Free Response to Motion - District Court of Colorado - Colorado

Case 1:03-cv-02579-RPM

Document 161

Filed 03/12/2007

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO VARCO, L.P., Plaintiff, vs. PASON SYSTEMS USA CORP., Defendant. PLAINTIFF'S RESPONSE TO DEFENDANT PASON'S MOTION FOR LEAVE TO SUBMIT SUPPLEMENTAL AUTHORITY IN SUPPORT OF DEFENDANT PASON'S RESPONSIVE MARKMAN BRIEF JURY TRIAL DEMANDED Civil Action No. 03-M-2579 (RPM)

Plaintiff Varco does not oppose the Court's review of any relevant authority in its efforts to properly construe the claims of the patent. Plaintiff Varco, however, does object to Pason's characterization of the cited authority, as well as any insinuation that Varco purposely withheld the case from the Court, and Pason's representation to the Court that the cited case "directly contradicts" the authority cited by Varco in support of its Markman Brief. Pason represents to the Court that "Varco's Markman presentation to this Court is rife with citations to Genentech and efforts to use its presumption expansively within the individual stapes and elements of the claims at issue". Pason further represents that its attached case which was decided by the Court of Appeals for the Federal Circuit on February 9, 2007, directly contradicts the Genentech case. Pason cites to Dippin' Dots, Inc. v. Mosey, 2007 WL 430195 (Fed. Cir. 2007). Neither of Pason's assertions are correct.

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In particular, Varco's briefs are not "rife" with citations to Genentech. Varco cites to the Genentech case one time in its reply brief. [See Plaintiff's Markman Reply Brief, Page 14]. Furthermore, the Dippin' Dots Court specifically acknowledged the holding in Genentech and the proposition for which it stands; i.e., that "the term "comprising" raises a presumption that the list of elements is nonexclusive." Dippin' Dots, Inc. v. Mosey, 2007 WL 430195 *4. The Dippin' Dots Court did not overrule or contradict Genentech but specifically cited to the case as standing for the stated proposition. Dippin' Dots supports the proposition that infringement requires that each step of a method claim must be practiced by the defendant's accused method. The method step at issue in that case was the step of "freezing [a dripping] composition into beads." Dippin' Dots at *1. The patentee had narrowly defined the claim term "beads," and therefore, the method step of the patent at issue in that case was limited to a narrow construction of the claimed step. Id. Pason's arguments improperly attempt to derive a broadly applicable general rule from Dippin' Dots that would be inconsistent with other authority, including authority such as Genentech, cited with approval by the Dippin' Dots Court and in Varco's briefing. Furthermore, although Dippin' Dots dealt only with a method claim, Pason seeks to apply its interpretation of that case to both the apparatus and the method claims at issue here. To that end, Pason improperly blends the language of apparatus claim 1 with the language of method claims 11 and 14, without specifying which claim it is referring to, then mischaracterizes Varco's position on the proper construction of the claims. See Pason's motion (Doc. No. 160, at pp. 3-4).

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In sum, the long held canon of claim construction that one cannot avoid infringement of a method claim by performing steps in addition to the steps of the claimed method is still the law. Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) ("The transition 'comprising' in a method claim indicates that the claim is open-ended and allows for additional steps."). The Dippin' Dots case does not contradict Varco's position on the proper construction of the claim language at issue in the case before this Court, or the authority previously cited by Varco as supporting its position. Although Pason's motion (Doc. No. 160) mischaracterizes Varco's claim

construction position, Varco's claim construction briefing fully sets forth its position. Pason's representation to the Court of Varco's position or the effect thereof, is entirely misleading. However, rather than copying its previous arguments into this response, Varco refers the Court to its claim construction briefing in support of its position on the identified words and phrases for the respective patent claims at issue in this case. Dated: March 12, 2007 By:__/s/ Robert M. Bowick _________ Robert M. Bowick Guy E Matthews C. Vernon Lawson M ATTHEWS , L AWSON , B OWICK & A L -A ZEM , PLLC 2000 Bering, Suite 700 Houston, Texas 77057 (713) 355-4200 (telephone) (713) 355-9689 (facsimile) Respectfully submitted, Jane Michaels Joseph T. Jaros H OLLAND & H ART LLP 555 Seventeenth Street, Suite 3200 Post Office Box 8749 Denver, Colorado 80201-8749 (303) 295-8000 John W. Raley Cooper & Scully, P.C. 700 Louisiana Street, Suite 3850 Houston, TX 77002 (713) 236-6801 (telephone) (713) 236-6880 (facsimile)

COUNSEL FOR PLAINTIFF VARCO, L.P. 3

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C ERTIFICATE O F S ERVICE I hereby certify that on March 7, 2007, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following: [email protected] [email protected]

s/Robert M. Bowick ..............................

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