED AT SEPTEMBER 12, 2007 SUMMARY JUDGMENT HEARING Plaintiff Sevenson Environmental Services, Inc. hereby makes part of the record the materials it provided to the Court and counsel for the Defendant and Intervenor at the September 12, 2007 summary judgment hearing. Respectfully submitted,

Dated: __September 14, 2007

s/Brian E. Ferguson____________________ Brian E. Ferguson McDERMOTT WILL & EMERY LLP 600 13th Street, N.W. Washington, D.C. 20005 (202) 756-8000 [email protected]

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WEBSTER SZANYI LLP Kevin A. Szanyi Nelson Perel Todd M. Schiffmacher 1400 Liberty Building Buffalo, New York 14202 (716) 842-2800 [email protected] Attorneys for Plaintiff, Sevenson Environmental Services, Inc.

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TABLE OF CONTENTS

1. 2. 3. 4. 5. 6. 7.

June 25, 2007 Stipulated Facts Asserted Independent Claims of the Sevenson Patents The Court's Claim Constructions for the Asserted Limitations Substituting the Court's Construction into the Claims Why the Activities at the Colonie Site Meet this Claim Language Why Defendants' Arguments Do Not Defeat Sevenson's Right to Partial Summary Adjudication There is No Prosecution History Disclaimer Here

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TAB 1

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IN THE UNITED STATES COURT OF FEDERAL CLAIMS __________________________________________ ) SEVENSON ENVIRONMENTAL ) SERVICES, INC., ) ) Plaintiff, ) ) Case No.: 05-1075C ) Judge Thomas C. Wheeler vs. ) ) THE UNITED STATES, ) ) Defendant, ) and ) ) SHAW ENVIRONMENTAL, INC., ) ) Defendant-Intervenor. ) ______)

STATEMENT OF STIPULATED FACTS

A. 1.

National Hazardous Waste Cleanup Initiatives This case involves cleanup and remediation work at one of the many waste

disposal sites in the United States that are contaminated with hazardous waste and petroleum products from a variety of industrial sources. See generally "Cleaning Up the Nation's Waste Sites: Markets and Technology Trends," (EPA, 2004 ed.), Executive Summary at v. 2. The EPA has established methods for determining whether an environmental

medium is contaminated and requires action. Method 1311, the "Toxicity Characteristic Leaching Procedure" (TCLP), is designed to determine "the mobility of both organic and inorganic analytes present in liquid, solid, and multiphase wastes." EPA Publication, TCLP Method 1311 (effective November 8, 1990). To determine "toxicity," EPA's regulations identify 40 possible contaminants and regulatory levels. If any of the contaminants in a representative

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sample exceeds the regulatory level, the sample is considered to be a Resource Conservation and Recovery Act (RCRA) hazardous sample. 40 C.F.R. § 261.24, Table 1. As relevant here, the regulatory level for lead is 5.0 milligrams per liter (mg/l). Id.

B. 3.

Sevenson's Patents The five Sevenson patents at issue are U.S. Patent Nos. 5,527,982 ("the `982

patent"); 5,732,367 ("the `367 patent"); 5,916,123 ("the `123 patent"); 5,994,608 ("the `608 patent"); and 6,139,485 ("the `485 patent"). 4. Sevenson's technology is based upon chemical bonding reactions involving lead

and radionuclides with a combination of treatment chemicals, such as a combination of sulfates and phosphates. 5. One objective of Sevenson's patented technology is to reduce the amount of

leachable lead at a hazardous site to below EPA's TCLP standard. See `982 Patent, col. 3, lines 42-48 ("It is an object of the present invention to provide a method of treating metal-bearing materials, contaminated soils and waste effluent, and solid wastes containing hazardous levels of leachable metal. It is a further object to provide a method which decreases the leaching of lead in lead-bearing materials to levels below the regulatory limit of 5 mg/l by TCLP test criteria.").

6.

The five Sevenson patents contested in this action are all related. The issue dates

of the five patents are as follows: `982 patent ­ June 18, 1996; `367 patent ­ March 24, 1998; `123 patent ­ June 29, 1999; `608 patent ­ November 30, 1999; `485 patent ­ October 31, 2000. The `982 patent contains 31 claims, of which Sevenson is asserting claims 1-5 and 9. The `367 patent contains 16 claims, of which Sevenson is asserting claims 11, 13, 14, and 16. The `123 patent contains 28 claims, of which Sevenson is asserting claims 1-7 and 15-20. The `608 patent contains 40 claims, of which Sevenson is asserting claims 1-7, 11-24, and 26-30. The `485 patent contains 36 claims, of which Sevenson is asserting claims 1-6 and 15-36.

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C. 7.

Corps of Engineers' Contracts at the Colonie Site The contaminated site at Colonie, New York, near Albany, is owned by the

United States Government Department of Energy ("DOE"), and has been designated for remediation under the Formerly Utilized Sites Remedial Action Program ("FUSRAP") that the Army Corps of Engineers executes for the DOE. The hazardous substances found at the Colonie site include, inter alia, lead and radionuclides. The contaminated soil resulted from activities conducted at the Colonie site from 1930 until the 1980s. 8. The Corps of Engineers awarded an initial contract to ICF Kaiser Engineers, Inc.

("ICF Kaiser") for cleanup work at the Colonie site. In April 1999, the IT Group, Inc. acquired the Colonie site remediation contract from ICF Kaiser. IT Corporation ("IT") then acquired the contract from the IT Group, and performed the remediation work for the Corps of Engineers at the Colonie site. On January 16, 2002, IT filed for bankruptcy. Shaw Environmental, Inc. obtained the assets of certain IT companies on May 3, 2002, and continued performing the cleanup work at the Colonie site. 9. At the Colonie site, some of the excavated soils contained lead which leached

above the RCRA TCLP criteria of 5.0 mg/l. D. 10. The Phosphoric Acid Used At The Site In Colonie, New York The Army Corps of Engineers used "Prayphos P5" phosphoric acid at the Colonie

site. This product was manufactured by the purified wet-process, where phosphate minerals, largely calcium phosphate minerals, within the phosphate rock are reacted with or without weak phosphoric acid, and sulfuric acid. Sulfuric acid contains sulfate. 11. Prayphos P5 phosphoric acid contains phosphoric acid, aqueous phosphate,

phosphate anions, phosphate compounds and impurities as a result of the incomplete chemical reactions, purification steps, and mechanical separation. The product is concentrated liquid containing about 75 percent H3PO4 based on phosphate content and density, that is readily miscible in water and other polar solvents, and thus will contain aqueous phosphate when in the 3

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presence of water. Impurities in this product include sulfate, and may include calcium sulfate, iron sulfate, sulfate ions, calcium ions, calcium salts of sulfate, phosphate and fluoride, gypsum, fluoride ions, and sulfuric acid. 12. The method of treatment at the Colonie site comprised the following relevant

steps. Excavated soil at Colonie was staged in soil piles of approximately 250 yd3. These piles were screened by field instruments measuring radioactivity (in counts-per-minute). A representative sample was extracted from each soil pile for off-site TCLP testing for lead. Soil piles deemed to be "characteristic" (e.g., TCLP lead > 5.0mg/l) were subjected to the on-site soil lead stabilization process. Prayphos P5 phosphoric acid, diluted with water to three parts water to one part phosphoric acid, was mixed with an amount of the lead-contaminated soil in a device called a pugmill. The contaminated soil and diluted Prayphos P5 phosphoric acid were then allowed to cure, and shortly thereafter a sample for post-treatment TCLP for lead was taken. 13. In some instances, the treatment method used at the Colonie site was successful in

reducing the amount of leachable lead to below the EPA's standard of 5.0 mg/l using the TCLP test criteria. In other instances, the treatment method failed to reduce the level of toxicity in the soil to below the required regulatory level. On such occasions, the soil was returned to the pugmill and treated with additional Prayphos P5 phosphoric acid, and allowed to cure, until the amount of leachable lead was reduced to below the EPA standard.

Respectfully submitted,

Dated: __June 22, 2007_____

_s/Brian E. Ferguson____________________ Brian E. Ferguson McDERMOTT WILL & EMERY LLP 600 13th Street, N.W. Washington, D.C. 20005 (202) 756-8000 [email protected]

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WEBSTER SZANYI LLP Kevin A. Szanyi Nelson Perel Todd M. Schiffmacher 1400 Liberty Building Buffalo, New York 14202 (716) 842-2800 [email protected] Attorneys for Plaintiff, Sevenson Environmental Services, Inc. Dated: __June 22, 2007_____ PETER D. KEISLER Assistant Attorney General JOHN J. FARGO Director ___s/ Joshua B. Brady_____________________ JOSHUA B. BRADY Attorney Civil Division U.S. Department of Justice Washington, D. C. 20530 Telephone: (202) 307-0285 Facsimile: (202) 307-0345 Attorneys for Defendant the United States Dated: __June 22, 2007_____ __s/ Russel O. Primeaux_by s/ Joshua B. Brady___ Russel O. Primeaux Kean Miller Hawthorne D'Armond McCowan & Jarman LLP One American Place, 22nd Floor Post Office Box 3513 Baton Rouge, LA 70821-3513 (225) 387-0999 [email protected] Attorney for Shaw Environmental, Inc.

OF COUNSEL: Susan Mitchell Attorney U.S. Department of Justice

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TAB 2

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ASSERTED INDEPENDENT CLAIMS OF THE SEVENSON PATENTS

`982 Patent Claim 1. A method of treating metal-bearing materials to stabilize leachable metal contained therein, said method comprising the steps of: mixing a metal-bearing material with a first mixture comprising a first component and a second component to form a second mixture, wherein said metal-bearing material contains at least one leachable metal selected from the group consisting of lead, aluminum, arsenic (III), barium, bismuth, cadmium, chromium (III), copper, iron, nickel, selenium, silver and zinc, wherein said first component supplies at least one member selected from the group consisting of sulphates, halites, and silicates, and wherein said second component supplies at least one phosphate anion; curing said second mixture for a period to form a cured material such that TCLP metal level for said leachable metal in the cured material is below 5.0 mg/l and no secondary waste streams are generated.

`367 Patent Claim 11. A process for treating a host material comprising solid waste materials containing leachable radionuclides and radioactive compounds, said process comprising the steps of: contacting said host material with a single reactant comprising a source of a sulfate ion and a phosphate ion to form a mixture, said mixture containing substantially insoluble Apatiticstructure mineral species; and curing said mixture for a period of time; wherein said host material so treated is substantially solid in form at the end of curing, the concentration of leachable radionuclides and radioactive materials is decreased and no secondary waste streams are generated. Claim 13. The process of claim 11, wherein said single reactant is technical grade phosphoric acid (TGPA).

`123 Patent Claim 1. A method of treating metal-bearing material to stabilize leachable metal contained therein, said method comprising the steps of:

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mixing a metal-bearing material with a treatment additive comprising a first component and a second component to form a mixture, wherein said metal-bearing material contains at least one leachable metal selected from the group consisting of lead, aluminum, arsenic (III), barium, bismuth, cadmium, chromium (III), copper, iron, nickel, selenium, silver and zinc, wherein said first component supplies at least one member from the group consisting of sulphates, halites, silicates and calcium oxide, and wherein said second component supplies at least one phosphate anion; and curing said mixture for a period of time to form a cured material; wherein said metal-bearing material so treated is substantially solid in form at the end of curing, the leachable metal level in said cured material is below 5.0 mg/l, and the volume of said metal-bearing material is reduced as a result of treating and curing. Claim 15. A method of treating a waste matrix of metal-bearing material and soil to stabilize leachable metal contained therein, said method comprising the steps of: mixing said waste matrix with a treatment additive comprising a first component and a second component to form a mixture, wherein said metal-bearing material contains at least one leachable metal selected from the group consisting of lead, aluminum, arsenic (III), barium, bismuth, cadmium, chromium (III), copper, iron, nickel, selenium, silver and zinc, wherein said first component supplies at least one member from the group consisting of sulphates, halites, silicates and calcium oxide, and wherein said second component supplies at least one phosphate anion; and curing said mixture for a period of time to form a cured material; wherein said waste matrix so treated is substantially solid in form at the end of curing, the leachable metal level in said cured material is below 5.0 mg/l, and the volume of said waste matrix is reduced as a result of treating and curing.

`608 Patent Claim 20. A process for treating a material that contains leachable radioactive substances, said process comprising the steps of: contacting said material with a treatment additive comprising a first component and a second component to form a mixture, wherein said first component supplies at least one member selected from the group consisting of sulphates, halites, silicates, alum and calcium oxide, and wherein said second component supplies phosphate anion; and curing said second mixture for a period of time; wherein the concentration of leachable radioactive substances in said material so treated is decreased and non-leachable solid materials are formed.

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`485 Patent1 Claim 1. A method of treating lead-bearing material to stabilize leachable lead contained therein, said method comprising the steps of: mixing a lead-bearing material containing leachable lead with a treatment additive comprising a first component and a second component to form a mixture, wherein said first component supplies at least one member from the group consisting of sulphates, chlorides, fluorides, halites, halides, and silicates, and wherein said second component supplies at least one phosphate anion in solution form; and curing said mixture for a period of time to form a cured material; wherein said lead-bearing material so treated is substantially solid in form at the end of curing, and the leachable lead level in said cured material is below 5.0 mg/l. Claim 15. A method of treating a waste matrix of lead-bearing material containing leachable lead and soil to stabilize leachable lead contained therein, said method comprising the steps of: mixing said waste matrix with a treatment additive comprising a first component and a second component to form a mixture, wherein said first component supplies at least one member from the group consisting of sulphates, chlorides, fluorides, halites, halides, and silicates, and wherein said second component supplies at least one phosphate anion in solution form; and curing said mixture for a period of time to form a cured material; wherein said waste matrix so treated is substantially solid in form at the end of curing, and the leachable lead level in said cured material is below 5.0 mg/l. Claim 22. A method of immobilizing leachable lead in contaminated soils or solid waste materials comprising: contacting contaminated soils or solid waste materials containing leachable lead with a treatment additive comprising a first component and a second component to form a mixture, wherein said first component includes one or more reactive sulphate ions, and wherein said second component is a phosphate supplying reagent; and curing said mixture for a period of time to form a cured material;
Sevenson also asserts claim 28 of the `485 Patent but does not for summary adjudication with respect to that claim.
1

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wherein said contaminated soils or solid waste materials so treated are substantially solid in form at the end of curing and the leachable lead level in said cured material is below 5.0 mg/l. Claim 30. A method of immobilizing leachable lead in contaminated soils or solid waste materials comprising: contacting contaminated soils or solid waste materials with a combination of a sulfate reagent which includes one or more reactive sulfate ions and a phosphate supplying reagent; and curing said mixture for a period of time to form a cured material; wherein said contaminated soils so treated are substantially solid in form at the end of curing and the leachable lead level in said cured material is less than 5.0 ppm of EP toxic lead.

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TAB 3

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THE COURT'S CLAIM CONSTRUCTIONS FOR THE ASSERTED LIMITATIONS

First Mixture: Second Mixture: First Component:

the first component and second component are mixed together (Op. at 27)2 a metal-bearing material plus the first mixture mixed together (Op. at 28) a separate and distinct compound capable of supplying at least one of the listed members [i.e., sulfates] (Op. at 11-14)

Second Component: a separate and distinct compound capable of supplying a source of phosphate anion (Op. at 15-16) Single Reactant: Source of Sulfate Ion: one entity in a chemical reaction (Op. at 29) one or more compounds which supplies a reactive sulfate ion, wherein a sufate ion is the negative ion (SO4)2- (Op. at 30)

Source of Phosphate Ion: one or more compounds which supplies a reactive phosphate ion, wherein a phosphate anion is the negative ion (PO4)3- (Op. at 30) Treatment Additive: first component and second component mixed together (Op. at 34) Sulfate Reagent: a separate and distinct compound capable of supplying a sulfate ion, (SO4)2-, that participates in a chemical reaction (Op. at 42-43)

One or More Reactive Sulfate Ions: a compound containing a reactive sulfate ion (SO4)2- (Op. at 40-41) Compound: a substance composed of atoms or ions of two or more elements in chemical combination (Op. at 26)

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March 28, 2007 Opinion and Order re Markman Claim Construction Proceedings.

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TAB 4

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SUBSTITUTING THE COURT'S CONSTRUCTION INTO THE CLAIMS `982 Patent, Claim 1 (relevant language): mixing a metal-bearing material with a first mixture comprising a first component and a second component to form a second mixture, wherein said metal-bearing material contains at least one leachable metal selected from the group consisting of lead, aluminum, arsenic (III), barium, bismuth, cadmium, chromium (III), copper, iron, nickel, selenium, silver and zinc, wherein said first component supplies at least one member selected from the group consisting of sulphates, halites, and silicates, and wherein said second component supplies at least one phosphate anion;

mixing a metal-bearing material with a [first component and second component mixed together] comprising a [separate and distinct compound capable of supplying at least . . . sulfates] and a [separate and distinct compound capable of supplying a source of phosphate anion] to form a [metal-bearing material plus the first mixture mixed together]

mixing a metal-bearing material with [a separate and distinct compound capable of supplying at least . . . sulfates and a separate and distinct compound capable of supplying a source of phosphate anion] to form [a metal-bearing material plus the first mixture mixed together]

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TAB 5

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

Mixing a metal-bearing material with a first mixture:

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

Prayphos P5 is a "mixture"

(Source: Hawley's Chemical Dictionary, Sevenson Ex. 7)

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

Prayphos P5 contains sulfate compounds and phosphate compounds (the first and second components):

(Source: American Heritage Dictionary, Sevenson Ex. 6) Compound: a substance composed of atoms or ions of two or more elements in chemical combination (Op. at 26)

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

The Prayphos P5 "components" are "separate and distinct compounds"

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

The process at the Colonie Site produces a "second mixture" Second Mixture: a metal-bearing material plus the first mixture mixed together (Op. at 28)

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WHY THE ACTIVITIES AT THE COLONIE SITE MEET THIS CLAIM LANGUAGE

The process at the Colonie Site reduced the TCLP metal level to below 5.0 mg/l Representative claim language (claim 1, `982 Patent): curing said second mixture for a period to form a cured material such that TCLP metal level for said leachable metal in the cured material is below 5.0 mg/l and no secondary waste streams are generated.

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TAB 6

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The claim language does not require separate sources for the sulfate and phosphate `982 Patent, Claim 1 (relevant language): mixing a metal-bearing material with a first mixture comprising a first component and a second component to form a second mixture, wherein said metal-bearing material contains at least one leachable metal selected from the group consisting of lead, aluminum, arsenic (III), barium, bismuth, cadmium, chromium (III), copper, iron, nickel, selenium, silver and zinc, wherein said first component supplies at least one member selected from the group consisting of sulphates, halites, and silicates, and wherein said second component supplies at least one phosphate anion; `367 Patent, Claim 11 (relevant language): contacting said host material with a single reactant comprising a source of a sulfate ion and a phosphate ion to form a mixture, said mixture containing substantially insoluble Apatiticstructure mineral species; and Claim 13: The process of claim 11, wherein said single reactant is technical grade phosphoric acid (TGPA). `485 Patent, Claim 1 (relevant language): mixing a lead-bearing material containing leachable lead with a treatment additive comprising a first component and a second component to form a mixture, wherein said first component supplies at least one member from the group consisting of sulphates, chlorides, fluorides, halites, halides, and silicates, and wherein said second component supplies at least one phosphate anion in solution form; and

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The claim language does not require separate sources for the sulfate and phosphate Compare to claim 16 of unasserted U.S. Patent No. 5,193,936: 16. A treatment process for treating solid wastes to stabilize leachable lead contained therein, said process comprising the steps of: mixing a solid waste containing leachable lead with gypsum to produce a first mixture, said first mixture containing a substantially insoluble lead compound of mineral species; and mixing said first mixture with phosphoric acid for reacting with leachable lead remaining in said first mixture to produce a second mixture, said second mixture containing a substantially insoluble lead compound or mineral species; curing said second mixture for a period such that the material so treated is substantially solid in form at the end of curing, the material passes the paint filter test, TCLP lead levels are decreased below 5.0 mg/l, the volume of said solid waste is reduced as a result of treatment and curing, and no secondary waste streams are generated. Conclusion: when Sevenson wanted to claim separate and distinct sources for the sulfates and phosphates, it did so

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The specification discloses a single source for the sulfate and phosphate in some instances

`982 Patent, Abstract:

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The specification discloses a single source for the sulfate and phosphate in some instances

`982 Patent, Summary of the Invention:

(col. 3, lines 3-6).

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION The specification discloses a single source for the sulfate and phosphate in some instances `982 Patent, Examples:

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION The specification discloses a single source for the sulfate and phosphate in some instances `982 Patent, Examples:

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The Court's claim construction does not exclude a single source for the sulfate and phosphate

mixing a metal-bearing material with [a separate and distinct compound capable of supplying at least . . . sulfates and a separate and distinct compound capable of supplying a source of phosphate anion] to form [a metal-bearing material plus the first mixture mixed together]

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

The figures of the patents do not exclude a single source for the sulfate and phosphate

`367 Patent:

(col. 5, lines 3-18).

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WHY DEFENDANTS' ARGUMENTS DO NOT DEFEAT SEVENSON'S RIGHT TO PARTIAL SUMMARY ADJUDICATION

Defendants' "de minimus" argument regarding sulfate is faulty · Case law prohibits reading numerical limitations into the claims (Sevenson Opp. pp.

19-20);

· Disputed issues of fact if the Court determines to consider the expert evidence; · The patents teach that the reactions occur at a molecular level (every ion counts):

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TAB 7

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THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

Defendants have a high hurdle to overcome to show prosecution history disclaimer

Omega Eng., Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003)

Id. at 1324.

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THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

Sevenson was entitled to its patents because they were the first to discover and claim the use of sulfates and phosphates together to treat hazardous lead

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THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

The prior art in question ­ O'Hara and Stanforth ­ failed to teach or suggest the use of phosphates with sulfates to reduce the amount of leachable lead

`936 Patent, reexamination proceedings: "At column 10, lines 61 to 64 O'Hara teaches: `The data in Table 8 shows unequivocally that phosphate is unique; neither sulfuric nor nitric acids immobilize lead and cadmium, nor do their salts.' (emphasis added) The tests conducted by O'Hara were intended to show that other acids were not a suitable substitute for phosphoric acid in his process. In contrast, the present invention uses a sulfate source in addition to phosphoric acid. However, it is clear from O'Hara's statement that he discounted the use of both sulfuric acid and calcium sulfate for the immobilization of lead. This is contrary to our invention which teaches the use of calcium sulfate to form anglesites (PbSO4) that immobilize lead. . . . O'Hara clearly teaches that neither sulfuric acid or its salt, calcium sulfate, immobilizes lead. My tests and experiments as disclosed in the `936 patent prove that O'Hara was wrong." (Def. Ex. 13, Yost Decl.). · Yost was pointing out that O'Hara failed to disclose their discovery that sulfates could be used to immobilize lead; Yost's invention uses sulfates and phosphoric acid together · The `936 Patent claims are limited to the two-step process:

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THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

The prior art in question ­ O'Hara and Stanforth ­ failed to teach or suggest the use of phosphates with sulfates to reduce the amount of leachable lead

`982 Patent Prosecution: "The present invention discloses a method of treating various metal bearing materials with a first component and a second component to stabilize the leachable metals. . . . To avoid the rejection based on O'Hara the claims have been amended to delete references to hydroxides, lime and portland cement. . . . O'Hara does not teach a first component that comprises either sulphates, halites or silicates. *** The sulfates supplied by the first component in the present invention is neither taught nor suggested by O'Hara. At col. 5, line 53, O'Hara disclose that the FGSP typically contains such materials as calcium sulfate but he does not teach or suggest its use in his process. On the contrary, O'Hara specifically states that his experiments show that calcium sulfate cannot be used to immobilize lead or cadmium." (Def. Ex. 9). · This is not a "clear and unmistakable disavowal" of claims that cover a product that supplies both sulfates and phosphates.

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Filed 09/14/2007

Page 41 of 43

THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

The prior art in question ­ O'Hara and Stanforth ­ failed to teach or suggest the use of phosphates with sulfates to reduce the amount of leachable lead

`485 Patent Prosecution: "Applicants have amended Claims 21-41 to delete "hydroxides" and "calcium oxide" from the first component group. Amended claims 21-41 now cover a method that uses a phosphate supplying reagent and at least one member from the group consisting of sulphates, chlorides, fluorides, halites, halides, and silicates and are neither anticipated nor made obvious by the Stanforth `033 patent. . . . Stanforth does not teach the use of a phosphate and a sulfate for the treatment of lead contaminated soils and waste materials. Stanforth's only teaching of a sulfate is for the treatment of chromium and not lead. . . . There is nothing in the [Stanforth] `033 patent that teaches or suggests that a phosphate and a sulfate can be used together to treat leachable lead and reduce the leachable lead to below 5.0 mg/l as measured by either the EP toxicity level or the TCLP level." (Def. Ex. 11). · This is not a "clear and unmistakable disavowal" of claims that cover a product that supplies both sulfates and phosphates.

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Case 1:05-cv-01075-TCW

Document 71

Filed 09/14/2007

Page 42 of 43

THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

Compare to a case where prosecution history disclaimer was found Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973 (Fed. Cir. 1999) · Claim directed to a bottled water cooler having "an upstanding feed tube . . . to provide a hygienic flow path for delivering liquid from . . . and for admitting air . . . into said container." · District court found that this limitation did not preclude a produce having a separation of the air flow from the liquid flow. · During prosecution, the PTO examiner rejected the claims based on a prior art reference showing a beer dispensing apparatus with two separate feed tubes ­ one for pressurized air, and one for beer. · Patentee argued in response that the prior art reference "cannot possibly teach or suggest a flow path . . . for delivering liquid . . . and for admitting air from said reservoir above as recited [in the claims]. · The PTO examiner relied on this argument in allowing the claims: "the prior art of record does not teach a container . . . and feed tube as claimed wherein the feed tube has a passage means that both dispenses liquid from the container into the reservoir and admits air from the reservoir into the container. . . . Note that [the cited prior art reference] provides a separate conduit for exterior air. . . ." · The Federal Circuit held this prosecution history record was a clear disavowal of a claim interpretation that would include separate feed tubes for liquid and air. · "[I]t is the totality of the prosecution history that must be assessed, not the individual segments of the presentation made to the [PTO] by the applicant. . . ." 192 F.3d at 979.

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Case 1:05-cv-01075-TCW

Document 71

Filed 09/14/2007

Page 43 of 43

THERE IS NO PROSECUTION HISTORY DISCLAIMER HERE

Other portions of the Sevenson file histories support a finding of no prosecution history disclaimer

Sevenson's Petitions to Make Special:

(`982 Patent Prosecution History)

(`367 Patent Prosecution History)

(`485 Patent Prosecution History)
WDC99 1459627-1.057200.0012

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