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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION Original Creations, Inc., Plaintiff, ~vs.~ Ready America, Inc., et al, Defendants. __________________________________________

Civil Docket no. 1:11-CV-3453

AMENDED FINAL LPR 3.1 CONTENTIONS. The specially-appearing defendant Life+Gear, Inc. serves its Final Invalidity and Unenforceability contentions. The following statement of contentions supplement and incorporate by reference the matter set forth in the Initial Contentions previously served, as well as the initial LPR disclosure, as amended.

Date: 16 AUG 2012

~S~ CHARLES LEE THOMASON Charles L. Thomason Attorney for Life+Gear, Inc.

Final Invalidity and Unenforceability Contentions pursuant to LPR 3.1.

In accordance with LRP 3.1, specially appearing Defendant, Life+Gear, Inc., tenders the following invalidity and unenforceability contentions: Without waiver of any objection, the specially appearing defendant reserves the right to supplement this disclosure after the plaintiff has provided the documents required by LPR 2.1(a), 2.4 and 3.3, and after plaintiff provides infringement contentions fully compliant with LPR 2.2, and with the Order of the Court. Plaintiff has not provided the particularity required by the LPR about the claimed voltage and current control loop or about how the claimed functional aspects of that loop are provided. These contentions are limited by the fact that plaintiff OCI did not respond, per R. 36, to the Requests to Admit, that OCI has not made production of requested documents, that OCI has not complied with the orders of the Magistrate Judge respecting discovery, and that OCI has withheld non-privileged documents by asserting privilege objections but without providing a privilege log that enables the assertions to be assessed. Also, these contentions have to be limited because plaintiff limited its response to the initial invalidity and unenforceability contentions. Accompanying these contentions, as previously served, is the document production contemplated by LPR 3.3, and a supplemental productions is provided herewith, which supplements the production with the initial invalidity contentions. Also incorporated here is the claim chart filed by the reexamination requestor.

3 I. Best Mode & Written Description. By statute, an inventor must disclose the best mode known for making and using the invention. 35 U.S.C. 112, 1. The purpose served by the statutory requirement is to prevent an inventor from obtaining patent protection while concealing from the public that which the inventor has conceived. Cf., inadequate written description, not being in possession of a complete invention as of the time of filing, and indefiniteness, which are separate important requirements. Young Dental Mfg. v. Q3 Special Prods., Inc., 112 F.3d 1137 (Fed. Cir. 1997). Here, the inventor did not or could not disclose a best mode for the voltage and current control loop. A two-part test is used to assess compliance with the best mode requirement. First, did the inventor know of a best mode? Unless or until plaintiff complies with the outstanding document requests, then it may have to be assumed that this first subjective inquiry can be met. Second asked is whether, objectively, the disclosure in the patent specification and drawings is adequate to enable one of ordinary skill in the art to practice the best mode, or had the inventor concealed the best mode? Northern Telecom v. Samsung Elec., 215 F.3d 1281, 1286 (Fed. Cir. 2000). The best mode requirement in infringement and invalidity suits will be affected by the America Invents Act, effective 9/16/12. To comply with the statutory requirement of an adequate written description, the specification and originally filed claims must clearly allow persons of ordinary skill to recognize that the inventor invented what is claimed, viz., that the inventor was in possession of the invention as of the filing date. If it does not comply, the applicant is

4 prohibited from inserting new matter to cure the inadequacy (note, here there were new matter objections to amendments proffered by the plaintiff as applicant). After the en banc decision in Ariad Pharm. V. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), the Patent Office interpreted the law to disallow claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result, and to use the written description requirement to disallow such claims. http://www.uspto.gov/blog/director, and 76 FR 7162. See too, Halliburton Energy Servs., 514 F.3d at 1255 (noting that the Supreme Court explained that a vice of functional claiming occurs when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Also, Ariad affirms that the test is applied at the time the invention enters the patent process, i.e., the time of filing, to show that the patented advance is novel with respect to the art from which it emerges. Also, the test disallows claims that merely recite a description of a problem to be solved, while claiming all solutions to it, [and] leave the task to others to complete an unfinished invention. Meeting the written description and enablement requirements are two separate tasks. One way to distinguish these is that written description is concerned with certainty or notice to the public, which enablement focuses on teaching a skilled artisan how to make and use the claimed invention. Here, the applicant and later the plaintiff did not meet these requirements in regard to the voltage and current control loop, the capable of, the regulation, the connected to, the communicates, the directing, and the charging recitations in the claims of the patent in suit.

5 II. Indefiniteness and NonEnablement. The patent should be invalidated because the claim recitations are indefinite, especially, the voltage and current control loop. The arguments set out in the defense motion, at Dkt. # 36 and the reply brief, and in Section II, infra, are incorporated here as is set forth in full. Claim 9 ended up with a gear set that has a plurality of gears. However, the patent specification does not enable the full range of that claim, rather the disclosure only enables a four gear set, in which two gears are on one rod, and each rod passes through two different gears, and the paired gears are alternatively arranged. No other gear set arrangement, except for the pairs of gears, totaling four gears plus a driving gear, is enabled. The lack of enablement provides a legal basis to declare reissue claim 9 to be invalid. Magsil Corp. v. Hitachi Global Storage, __ F.3d ___ (Fed. Cir. Aug. 14, 2012). III. A. Introduction to the Invalidity Contentions. The independent claims of the plaintiffs `060 patent identify the essential components: a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod, and also claimed as a hand crank or a crank shaft. Each of these elements was known in the art, as well as sold and used publicly, prior to the time of the applicant/inventorYus claimed invention. The charts that are part of these contentions cite to the prior art disclosing the corresponding elements, and

6 additionally the documents attached here have color-coded indications of where corresponding elements are found. These contentions are limited by not having from plaintiff a fully-compliant set of infringement contentions, in particular contentions as to the gear set and the voltage and current control loop limitations of the reissue patent claims. Further limiting these contentions is the well-settled rule that it is elementary in patent law that, in determining whether a patent is valid the first step is to determine the meaning and scope of each claim in suit. Natl Steel Car, Ltd. V. Canadian Pacific Rwy., Ltd., 357 F.3d 1319, 1334 (Fed. Cir. 2004), citing cases. Until that elemental, first step is taken, these invalidity contentions cannot be made final. Claim 1 of the Reissue Patent. Plaintiff has conceded that its Claim 1 is not literally infringed, which brings into play a broader set of prior art that may be legally equivalent to the elements of Claim 1. The scope and meaning of reissue Claim 1 is unclear, and disputed. For those reasons, the present contention is that Claim 1 is invalid as obvious, and after further disclosure by plaintiff, the contention may be amended to assert anticipation. It is settled precedent that obviousness under 103(a) is a question of law that follows from required inquiries as to (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed subject matter, and (3) the level of ordinary skill in the relevant art. Graham v. John Deere Co., 383 U.S. 1 (1966) and KSR International v. Teleflex, Inc., 555 U.S. 398, Section III. B. (2007). On that basis, the Court determines whether the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole

7 would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. 103(a). In large part, the guideline for the analysis is a proper construction of the patent claims, which under the Local Patent Rules comes later. Assessment of the level of skill in the relevant art takes into account the factors in Daiichi Sankyo, Ltd. v. Apotex, Inc., 501 F.3d 1285 (Fed. Cir. 2007). Controlling precedent emphasizes that where all of the limitations of the patent were present in the prior art references, and the invention was addressed to a known problem, KSR ... compels [a determination of] obviousness. Wyers v. Master Lock Co., 616 F.3d 1231, 1240 (Fed. Cir. 2010), citing, Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed.Cir.2009). Here, all of the limitations recited in the patent in suit - a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod - are present in the prior art references. Id., and KSR, 550 U.S. at 415. If a person of ordinary skill can implement a predictable variation, 103 likely bars its patentability. Id. at 417. Ultimately, a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. There need not be precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418.

B. 1. Scope and Content of Prior Art Chargers, Batteries and Flashlights.

8 Mentions in the prior art of a battery and of rechargeable batteries are too innumerable to list.1 The use of a hand crank generator to put a charge on a battery goes back to the days of Alexander Graham Bell, Samuel F.B. Morse, and Thomas Edison.2 In the patent in suit, the claimed generator, hand crank, gear set and battery, and a housing are well-known elements, that perform their ordinary, primary purposes. Indeed, circuits for charging batteries are well known in the literature related to power supplies.3 Also, there is a long history of using manually-driven gears to rotate an electric power unit, such as a generator, a dynamo, a motor, or a magneto, to produce electricity that is provided as DC current to charge batteries, or to power an electrical device such as a telephone. Examples of cranked, gear-driven electric power generation devices used in rural and field telephony to power equipment can be seen in videos, such as those at:
http://www.youtube.com/watch?v=wt7Ec9GEakk http://www.youtube.com/watch?v=ysBZGFKF0zw http://www.youtube.com/watch?v=VnBnySJXEMU&feature=related http://www.youtube.com/watch?v=QZo_fBOIpts&feature=related http://www.prc68.com/I/TA312.shtml

The element of a voltage and current control loop complicates the validity analysis, and other issues, because that recitation in the patent claims is indefinite, under the standards of 35 U.S.C. 112. Here, the arguments set out in the defense motion, at Dkt. # 36 and the reply brief, are incorporated as is set forth in full. Added consideration should be directed to whether or not a voltage and current control loop or just a loop was known to persons skilled in the art of power supply circuitry as of the time of the
Responding to request #8 to admit that prior to February 2002, the battery was well known, and was on sale or in public use, plaintiff said OCI states that while batteries in general were well known prior to February 2002, OCI denies that the particular battery claimed [in its patent] here was well known;. 2 Thomas A. Edison, Inc., v. Waterbury Battery Co., 287 F. 320 (2nd Cir. 1923); O'Reilly v. Morse, 56 U.S. 62 (1853) 3 See, Section P Battery Chargers from the text MASTER HANDBOOK OF 1001 PRACTICAL ELECTRONIC CIRCUITS, Sessions, Editor (Tab Books 1975).
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9 invention, which here is around 2002. Standard reference texts from that time period do not indicate that a loop was a term known in the art.4 The net opinion that plaintiff proffered in opposition to the indefiniteness motion does not come up to Daubert standards. The first step is to assess the scope and content of the prior art, then assessing any differences between the elements in the prior art and those in the claimed invention, Graham v. Deere, supra, 383 U.S. at 17-18, cited in MPEP 2141, and taking into consideration factors that include: (1) "type of problems encountered in the art;" (2) "prior art solutions to those problems;" (3) "rapidity with which innovations are made;" (4) "sophistication of the technology; and" (5) "educational level of active workers in the field, recognized that one or more factors may predominate." In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995). It is contended here that any differences between the elements of a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod or hand crank, as recited in the claims of the patent in suit, and an output portion for outputting the power to an electrical device, and convert[ing] AC current from the generator to DC current that those elements were disclosed and described in the prior art and as claimed in the reissue patent are mere substitution, are obvious design changes, or are no different, and yield nothing more than predicable results.

The indices in these standard texts do not contain the term loop, which indicates that the term was not known or used in the art as of the date of publication. See, Skvarenina, THE POWER ELECTRONICS HANDBOOK, (CRC Press 2001-02).; Rashid, Editor, POWER ELECTRONICS HANDBOOK (Academic Press 2001); the term loop is not in LaPlante, COMPREHENSIVE DICTIONARY OF ELECTRICAL ENGINEERING ( CRC Press 1999), nor in, Mandl, DIRECTORY OF ELECTRONIC CIRCUITS, WITH A GLOSSARY OF TERMS (Prentice-Hall 1978)

10 In Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Court derived from the precedents the conclusion that when a patent claim simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282, 96 S.Ct. 1532. KSR, supra at 417. The prior art will confirm that the combination of (i) a crank and gear-driven electrical generation device, (ii) a circuit to convert or regulate the AC-DC power, (iii) a battery, (iv) means to power a light or another electrical part, and which (v) are enclosable in a housing, were known and used before the time of Yus claimed invention. This simply arranges old elements with each performing the same function it had been known to perform and the combination yields no more than one would expect from such an arrangement. KSR, supra at 417. As the Supreme Court in KSR stated, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) (the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Also, when the elemental structures are already known in the prior art [are] altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." Id. Here, the design need for a portable, manually driven device with charging and illumination functions was addressed in the

11 prior art, and a finite number of identified, predictable solutions were known to person skilled in the pertinent art.5 On that basis, it should be clearly proven that all elements of the claimed combination were known to persons skilled in the art, that the desire or need for a handcrank charger capable of charging a battery or an electrical device or an illumination element was recognized by the prior art and by those skilled in the art, and that the claimed combination uses the elements to perform their known and usual functions and uses those in combination to provide a predictable result.

2.

Prior Art hand crank and gear Sets.

Plaintiffs claim 1 that reissued in 2009 recites that the gear set has four gears that form a driving system, plus a driving gear on the shaft that rotates the generator. The other independent claims, which first issued in 2009, such as claim 9, recite the gear set the driving system and the driving gear on the shaft that rotates the generator. Prior art patents disclose devices having a set of gears that drive the shaft on a generator, which all are housed in a device body. Plaintiffs claim 1 that reissued in 2009 recites that the claimed invention includes a moveable rod, and that one outer lateral side of the gear set is pivoted to the movable rod. This may be interpreted to refer to the hand crank shown as element 60 in the drawings of the patent in suit. Prior art patents disclose devices having a hand crank or moveable rod that is turned manually so as to rotate the gears in the device.

Once plaintiff makes a full production of the information called for by LRP 2.1, and allows inspection of the documents improperly withheld as if privileged, then the specially-appearing defendant better will be able to supplement these contentions.

12 JP 58112438 A, published in 1983 titled Portable Hand Generator, inventor Hirooka Eiichi disclosed a generator, gear set and pivoting lever housed in a body case. JP 58112438 A is prior art to the patent in suit. Rotation of the gear set actuates the generator, which electrically communicates with and so provides power for an illumination device 11, a radio set 4, and/or batteries 50, e.g., Abstract and Fig. 7.

U.S. Patent no. 4,701,835 titled Multimode Flashlight, naming inventors Campagnuolo et al, issued on an application filed Sept. 19, 1985, and is prior art to the claims of the patent in suit. Campagnuolo `835 is in the same class 362 as the references cited in the IDS filed by inventor Yu, and the `835 has been cited by the examiner in over 40 issued U.S. patents, but inventor Yu did not disclose it to the examiner considering his application, and plaintiff did not cite it to the examiner of its reissue application. Campagnuolo `835 teaches and discloses folding and stowing the crank handle in the device body, and having means for outputting the power either to a battery or to a flashlight. It discloses a hand-cranked electrical power source having an input shaft, drive means, including means connected to the input shaft so as to rotate therewith and a high speed output shaft that drive an AC alternator, e.g., 84 & 122 in Figs. 5 7.

13 Campagnuolo `835 discloses the components housed in a device body with receiving spaces.

UK Patent Application GB 2 304 208 A titled Generator with controlled output, naming Baylis as the inventor, filed Aug. 7, 1995 is prior art to the claims of the patent in suit. Baylis `208 discloses a generator, driven by a gear train or other manually-driven mechanism and a control circuit housed in a device body with receiving spaces. Baylis `208 discloses: a device body Figs. 1 & 3, housing a gear set Figs. 5, 6 & 7, a generator, an electrical circuit, e.g., the generator 20, as already explained, is connected to a power control circuit, Col. 6 at line 20 and Figs. 9 & 11 and Claim 5, and having a gear set comprising a plurality of gears disposed in the device body, e.g., Fig. 5 and Col. 5 at line 19: actual gearbox mountable within the radio shown in Figure 1, and the gears being arranged so as to form a driving system in mechanical communication with a generator, e.g., a gear train driving a generator for converting the energy of the mechanical source into electric power, parag. (57), which teaches a hand crank, e.g., Col. 3 at line 7 a handle 1 pivotally mounted at 12, operatively connected to the driving system to communicate human power to the driving system.

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The Lantern a/k/a as the Freeplay Flashlight shown in Cutaway in the publication Clockwork Radio/Lantern Notes is prior art to the claims of the patent in suit. It discloses the Lantern, which was introduced in November, 1997, e.g., page 3. Clockwork Radio/Lantern Notes discloses how the inventor overcame design issues with gear drive, and that around 1994 1997, that Engineers at Bristol University redesigned the gearbox. The Cutaway shown in Clockwork Radio/Lantern Notes of the Lantern device from 1997 discloses inside a device body, a hand crank, e.g., the Fold Away Handle, the Power Transmission that contained the gear set, a Generator, the PC Board Control Circuitry, a Rechargeable Battery, an LED and a Bulb for illumination, a Switch, and a DC Output Socket. These components of the Lantern disclosed in Clockwork Radio/Lantern Notes correspond to the device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod, a/k/a hand crank, the LED, means capable of powering an electrical device even if the battery is not charged, and the output portion or jack recited in the claims of the patent in suit. The Lantern and disclosures in Clockwork Radio/Lantern Notes anticipate claim 17, at least, of the patent in suit.

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9. A charger with power generating and illumination functions, comprising: a device body housing a gear set, a generator, a voltage and current control loop, and a battery;

The gear set being connected to a hand crank

the voltage and current control loop comprising an electrical circuit which converts AC current from the generator to DC current, wherein the voltage and current control loop provides regulation for charging the battery and provides power for powering an electrical device, and wherein the control loop is capable of powering the electrical device even if the battery is not charged.

16 European Patent Application, EP 0 786 849 A1 titled Manually operated auxiliary power supply for mobile telecommunication devices filed Jan. 29, 1996, naming inventor Duncan is prior art to the claims of the patent in suit. Duncan `849 discloses a generator driven by a gear set, a rectifier and battery housed in container or portable device. It discloses a handle or crank (2), e.g., Fig. 1, by which the alternator 5 is driven via a handle or crankshaft 2 acting on a speed multiplier (or multiplying gearbox), e.g., Claim 6, and preferably, the speed multiplier comprises one or two couples of gears, e.g., Col. 2, at line 37. Duncan `849 discloses converting means 5 capable of generating electric power to charge said rechargeable batteries 9, and an AC/DC converting component (7).

U.S. Patent no. 6,288,463 issued Sept. 11, 2001 on an application filed as a PCT Oct. 14, 1997, naming inventors Tada et al and titled Generator. Tada `463 is prior art to the claims of the patent in suit. Disclosed in Tada `463 is a manual rotary driver mechanism including a crank 16c & 16d, an accelerator, a gear set or plurality of gears 31, 21, 19, 18 & 17 alternatively arranged that form a driving system with one end

17 engaged to driving gear 33 that rotates the driving shaft 32 of AC generator 11, so as to cause it to generate electric power, e.g., Col. 7 at line 23 & Claim 1. The accelerator 11, and e.g., in Claim 1, is a group of gears, e.g., Col 5 at line 53, which pivot on shafts that have their ends in receiving spaces on the device body, e.g., Fig.1. The shaft of a pivotal rod passes through two gears, e.g., Col. 4 at line 58. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5. Also, Tiemann `900 teaches means for controlling the voltage and current output from the generator, e.g., Col 8 at line 9, in such manner that each of the ..output voltages to the output terminals 11A, 11B and 11C of the AC generator 11 is arranged to be relatively high and each of the currents 1a, 1b and 1c flowing as the output currents is arranged to be relatively small, e.g., Col 8 at line 53.

Related to the disclosure in Tada `463 is U.S. Patent no. 5,998,975 issued Dec. 7, 1999 on an application filed as a PCT Oct. 7, 1997, naming inventors Tada et al and titled Electric Power Supplying Apparatus. Tada `975 is prior art to the claims of the patent

18 in suit. Disclosed in Tada `975 are comparable embodiments of the hand-crank, gear set, driving system, driving gear, driving shaft and AC generator shown in Tada `463. Tada `975 discloses more in regard to rectification of AC to DC, and voltage and current control. Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a load, which may be a battery, or portable electronic equipment or a radio or the like. Fig. 3 of the Tada `975 depicts a device body casing, to the right of numerals 22 and 17, which would have spaces for receiving a gear set, and a generator, and voltage and current control circuitry. Tada `975 discloses a handle, shown pivoted on a pin, for providing rotary motion to a set of four gears, e.g., ## 17, 18, 19 & 21, through which pass two rods or rotary axes 15 and 20. Tada `975 discloses a gear set, rods and pivots that are four gears alternatively arranged so as to form a driving system. In Tada `975, the generator is installed on the side of the gear set opposite from the rotary handle.

U.S. Patent no. 5,839,817 filed Sept. 23, 1997 titled Dynamo-Powered Torch naming inventor Ming-Chih Wei is prior art to the claims of the patent in suit. Wei `817

19 discloses a flashlight a/k/a torch powered by a dynamo housed in a cylindrical hollow body, e.g., Col 1 at lines 26 & 65. It notes the motivation to not use flashlight batteries that when discarded may cause pollution to the environment. The dynamo or generator is actuated when the user rotates a knob 11 on a axle 13, e.g., Col. 2 at line 1, and Figs. 1 & 3. Wei `817 discloses a gear set, which in one preferred embodiment is composed of a first gear 30, a second gear 40, a drive shaft 41, a third gear 42 and a forth {sic} gear 43, e,g., Col. 2 at line 14, and Fig. 3. Fig. 3 shows a pivotal rod that passes through two gears, and the gears being alternatively arranged to form a driving system. The gear set drives the dynamo 50 to rotate and generate electric power, e.g., Col. 2 at line 52, which preferably is adapted for illumination.

PCT International Application WO 99/31783, with a priority date of Dec. 15, 1997 and an international publication date of June 24, 1999, titled Electric Generator on which inventors Hutchinson, et al, are identified is prior art to all claims of the reissue patent in suit. Hutchinson `783 discloses a main body that houses an electrical generator. The main body 1 has a fold away winding handle 3 and it encloses a

20 gear train generally indicated at 19 [e.g., Fig. 7] for driving a generator. FIGS. 8 and 9 show alternative embodiments of the gear train, and in one embodiment, e.g., FIG. 8, uses a plurality of gears to drive[] an output pinion 36 connected to the generator 20.

UK Patent Application GB 2 332 268 A, filed Dec. 15, 1997, titled Clockwork Torch and naming inventors Hutchinson et al discloses a torch (Brit. for flashlight) with a generator driven by mechanical power, a hand crank and a gear set, a battery, and a voltage and current control circuit housed in a device body. Hutchinson `268 is prior art to the claims of the patent in suit. It discloses a hand crank, the winding handle 3, e.g., Fig. 3, and a gear set, e.g., Figs. 7 9, with the gears alternatively arranged to form a driving system, e.g., Figure 7 of the drawings which show in diagrammatic form the storage drum 14, torque drum 15, gear train 19, DC generator 20, power control circuit 21, and the bulb 9, e.g., Col. 6 at line 11. Hutchinson `268 discloses an embodiment of a gear train having a first gear wheel 31 engaging a drive pinion 33 on a second toothed gear wheel 34 driving a third gear wheel which in turn drives an output pinion 36 connected to the generator 20, e.g., Col. 6 at line 1. These elements of Hutchinson, together with its power control circuit anticipate claim 17 of the patent in

21 suit. Moreover, the combination of features recited in claim 17 would have been obvious to one of ordinary skill in the art, presumed to have knowledge of the disclosure in Hutchinson `268, as well as the prior art cited in the prosecution of the parent and reissue patent applications along with the art known to the assignee but not cited to the examiner of the reissue application, and too, in view of the references detailed in the Initial Invalidity Contentions.

U.S. Patent Application Publication US2003/0184165, titled Miniature Power Generator Serving as an Emergency Power Source, named inventor Chun-Ming Chiu, claims priority to TW 91202225. The priority date is before that listed on the reissue application, which indicates that Chiu `165 is prior art to the reissue patent claims. Chiu discloses all the elements of the claims in suit, and anticipates the claimed invention. Disclosed are a housing with receiving spaces for a gear set having a plurality of gears and a driving system for a miniature generator that is manually-driven via a hand crank. A commercial embodiment of a device that conforms to the description and drawings in Chiu `165 is available for inspection.

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PCT application WO 98/42060, published Sept. 24, 1998, titled Battery SelfCharger Integrated in Battery Pack for a Portable Telephone Set, naming inventor Yoo, is prior art to the claims of the patent in suit. Yoo `060 identifies the keen interest among persons of skill in the art with portable communication devices such as a cellular phone, and having rechargeable battery cells for assuring the regular voltage of such a portable telephone set. Page 1. Inventor Yoo discloses his battery self-charger comprises a magneto generator mechanism for generating AC voltage, a battery charging means for converting the AC voltage into DC voltage to be supplied to the battery cell, and a controller for controlling the charge operation to the battery cell. Page 2. Elementally, Yoo `060 discloses a knob or handle for a user to manually impart rotation of a plurality of gears pivotally mounted on shafts that pass through the gears and extend between a front panel and a rear panel. Page 2, and e.g., Fig. 3. In one disclosed embodiment of Yoo `060, the generator cooperated with the transmitting gear for producing AC voltage. Page 3. Yoo `060 indicates that persons of skill in the art would consider a rotational crank and gear system could be substituted with a rack which is straightly moved against a rack gear with the rack to be moved reciprocally. Page

23 3. The substituted elements predictably function by engaging with the transmitting gear for driving a generator to obtain the charging voltage to be supplied to the battery cell. Page 3. Yoo `060 discloses the housing of the battery pack 10 having a plurality of receiving spaces within its front panel 12 and rear panel 14, e.g., Figs. 2, 3 & 5. In further detail, Yoo `060 discloses a rotatable magneto generator mechanism having a rotary plate 21 disposed rotatably on the front panel 12 and having a nob 23a for rotating the rotary plate, and that nob has an end collapsibly connected to a rotation hinge 21a by way of pin-shaped connecting member 22, as in Fig. 2 and as describe on page 9 of the published application. These rotary elements are combined with a first rotating shaft 24 that is pivoted to one receiving space of the device body, being supported rotatably on a predetermined position of a rear panel 14, e.g., Fig. 2 and page 9. On the first rotating shaft 24, a rotary gear 25 is disposed near the lateral side of the gear set, and a transmission gear 26 is engaged with the rotary gear, and preferably, a second rotating shaft 26a passes through that transmission gear 26 with the shaft pivoted to a receiving space in the rear panel. Page 9 and Figs. 2 & 3. The second rotating shaft is disposed within the generator 27. As detailed on page 10 and in Figs. 2 & 3 of Yoo `060, when the nob 23a of the rod 23 combined with the rotation hinge 21a of the rotary place 21 is artificially rotated, the shafts and gears rotate, which actuates the generator, and preferably an AC voltage is obtained from the generator 27 and supplied to the battery charging circuitry block. Page 10 and Fig. 1. Yoo `060 anticipates the claims of the patent in suit, in particular claim 9. In addition, the combination of features and functions in claims 1, 9, 16, 17 and 21 of the patent in suit would have been obvious to persons having ordinary skill in the art who are presumed to

24 know and understand the disclosure in Yoo `060, along with the art cited in the prosecution of the parent and reissue patent applications, and too the prior art references cited here and in the Initial Invalidity Contentions.

Disclosed in UK Patent Application GB 2 353 854 A, filed Sept. 9, 1999 titled Clockwork Torch, and naming inventors Hutchinson et al, is a crank arm 12 that is pivotally connected by means of a pivot pin 14, and a grip 12a is rotatably mounted to the crank arm 12, e.g., Col. 6 and Fig. 3, which are housed with a generator 20 and gear set in main body 1 formed of two half shells 1a and 1b. Col. 5. The Hutchinson `854 is prior art to the claims of the patent in suit. The gear set, e.g., Figs, 3, 5 and 7, has a plurality of gear elements that are alternatively arranged to form a driving system. Hutchinson `854 teaches that to drive the generator any number of gears may be used, e.g., Col 8.

25

U.S. Patent no. 5,917,310 titled Spring Operated Current Generator for Supplying Controlled Electric Current to a Load which issued June 29, 1999 and names Baylis as the inventor is prior art to the claims of the patent in suit. Baylis `310 discloses a pivotally mounted hand crank 12 of Fig. 11 or the rotatable handle of claim 1, which enables a user to impart rotation to a generator driven by a gear train, e.g., Fig. 5, control circuitry, e.g., Fig. 5 and Claim 11, a battery, which are housed in a device body, e.g., Fig. 7, that is formed in two halves, e.g.; Col. 2 at line 31 & claim 9, and has a plurality of receiving spaces, e.g., Fig. 3. Baylis `310 discloses a plurality of gears, alternatively arranged to form a driving system, e.g., Figs. 5, 6, 7 and 10C. An embodiment of Baylis `310 shown in FIG. 11 effectively has three outputs namely one for battery charging, one for external uses and one for driving a radio, e.g., Col. 6 at line 61. Baylis `310 anticipates claim 17 of the patent in suit. Moreover, the combination recited in claim 17 would have been obvious to one of ordinary skill in the art, in view of the disclosure in Baylis `310, together with the art uncited to the examiner of the reissue application, and too, the art cited in the prosecution of the parent and reissue applications, as well as the references detailed here and in the Initial Invalidity Contentions.

26

U.S. Patent no. 6,472,846, which issued from a PCT filing Nov. 10, 1999, titled Power Source, naming as inventors Hutchison et al, is prior art to the patent in suit. Hutchinson `846 discloses means for mounting a rechargeable battery; a mechanical generator for generating electrical power; a source of mechanical energy for driving the generator, output terminal means for connection to a load, and a control circuit for controlling the supply of electric power to the output terminal means, e.g., Col. 1 at line 61. Hutchinson `846 discloses a rotatable disc 7 in which is mounted a pivoted handle 8, e.g., Col. 2 at line 35 and Fig. 5.

As early as 1999, Aiwa Corporation sold a Dynamo & Flashlight product, as reported in the October 25, 1999 issue of Fortune magazine, called the Dynamo FRC151. The article describes and depicts that a user can Flip out a recessed handle crank for a minute to power the device. A commercial embodiment of a device that conforms to the description and drawings in Aiwa C151 is available for inspection.

27 U.S. Patent no. 6,291,900 B1, naming inventors Tiemann et al, titled Electrical Energy Management for Manually Powered Devices, issued from an application filed Jan. 13, 2000, and it is prior art to the claims of the patent in suit. Tiemann `900 discloses crank generator devices, which are driven by various mechanical energy input devices that the patent identifies as known substitutes, e.g., Col. 3 at line 33 & Col. 7 at line 53 & Fig. 1, and too Col. 7 at linr 48. It discloses a crank to input mechanical energy, e.g., Col. 5 at line 48 & Col. 11 at line 33 & claims 1, 16 & 33, as well as gears and a driving gear on the shaft of a generator, e.g., Col. 5 at line 52 & Col. 7 at line 55. Tiemann `900 discloses the gear set driving a generator, e.g., 340 on Fig. 8, and supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. Tiemann `900 details that as of the time of its filing, persons of skill in the charger art knew a great deal about how to make, use, modify, substitute and combine crank and mechanical input devices with a plurality of gears alternatively arranged to form a driving system to rotate a generator causing it to produce power to be stored in rechargeable batteries or other storage devices or to connect the power to a load such as an illumination element or an electrical device.

28 Inventor Alsina Perez disclosed in PCT Publication WO 01/03269 A1, titled Emergency Current Generator for Portable Electronic Apparatus, published June 28, 2000, a generator housed in a body, which generator was actuated with a manual crank (6) (as shown in FIG. 1), which rotates a gear set (9) (10) & (11) that turns a driving gear (8) on the shaft (5) of the generator. Alsina Perez `3269 is prior art to the claims of the patent in suit. Disclosed in FIGS. 3 and 5, at least, are rechargeable batteries. The specification explains that the device is connected to an electronic apparatus that it will power that apparatus even when the battery is flat. In particular, the reference discloses a direct current generator which would correspond to that in claim 17.

A pivotally connected crank arm which imparts rotation to a gear set and drive transmission for a generator housed in a device body is disclosed in published PCT application WO 01/16525 titled Electric Torch, filed Aug. 25, 2000, naming inventors Hutchinson et al. Hutchinson `525 is prior art to the claims of the patent in suit.

29 The PCT application published as WO 01/26204 A1, titled Kinetomatic System, lists Fagbola as the named inventor, and has a filing date of Oct. 3, 2000, is prior art to the claims of the patent in suit. Fagbola `204 discloses an external crank linked to a gearing wheel and each forward movement of this crank causes the gearing wheel to turn, and too discloses that through a series of wheels and gears, the turning drives the dynamo (or generator), which generates electrical energy that does through to the integrated circuit (i.c.) and then to the rechargeable batteries, e.g., page 1. The combination of the crank 16 and gears 1, 1A, 2, 5 are shown in Fig. 2/9, and the description states that in essence, the dynamo (or generator) is driven to generate current by the set of gearing wheels 1A and 1, 2, 5, or more. Page 3.

A hand crank and gear set in a housing for a charger to power portable electronics was disclosed in UK Patent Application GB 2 371 155, titled Handheld Generator, naming inventors Becker et al, and having a filing date of Dec. 22, 2000. The Becker `155 is prior art to the claims of the patent in suit. It discloses a two-part casing 11, 12 housing a set of gears 15, 16, 17 with an input gear that is rotatable by manual action of a knob 7, and a folding crank arm 2. The gears are pivoted on rods that

30 pass through the gears to receiving spaces in the housing, e.g., Fig. 4. The gears are alternatively arranged to form a driving system.

UK Patent Application, GB 2 380 540 A, naming inventor Hutchinson, filed March 10, 2001, titled Manually Powered Flashlight with Control Circuitry is prior art to the patent plaintiff pleads in this suit. The Hutchinson `540 discloses a set of gears that are arranged to drive the shaft of a generator, all of which is housed in a device body. The figures in the Hutchinson `540 depict and the specification describes a folding crank arm, which is element 7 in its Figure 3. Hutchinson `540 is prior art to the claims of the patent in suit. The Hutchinson `540 discloses a main casting housing an input gear for driving an alternator via at least one intermediate gear so as to provide a step-up drive ratio; the gears and the alternator rotor all having their rotational axes perpendicular to the base of the main casing and in a single straight line, e.g., Fig. 3.

31

U.S. Patent no. 6,943,459, which claims priority to a provisional filed Aug. 22, 2001, titled Mobile Electrical Power Source, and naming Hartman et al as inventors, is prior art to the claims of the patent in suit. Hartman `459 discloses a housing 12 with receiving spaces, e.g., generator cavity 40, for the stator and rotor of power source 10, with a crank assembly 14 to be rotated by the user, gear assembly 16, e.g., parag. [0051] of Published U.S. Patent Application no. 2004/0150230 A1, and it discloses a housing 12 with receiving spaces, e.g., generator cavity 40, for the stator and rotor of power source 10, with a crank assembly 14 to be rotated by the user, gear assembly 16, e.g., parag. [0051] of the published application.

32 Technical Specification for 50-Watt Hand Generator, published in China in the 1970s discloses devices and components thereof that correspond to the a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod, a/k/a a hand crank or a crank shaft, as well as an output portion, which are recited in the claims of the patent in suit. The publication Technical Specification for 50-Watt Hand Generator and the devices it describes are prior art to the claims of the patent in suit. The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, and the components within receiving spaces therein, it depicts at least one edge formed in the device body, and therein are received the generator, the gear set, and the circuit for rectification, regulation and filtering of the power output from the generator, as well as rods that pass through the gears, which pivot in the receiving space of the device body, and are alternatively arranged so as to form a driving system. Technical Specification for 50-Watt Hand Generator in section VI., enumerates No. 1 bull gear, the No. 2 gear, and the No. 3 gear. The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear, along with a Handle shaft specified to Transmit external force to the gear set. In Maintenance and repair section V., Technical Specification for 50-Watt Hand Generator details procedures for disassembling and maintaining the gear box, disclosed in the publication, accessing it by removing the gear cover, as well as removing gears from the shaft that passes through the first gear, as well as the No. 2 gear with shaft therethrough. The related disclosure is Fig. 5 published in Technical Specification for 50-Watt Hand Generator. Persons having ordinary skill in the art, to which the

33 invention claimed here pertains, would obviously know how to combine the teachings about the crank, gear-set, and manually-driven AC generator with the disclosures in the prior art cited in the prosecution of the parent patent and of the reissue application for that patent, and too, the references detailed here and in the Initial Invalidity Contentions. Published U.S. Patent Application US 2004/0090210, which issued as U.S. Patent no. 6,914,340, titled Handheld Generator and filed Dec. 24, 2001, naming inventors Becker et al is prior art to the claims of the patent in suit. The Becker application discloses a device body 1, 11 & 12, a folding crank arm 2, a gear set e.g., parags. [0033] and [0034] of the published application and Fig. 9. The gears are alternatively arranged and pivot on rods that pass through the gears, and the gear set provides a driving system to rotate a generator.

As early as 2001, Sony Corporation sold a Self-powered emergency radio under the model no. ICF-B200. Accompanying the earlier-served Initial contentions was a copy of the Service Manual for this product. The Sony ICF-B200 used a set of gears to

34 drive an AC generator. The Sony ICF-B200 device, and the published Service Manual are prior art to the reissue patent claims plaintiff pleads in this suit. The earlier-disclosed Service Manual for the product explains that by turning the handle of the power generator, that the user can power up the device.

In sum, the art of gear sets, driving systems, driving gear, hand-crank devices for rotation of a generator was well-developed, and many persons of skill in the art were developing devices in the era preceding the year 2000, and prior to the earliest filing date of the patent in suit.

3.

The Scope and Content of the VCCL Prior Art.

The voltage and current control loop in the claims (counsel use the acronym VCCL) of the patent in suit largely is stated in terms of function, and not structural or electronic detail. A circuit diagram or schematic showing electronic components or connections, or delineating the path of the electric power through a voltage and current control loop were not included in the text, nor in the Figures of plaintiffs patent. Thus, to assess the scope and content of the prior art pertaining to a voltage and current control loop, the initial step is enumerating the structural and functional recitations in the patent. Structurally, of claim 1 specifies that the voltage and current control loop is an integrated circuit board. That claim also specifies that the VCCL has two ends and to what those ends are connected. In claim 1, one end of the voltage and current control loop is connected to a battery for storing power from the generator. Then that second end can be connected one of two ways. Claim 1 specifies that another end of the

35 voltage and current control loop is connected to an output portion for outputting the power to an electrical device, then the claim adds or [that end] is connected to an LED for illumination. Functionally, claim 1 specifies first that the voltage and current control loop serves to convert AC current from the generator to DC current. Next, the claim specifies that the the voltage and current control loop is capable of charging the electrical device or the LED even if the battery is not charged. To get through a recent reexam of the patent, plaintiff added to claim 1 the functional requirement that the voltage and current control loop provides regulation for charging the battery. The structural and functional aspects, taken together, indicate that the scope and content of the prior art relevant to claim 1 would include (i) use of an integrated circuit to convert AC to DC, (ii) circuits in a charger that control voltage and current that goes to a battery or to an LED or to an output connection, (iii) charger circuitry that provides regulation for charging a battery, (iv) circuits used with a charger that are capable of charging an electrical device or an LED even if the battery is not charged. Dependent claims 2 and 4 8, add no aspects or limitations to the VCCL. Dependent claim 3 adds that the alternatives of the VCCL being connected to an output portion or is connected to an LED is accomplished by a switch. Independent claim 9 specifies that the voltage and current control loop is an electrical circuit, as a replacement for the integrated circuit of claim 1. Claim 9 has none of the connected to structural recitations found in claim 1. Omitted from claim 9 is an output element. The electrical device is not required to be external. Thus, the prior art need not contain those features to be relevant to the patentability of claim 9.

36 Functionally, claim 9 has four requirements: the VCCL converts AC current from the generator to DC current, the voltage and current control loop provides regulation for charging the battery, the VCCL provides power for powering an electrical device, and wherein the VCCL is capable of powering the electrical device even if the battery is not charged. Taken together, the scope and content of the prior art relevant to the claim 9 voltage and current control loop encompasses any charger circuit that provides the functions specified in the claim. Dependent claims 10 and 11 add no specifics to the VCCL of independent claim 9. Dependent claim 12 adds a control circuit in electrical communication with the voltage and current control loop which serves the function of directing current that comes from the generator or the battery to an LED, or to an external electrical device. The control circuit is unspecified, and no best mode for it was disclosed. It equates to a circuit for directing current. Dependent claim 15 adds back in that the electrical circuit of claim 9 may be an integrated circuit. Independent claim 16 uses the term electrically communicates with in the place of, perhaps, the connected to recitations of claim 1. Claim 16 includes the converts AC to DC and capable of charging functionalities of claims 1 and 9, plus it adds that the the voltage and current control loop: rectifies current and regulates voltage. On that basis, the scope and content of the prior art relevant to claim 16 is not much different, if at all, from the voltage and current control loop in claim 1 or claim 9. In the patent in suit, independent claim 17 specifies a voltage and current control loop is operatively connected to instead of just connected to as claim 1 specified. It

37 has essentially the same functional requirements of being capable of charging and the VCCL of claim 17 must provide regulation for charging the battery. Claim 17 omits the functional requirement of converting AC to DC, so the scope and content of the prior art would include DC generators used in chargers. Also, claim 17 omits the output element, and the electrical device is not required to be external, thus, the prior art need not have those features to be relevant to patentability of claim 17. The combination of a circuit that is connected to a battery or to an LED, to provide power to either of those, and having such a circuit usable to power an electrical device (an LED, a bulb, a radio, etc., are electrical devices), and to provide DC power converted from an AC generator directly from the circuit even when the available battery is not charged, would have been obvious at the time of the invention to a person having ordinary skill in the art, in view of the disclosure in the ref, and too, the refs cited in the prosecution of the parent and the reissue application, and too, those references detailed in the Initial Invalidity Contentions. One reference pertinent to the scope and content of the prior art is Graf, Rudolf F. THE MODERN POWER SUPPLY AND BATTERY CHARGER CIRCUIT ENCYCLOPEDIA, Tab Books 1992. Call # TK2943.G73 1992. Among the varied forms of regulation circuits and control circuits is that shown in Fig. 4-13, which corresponds to that indicated in plaintiffs Final Infringement contentions.

38 Published in China in the 1970s, the Technical Specification for 50-Watt Hand Generator discloses, describes and depicts devices and components thereof that correspond to those recited in the claims of the patent in suit. Technical Specification for 50-Watt Hand Generator was published more than one year before the date of the invention claimed in the patent in suit, and the document and the devices it describes are prior art to the claims of the patent in suit. Technical Specification for 50-Watt Hand Generator in section VI., enumerates No. 1 bull gear, the No. 2 gear, and the No. 3 gear. The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear, along with a Handle shaft specified to Transmit external force to the gear set. Also, the Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, and the components within receiving spaces therein, it depicts at least one edge formed in the device body, and therein are received the generator, the gear set, and the circuit for rectification, regulation and filtering of the power output from the generator, as well as rods that pass through the gears, which pivot in the receiving space of the device body, and are alternatively arranged so as to form a driving system. In the in General section I., Technical Specification for 50-Watt Hand Generator discloses an AC generator driven by a hand crank that turns gears with a Gear ratio of 1:41.8, see too, Fig. 5 in the publication, all of which correspond to the hand-crank and plurality of gears forming a driving system as claimed in the patent in suit. Technical Specification for 50-Watt Hand Generator in Maintenance and repair section V., discloses the procedures for disassembly and maintenance of the gear box, accessing it by removing the gear cover, as

39 well as removing gears from the shaft that passes through the first gear, as well as the No. 2 gear with shaft therethrough. Maintenance and repair section V., describes the shell cover of the housing, the gear set, the printed circuit board and the voltage stabilizer that can be removed therefrom, and then how to assemble these parts in the opposite order of disassembly. Technical Specification for 50-Watt Hand Generator in the Operating principle section III, describes that the rotor of the generator rotates with the drive gear relative to the stator, and that AC voltage is generated. Technical Specification for 50Watt Hand Generator in General section I., describes circuit components for rectification, a transistor voltage stabilizer, and filtering to reduce ripple voltage, that are operable as a direct-current power supply for charging the storage battery, and for powering a semiconductor 15-watt station. These disclosed components correspond to the elements recited in the claims of the patent in suit, e.g., converting AC from a generator to DC, controlling the current and voltage, charging a battery, and powering an electrical device. Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, and there describes, an AC generator, which is provided with diode rectification and capacitor (C1) filtering, and with transistor series stabilizer is used for voltage stabilization and smooth DC output. In the Main Performance section II. of Technical Specification for 50-Watt Hand Generator the units capability for Voltage regulation is disclosed. The related disclosure is the schematic published in the document, e.g., Figs, 6 & 7. Technical Specification for 50Watt Hand Generator in the Operating principle section III, describes the Voltage stabilization functionality provided by simple transistor series stabilization, so that a stable output voltage is maintained. Technical Specification for 50-Watt Hand

40 Generator in the Operating principle section III, describes the voltage stabilizer has operating principles based on (1) a reference voltage established by diodes 2DW6 and 2DW6A, (2) a regulation part comprised of 3AD18 and 3AX63 as well as resistors R1 and R2. Technical Specification for 50-Watt Hand Generator in Maintenance and repair section V., describes the shell cover of the housing, the gear set, the printed circuit board and the voltage stabilizer that can be removed therefrom, and then how to assemble these parts in the opposite order of disassembly. Technical Specification for 50-Watt Hand Generator in the Operating principle section III, discloses in a toggle switch K1 that can switch to the position of charging. Technical Specification for 50-Watt Hand Generator in the Erection and operation, section IV., it is explained to put the toggle switch in power supply position to directly supply power, or to put the toggle switch in charging position when the generator is charging separately to the storage battery. The combination of a hand-cranked AC generator, driven by a gear set housed in a device body, an AC to DC converter such as a rectifier, controlling the voltage and current, charging a battery, powering an electrical device or an illumination element via an output means would have been obvious to one having ordinary skill in the art as of the time of the claimed invention in the patent in suit, where such person of skill was familiar with the disclosure and teaching of Technical Specification for 50-Watt Hand Generator, as well as the prior art references detailed here and in the Initial Invalidity Contentions, and too, the prior art cited in the prosecution of the parent and reissue patent applications. U.S. Patent no. 4,701,835 titled Multimode Flashlight, naming inventors Campagnuolo et al, issued on an application filed Sept. 19, 1985, and is prior art to the claims of the patent in suit. Campagnuolo `835 is in the same class 362 as the references

41 cited in the IDS filed by inventor Yu, and the `835 has been cited by the examiner in over 40 issued U.S. patents, but inventor Yu did not disclose it to the examiner considering his application, and plaintiff did not cite it to the examiner of its reissue application. Campagnuolo `835 teaches and discloses folding and stowing the crank handle in the device body, and having means for outputting the power either to a battery or to a flashlight. It discloses a hand-cranked electrical power source having an input shaft, drive means, including means connected to the input shaft so as to rotate therewith and a high speed output shaft that drive an AC alternator, e.g., 84 & 122 in Figs. 5 7, connected a rectifier with the power directed to a rechargeable battery , e.g., 82 & Col. 5 at line 40, and to an illumination element , such that in one embodiment, the illumination element 70 will light from current provided by the battery 82 and alternator 84, or by battery 82 only if alternator 84 is not being operated, e.g., Col. 5 at line 53. In another embodiment, it may be desired to operate the light with only the alternator, e.g., Col. 6 at line 5, which corresponds to powering the light even when the battery is not charged. The Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator, and too, the alternator can also simultaneously operate the light and recharge the battery, or only recharge the battery. Campagnuolo `835 teaches circuitry to prevent the light from burning out from overvoltage. Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated.

42

PCT International Application WO 99/31783, with a priority date of Dec. 15, 1997 and an international publication date of June 24, 1999, titled Electric Generator on which inventors Hutchinson, et al, are identified, and known too as EP1070378, is prior art to all claims of the reissue patent in suit. Hutchinson `783 discloses a rechargeable battery that adds versatility since the torch [Brit. for flashlight] can be used on a regular basis by directly recharging the battery and being capable to power the torch in the event of the battery going flat or if there are no batteries available e.g., page 12-13. Disclosed too are control circuitry in Figs. 11 and 12.

43 European Patent Application, EP 0 786 849 A1 titled Manually operated auxiliary power supply for mobile telecommunication devices filed Jan. 29, 1996, naming inventor Duncan is prior art to the claims of the patent in suit. Duncan `849 discloses a generator driven by a gear set, a rectifier and battery housed in container or portable device. It discloses a handle or crank (2), e.g., Fig. 1, by which the alternator 5 is driven via a handle or crankshaft 2 acting on a speed multiplier (or multiplying gearbox), e.g., Claim 6, and preferably, the speed multiplier comprises one or two couples of gears, e.g., Col. 2, at line 37. Duncan `849 discloses converting means 5 capable of generating electric power to charge said rechargeable batteries 9, and an AC/DC converting component (7).

In the application filed Sept. 9, 1999 titled Clockwork Torch GB 2 353 854 A, naming inventors Hutchinson et al, a protection circuit and a voltage sensing circuit are disclosed, e.g, Fig. 4, which are housed with a generator 20 and gear set in main body 1 formed of two half shells 1a and 1b. Col. 5. The Hutchinson `854 is prior art to the claims of the patent in suit. It discloses LEDs 6, e.g., Col. 6, and LED 29, e.g.,

44 Col.11, and at least one battery 24, e.g. Col. 12, as well as a rechargeable battery 24, e.g., Col. 10. The illumination function can be done by power from the battery 24, e.g., Col 13, or the rotation of the generator 20 causes current to flow to the LEDs 6, e.g., Col 13 14.

Inventor Alsina Perez disclosed in PCT Publication WO 01/03269 A1, titled Emergency Current Generator for Portable Electronic Apparatus, published June 28, 2000, a generator housed in a body, which generator was actuated with a manual crank (6) (as shown in FIG. 1), which rotates a gear set (9) (10) & (11) that turns a driving gear (8) on the shaft (5) of the generator. Alsina Perez `3269 is prior art to the claims of the patent in suit. Disclosed in FIGS. 3 and 5, at least, are rechargeable batteries. The specification explains that the device is connected to an electronic apparatus that it will power that apparatus even when the battery is flat. In particular, the reference discloses a direct current generator which would correspond to that in claim 17. All together, Alsina Perez discloses the essential components of a device body, a gear set, a generator, a battery, and a movable rod, or hand crank plus an output portion, and

45 too, a device capable of charging or of powering an electrical device even if the battery is not charged.

UK Patent Application, GB 2 380 540 A, naming inventor Hutchinson, filed March 10, 2001, titled Manually Powered Flashlight with Control Circuitry is prior art to the patent plaintiff pleads in this suit. The Hutchinson `540 discloses control circuitry, including in Fig. 6.

In UK Patent Application GB 2 371 155, titled Handheld Generator, naming inventors Becker et al, and having a filing date of Dec. 22, 2000, a rectifier circuit is disclosed. Becker `155 is prior art to the claims of the patent in suit. The rectifier

46 circuit functions for rectifying the alternator output from AC to DC, e.g., Col. 10 recites a rectifier which converts the three phase alternating current power output from the alternator to direct current. Further disclosed is a control circuit for modifying the rectifier output to a voltage/current appropriate for the device being powered by the invention, e.g., Col. 11. Also disclosed is an output jack 23 by means of which the device can be connected to a consumer device either directly or via an appropriate cable. Claim 6 in Becker `155 discloses the AC alternator in the device being adapted to charge the battery through the rectifier and the control circuit, and Col. 11 - 12 describes the preferred batteries. The disclosed charger can power an electrical device regardless of whether the battery is charged or not. Becker `155 anticipates claim 9 of the patent in suit. Moreover, the combination in the plaintiffs `060 patent of a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod or hand crank that can power an electrical device would have been obvious as of the time of the claimed invention to a person having ordinary skill in the art to which the invention pertains, in view of the disclosure in Becker `155, and too the prior art cited in the prosecution of the parent and reissue applications, and too, the prior art references detailed in the Initial Invalidity Contentions.

47

Published U.S. Patent Application US 2004/0090210, which issued as U.S. Patent no. 6,914,340, titled Handheld Generator and filed Dec. 24, 2001, naming inventors Becker et al is prior art to the claims of the patent in suit. It discloses, e.g., the block diagram in Fig. 6, means to control power and regulate charging.

U.S. Patent Application Publication US2003/0184165, titled Minature Power Generator Serving as an Emergency Power Source, named inventor Chun-Ming Chiu, claims priority to TW 91202225. The priority date is before that listed on the reissue application, which indicates that Chiu `165 is prior art to the reissue patent claims. Chiu discloses a device body 101, a gear set 111-112 on rods, a driving gear 125, a generator 12, a voltage and current control loop Fig. 3, a battery 21, and a hand crank 113 that can power an electrical device such as a cell phone (Fig, 5) via a plug and jack output portion 131. The control circuit Fig. 3 is capable of converting AC to DC, of using a zener diode, resistor, and capacitor in combination with a transistor to provide regulation for charging the battery 21, and is capable of powering the outlet 131 that connects to an external electronic device even if the battery is not capable of powering that device. As

48 set out in the prosecution history of Chiu `165, the combination would have been obvious to one having ordinary skill in the art as of the time of the claimed invention in the reissue patent claims.

At the 1999 Consumer Electronics Show, Sunmate offered a hand-crank charger and radio, as reported in Newsweek, Jan. 17, 1999, in Gadgets Galore, Large and Small: for those with a little premillennium tension, the Info-Mate World-Band Radio (www.sunmate.com), which runs on solar power, a hand-crank generator, car cigarette lighter or AC adapter, and as reported in the Jan. 16, 1999 issue of Communications World, www.trsc.com/cw, as follows: It's the sound of the BayGen Freeplay radio, which is powered by a hand-crank machanism. Thirty seconds or so of winding provides perhaps a half hour of listening. The Freeplay radio was designed for developing countries, where batteries and mains power are expensive or inaccessible. But because of the eighty dollar price of the radio, it has had more of a market among gadget lovers in wealthier industrialized countries. At the Consumer Electronics Show in Las Vegas, Nevada, earlier this month, BayGen unveiled a new Freeplay radio that costs only $30, putting it more within the reach of listeners in developing countries. It's lighter, too: 1.1 kilograms rather than the 2.3 kilograms of the hefty earlier model. BayGen is working with General Electric, one of its investors, to replace the eight meter long spring which now stores the power for the Freeplay

49 radio. In the future, the hand crank will recharge a battery which will store the power. BayGen is a South African company that manufacturers a number of devices powered by a hand-cranked clockwork machanism. It has sold about 1 and a half million Freeplay radios and flashlights since 1994. The BayGen Freeplay radio is innovative, but its shortwave frequency coverage is limited. Another radio powered by a hand-crank, distributed by Sun-Mate Corporation of California, has better shortwave frequency coverage: 4 to 24 megahertz in four bands. Sun-Mate's Info-Mate World Band Radio also receives medium wave, FM, TV sound, weather broadcasts in the United States, and VHF communications bands. Five minutes of cranking provides an hour of operation. But the radio can also be powered by a solar cell, batteries, a mains adapter, and from a car cigarette lighter.

The Sunmate product from the 1999 CES show, and a version introduced at the 2002 CES show were described in the product catalogs, as follows:

Info-Mate SM855 Digital Category: Self-Powered Radios (perfect for any emergency) Digital Tune Radio With Clock, Solar and Hand Generator Introduced At CES (Consumer Electronic Show) In Las Vegas, January 2002 Multi Bands: AM/FM, Weather band, World Wide Foreign Broadcast SW. 4-way Charging: AC/DC wall adapter, Solar Cell, Self contained Hand Generator, Auto Cigarette Lighter Plug. Why you should have this radio? With the INFOMATE Model #855 you can listen to your favourite music, news, or talk radio stations. You can also tune into the National Weather Service in case of an emergency weather condition. Take this radio with you and use it as a travel alarm and clock. You may also operate the INFOMATE by placing it directly in the sun and it will work without batteries. IT'S a BATTERY FREE RADIO! Save money as well as our landfills with this environmentally friendly radio. Keep one in your window sill if you happen to live in an area subject to severe weather conditions, earthquakes, floods, fires, etc. Just let it charge (if radio is totally drained, 3 hours of sunlight will charge the radio for approximately 46 hours of playing time). With the information radio, you will never depend on batteries again. Sun-Mate Multi-Band Radio with Light 836NL Category: Self-Powered Radios (perfect for any emergency) Generator and Solar AM/FM/SW/TV Radio with Flashlight and Siren The Most Versatile Radio Ever Built! This radio shines during emergency situations! The Solar Emergency Radio and Light keeps you informed and prepared in the event of trouble. This multi-band radio keeps you on top of breaking news and weather reports with AM, FM and TV station broadcasts and allows you to

50
monitor amateur and foreign AM radio frequencies on the SW (Short Wave) bands. Solar cell on top of handle charges the unit and keeps it going long after the sun goes down. If the lowbattery indicator comes on - simply turn the built-in hand-crank generator or insert 2 AA batteries (not included) to charge-up and maintain power. Replacement bulb and built-in carrying strap included. Manufactured with Sony components, this radio runs up to 50 hours when fully charged. The solar cell is made in the U.S.A. with a lifetime warranty. Features: 6-Way Power o AC/DC wall adapter o Self contained Solar Cell o Built-in Hand Generator o DC Auto Cord o Internal Rechargeable Circuit o External AA Batteries (2), Alkaline or Rechargeable Manufactured with Sony Components Solar cell is self contained, is made in the USA, and has a lifetime warranty. A single charge will operate the Sun-Mate for approximately 7 hours in complete darkness with full charge. Approximate size is 3" (D) x 9" (W) x 5.5" (H). Meets all safety standards and FCC approved Turning LED indicator: Help locate stations on your scale. SW & TV radio bands Light with extra bulbs and coloured light covers Siren and blinking light

The Sunmate products offered, and product brochures published before the filing date of the patent in suit are prior art. Additional relevant prior art includes U.S. Patent no. 5,008,785 issued April 16, 1991, that named Maglica et al, as inventors, and is titled Rechargeable Miniature Flashlight, which is prior art to the claims of the patent in suit. As shown in Fig. 9, and described in the specification, Maglica `785 discloses a control circuit for DC power, which regulates the charge going to the batteries, and capability to power the illumination element from the charging circuit or from the batteries, e.g., element 67, Fig. 9 and Col. 7-8. OF further interest is U.S. Patent no. 4,388,673 that named Maglica as inventor, and is titled Variable Light Beam Flashlight and Recharging Unit, which patent is prior art to the claims of the reissue patent in suit. Further relevant to the elements of the combination claimed in the patent in suit is U.S. Patent no. 6,994,450 titled Faraday

51 Flashlight (in an apparent reference to the inventor who theorizes about diodes and semiconductors), which named Mah as the inventor. Mah `450 claims priority to March 29, 2002, and so, may be prior art to the specification filed with the parent to the reissue patent. Disclosed in Mah `450 are control and regulation circuits, e.g., Figs. 8,9 and 12, which are relevant to the claimed voltage and current control loop of the patent claims in dispute here. Of relevance too is U.S. Patent no. 6,930,403 that names Hartman et al as inventors, and which claims priority to Aug. 21, 2002, and so, may be prior art to what is in the specification and drawings filed with the reissue application. Hartman `403 discloses a hand-crank driven mobile electrical power source. B. Level of Skill in the Art. The prior art identifies inventors having doctorate degrees, albeit some of those were conferred by universities outside the U.S., which degrees may not be a Ph.D. of our university system. The level of skill was high, and at a minimum a person skilled in the art to which the invention pertains would have an advanced engineering degree and around ten years of experience in portable electrical devices. C. The Combination in the Yu Reissue patent is Obvious. By the publication date of the Duncan `849 reference, persons of skill in the art would have had abundant, known and practiced technology to address the desire or need for a charger with power generating and illumination capabilities, useful for portable devices such as cell phones, radios or flashlights. The 1970s Chinese Technical Specification, the Campagnuolo `835, and the Baylis `208 teach some most of the finite

52 number of identified, predictable solutions, that were within the technical grasp of persons having ordinary skill and which were known options they would have had good reason to pursue. Technical Specification for 50-Watt Hand Generator discloses the crank, the gearing, a generator, battery, the control circuitry, and the output to various electrical devices. The Duncan `849 reference contains all of what is disclosed in the patent in suit, excepting perhaps the LED or flashlight feature. That feature surely is disclosed in the other references, and too, an LED is an electrical device, which would be among the possible components one would connect to a portable charging device. A person of ordinary skill in the art would have known to combine the disclosures in Baylis `208, Duncan `849 and Hutchinson `854, as of 2000. By this time, a market need was presented to develop emergency use power devices because of concerns about Y2K power outages, as well as environmental concerns about land disposal of spent batteries. Also, the portable electronics era was unfolding, especially, the proliferation of cell phones with short-life battery power. The crank, the housing, the gear set, control circuitry, a generator, battery, control circuitry, illumination element, output capability to power an electrical device, all were disclosed in the art by 1999. Varied combinations of these components and the disclosures in the prior art were predictable uses of known elements according to their established functions. The Lantern introduced in 1997 incorporates the hand crank, a geared transmission, a generator, control circuitry, battery, illumination element and a DC output. Again, by 1999, the essential elements combined in the patent in suit were well known, and subsequent versions were incremental improvements to the gearing, the generator, the control circuitry, etc., and were not new inventive combinations. By the 2000s, control circuitry for voltage, for

53 regulating power to charge batteries, and means to control DC current were well known. Indeed, by 2001, control circuits were off-the-shelf components, such as those embedded on intergrated circuits, which even hobbyists knew how to use. The early and continued development of hand-crank, gear driven generators, with control circuitry, batteries, LEDs and powering electrical devices, by the Freeplay companies, as well as Sony and others, occurred before the earliest date of invention by Yu as indicated by the filing date disclosed in his U.S. patent application. The Sony ICF-B200 has power generating and illumination functions, and device body housing and a gear set, a generator and electrical circuitry. It includes both a dry battery and a rechargeable battery, and has a gear set comprising a plurality of gears, e.g., Ref. Nos. 71and 72, that are arranged so as to mechanically drive a generator, e.g., element 5 in Section 3 of the manual, and Ref. No.76, and has circuitry connected to store power from the generator in a rechargeable battery, BATT2, and circuitry in the Sony ICF-B200 converts AC from the generator to DC, and has a circuit is connected to the LED Board element 3 in Fig. 3-3, which has lamp 5 to provide illumination, and has hand crank connected to communicate human power to drive the gear set, as indicated in Section 2 of the manual, and it can power an electrical device, such as the back light or the radio, and those elements were disclosed in a publication and the device was on sale prior to the filing date of the patent in suit. Companies like Freeplay and Sony had teams of engineers and designers, as well as inventors Hutchinson, Becker, and Tada, who pioneered these devices, well before Yu, and who had adequate resources and techinical competence to combine all the teachings of the prior art into devices desired by the purchasing public, and that fit the needs of

54 users of portable electronic devices. Even combinations, less desired by the purchasing public, would have been obvious to try. Since all of the components claimed in the patent in suit were known, and in the patent are used to perform known and predictable functions, the functional recitations in the patent claims, e.g., capable of and provides regulation, and directing and powering do not suffice to distinguish over the prior art. Apparatus claim validity relies solely upon the structure of the device itself, irrespective of function. See, MPEP 2114 (A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)). Based on the foregoing art of record, in combination with that detailed here, any differences between the prior art and the claims in suit would have been obvious. IV. Contentions as to the Scope and Content of the Prior Art and The Disclosures There of All Elements and Limitations Claimed in the Patent in Suit. This chart refers reissued independent claim 1, and it summarizes the scope and content of the prior art concerning the corresponding elements in the claim.

Yu Reissue Claim 1 elements.

A multi-functional charger with power generating and illumination functions

Identification of Elements in Prior Art. U.S. PAT 4701835 to inventor Campagnuolo, issued October 20, 1987, discloses the prior art of illumination devices with manual generators for the lamp and/or for rechargeable batteries. Plaintiff acknowledged in its LPR 2.5 response, that Campagnuolo `835 discloses this limitation. US PAT 5552973, to inventor Hsu issued

55 September 3, 1996 discloses and claims:

"A flashlight comprising: a housing having a hub on the inside; a flywheel having a wheel axle turned between two axle bearings inside said housing, and too, an induction coil fixedly mounted inside said housing around the magnet of said flywheel; a driving wheel turned on said hub, said driving wheel having a toothed portion around the periphery meshed with the toothed portion of said one-way rotary member. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973 discloses this limitation. US Patent 6,322,233 to inventor Brandt issued

November 27, 2001 discloses and claims "An

emergency flashlight" and it includes "a lightproducing member mounted on the elongate portion; the handle portion including generating means and gear means by which

electrical energy can be manually created by swinging the handle portion with a circular motion. The LPR 2.5 response from plaintiff acknowledges that Brandt `233 discloses this limitation, i.e., a multi-functional charger with power generating and illumination functions. In Tada `975, the Section on Description of the Prior Art refers to electronic equipment, such as a portable radio receiver or the like, which is provided with a manual rotary driver and a generator having a rotor and operative to generate electric power when the rotor is driven to rotate by the manual rotary driver [that when] rotated manually by a user to drive the rotor of the generator to rotate, so that the generator is put to operation for generating electric power. The electric power obtained from the generator is supplied to a secondary battery. See too, art detailed in Content sections above, for which copies are served herewith. a device body, a generator, a battery, US PAT 6313386, to inventor Capobianco

56 issued November 6, 2001, and assigned to Sony, discloses "components, can be contained in an enclosure 1000, such as a music box, which can include a handle 1100 or the like for manually applying a mechanical force," then to "release the vast majority of the originally applied mechanical energy by, either directly or indirectly (such as via a gearbox (e.g., a planetary gear arrangement, a rack and pinion arrangement, etc.), turning an input shaft of a well-known fractional horsepower generator 1300. US PAT 6346791, to inventor Barguirdjian issued February 12, 2002 for a SELFCONTAINED RECHARGING DEVICE FOR PORTABLE TELEPHONE, describes a device body, with a "manual butterfly winder," that drives an "extra flat alternator" as elements of a "recharging device" for the "battery" inside a cellular phone housing. US Patent 6,322,233 discloses and claims "An emergency flashlight comprising: a handle portion shaped and sized so as to be easily grasped manually; a rotary portion mounted on the handle portion for rotation about a rotary axis with respect to the handle portion" and it includes "a lightproducing member mounted on the elongate portion; the handle portion including generating means and gear means by which electrical energy can be manually created by swinging the handle portion with a circular motion, thereby causing the elongate portion and the rotary portion to rotate together about the rotary axis; and conductive means for conducting said electrical energy to said light-producing member." US PAT 5552973 discloses and claims: "A flashlight comprising: a housing having a hub on the inside; a flywheel having a wheel axle turned between two axle bearings inside said housing, and too, an

57 induction coil fixedly mounted inside said housing around the magnet of said flywheel; a driving wheel turned on said hub, said driving wheel having a toothed portion around the periphery meshed with the toothed portion of said one-way rotary member, with said driving wheel, and an opposite end wound round said driving wheel and coupled with a handle outside said housing. US PAT 6288463 for a GENERATOR by Tada, assigned to Sony, describes and teaches how the "electric power obtained from the AC generator is rectified to be converted to direct-current (DC) electric power which is supplied to a secondary battery or a condenser for accumulating electric power to be stored therein." Tada `463 includes an alternating-current generator, a rotary driving mechanism to put the alternating-current generator in operation for generating electric power, and a voltage to current convertor for supplying the load, such as a battery, with the electric power obtained from the alternating-current generator, which apparatus is suitable for portable electronic equipment, such as a portable radio receiver or the like. One disclosed embodiment of the rotary driving mechanism comprises a rotary axis 15 and a handle 16 mounted on the end of the rotary axis 15. The Becker 6,914,340 patent describes a handheld power generator for generating electrical power for a consumer device, with its components in a main casing. The Becker and Hutchinson USP 6,472,846 describes and claims: handheld power generator that includes an alternator. The Becker and Hutchinson patents describe an embodiment that: further comprises a battery mounting in which a battery can be mounted. See too, art detailed in Content sections above, for which copies are served herewith.

58 In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 disclose a "device body." a movable rod US PAT 6291900 to inventor Tiemann issued September 18, 2001 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "A manually powered apparatus for converting mechanical energy to electrical energy comprising: a crank; a spring drive mechanically coupled to said crank for releasing mechanical energy" It further describes an embodiment, as follow: "As shown in FIG. 3, the generator 340 is connected to the mechanical energy input device 300. The generator 340 generates electrical energy from the mechanical energy that is input from the mechanical energy input device 300. A gear ratio (not shown) mechanically connects the generator 340 to the mechanical energy input device 300. The Becker patent discloses and claims: one end of the drive members is pivotally connected to one end of a crank arm which is movable into an operative position from a stored position in which it lies parallel to the base of the casing which with its free end held in a recess in the other end of the casing. US PAT 5552973 discloses and claims: "A flashlight comprising: a housing having a hub on the inside; a driving wheel turned on said hub, said driving wheel having a toothed portion around the periphery meshed with the toothed portion of said one-way rotary member, with said driving wheel, and an opposite end wound round said driving wheel and coupled with a handle outside said housing. Campagnuolo `835 reference teaches and discloses folding and stowing the crank

59 handle in the device body. US Patent 6,322,233 discloses and claims "An emergency flashlight comprising: a handle portion shaped and sized so as to be easily grasped manually; a rotary portion mounted on the handle portion for rotation about a rotary axis with respect to the handle portion" and it includes "a lightproducing member mounted on the elongate portion; the handle portion including generating means and gear means by which electrical energy can be manually created by swinging the handle portion with a circular motion. US PAT 5552973 discloses and claims: "A flashlight comprising: a housing having a hub on the inside; a flywheel having a wheel axle turned between two axle bearings inside said housing, a magnet fixedly mounted around said wheel axle, and a circular bottom recess; an one-way rotary member mounted around the wheel axle of said flywheel at a bottom side, said one-way rotary member comprising a base disposed in the circular recess of said flywheel, and a toothed portion around the periphery, the base of said one-way rotary member comprising a sloping recess at one side, a metal plate mounted within said sloping recess, and a rotary pin moved on said metal plate in said sloping recess between the operative position in which said rotary pin is forced by centrifugal force into engagement with the periphery of the circular recess of said flywheel upon the rotary motion of said one-way rotary member in one direction, and the nonoperative position in which said rotary pin is forced away from the periphery of the circular recess of said flywheel upon the rotary motion of said one-way member in the reversed direction. See too, art detailed in Content sections above, for which copies are served herewith.

60

the gear set includes a first gear, a second gear, a third gear, and a fourth gear; two pivotal rods pass through the gears to be pivoted to one receiving space of the device body; each pivotal rod passes through two different gears; the four gears are alternatively arranged so as to form a driving system; one side of the gear set opposite to the side of the gear set which is installed with the movable rod;

US Patent 6,322,233 discloses and claims "An emergency flashlight comprising: a handle portion shaped and sized so as to be easily grasped manually; a rotary portion mounted on the handle portion for rotation about a rotary axis with respect to the handle portion" and it includes "a lightproducing member mounted on the elongate portion; the handle portion including generating means and gear means by which electrical energy can be manually created by swinging the handle portion with a circular motion. US PAT 6313386, assigned to Sony, discloses " applied mechanical energy by, either directly or indirectly (such as via a gearbox (e.g., a planetary gear arrangement, a rack and pinion arrangement, etc.), turning an input shaft of a well-known fractional horsepower generator 1300. The Tada specification describes: A gear 17 is also mounted on the rotary axis 15 to engage with a gear 18. The gear 18 is coaxially incorporated with a gear 19 which engages with a gear 21 mounted on a rotary axis 20. The rotary axes 15 and 20 and the axis common to the gears 18 and 19 are supported by fixed supporting members 22 and 23. The gears 17, 18, 19 and 21 in the aggregate constitute the accelerator 13. OCI admitted that in Tada, the generator is installed on the side of the gear set opposite from the rotary handle RFA #67. The Becker 6,914,340 patent describes and claims: the input gear, intermediate gear, and the rotor of the alternator all having their rotational axes perpendicular to the base of the main casing so that the gears and rotor rotate parallel to the plane of the base.

61 See too, art detailed in Content sections above, for which copies are served herewith. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 disclose a "device body." another end of the generator has a driving shaft; a driving gear is engaged to the driving shaft; the driving gear is engaged to one end of the gear set; thereby, the generator is driven to generate power by the gear set; US PAT 6291900 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "A manually powered apparatus for converting mechanical energy to electrical energy comprising: a crank; a spring drive mechanically coupled to said crank for releasing mechanical energy" and teaches A gear ratio (not shown) mechanically connects the generator 340 to the mechanical energy input device 300. US PAT 6313386, assigned to Sony, discloses "a handle 1100 or the like for manually applying a mechanical force," and to "release the vast majority of the originally applied mechanical energy by, either directly or indirectly (such as via a gearbox (e.g., a planetary gear arrangement, a rack and pinion arrangement, etc.), turning an input shaft of a well-known fractional horsepower generator 1300. US PAT 6313386 would inform persons skilled in the art that from supplied mechanical energy, generator 1300 can generate electrical energy. US PAT 6288463 to inventor Tada issued September 11, 2001 includes a rotary driving mechanism to put the alternatingcurrent generator in operation for generating electric power, and one disclosed embodiment of the rotary driving mechanism comprises a rotary axis 15 and a handle 16 mounted on the end of the rotary axis 15. Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a

62 load, which may be a battery, or portable electronic equipment or a radio or the like. The Becker patent discloses and claims: an input gear for driving the rotor of an alternator. The Becker patent discloses and claims: a drive member connected to said input gear and rotatable by manual action to rotate the input gear, the axis of rotation of the drive member being parallel to the respective axes of the input gear, the intermediate gear and the rotor with all the axes lying in a single straight line. See too, art detailed in Content sections above, for which copies are served herewith. US PAT 4701835 discloses the prior art of illumination devices with manual generators for the lamp and/or for rechargeable batteries, and it claims: "A flashlight comprising: a relatively lowspeed input shaft and a relatively highspeed output shaft; means for manually rotating said input shaft" and including "an alternator having rotor means and stator means, said rotor means being directly coupled to said output shaft so as to rotate therewith and said stator means positioned about said rotor means for generating electrical energy in response to rotation of said rotor means; diode means for rectifying the electric current produced by said alternator, said diode means having an input connected to said alternator and an output." US PAT 6313386, assigned to Sony, discloses an "Electricity control unit 1402 [that] can regulate power, voltage, and/or current." It also teaches that generator 1300 can be replaced by an alternator whose AC output is converted into DC power, for example by a diode bridge and/or a rectifier, for simplicity, only

and the voltage and current control loop is an integrated circuit board which convert AC current from the generator to DC current;

63 generator 1300 is referred to. Tada discloses a circuit, such as a rectifier bridge, to convert AC current from the generator to DC current. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5. Plaintiff OCI admitted that Tada discloses a circuit, such as a rectifier bridge, to convert AC current from the generator to DC current. RFA #68. Becker USP 6,914,340 claims diode means for rectifying the electric current produced by the disclosed generator. The Becker specification describes: rectifier which converts the three phase alternating current power output from the alternator to direct current. Tiemann `900 teaches means for controlling the voltage and current output from the generator, e.g., Col 8 at line 9, in such manner that each of the ..output voltages to the output terminals 11A, 11B and 11C of the AC generator 11 is arranged to be relatively high and each of the currents 1a, 1b and 1c flowing as the output currents is arranged to be relatively small, e.g., Col 8 at line 53. The Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, that is, an AC generator, which is provided with diode rectification and capacitor (C1) filtering, and transistor series stabilizer is used for voltage stabilization and smooth DC output. The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current, and that it also discloses that generator 1300 can be replaced by an alternator.

64 See too, art detailed in Content sections above, for which copies are served herewith. one end of the voltage and current control loop is connected to a battery for storing power from the generator and another end of the voltage and current control loop is connected to an output portion for outputting the power to an electrical device, or is connected to an LED for illumination, Until the plaintiff provides its contention about the claim terms connected to and operatively connected to, and how persons of skill would differentiate between those terms, it is uncertain how that claim element compares in scope and content to the teachings in the prior art. The specification does not include the term operatively which regards the claim limitation a circuit being operatively connected. US PAT 5552973 discloses and claims: a switch; a lamp mounted in said housing at one end and connected to said induction coil through said switch; and a battery mounted in said housing at an opposite end and connected to said induction coil through said switch in parallel to said induction coil. Campagnuolo `835 reference teaches and discloses means for either outputting the power to a battery or to a flashlight. OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77. Tiemann `900 discloses supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. Tada claim 1 recites: a voltage and current converting means connected between an output of the alternating-current generator and a load. In Tada, the output is connected to a load typically a battery. The Becker specification describes: As can be seen from FIGS. 13 the main generator unit has an LED 125, and too,

65 its upper casing half 408 carries a switch 424 by means of which a user can turn the flashlight on. The Becker patent describes and claims: the main body having an output socket for attachment to a detachable unit containing circuitry for adapting the output of the power generator to a particular model of cell phone. See too, art detailed in Content sections above, for which copies are served herewith. wherein the voltage and current control loop provides regulation for charging the battery and6 is capable of charging the electrical device or the LED even if the battery is not charged. The `060 patent specification does not contain the word capable as in capable of powering, and it does not contain the term powering. US PAT 6313386, assigned to Sony, would inform persons skilled in the art that from supplied mechanical energy, generator 1300 can generate electrical energy. Although generator 1300 can be replaced by an alternator whose AC output is converted into DC power, for example by a diode bridge and/or a rectifier, for simplicity, only generator 1300 is referred to henceforth. The electrical energy of generator 1300 can be stored in a battery 1350, and/or provided directly to controller 1400. The electricity from generator 1300, and/or the electricity provided to controller 1400, can be regulated by any known power, voltage, and/or current regulator (not shown in FIG. 1). Likewise, any known power, voltage, and/or current protector (not shown in FIG 1), such as an isolation transformer, surge protector, thyristor, breaker, and/or fuse, can protect controller 1400." It further discloses an "Electricity control unit 1402 [that] can regulate power, voltage, and/or current." US PAT 5552973 discloses and claims: a switch; a lamp mounted in said housing at
6

Text added to preserve reissue claim 1 from rejection in the reexamination proceeding.

66 one end and connected to said induction coil through said switch; and a battery mounted in said housing at an opposite end and connected to said induction coil through said switch in parallel to said induction coil. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973 discloses a switch; a lamp connected to said induction coil through said switch; and a battery connected to said induction coil through said switch. US PAT 6291900 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "In a preferred embodiment, the generator provides a positive and a negative terminal (not shown) that provide electrical energy in the form of voltage and current to the load 380. It should be appreciated that the electrical energy can be provided from the generator via a variety of contacts or electrical connections known in the art, and as such, the present invention should not be limited to those embodiments disclosed herein." Further, it describes embodiments, as follows: "As shown in FIG. 3, the load 380 is connected to the generator 340 via an isolator 350, a electrical energy storage device 360 and a disconnector 370. The load 380 can comprise various electrical or electronic devices. The load 380 can comprise devices such as toys, lights, electronic remote control devices, wireless electronic remote control devices and other electronic devices. It should be appreciated that the load 380 is not limited to electrical or electronic loads, and that mechanical loads are also encompassed." The Becker patent describes and claims: the battery can power a mounted bulb, and a switch whereby the battery or the alternator can either power the bulb or the alternator charge the battery. {em. added}. Becker claims switch means for connecting said diode means output to

67 either the lightbulb or the battery, or to both the light and the battery. Further disclosed in the Operating principle section of the Technical Specification for 50-Watt Hand Generator is toggle switch K1 that can switch to the position of charging. Continuing in the Erection and operation, section IV., it is explained to put the toggle switch in power supply position to directly supply power, or to put the toggle switch in charging position when the generator is charging separately to the storage battery. See too, art detailed in Content sections above, for which copies are served herewith.

This chart refers reissued independent claim 1, and it identifies the presence in the prior art of elements recited in the claim.

Reissued Independent Claim 1

Correlated elements in prior art references.

A multi-functional charger with power generating and illumination functions

GB 2 380 540(A). Sony ICF-B200

See too, art detailed in Content sections above, for which copies are served herewith.

a device body

Fig. 3-1 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 9 and 70. GB 2 380 540(A) on pg. 4 at line 5 GB 2 371 155 (A) Fig. 3, and on pg. 6 at line 25 In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 discloses a "device body." OCI admitted that the Sony ICF-B200 discloses a generator installed in the device body. RFA #93.
See too, art detailed in Content sections above, for which copies are served herewith.

68

a gear set

Figure 3.C. in GB 2 380 540(A), and on pg. 4 at line 23 Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) Figs. 4, 9 and 11 Figs. 3, 4, 5 and 7 GB 2 353 854(A), elements 16, 21, 22, 22a, and 23 The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as comprising an AC generator driven by a hand crank that turns gears with a Gear ratio of 1:41.8, and, and are alternatively arranged so as to form a driving system. Its section VII lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear, and the Failure causes section VI., enumerates No. 1 bull gear, the No. 2 gear, and the No. 3 gear.
See too, art detailed in Content sections above, for which copies are served herewith.

a generator

GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, and Section 6, Ref. No. 76 GB 2 371 155 (A) Fig. 6, and on pg. 13 at line 17 The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as comprising an AC generator driven by a hand crank that turns gears.
See too, art detailed in Content sections above, for which copies are served herewith.

a voltage and current control loop

Figure 5-2 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 74. GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 9 at line 21, pg. 9 at line 26, pg. 11 at lines 7-25, pg. 12 at lines 7-25, pg. 13 and claim 1 GB 2 371 155 (A) Fig. 6, and on pg. 4 at lines 1-4, pg. 15, line 10

69 The Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, that is, an AC generator, which is provided with diode rectification and capacitor (C1) filtering, and transistor series stabilizer is used for voltage stabilization and smooth DC output. It describes the Voltage stabilization functionality provided by simple transistor series stabilization, so that a stable output voltage is maintained. The voltage stabilizer has operating principles based on (1) a reference voltage established by diodes 2DW6 and 2DW6A (2) a regulation part comprised of 3AD18 and 3AX63 as well as resistors R1 and R2. Tiemann `900 teaches means for controlling the voltage and current output from the generator, e.g., Col 8 at line 9, in such manner that each of the ..output voltages to the output terminals 11A, 11B and 11C of the AC generator 11 is arranged to be relatively high and each of the currents 1a, 1b and 1c flowing as the output currents is arranged to be relatively small, e.g., Col 8 at line 53.
See too, art detailed in Content sections above, for which copies are served herewith.

a battery

Figure 5-2 of Sony ICF-B200 Service Manual indicates the batteries, and Section 6, Ref. No. BATT2, and it discloses both a dry battery and a rechargeable battery, GB 2 380 540(A) on pg. 8 at line 20. GB 2 371 155 (A) Fig. 6, and on pg. 11 at line 1, page 16 at line 12, and claim 6 The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as operable as a direct-current power supply for charging the storage battery, and for powering a semiconductor 15-watt station.
See too, art detailed in Content sections above, for which copies are served

70
herewith.

a movable rod

GB 2 380 540(A) on pg. 2 at line 7, pg. 3 at line 20, claim 1 Sony ICF-B200 Service Manual, and Section 6, Ref. No. 52 and 84 GB 2 371 155 (A), Figs. 1, 2 and 7, and on pg. 3 at line 5 The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as comprising an AC generator driven by a hand crank that turns gears.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the device body is formed by an upper casing and a lower casing

GB 2 380 540(A) on pg. 4 at line 5, pg. 8 at line 16 Sony ICF-B200 Service Manual, and Section 6, Ref. No. 9 and 70 GB 2 371 155 (A) Fig. 3 and on pg. 6 at line 25 The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, and the components within receiving spaces therein.
See too, art detailed in Content sections above, for which copies are served herewith.

an inner edge of the device body is formed with a plurality of receiving spaces

Fig. 3-1 of Sony ICF-B200 Service Manual depicts receiving spaces for components, as too is indicated with Ref. no 9 of Section 6 Figure 3 in GB 2 380 540(A) GB 2 371 155 (A) Fig. 3. The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, and the components within receiving spaces therein.
See too, art detailed in Content sections above, for which copies are served herewith.

71

receiving spaces for receiving the gear set, the generator, the voltage and current control loop and the battery

Fig. 3-1 of Sony ICF-B200 Service Manual depicts receiving spaces for components, as too is indicated with Ref. no 9 of Section 6 Figure 3 in GB 2 380 540(A), and on pg. 5 at line 1 GB 2 371 155 (A) Fig. 4, and on pg. 12 at line 9, and pg. 18 at line 3 The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, and the components within receiving spaces therein, it depicts at least one edge formed in the device body, and therein are received the generator, the gear set, and the circuit.
See too, art detailed in Content sections above, for which copies are served herewith.

the gear set includes a first gear, a second gear, a third gear, and a fourth gear

GB 2 380 540(A) enumerates input gear, and at least one (or up to 3) intermediate gear. Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) on pg. 3 at line 21 The Technical Specification for 50-Watt Hand Generator in its General section I., describes gears with a Gear ratio of 1:41.8, and, and are alternatively arranged so as to form a driving system. Its section VII lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear, and the Failure causes section VI.,and enumerates No. 1 bull gear, the No. 2 gear, and the No. 3 gear.
See too, art detailed in Content sections above, for which copies are served herewith.

two pivotal rods pass through the gears to be pivoted to one receiving space of the device body;

GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) on pg. 3 at line 7, and pg. 15 at line 14 The Technical Specification for 50-Watt

72 Hand Generator in itsMaintenance and repair section V., identifies procedures for disassembling and maintaining the gear box, accessing it by removing the gear cover, as well as removing gears from the shaft that passes through the first gear, as well as the No. 2 gear with shaft therethrough.
See too, art detailed in Content sections above, for which copies are served herewith.

each [first pivot.] add.pivotal add.end.rod passes through [the] two different gears

GB 2 380 540(A) on pg. 1 at lines 18-26 Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) Fig. 4 and 11 The Maintenance and repair section V., in the Technical Specification for 50-Watt Hand Generator, identifies procedures for disassembling and maintaining the gear box, accessing it by removing the gear cover, as well as removing gears from the shaft that passes through the first gear, as well as the No. 2 gear with shaft therethrough.
See too, art detailed in Content sections above, for which copies are served herewith.

the four gears are alternatively arranged so as to form a driving system

GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) on pg. 2 at line 16, pg. 7 at lines 10-25, pg. 11 at line 19 The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator and Figure 5 depicts the gear set, as well as rods that pass through the gears, which are alternatively arranged so as to form a driving system. That section VII lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear.
See too, art detailed in Content sections above, for which copies are served herewith.

one outer lateral side of the gear set is

GB 2 380 540(A) on pg. 2 at line 7, pg. 3 at

73 pivoted to the movable rod line 21, pg. 4 at line 16. Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) on pg. 2 at line 25, pg. 15 at line 14 Section VII of the Technical Specification for 50-Watt Hand Generator lists the gears along with a Handle shaft specified to Transmit external force to the gear set.
See too, art detailed in Content sections above, for which copies are served herewith.

the generator is installed in the device body

GB 2 380 540(A) on pg. 5 at line 16 Sony ICF-B200 Service Manual, Figs. 3-2 and 6-2 GB 2 371 155 (A) Fig. 4 and 11 The Main parts list in section VII of the Technical Specification for 50-Watt Hand Generator lists a shell and Figure 5 depicts a device body with a two-part casing, with receiving spaces therein, and therein received is the generator. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 discloses a "device body."
See too, art detailed in Content sections above, for which copies are served herewith.

one side of the gear set opposite to the side of the gear set add.which addend.is installed with the movable rod

GB 2 380 540(A) on pg. 4 at line 23, pg. 5 at lines 1-19, claim 1 Sony ICF-B200 Service Manual, Fig. 6-2, and it discloses a hand crank connected to communicate human power to drive the gear set, as indicated in Section 2 of the manual GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15 Figure 5 of the Technical Specification for 50-Watt Hand Generator. OCI admitted that the Sony ICF-B200 has a hand crank connected to communicate human power to drive the gear set and that it can power an electrical device, such as the back light or the radio. RFA #90.
See too, art detailed in Content sections

74
above, for which copies are served herewith.

another end of the generator has a driving shaft

Figure 3 in GB 2 380 540A) Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) Fig. 4 and 11 Figure 5 of the Technical Specification for 50-Watt Hand Generator.
See too, art detailed in Content sections above, for which copies are served herewith.

a driving gear is engaged to the driving shaft the driving gear is engaged to one end of the gear set

GB 2 380 540(A) on pg. 2 at line 1 GB 2 371 155 (A) Fig. 4 and 11 Figure 3 in GB 2 380 540(A) Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) on pg. 7 at line 10 Figure 5 of the Technical Specification for 50-Watt Hand Generator.
See too, art detailed in Content sections above, for which copies are served herewith.

thereby, the generator is driven to generate power by the gear set

Figure 3 in GB 2 380 540(A) Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) on pg. 3 at line 15, pg. 4 at line 14, and Fig. 7 Section VII of the Technical Specification for 50-Watt Hand Generator lists the No. 1 gear, and the No. 2 group that includes the No. 2 gear and the No. 3 gear, along with a Handle shaft specified to Transmit external force to the gear set.
See too, art detailed in Content sections above, for which copies are served herewith.

the voltage and current control loop is an [IC] add.integrated addend.circuit board which convert AC current from the generator to DC current

Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit which converts AC to DC. OCI admitted that the Sony ICF-B200 has circuitry in the Sony ICF-B200 [that] converts AC from the generator to DC. RFA #87. GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 8 at line 19, pg. 9 at line 9,

75 claim 1 GB 2 371 155 (A) on pg. 2 at lines 20-23, pg. 4 at line 1, pg. 10 at line 12 Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit. Tada `975 discloses rectification of AC to DC. Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a load, which may be a battery, or portable electronic equipment or a radio or the like. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5. EP 0 786 849 A1 to inventor Duncan discloses a hand-cranked and gear set that turns an alternator 5 that feeds electric power, typically 30 to 50 watt, 4 to 6 volt to the rectifier bridge 7 and the rectified power from the generator is fed either to the main battery 9 via a recharge control circuit 12, or alternatively to an intermediate storage component. Col. 2, at line 51. Claim 10 of Duncan `849 discloses that operation of the mechanical device [disclosed in the preceding claims] allows continued use of the portable device irrespective of the state of the main battery (9), or even without the presence of said main battery.
See too, art detailed in Content sections above, for which copies are served herewith.

one end of the voltage and current control loop is connected to a battery for storing power from the generator

Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path between the circuit which converts AC to DC and the rechargeable battery that can store power from the generator. Plaintiff OCI admitted that the Sony ICFB200 has circuitry connected to store

76 power from the generator in a rechargeable battery. RFA #86. The LPR 2.5 response from plaintiff acknowledges that in Sony ICF-B200 the rechargeable battery is directly connected to the alternator/generator rectifier output. GB 2 380 540(A) on pg. 9 at line 10. GB 2 371 155 (A) Fig. 6 and on pg. 2 at line 1, pg. 11 at line 17, pg. 12 at line 14, and claim 7 Tiemann `900 discloses supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as operable as a direct-current power supply for charging the storage battery. Disclosed in the Operating principle section of the Technical Specification for 50-Watt Hand Generator is toggle switch K1 that can switch to the position of charging, and too the Erection and operation, section IV., explains to put the toggle switch in power supply position to directly supply power, or to put the toggle switch in charging position when the generator is charging separately to the storage battery. Plaintiffs initial and final contentions did not identify what it deems one end and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere.
See too, art detailed in Content sections above, for which copies are served herewith.

another end of the voltage and current control loop is connected to an output portion

Plaintiffs initial and final contentions did not identify what it deems another end and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Plaintiffs initial contentions did not identify what it deems an output portion and defendant

77 will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. GB 2 371 155 (A) Fig. 6 and on pg. 2 at line 1, pg. 11 at line 1 Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit, including a feature for outputting power.
See too, art detailed in Content sections above, for which copies are served herewith.

an output portion for outputting the power add.to an electrical device. Iaddend., or is connected to an LED for illumination

Plaintiffs initial and final contentions did not identify what it deems an output portion and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Assuming an output portion would be pair of connectors, positive and negative, through which an electrical device can receive power, then Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path to provide power to an electrical device, or to an LED, and has a circuit in some manner connected to the LED Board element 3 in Fig. 3-3, which has lamp 5 to provide illumination. GB 2 380 540(A), Figs. 3 and 6, and on pg. 9 at line 27, claim 1. GB 2 371 155 (A) Fig. 6 and on pg. 5 at line 22, pg. 11 at line 12, pg. 16 at line 5 OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77. The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as operable as a direct-current power supply for charging the storage battery, and for powering a semiconductor 15-watt station. Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that

78 corresponds to that in FIG. 3 of the patent in suit, including a feature for outputting power. Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a load, which may be a battery, or portable electronic equipment or a radio or the like.
See too, art detailed in Content sections above, for which copies are served herewith.

Iadd., wherein the voltage and current control loop is capable of charging the electrical device or the LED even if the battery is not charged.Iaddend.

Plaintiffs initial and final contentions did not identify what it deems would meet the capable of element, and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path to provide power to an electrical device, or to an LED even if the battery is not charged, and there disclosed are means to power an electrical device, such as the back light or the radio. GB 2 371 155 (A) Fig. 6 GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15. Claim 10 of Duncan `849 discloses that operation of the mechanical device [disclosed in the preceding claims] allows continued use of the portable device irrespective of the state of the main battery (9), or even without the presence of said main battery. GB 2 380 540(A), Fig. 6, and on pg. 2 at line 17, pg. 14 at lines 12-15, and claim 1. Disclosed in the Operating principle section of the Technical Specification for 50-Watt Hand Generator is toggle switch K1 that can switch to the position of charging, and too the Erection and operation, section IV., explains to put the toggle switch in power supply position to directly supply power, or to put the toggle switch in charging position when the generator is charging separately to the

79 storage battery. The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current, and that it also discloses that generator 1300 can be replaced by an alternator. For the regulation limitation added in the reexamination, see claim 5 of GB 2 380 540(A). In the Main Performance section II., Technical Specification for 50Watt Hand Generator indicates the units capability for Voltage regulation and its Operating principle in section III, explains its circuit for voltage stabilization and smooth DC output, based on (1) a reference voltage established by diodes 2DW6 and 2DW6A (2) a regulation part comprised of 3AD18 and 3AX63 as well as resistors R1 and R2. OCI admitted that the disclosure in Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated. RFA #79.

Reissue Claim 2

See art detailed in Content sections above, for which copies were served.

The multi-functional charger with power generating and illumination functions .[.as claimed in.].of .claim 1, wherein .[.a.]. the movable rod is.[.,.].

80 formed by a .rod body, a .[.second.]. coupler pivot rod .[.is.]. coupled to the rod body .and a handle one end of the rod .body is pivotally connected to the device body by a pin and .is .capable of rotating through 180 degrees; and the handle at another .[.side.]. .end .of the .rod .body is received in the device body.

Reissue Claim 3

See too, art detailed in Content sections above, for which copies are served herewith. See art detailed above, for Claim 1.

The multi-functional charger with power generating and illumination functions .[.as claimed in.]. .of .claim 1 further comprising a control switch which is connected to the voltage and current control loop

In its LPR 2.5 response, plaintiff acknowledged that Hsu `973 discloses a switch; a lamp connected to said induction coil through said switch; and a battery connected to said induction coil through said switch. OCI admitted that the disclosure in Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated. RFA #79.
See art detailed above, for Claim 1.

for .[.controlling.]. .directing .the current generated by the generator to be stored in the battery or to be outputted .to an output portion

81

Reissue Claim 4

The multi-functional charger with power generating and illumination functions [as claimed in] Iadd.of .Iaddend. claim 1

See above as to elements disclosed in prior art correlating to limitations of reissue claim 1.
See too, art detailed in Content sections above, for which copies were served.

wherein the output portion is .operatively .connected to an .[.electric.]. .electrical .device through a .[.plug.]. .jack .

See art detailed above, for Claim 1.

In its LPR 2.5 response, plaintiff acknowledged that Sony ICF-B200 has two voltage regulator sections, and they both are connected after the battery to regulate voltage provided to the radio,
See art detailed above, for Claim 1.

so as to .[.charge.]. provide power to the .[.electric.]. .electrical .device.

Reissue Claim 5

The multi-functional charger with power generating and illumination functions [as claimed in] Iadd.of .Iaddend. claim 1

See above as to art correlating to limitations of reissue claim 1.

See too, art detailed in Content sections above, for which copies are served herewith.

wherein the .[.electric.]. .electrical .device is selected from one of a group containing .a .handset, a portable audio device, and a notebook.

New Reissue Claim 6

The multi-functional charger with power generating and illumination functions of claim 1

See above as to scope and content of the art correlating to limitations of reissue claim 1.
See too, art detailed in Content sections above, for which copies are served

82
herewith.

wherein the output portion comprises an electrical device powered directly from the battery.

OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77.

New Reissue Claim 8

The multi-functional charger with power generating and illumination functions of claim 1

See above as to scope and content of the art correlating to limitations of reissue claim 1.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical device comprises a light bulb.

OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77.

New Reissue Independent Claim 9

A charger with power generating and illumination functions

See above as to scope and content of the art correlating to limitations of reissue claim 1. Plaintiffs LPR 2.5 response acknowledges that Brandt `233 discloses this limitation, i.e., a multi-functional charger with power generating and illumination functions. Plaintiff acknowledged in its LPR 2.5 response, that Campagnuolo `835 discloses this limitation viz., a multifunctional charger with power generating

83 and illumination functions. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973 discloses this limitation a charger with power generating and illumination functions

comprising: a device body housing a gear set, a generator, a voltage and current control loop, and a battery

Fig. 3-1 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 9 and 70. GB 2 380 540(A) on pg. 4 at line 5 GB 2 371 155 (A) Fig. 3, and on pg. 6 at line 25 Figure 3.C. in GB 2 380 540(A), and on pg. 4 at line 23 Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) Figs. 4, 9 and 11 Figs. 3, 4, 5 and 7 GB 2 353 854(A), elements 16, 21, 22, 22a, and 23 GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, and Section 6, Ref. No. 76 GB 2 371 155 (A) Fig. 6, and on pg. 13 at line 17 Figure 5-2 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 74. GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 9 at line 21, pg. 9 at line 26, pg. 11 at lines 7-25, pg. 12 at lines 7-25, pg. 13 and claim 1 GB 2 371 155 (A) Fig. 6, and on pg. 4 at lines 1-4, pg. 15, line 10 Figure 5-2 of Sony ICF-B200 Service Manual indicates the batteries, and Section 6, Ref. No. BATT2 The Abstract for CN 201369595 indicates it discloses emergency power supply devices, including the series of battery chargers, battery and inverter, which also includes: charger for the collection and analysis of the charge current, battery voltage and battery discharge current. GB 2 380 540(A) on pg. 8 at line 20. GB 2 371 155 (A) Fig. 6, and on pg. 11 at

84 line 1, page 16 at line 12, and claim 6 Tiemann `900 teaches means for controlling the voltage and current output from the generator, e.g., Col 8 at line 9, in such manner that each of the ..output voltages to the output terminals 11A, 11B and 11C of the AC generator 11 is arranged to be relatively high and each of the currents 1a, 1b and 1c flowing as the output currents is arranged to be relatively small, e.g., Col 8 at line 53. The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as comprising an AC generator driven by a hand crank that turns gears with a Gear ratio of 1:41.8, and circuit components for Rectification, a transistor voltage stabilizer, and filtering to reduce ripple voltage, that are operable as a directcurrent power supply for charging the storage battery, and for powering a semiconductor 15-watt station. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 disclose a "device body."
See too, art detailed in Content sections above, for which copies are served herewith.

the gear set being connected to a hand crank

GB 2 380 540(A) on pg. 4 at line 23, pg. 5 at lines 1-19, claim 1 In its LPR 2.5 response, plaintiff acknowledged that Hutchinson GB 2 380 540(A) discloses this limitation. Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15 Plaintiffs LPR 2.5 response acknowledges that Becker GB 2 371 155 (A) discloses this limitation. GB 2 380 540(A) on pg. 2 at line 7, pg. 3 at line 20, claim 1 Sony ICF-B200 Service Manual, and Section 6, Ref. No. 52 and 84 In its LPR 2.5 response, plaintiff acknowledged that Sony ICF-B200

85 discloses this limitation. GB 2 371 155 (A), Figs. 1, 2 and 7, and on pg. 3 at line 5.
See too, art detailed in Content sections above, for which copies are served herewith.

a plurality of gears disposed in the device body

GB 2 380 540(A) enumerates input gear, and at least one intermediate gear. In its LPR 2.5 response, plaintiff acknowledged that Hutchinson GB 2 380 540(A) discloses this limitation. Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 Plaintiffs LPR 2.5 response acknowledged that Sony ICF-B200 discloses this limitation. Plaintiff acknowledged in its LPR 2.5 response, that Hutchinson GB 2 353 854(A) discloses this limitation. GB 2 371 155 (A) on pg. 3 at line 21. The LPR 2.5 response from plaintiff acknowledges that Becker GB 2 371 155 (A) discloses this limitation.
See too, art detailed in Content sections above, for which copies are served herewith.

the gears being arranged so as to form a driving system

GB 2 380 540(A), claim 1. In its LPR 2.5 response, plaintiff acknowledged that Hutchinson GB 2 380 540(A) discloses this limitation. Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 Plaintiff acknowledged in its LPR 2.5 response, that Sony ICF-B200 discloses this limitation. OCI admitted that the Sony ICF-B200 has a gear set comprising a plurality of gears, e.g., Ref. Nos. 71 and 72, that are arranged so as to mechanically drive a generator, e.g., e.g., element 5 in Section 3 of the manual, and Ref. No. 76. RFA #85. GB 2 371 155 (A) on pg. 2 at line 16, pg. 7 at lines 10-25, pg. 11 at line 19. Plaintiff acknowledged in its LPR 2.5 response, that Becker GB 2 371 155 (A)

86 discloses this limitation. In its LPR 2.5 response, plaintiff acknowledged that Hutchinson GB 2 353 854(A) discloses this limitation.
See too, art detailed in Content sections above, for which copies are served herewith.

the generator having a driving shaft engaged to a driving gear

Figure 3 in GB 2 380 540(A) Plaintiff acknowledged in its LPR 2.5 response, that Hutchinson GB 2 353 854(A) discloses this limitation. Sony ICF-B200 Service Manual, Fig. 6-2 In its LPR 2.5 response, plaintiff acknowledged that Sony ICF-B200 discloses this limitation. GB 2 371 155 (A) Fig. 4 and 11. Plaintiff acknowledged in its LPR 2.5 response, that Becker GB 2 371 155 (A) discloses this limitation. Plaintiff acknowledged in its LPR 2.5 response, that Hutchinson GB 2 353 854(A) discloses this limitation.
See too, art detailed in Content sections above, for which copies are served herewith.

the driving gear being driven by the driving Figure 3 in GB 2 380 540(A) system to generate power Plaintiff acknowledged in its LPR 2.5 response, that Hutchinson GB 2 353 854(A) discloses this limitation. Plaintiff acknowledged in its LPR 2.5 response, that Hutchinson GB 2 380 540(A) discloses this limitation. Sony ICF-B200 Service Manual, Fig. 6-2 In its LPR 2.5 response, plaintiff acknowledged that Sony ICF-B200 discloses this limitation. GB 2 371 155 (A) on pg. 3 at line 15, pg. 4 at line 14, and Fig. 7. The LPR 2.5 response from plaintiff acknowledges that Becker GB 2 371 155 (A) discloses this limitation.
See too, art detailed in Content sections above, for which copies are served herewith.

87 the voltage and current control loop comprising an electrical circuit Figure 5-2 of Sony ICF-B200 Service Manual GB 2 371 155 (A) Fig. 6 GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 9 at line 21, pg. 9 at line 26, pg. 11 at lines 7-25, pg. 12 at lines 7-25, pg. 13 and claim 1 Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit. The LPR 2.5 response from plaintiff acknowledges that Brandt `233 discloses this limitation, i.e., a multi-functional charger with power generating and illumination functions.
See too, art detailed in Content sections above, for which copies are served herewith.

[which electrical circuit] converts AC current from the generator to DC current

Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit which converts AC to DC. GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 8 at line 19, pg. 9 at line 9, claim 1 Tada `975 discloses rectification of AC to DC. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5. Plaintiff OCI admitted that Tada discloses a circuit, such as a rectifier bridge, to convert AC current from the generator to DC current. RFA #68. GB 2 371 155 (A) on pg. 2 at lines 20-23, pg. 4 at line 1, pg. 10 at line 12 The Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, that is, an AC generator, which is provided with diode rectification and is operable as a directcurrent power supply for charging the storage battery.
See too, art detailed in Content sections above, for which copies are served

88
herewith.

the voltage and current control loop provides regulation for charging the battery and provides power for powering an electrical device

Claim 5 of GB 2 380 540(A) The Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, that is, an AC generator, which is provided with diode rectification and capacitor (C1) filtering, and in General section I., the unit is described as having circuit components for Rectification, a transistor voltage stabilizer, and filtering to reduce ripple voltage, that are operable as a directcurrent power supply for charging the storage battery. The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current. OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77. Tiemann `900 discloses supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a load, which may be a battery, or portable electronic equipment or a radio or the like.
See too, art detailed in Content sections above, for which copies are served herewith.

control loop is capable of powering the electrical device even if the battery is not charged. .Iaddend.

Plaintiffs initial and final contentions did not identify what it deems would meet the capable of element, and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere.

89 Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path to provide power to an electrical device, or to an LED even if the battery is not charged. GB 2 371 155 (A) Fig. 6 GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15 GB 2 380 540(A), Fig. 6, and on pg. 2 at line 17, pg. 14 at lines 12-15, and claim 1. In the AIWA FRC 150 manual, a power selector is described on page 8 that may be set to Recharge the Batteries, by rotating the Dynamo Recharging lever, and too listen to the radio even when the battery is not charged. Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit. Claim 10 of Duncan `849 discloses that operation of the mechanical device [disclosed in the preceding claims] allows continued use of the portable device irrespective of the state of the main battery (9), or even without the presence of said main battery. Plaintiff OCI admitted that the disclosure in Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated. RFA #79.
See too, art detailed in Content sections above, for which copies are served herewith.

New Reissue Dependent Claim 10

90 A charger with power generating and illumination functions of claim 9 See above as to scope and content of the art correlating to limitations of reissue claim 9.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical device comprises a LED.

New Reissue Dependent Claim 11

A charger with power generating and illumination functions of claim 9

See above as to scope and content of the art correlating to limitations of reissue claim 9.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical device comprises a LED.

New Reissue Dependent Claim 12

A charger with power generating and illumination functions of claim 9

See above as to scope and content of the art correlating to limitations of reissue claim 9.
See too, art detailed in Content sections above, for which copies are served herewith.

further comprising a control circuit in electrical communication with the voltage and current control loop for directing the current generated by the generator to the battery, to an LED, or to an external electrical device, or for directing the current generated by the generator from the battery to the LED or to the external electrical device.

91

New Reissue Dependent Claim 14

The charger with power generating and illumination functions of claim 12

See above as to scope and content of the art correlating to limitations of new reissue claims 9 and 12.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical device is selected from one of a group including a handset, a portable audio device, or a notebook.

New Reissue Dependent Claim 15

A charger with power generating and illumination functions

See above as to scope and content of the art correlating to limitations of reissue claim 9.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical circuit comprises an integrated circuit.

New Reissue Independent Claim 16

A charger with power generating and illumination functions

See above as to scope and content of the art correlating to limitations of reissue claim 1. The LPR 2.5 response from plaintiff acknowledges that Sony ICF-B200, Hutchinson GB 2 380 540A and Becker GB 2 371 155 A disclose this limitation.

92
See too, art detailed in Content sections above, for which copies are served herewith.

a device body housing a gear set, a generator, a voltage and current control loop, a battery, and a crank shaft

In its LPR 2.5 response, plaintiff acknowledged that Sony ICF-B200, Hutchinson GB 2 380 540A and Becker GB 2 371 155 A disclose a device body housing a gear set, a generator, a battery, and a crankshaft.
See too, art detailed in Content sections above, for which copies are served herewith.

the gear set comprising a plurality of gears disposed in the device body, and the gears being arranged so as to form a driving system capable of being driven by the crank shaft and in mechanical communication with a generator the voltage and current control loop comprising an electrical circuit which converts AC current from the generator to DC current

Plaintiff acknowledged in its LPR 2.5 response, that Sony ICF-B200, Hutchinson GB 2 380 540A and Becker GB 2 371 155 A disclose this limitation.
See too, art detailed in Content sections above, for which copies are served herewith.

The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current, and that it also discloses that generator 1300 can be replaced by an alternator. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the voltage and current control loop: rectifies current and [regulates voltage7] provides regulation for charging the battery8

The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current. Tada `975 discloses rectification of AC to DC. Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the

7 8

Text deleted in reexamination proceeding. Text added to overcome rejection of claim 16 in reexamination proceeding.

93 power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5.
See too, art detailed in Content sections above, for which copies are served herewith.

[wherein the voltage and current control loop:] electrically communicates with the battery for storing power from the generator [wherein the voltage and current control loop:] electrically communicates with a LED for providing illumination wherein the control loop is capable of powering an electrical device based on power from the battery

See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith.

See too, art detailed in Content sections [wherein the control loop is capable of above, for which copies are served powering an electrical device] based on power provided solely from the crank shaft, herewith. the generator and the voltage and current control loop..Iaddend.

This chart summarizes reissue claim 17, and summarizes the scope and content of the prior art that discloses elements of the claim.

Yu Reissue Claim 17 elements.

Identification of Elements in Prior Art.

A charger with power generating and illumination functions, comprising:

US PAT 4701835 discloses the prior art of illumination devices with manual generators for the lamp and/or for rechargeable batteries, and it claims: "A flashlight comprising: a relatively lowspeed input shaft and a relatively highspeed output shaft; means for manually rotating said input shaft" and including "an alternator having rotor means and stator means, said rotor means being directly coupled to said output shaft so as to rotate therewith and said stator means positioned

94 about said rotor means for generating electrical energy in response to rotation of said rotor means; diode means for rectifying the electric current produced by said alternator, said diode means having an input connected to said alternator and an output." See too, art detailed in Content sections above, for which copies are served herewith. a device body housing a gear set, a generator, an electrical circuit including a voltage and current control loop9, and a battery, US PAT 6346791, for a SELFCONTAINED RECHARGING DEVICE FOR PORTABLE TELEPHONE, describes a device body, with a "manual butterfly winder," that drives an "extra flat alternator" as elements of a "recharging device" for the "battery" inside a cellular phone housing. US Patent 6,322,233 discloses and claims "An emergency flashlight comprising: a handle portion shaped and sized so as to be easily grasped manually; a rotary portion mounted on the handle portion for rotation about a rotary axis with respect to the handle portion" and it includes "a lightproducing member mounted on the elongate portion; the handle portion including generating means and gear means by which electrical energy can be manually created by swinging the handle portion with a circular motion, thereby causing the elongate portion and the rotary portion to rotate together about the rotary axis; and conductive means for conducting said electrical energy to said light-producing member." US PAT 5552973 discloses and claims: "A flashlight comprising: a housing having a hub on the inside; a flywheel having a wheel axle turned between two axle bearings inside said housing, and too, an induction coil fixedly mounted inside said
9

Text added to overcome rejection of claim 17 in reexamination proceeding.

95 housing around the magnet of said flywheel; a driving wheel turned on said hub, said driving wheel having a toothed portion around the periphery meshed with the toothed portion of said one-way rotary member, with said driving wheel, and an opposite end wound round said driving wheel and coupled with a handle outside said housing. US PAT 6288463 for a GENERATOR by Tada, assigned to Sony, describes and teaches how the "electric power obtained from the AC generator is rectified to be converted to direct-current (DC) electric power which is supplied to a secondary battery or a condenser for accumulating electric power to be stored therein." Fig. 3 Tada shows the line of a device body casing, to the right of numerals 22 and 17, which has spaces for receiving a gear set, and a generator and voltage and current control circuitry, and it includes a driving gear #17. Tada `463 includes an alternating-current generator, a rotary driving mechanism to put the alternating-current generator in operation for generating electric power, and a voltage to current convertor for supplying the load, such as a battery, with the electric power obtained from the alternating-current generator, which apparatus is suitable for portable electronic equipment, such as a portable radio receiver or the like. One disclosed embodiment of the rotary driving mechanism comprises a rotary axis 15 and a handle 16 mounted on the end of the rotary axis 15. See too, art detailed in Content sections above, for which copies are served herewith. the gear set comprising a plurality of gears disposed in the device body, the gears being arranged so as to form a driving system in mechanical communication with a generator; US PAT 6313386, assigned to Sony, discloses "components, can be contained in an enclosure 1000, such as a music box, which can include a handle 1100 or the like for manually applying a mechanical force,"

96 then to "release the vast majority of the originally applied mechanical energy by, either directly or indirectly (such as via a gearbox (e.g., a planetary gear arrangement, a rack and pinion arrangement, etc.), turning an input shaft of a well-known fractional horsepower generator 1300. US PAT 6291900 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "A manually powered apparatus for converting mechanical energy to electrical energy comprising: a crank; a spring drive mechanically coupled to said crank for releasing mechanical energy" and including "a control circuit connected to said electrical generator and said electrical load, said control circuit controlling voltage output by said electrical generator based on power required by said electrical load." It further describes an embodiment, as follow: "As shown in FIG. 3, the generator 340 is connected to the mechanical energy input device 300. The generator 340 generates electrical energy from the mechanical energy that is input from the mechanical energy input device 300. A gear ratio (not shown) mechanically connects the generator 340 to the mechanical energy input device 300. US PAT 5552973 discloses and claims: "A flashlight comprising: a housing having a hub on the inside; a flywheel having a wheel axle turned between two axle bearings inside said housing, a magnet fixedly mounted around said wheel axle, and a circular bottom recess; an one-way rotary member mounted around the wheel axle of said flywheel at a bottom side, said one-way rotary member comprising a base disposed in the circular recess of said flywheel, and a toothed portion around the periphery, the base of said one-way rotary member comprising a sloping recess at one side, a metal plate mounted within said

97 sloping recess, and a rotary pin moved on said metal plate in said sloping recess between the operative position in which said rotary pin is forced by centrifugal force into engagement with the periphery of the circular recess of said flywheel upon the rotary motion of said one-way rotary member in one direction, and the nonoperative position in which said rotary pin is forced away from the periphery of the circular recess of said flywheel upon the rotary motion of said one-way member in the reversed direction. See too, art detailed in Content sections above, for which copies are served herewith. the electrical circuit being operatively connected to the battery for storing power from the generator, and being operatively connected to a LED for providing illumination; and US PAT 6291900 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "In a preferred embodiment, the generator provides a positive and a negative terminal (not shown) that provide electrical energy in the form of voltage and current to the load 380. It should be appreciated that the electrical energy can be provided from the generator via a variety of contacts or electrical connections known in the art, and as such, the present invention should not be limited to those embodiments disclosed herein." Further, it describes embodiments, as follows: "As shown in FIG. 3, the load 380 is connected to the generator 340 via an isolator 350, a electrical energy storage device 360 and a disconnector 370. The load 380 can comprise various electrical or electronic devices. The load 380 can comprise devices such as toys, lights, electronic remote control devices, wireless electronic remote control devices and other electronic devices. It should be appreciated that the load 380 is not limited to electrical or electronic loads, and that mechanical loads are also encompassed." US PAT 6313386, assigned to Sony,

98 discloses an "Electricity control unit 1402 [that] can regulate power, voltage, and/or current." Tada `975 discloses a rotary operated, AC generator manually driven to generate power by a gear set, control circuitry for the generated voltage and current, which converts AC to DC power, and outputs to a load, which may be a battery, or portable electronic equipment or a radio or the like. Tada `463 includes an alternating-current generator, a rotary driving mechanism to put the alternating-current generator in operation for generating electric power, and a voltage to current convertor for supplying the load, such as a battery, with the electric power obtained from the alternating-current generator, which apparatus is suitable for portable electronic equipment, such as a portable radio receiver or the like. Tiemann `900 discloses supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. The Technical Specification for 50-Watt Hand Generator explains its Operating principle in section III, that is, an AC generator, which is provided with diode rectification and capacitor (C1) filtering, and transistor series stabilizer is used for voltage stabilization and smooth DC output. Campagnuolo `835 discloses a handcranked electrical power source having an input shaft, drive means, including means connected to the input shaft so as to rotate therewith and a high speed output shaft that drive an AC alternator, e.g., 84 & 122 in Figs. 5 7, connected a rectifier with the power directed to a rechargeable battery , e.g., 82 & Col. 5 at line 40, and to an illumination element ,

99 such that in one embodiment, the illumination element 70 will light from current provided by the battery 82 and alternator 84, or by battery 82 only if alternator 84 is not being operated, e.g., Col. 5 at line 53. In another embodiment, it may be desired to operate the light with only the alternator, e.g., Col. 6 at line 5, which corresponds to powering the light even when the battery is not charged. Plaintiff OCI admitted that the disclosure in Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated. RFA #79. See too, art detailed in Content sections above, for which copies are served herewith. a hand crank operatively connected to the driving system to communicate human power to the driving system; US PAT 6291900 for ELECTRICAL ENERGY MANAGEMENT FOR MANUALLY POWERED DEVICES discloses "A manually powered apparatus for converting mechanical energy to electrical energy comprising: a crank; a spring drive mechanically coupled to said crank for releasing mechanical energy" and teaches A gear ratio (not shown) mechanically connects the generator 340 to the mechanical energy input device 300. US PAT 6313386, assigned to Sony, discloses "a handle 1100 or the like for manually applying a mechanical force," and to "release the vast majority of the originally applied mechanical energy by, either directly or indirectly (such as via a gearbox (e.g., a planetary gear arrangement, a rack and pinion arrangement, etc.), turning an input shaft of a well-known fractional horsepower

100 generator 1300. US PAT 6313386 would inform persons skilled in the art that from supplied mechanical energy, generator 1300 can generate electrical energy. The Tada `463 includes a rotary driving mechanism to put the alternating-current generator in operation for generating electric power, and one disclosed embodiment of the rotary driving mechanism comprises a rotary axis 15 and a handle 16 mounted on the end of the rotary axis 15. See too, art detailed in Content sections above, for which copies are served herewith. wherein the voltage and current10 control loop provides regulation for charging the battery11 is capable of powering an electrical device or the LED even if the battery is not charged. The `060 patent specification does not contain the word capable as in capable of powering, and it does not contain the term powering. OCI admitted that the Campagnuolo `835 reference discloses a flashlight which can be operated directly either by a rechargeable battery or by a hand-cranked alternator. RFA #77. Plaintiff OCI admitted that the disclosure in Campagnuolo `835 discloses how to provide power to a battery or to a light, in particular the `835 describing switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated. RFA #79. US PAT 6313386, assigned to Sony, would inform persons skilled in the art that from supplied mechanical energy, generator 1300 can generate electrical energy. Although generator 1300 can be replaced by an alternator whose AC output is converted into DC power, for example by a

10 11

Text added in reexamination proceeding. Text added to overcome rejection of claim 17 in reexamination proceeding,

101 diode bridge and/or a rectifier, for simplicity, only generator 1300 is referred to henceforth. The electrical energy of generator 1300 can be stored in a battery 1350, and/or provided directly to controller 1400. The electricity from generator 1300, and/or the electricity provided to controller 1400, can be regulated by any known power, voltage, and/or current regulator (not shown in FIG. 1). Likewise, any known power, voltage, and/or current protector (not shown in FIG 1), such as an isolation transformer, surge protector, thyristor, breaker, and/or fuse, can protect controller 1400." It further discloses an "Electricity control unit 1402 [that] can regulate power, voltage, and/or current." Claim 10 of Duncan `849 discloses that operation of the mechanical device [disclosed in the preceding claims] allows continued use of the portable device irrespective of the state of the main battery (9), or even without the presence of said main battery. US PAT 5552973 discloses and claims: a switch; a lamp mounted in said housing at one end and connected to said induction coil through said switch; and a battery mounted in said housing at an opposite end and connected to said induction coil through said switch in parallel to said induction coil. See too, art detailed in Content sections above, for which copies are served herewith.

This chart refers reissued independent claim 17, etc., and it identifies the presence in the prior art of elements recited in the claim. New Reissue Independent Claim 17

102

A charger with power generating and illumination functions

See above as to scope and content of the art correlating to limitations of reissue claim 1. The LPR 2.5 response from plaintiff acknowledges that Brandt `233, Hsu `973 and Campagnuolo `835 disclose a multifunctional charger with power generating and illumination functions.
See too, art detailed in Content sections above, for which copies are served herewith.

device body housing a gear set, a generator, The LPR 2.5 response from plaintiff an electrical circuit, and a battery acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current. Fig. 3-1 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 9 and 70. GB 2 380 540(A) on pg. 4 at line 5 GB 2 371 155 (A) Fig. 3, and on pg. 6 at line 25 Figure 3.C. in GB 2 380 540(A), and on pg. 4 at line 23 Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) Figs. 4, 9 and 11 Figs. 3, 4, 5 and 7 GB 2 353 854(A) GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, and Section 6, Ref. No. 76 GB 2 371 155 (A) Fig. 6, and on pg. 13 at line 17 Figure 5-2 of Sony ICF-B200 Service Manual, and Section 6, Ref. No. 74. Tiemann `900 teaches means for controlling the voltage and current output from the generator, e.g., Col 8 at line 9, in such manner that each of the ..output voltages to the output terminals 11A, 11B and 11C of the AC generator 11 is arranged to be relatively high and each of the currents 1a, 1b and 1c flowing as the output currents is arranged to be relatively small, e.g., Col 8 at line 53. GB 2 380 540(A), Fig. 6, and on pg. 1 at line 23, pg. 9 at line 21, pg. 9 at line 26, pg.

103 11 at lines 7-25, pg. 12 at lines 7-25, pg. 13 and claim 1 GB 2 371 155 (A) Fig. 6, and on pg. 4 at lines 1-4, pg. 15, line 10 Fig. 4 GB 2 353 854(A) Miller published application US 2003/0087677 A1 refers to: [0013] a device body that houses a rechargeable battery [0027] a device body 1 and a rechargeable battery 8 Figure 5-2 of Sony ICF-B200 Service Manual indicates the batteries, and Section 6, Ref. No. BATT2 GB 2 380 540(A) on pg. 8 at line 20. GB 2 371 155 (A) Fig. 6, and on pg. 11 at line 1, page 16 at line 12, and claim 6 GB 2 353 854(A) Fig. 4, and pg. 4 at line 8 The Technical Specification for 50-Watt Hand Generator in its General section I., the unit is described as comprising an AC generator driven by a hand crank that turns gears with a Gear ratio of 1:41.8, and circuit components for Rectification, a transistor voltage stabilizer, and filtering to reduce ripple voltage, that are operable as a directcurrent power supply for charging the storage battery, and for powering a semiconductor 15-watt station. Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit. In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 disclose a "device body."
See too, art detailed in Content sections above, for which copies are served herewith.

the gear set comprising a plurality of gears disposed in the device body, the gears being arranged so as to form a driving system in mechanical communication with a generator

Plaintiff acknowledged in its LPR 2.5 response, that each of Hutchinson GB 2 380 540(A), Sony ICF-B200, and Becker GB 2 371 155 (A), discloses this limitation. Figure 3 in GB 2 380 540(A), and on pg. 5

104 at line 1 GB 2 371 155 (A) Fig. 4, and on pg. 12 at line 9, and pg. 18 at line 3 GB 2 380 540(A), claim 1. Sony ICF-B200 Service Manual, Section 6, Ref. No. 71, 72, 73, 75 GB 2 371 155 (A) on pg. 2 at line 16, pg. 7 at lines 10-25, pg. 11 at line 19 GB 2 380 540(A) on pg. 4 at line 23, pg. 5 at lines 1-19, claim 1 Sony ICF-B200 Service Manual, Fig. 6-2 GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15, pg. 4 at line 14, and Fig. 7.
See too, art detailed in Content sections above, for which copies are served herewith.

the electrical circuit being operatively connected to the battery for storing power from the generator

Plaintiffs initial and final contentions did not identify what it deems operatively connected and did not differentiate that limitation from the connected to recitation of claim 1, and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path between an electrical circuit and the rechargeable battery that can store power from the generator. The LPR 2.5 response from plaintiff acknowledges that in Sony ICF-B200 the rechargeable battery is directly connected to the alternator/generator rectifier output. Tiemann `900 discloses supplying power from the generator to a battery or a rechargeable battery, e.g., 360 on Fig. 8 & Col. 2 at line 15, Col. 8 at line 1 & Col. 5 at line 5. GB 2 380 540(A) Fig. 6, and on pg. 9 at line 10. GB 2 371 155 (A) Fig. 6 and on pg. 2 at line 1, pg. 11 at line 17, pg. 12 at line 14, and claim 7 Miller published application US 2003/0087677 A1 disclosed in [0033] the device can include a dynamo/generator and known electrical components that are

105 commonly employed in self powered devices, e.g., capacitors, voltage regulators, switches, etc. The LPR 2.5 response from plaintiff acknowledges that Campobianco `386 discloses an electricity control unit 1402 that can regulate power, voltage, and/or current, and that it also discloses that generator 1300 can be replaced by an alternator. Claim 17 is not expressly limited to an AC generator in combination with a circuit to convert the AC to DC, which makes relevant GB 2 380 540(A) Fig. 4.
See too, art detailed in Content sections above, for which copies are served herewith.

[the electrical circuit] being operatively connected to a LED for providing illumination

Plaintiffs initial and final contentions did not identify what it deems operatively connected and did not differentiate that limitation from the connected to recitation of claim 1, and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path between an electrical circuit and the LED In the AIWA FRC 150 manual, a power selector is described on page 8 that may be set to Recharge the Batteries, by rotating the Dyanmo Recharging lever, and a flashlight and an LCD light are disclosed. GB 2 353 854(A) Fig. 4 discloses a circuit path from its electrical circuit to an LED, and on pg. 3 line 28, and pg. 4 at line 1.
See too, art detailed in Content sections above, for which copies are served herewith.

a hand crank operatively connected to the driving system to communicate human power to the driving system

GB 2 380 540(A) on pg. 2 at line 7, pg. 3 at line 20, claim 1 Sony ICF-B200 Service Manual, and Section 6, Ref. No. 52 and 84 GB 2 371 155 (A), Figs. 1, 2 and 7, and on pg. 3 at line 5

106 GB 2 353 854(A) Fig. 3.

See too, art detailed in Content sections above, for which copies are served herewith.

wherein the voltage and current12 control loop provides regulation for charging the battery13 is capable of powering an electrical device or the LED even if the battery is not charged..Iaddend.

Plaintiffs initial and final contentions did not identify what it deems would meet the capable of element, and defendant will supplement these contentions once plaintiff so identifies that in the patent or elsewhere. Figure 5-2 of Sony ICF-B200 Service Manual shows a circuit path to provide power to an electrical device, or to an LED even if the battery is not charged. GB 2 371 155 (A) Fig. 6 GB 2 371 155 (A) Fig. 7 and on pg. 13 at line 15 GB 2 380 540(A), Fig. 6, and on pg. 2 at line 17, pg. 14 at lines 12-15, and claim 1. GB 2 353 854(A) Fig. 4 and pg. 3 at lines 16 24 Figure 5 of the Technical Specification for 50-Watt Hand Generator depicts structure and componentry that corresponds to that in FIG. 3 of the patent in suit.
See too, art detailed in Content sections above, for which copies are served herewith. [0033] the device can include a dynamo/generator and known electrical components that are commonly employed in self powered devices, e.g., capacitors, voltage regulators, switches, etc.

New Reissue Dependent Claim 18

The charger with power generating and illumination functions of claim 17

See above as to scope and content of the art correlating to limitations of new reissue claim 17.
See too, art detailed in Content sections above, for which copies are served

12 13

Text added in reexamination proceeding. Text added to overcome rejection of claim 17 in reexamination proceeding,

107
herewith.

wherein the hand crank is configured to fold substantially flat against the device body when not in use.

New Reissue Dependent Claim 19

The charger with power generating and illumination functions of claim 17

See above as to scope and content of the art correlating to limitations of new reissue claim 17.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the electrical circuit is operatively connected to an external device to enable charging of the electrical device. .Iaddend.

Until the plaintiff provides its contention about the claim terms connected to and operatively connected to, and how persons of skill would differentiate between those terms, it is uncertain how that claim element compares in scope and content to the teachings in the prior art. The specification does not include the term operatively which regards the claim limitation a circuit being operatively connected or a crank operatively connected. See too, art detailed in Content sections above, for which copies are served herewith.

New Reissue Independent Claim 21

A multi-functional charger with power generating and illumination functions

See above as to scope and content of the art correlating to limitations of new reissue claim 9.
See too, art detailed in Content sections above, for which copies are served

108
herewith.

device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod

In its LPR 2.5 response, plaintiff acknowledged that Hsu `973, Tada `463, and Becker `340 disclose a "device body."
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the device body is formed by an upper casing and a lower casing the gear set includes a plurality of gears arranged to form a driving system an inner edge of the device body being formed with a plurality of receiving spaces for receiving the gear set, the generator, the voltage and current control loop and the battery a generator having a driving shaft and being installed in the device body the gear set being connected to the generator and being capable of being driven by a hand crank to provide power from the generator a driving gear engaged to the driving shaft and to the gear set the voltage and current control loop comprising an electrical circuit which converts AC current from the generator to DC current

See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith.

See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith.

Tada `463 teaches AC to DC conversion, e.g., Col. 7 at line 60 of the power from the generator, and connections to direct power to a battery, e.g., 45 on Fig. 5. Tada `975 discloses rectification of AC to DC. Plaintiff OCI admitted that Tada discloses a circuit, such as a rectifier bridge, to convert AC current from the generator to DC current. RFA #68.
See too, art detailed in Content sections above, for which copies are served herewith.

wherein the voltage and current control

See too, art detailed in Content sections

109 loop is connected to a battery for storing power from the generator, and the voltage and current14 control is also connected either to an output portion for outputting the power to an external electrical device, or to an LED for illumination and wherein the voltage and current15 control loop provides regulation for charging the battery16 and can power the external electrical device or the LED even if the battery is not charged. .Iaddend.
above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith. See too, art detailed in Content sections above, for which copies are served herewith.

V. The claims of the patent in suit are invalid for indefiniteness. 1. The plaintiffs First Amended Complaint pleads infringement of patent claims that are indefinite as a matter of law, 35 U.S.C. 112, 2, and the cases that interpret the requirement of definiteness. 2. Every patent specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. 112, 2. The primary inquiry is whether the language leaves room for ambiguity or whether the boundaries are clear and precise. Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112, 76 Fed. Reg. 7162, 7165, 2011 WL 403815 (Feb. 29, 2011). 3. Indefiniteness is a question of law. Indefiniteness [of patent claims] is a purely legal issue. Star Scientific Inc. v. R.J. Reynolds Tobacco Co., ___ F.3d ___, 2011 WL 3768983 (Fed. Cir. August 26, 2011) 4. Reissue independent Claim 1 had some deletions and additions in its 2nd subclause, and importantly, had its entire last subclause wherein the voltage and current control loop is capable of charging the electrical device or the LED even if the battery is not charged added in reissue. 5. The Figures in the reissue patent were amended from those in the original patent, such as Amended Fig. 5 of the reissued patent. The amended figures are described (e.g., `060 patent, starting at column 2, line 66), in less than a dozen
14 15 16

Text added in reexamination proceeding. Text added in reexamination proceeding. Text added to overcome rejection of claim 17 in reexamination proceeding,

110 sentences, and textual changes were made to all but two of those sentences. The changes made to the patent claims to obtain reissue are set out in Exhibit A to the Complaint. 6. Two, central terms in the reissue patent claims are indefinite as a matter of law, a loop and an intergrated circuit. 7. The reissue `060 patent regards a power charger, and too, the "capable of" limitation. more specifically, a multi-function charger with power generating and illumination functions, as depicted in Amended Fig. 2. (Exhibit A to Complaint). 8. The text and figures provide no circuit diagram, list no circuit components, and describe no wiring for the electrical device claimed in the reissue `060 patent. Those omissions negate an understanding of loop and intergrated circuit in the patent claims, and therefore, those claim terms by definition, cannot be construed. EnzoBiochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). 9. The Undescribed Loop in the Reissue Patent Claims is Indefinite. 10. Essential to reissue patent claim 1 (and all the claims that follow its form) is a voltage and current control loop. 11. Whatever this loop might be, the reissue `060 patent does not describe it, detail it, or diagram it, and it thus is indefinite as a matter of law. 12. The pertinent parts of Claim 1 of the reissue patent (the added text is in italics and the deleted text [] is bracketed), are as follows: What is claimed is: 1. A multi-functional charger with power generating and illumination functions comprising a device body, a gear set, a generator, a voltage and current control loop, a battery, and a movable rod; *** the voltage and current control loop is an [IC] integrated circuit board which convert AC current from the generator to DC current; one end of the voltage and current control loop is connected to a battery for storing power from the generator and another end of the voltage and current control loop is connected to an output portion for outputting the power to an electrical device, or is connected to an LED for illumination, wherein the voltage and current control loop is capable of charging the electrical device or the LED even if the battery is not charged. 13. The claimed elements in the reissue patent are not accompanies with (i) any express explanation or details of the voltage and current control loop or the integrated circuit, and further, (ii) the connected to recitations in reissue Claim 1 do not conform to the block diagram in the Amended Figures, especially Fig. 5, in the reissue `060 patent. 14. Each of the original claims require a voltage and current control loop, and an IC.

111 15. Many of the claims newly added in the reissue patent require the voltage and current control loop, e.g., reissue claims 9, 16 and 21. 16. Reissue claim 17 shortened it to control loop but that claim states no connection between the loop and the other operative elements. The IC and integrated circuit element was replaced with the non-specific term electrical circuit in the reissue claims. 17. One primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public , so that interested members of the public, e.g., competitors of the patent owner, can determine whether or not they infringe. Default Proof Credit Card System, Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302-03 (Fed. Cir. 2005) (none of these [claimed] parts are described in the specification). 18. The `060 reissue patent provides no notice of any circuitry, nor whether a circuit might, or not, infringe the claimed voltage and current control loop. 19. Comparing the loop element and the claim recitation that it is connected to an LED for illumination with an indefinite recitation that the loop is capable of illumination. This recitation indicates an actual component, an LED, that is known to provide illumination. 20. To recite that the loop can control the voltage and current, but indicate no actual components that provide that feature, is indefinite. 21. The `060 patent recites what the claimed voltage and current control loop does, - provides control but, the reissue claims gives no indication what that loop is. 22. Breaking the term down, the loop provides control for voltage and current. How that control is provided, or what can provide such control is indefinite in the patent. 23. The electronic circuitry for a loop or for a means to provide control was left indefinite and undescribed in the reissue claims of the `060 patent. 24. The Summary of Invention section elaborates on the control requirements for the loop circuit, as follows. The current is suppressed, rectified and regulated by the voltage and current control loop. (Exh. A., Col. 1, line 37). Yet, no circuit components or diagram indicates what or how these control actions might be achieved. A claim to be valid must recite a structure that is capable of performing its purported function. General Elec. Co. v. U. S., 572 F.2d 745, 755 (Ct. Cl. 1978) (claims fail to structurally recite, in any form, transformer 81 ...[which] is an essential element of the combination). 25. Reissued patent Claims 1 - require that the loop is an integrated circuit, but both terms a loop and an integrated circuit - are indefinite. 26. The reissue patent gives no indication of what circuitry would comprise, or might infringe on, the claimed voltage and current control loop that is an integrated circuit.

112 27. The reissue claims at issue here are not sufficiently precise to permit a potential competitor to determine whether or not he is infringing the integrated circuit limitation. Morton Intern., Inc. v. Cardinal Chemical Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). 28. The lack of details, the lack of any circuit diagram, etc., make it impossible for competitors to determine whether or not any circuit or any combination of electronic components may be infringing, or not. Id. That is the test and measure of the legal requirement for definiteness of patent claims. 29. Claim 1 in the reissue `060 patent repeats, verbatim, a statement in the Detailed Description, when the claim recites that the voltage and current control loop is an [IC] integrated circuit board which convert {sic}AC current from the generator to DC current. (Column 3, line 55, Exhibit A). 30. That claim wording simply repeats the text in the specification that: The voltage and current control loop 40 is an IC circuit board which convert {sic} the AC current from the generator 30 to DC current. (Detailed Description of the Preferred Embodiments,Column 2, line 34. Exhibit A hereto). That Description adds no details. 31. What might comprise a working embodiment of a voltage and current control loop cannot be ascertained, other than the indefinite circuitry is embedded on an IC. 32. Here, even the Amended figures of the reissue patent provide no diagram of a control circuit, and the Detailed description only mentions the loop briefly and generally. Indefiniteness is objectionable, because the patent does not disclose to the public how its infringement may be avoided. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65, 43 S.Ct. 322, 67 L.Ed. 523 (1923). An unknown circuit cannot be the basis for an infringement claim. 33. In the one sentence about the voltage and current control loop in the Detailed Description of the Preferred Embodiments, the claimed loop element is indicated as part 40 on the patent figures. 34. After that one sentence, the description states that the undescribed loop is connected to the generator and to a battery. The voltage and current control loop 40 is electrically connected to the generator 30. Thereby, the voltage and current control loop 40 is also connected to the battery 50, output portion 71, and LED light 72. Reissue `060 Patent, Column 2, line 39. 35. Again, this text was carried into reissue Claim 1, which recites that the loop element is is connected to a battery, and also, is connected to an output portion for outputting the power. 36. Unlike the statement, above, that the loop is connected to the generator, the reissue claims are indefinite about that connection. Indeed, the reissue Claims 1 6 do not say that the loop and generator are connected, and so as to that described feature, which is shown in Amended Fig. 5, those claims are indefinite.

113 37. The amended figures in the reissue `060 patent depict a block 40 labeled as the voltage and current control loop, but nothing inside the block is shown, or ever described. 38. The diagrams in the patent provide no definiteness to the loop element. 39. Amended Figure 5, the loop is not, as required by reissue Claim 1, shown connected to the battery, nor depicted as connected to any output portion, nor is the loop element 40 shown as connected to an LED. 40. In Amended Figure 5, the element 40 loop. is tied to the generator at one end, and to regulator loop 80 at its other end. Whether the vagueness of the claim has its source in the language employed or in the somewhat indeterminate character of the advance claimed to have been made in the art is not material. An invention must be capable of accurate definition, and it must be accurately defined, to be patentable. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 237, 63 S.Ct. 165, 87 L.Ed. 232 (1942). 41. The Description says the loop is connected to the generator and Amended Fig. 5 conforms to that description, but no such connection is set forth in reissue Claim 1. 42. Reissue Claim 1 requires that the loop has one end that is connected to the battery, and has another end that is connected to an output portion for outputting the power to an electrical device but those are unlike what Amended Fig. 5 depicts as the two connections to block 40 marked the voltage and current control loop, and unlike the connected to recitations in the Detailed Description. As stated in the U.S. Patent Office's Manual of Patent Examining Procedure, MPEP 2173.03 Inconsistency Between Claim and Specification: Although the terms of a claim may appear to be definite, inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. 43. The block diagram of Amended Figure 5, informs not about any actual embodiment or circuitry that would comprise the claimed loop element. 44. From the reissue claims, the amended figures, and the Detailed written description, it can be concluded that the voltage and current control loop, and the connected to aspects are indefinite as a matter of law. 45. The loop and control aspects are undescribed, undepicted, and unexplained in the reissue `060 patent, and too, are indefinite as a matter of law. This compares to Fujitsu Ltd. v. Tellabs Operations, Inc., 2011 WL 1261111 *11 (N.D. Ill. 2011), where the Court referenced precedent holding a claim indefinite where the only reference in the specification to the control means was a box labeled Control in one of the figures and a statement that the regeneration process may be controlled automatically by known differential pressure, valving and control equipment. J. Holderman, citing to Biomedino L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). 46. The mere functional notion of control is indefinite absent some definite structure or circuitry that provides the requisite voltage and current control. None is set out in the `060 reissue patent. Congress requires, for the protection of the public, that

114 the inventor set out a definite limitation of his patent; that condition must be satisfied. General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 372, 58 S.Ct. 899, 82 L.Ed. 1402 (1938). 47. The control limitation of the loop element is a functional limitation. Manual of Patent Examining Procedure, MPEP 2173.05(g) Functional Limitations. A functional limitation is an attempt to define something by what it does, rather than by what it is (e.g., as evidenced by its specific structure or specific ingredients). 48. Based on the indefiniteness of the voltage and current control loop element, the "capable of" limitation, and the connected to aspects of the reissue patent claims, it will be urged that the patent in suit is invalid as failing to meet the definiteness standards of 35 U.S.C. 112, 2. 49. Indefinite. The Integrated Circuit Element Added in the Reissue Patent Claims is

50. The claim term IC or integrated circuit fail to make definite what comprises this circuit, apart from it being integrated. The term circuit is indefinite, since it describes a zillion arrangements of electronica. 51. The breadth and lack of specificity to the term circuit is unchanged by the modifier integrated. All that the modifier adds is that the circuit is not comprised of separate components, but rather is integrated into a single device. 52. Here, it would be concluded that the term integrated circuit device, receives its ordinary meaning to one of skill in this art as a circuit constructed on a single monolithic substrate, commonly called a chip. Rambus Inc. v. Infineon Technol. Ag, 318 F.3d 1081, 1091 (Fed. Cir. 2003). It simply is connected circuit elements (such as transistors, diodes, resistors, and capacitors) inseparably associated on or within a continuous substrate. Harmonic Design, Inc. v. Hunter Douglas, Inc., 88 F.Supp.2d 1102, 1106 (C.D.Cal. 2000). 53. The term integrated circuit that was added to the reissue claims 1 6 is indefinite, and circuit gives no indication of what circuitry is claimed. The claim uses indeterminate adjectives which describe the function ...to the exclusion of any structural definition. GE v. Wabash, supra, 304 U.S. at 371. Precedent and statute on indefiniteness indicate that a patent holder should know what he owns, and the public should know what he does not [and for] this reason, the patent laws require inventors to describe their work in full, clear, concise, and exact terms. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002), citing, 35 U.S.C. 112. 54. The reissue patent replacement of [IC] with integrated circuit lent no definiteness to the voltage and current control loop in claims 1- 6. 55. The integrated circuit lent no definiteness to the voltage and current control loop terms in the reissue claims are indefinite as a matter of law. No notice is given by indefinite terms, which enables competitors and the public a clear standard for determining what is, or is not infringing subject matter. 56. The Functional Term capable of Is Indefinite.

115 57. Added in the reissue claims was the requirement that the control loop provide the feature of being capable of charging the electrical device or the LED even if the battery is not charged. 58. The latter portion of the phrase, i.e., the electrical device or the LED, are understandable, but the functional, capable of requirement is indefinite. 59. Nothing in the reissue Claim 1 suggest what makes the item be capable of providing a charge even if the battery is not charged. The capable of recitation is indefinite, being purely functional. The patent law is clear that apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). 60. Combining the loop or circuit element with the functional recitation indicates those claims are indefinite as claiming hybrid subject matter. 61. Indefiniteness can be assessed using the test set out in HTC Corp. v. IPCom GmbH & Co., KG, 2012 WL 254804 (Fed. Cir. 2012). 62. In HTC, a claim recited elements and functional aspects, specifically, the elements of a mobile station for use with a network along with functional limitations such as storing link data and maintaining a storage of the link data. The Federal Circuit summed up the analysis to be: If the mobile station implements the functions, the claims are indefinite because they recite both an apparatusthe mobile stationand method stepsthe functions enumerated in [those same claims]. If the network performs the functions, the claims are not indefinite Id. 63. As the test in HTC applies here, the reissue claims recite the loop or circuit element with the functional recitation capable of charging. If, however, the claimed circuit or loop implements the functions of charging or regulating, then the claims are indefinite because they recite both an apparatus and method steps. 64. The defendant will urge the Court to rule that the capable of recitation, which was added in the reissue of the `060 patent, is indefinite as a matter of law. 65. The claim elements voltage and current control loop, the integrated circuit element, the connected to requirements, and the functional recitation of being capable of are indefinite, and do not meet the legal standards for notice to the public, and for distinctly claiming the invention. VI. Contentions as to Unenforceability of the Claims of the Patent in Suit.

1. The claims of the patent in suit are unenforceable, and as to that issue, this defendants initial contentions are as follows.

116 2. The patent in suit is a reissue of U.S. Patent 6,690,141 to inventor Yu

(hereinafter the parent patent). 3. The parent patent indicates a filing date of Sept. 3, 2002.

4.

Mr. Daniel Tai is an individual associated with the filing and prosecution

of the Yu reissue application. 5. Mr. Daniel Tai is an individual associated with the filing and prosecution

of U.S. Patent publication 20080180001 to inventor Dai, titled Hand Crank Generator (published July 31, 2008). 6. A nonfinal rejection in the Dai 20080180001, on Dec. 16, 2009, notified

Mr. Tai of the Tada `975 and the Campagnuolo `835 patents. 7. The Tada and Campagnuolo `835 references detail the state of the prior

art, as of the time of their inventions, which included manual, rotary, gear-driven generators in devices, with voltage and current control circuitry. 8. Mr. Tai was aware of the Tada and Campagnuolo `835 references prior to

the issuance of RE41,060. 9. Upon information and belief, other persons associated with the filing and

prosecution of the Yu reissue application were aware of the Tada and Campagnuolo `835 references prior to the issuance of RE41,060. 10. Mr. Daniel Tai, despite his awareness of the Tada `975 and the

Campagnuolo `835 patents, prior to reissue of the patent in suit, consciously chose not to disclose those references to the examiner of the reissue application.

117 11. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the Tada and Campagnuolo `835 references, and other relevant prior art. 12. Counsel for Original Creations was under a duty to disclose the Tada and

Campagnuolo `835 references, which were known to him prior to the issuance of RE41,060. 13. Counsel for Original Creations, despite being made aware of the Tada

`975, and Campagnuolo `835 references, which its principal Tai was made aware prior to reissue of the patent in suit, consciously chose not to disclose those references to the examiner of the reissue application. 14. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the Tada and Campagnuolo references, and other relevant prior art. 15. Nondisclosure, or conscious concealment of the Campagnuolo `835

reference was material to the patentability of claims presented in the reissue proceeding. 16. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the Campagnuolo `835 reference. 17. 18. The Tada `975 issued in 1999 and has 102(b) priority back to 1996. The Tada `975 discloses a gear set, rods and pivots that correspond to the

four gears alternatively arranged so as to form a driving system as recited in some form of the claims of inventor Yu.

118 19. The disclosure in Tada is material to applicants remarks about having an

output for power either to a battery or to external electronic equipment 20. Nondisclosure, or conscious concealment of the Tada `975 reference was

material to the patentability of claims presented in the reissue proceeding. 21. Mr. Tai was under a duty to disclose the Tada, Campagnuolo `835 and

Becker references, which were known to him prior to the issuance of RE41,060. 22. Mr. Tai was under a duty to disclose prior art, known to him prior to

issuance of RE41,060, which was material to the patentability of any claim in the reissue. 23. The Tada and Campagnuolo `835 were known - upon information and

belief that can be confirmed by plaintiff, plaintiffs principal and plaintiffs patent counsel be compelled to permit inspection of the entire file related to prosecution of the Yu parent patent, that related to the reissue application for the patent in suit, and that for co-owned application U.S. Patent publication 20080180001 to persons associated with the prosecution of the reissue application, specifically patent counsel. 24. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the Tada reference. 25. The Campagnuolo `835, which is in the same class 362 as the references

cited in the IDS filed by inventor Yu, teaches and discloses folding and stowing the crank handle in the device body, and having means for outputting the power either to a battery or to a flashlight. 26. The Campagnuolo `835 reference discloses a flashlight which can be

operated directly either by a rechargeable battery or by a hand-cranked alternator.

119 27. The Campagnuolo `835 teaches circuitry to prevent the light from

burning out from overvoltage, which would have been material to applicants remarks in the reissue about means for controlling the power flowing to the LED. 28. The disclosure in Campagnuolo `835 about providing power to a battery

or to a light (the `835 describes switch means, wherein: If pole 86 is closed to make contact with contact 88, then light bulb 70 will light only if alternator 84 is operated. If pole 90 is closed to make contact with contact 92, then battery 82 is charged if alternator 84 is operated) would have been material to patentablity of the reissue claims. 29. Counsel for Original Creations, despite being made aware of the

Campagnuolo `835 patent, prior to reissue of the patent in suit, consciously chose not to disclose those references to the examiner of the reissue application. 30. Mr. Tai was under a duty to disclose the Campagnuolo `835 reference,

which were known to him prior to the issuance of RE41,060. 31. Counsel for Original Creations was under a duty to disclose the

Campagnuolo `835 reference, which were known to him prior to the issuance of RE41,060. 32. Nondisclosure, or conscious concealment of the Campagnuolo `835

reference was material to the patentability of claims presented in the reissue proceeding. 33. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the Campagnuolo `835. 34. Campagnuolo `835 discloses capability to power an illumination elements

from the battery or from the rectified output of the generator.

120 35. The assignee of the RE41,060 patent made statements in the

reexamination proceedings that reflect the materiality of the Campagnuolo `835 reference to the patentability of the claims. 36. Original Creations and its counsel filed an IDS in the reexamination

proceeding that acknowledged the duty under Rule 1.56 to disclose the Campagnuolo `835 reference 37. Information concerning the conception, reduction to practice, design, and

development of each claimed invention, in the parent patent, which were created on or before the date of application for the patent in suit or a priority date otherwise identified for the patent in suit, whichever is earlier was learned in the due diligence that preceded the acquisition by Original Creations of rights to the parent patent, which information was made known to persons associated with the filing and prosecution of the Yu reissue application, including Mr. Daniel Tai and his counsel, but which was withheld and not disclosed to the examiner on the reissue application, and too, which has been withheld from plaintiffs LPR 2.1(a)(2) production here.17 38. Nondisclosure, or conscious concealment of the information concerning

the conception, reduction to practice, design, and development of each claimed invention, in the parent patent was material to the patentability of claims presented in the reissue proceeding. 39. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of the information concerning the conception, reduction to practice, design, and development

17

Once plaintiff makes a full production of the information called for by LRP 2.1(a)(2), the defendant will be able to supplement these contentions.

121 of each claimed invention, in the parent patent, which was material to the patentability of claims in the patent in suit. 40. Persons associated with the filing and prosecution of the Yu reissue

application, including Mr. Daniel Tai and his counsel, did due diligence on the parent patent before rights to it were acquired by Original Creations. 41. The persons associated with the filing and prosecution of the Yu reissue

application withheld from the USPTO relevant prior art, known to them before the issuance of RE41,060. Unless and until plaintiff, plaintiffs principal, and patent counsel on the Yu parent application, the reissue application of the patent in suit, and U.S. Patent publication 20080180001, are compelled to permit inspection of all the files related to those applications, then they will be able to conceal evidence of their actual and constructive knowledge of the prior art, including the art searched in connection with the applications, which inter alia is documented on OCIs current (7/2/2012 privilege log) ## 25, 52, 55, 59, 60, 73, 74, 75 and others not adequately identified, which are being withheld as if privileged. 42. The foregoing was done with intent to obtain the issuance of RE41,060,

and for the reissue process to conclude without the examiner being made aware of relevant prior art. 43. In the reissue application, persons associated with its prosecution were

aware of a prior patent filing by inventor Yu in Taiwan, No. 9120370, OCI 000----. 44. None of the persons associated with prosecution of the reissue application

disclosed TW No. 9120370 to the examiner considering that reissue application.

122 45. The intent, of the persons associated with prosecution of the reissue

application to not disclose TW No. 9120370, was to deceive the patent examiner about plaintiffs broadening amendments that were unsupported by the specification and drawings of the TW No. 9120370 filing, and by that deceit to obtain grant of reissue patent claims that were unsupported by the earliest-filed application. 46. The inventor Yu, and other persons associated with the prosecution of the

parent application, did not disclose to the U.S. patent examiner the commercial products offered for sale and publically disclosed in the period prior to the filing of the parent patent application. 47. Nondisclosure of relevant prior art references, known to an individual or

counsel associated with the prosecution of the reissue RE41,060, and being known prior to issuance of the reissue, coupled with the assignees filing of an immediate suit upon issuance of the reissue patent, evidence the intent of Tai and the persons associated with the prosecution of the reissue RE41,060 to deceive the patent examiner into granting the reissue without having considered the undisclosed are, so that Tai and Original Creations and its counsel could begin filing suits as a way for Tai and Original Creations to begin profiting from suits baldly alleging infringement of the reissue patent. 48. Persons associated with the prosecution of the parent patent and the patent

in suit presented forms to the examiner, purported to bear the signature of the named inventor, which forms and certifications were material to issuance of the application but which, upon information and belief, was false by commission or omission. Such information was submitted with intent to deceive the examiner.

123 49. The disclosure in the Tada `075 is material to applicants remarks to the

examiner about having an output for power either to a battery or to external electronic equipment 50. The plaintiffs representatives made statements in the reexamination

proceedings that reflect the materiality of the Tada and Campagnuolo `835 references to the patentability of the claims. 51. Persons associated with the prosecution of the reexamination of the patent

in suit presented information about prior art citations in IDS forms, which acknowledged that the cited art was material to issuance or denial of a reexamination certificate. Unenforceability. 52. forth in full. VII. Further Contentions As to Unenforceability. A. The plaintiff, after becoming an assignee of the parent patent, filed an application for reissue. In connection with that application, the Patent Office and its rules required that new and supplemental oaths be filed, signed by the name inventor. With knowledge and intent, the plaintiff submitted oaths not signed by the named inventor. Under the caselaw, the submission of required documents with an unauthentic signature, when a signed oath is requires, is a material misstatement to the Patent Office related to patentability, even if the oath and signature could be corrected. As the court ruled in a The relevant contentions in the counterclaim are incorporated here as if set

124 case, Applied Materials, Inc. v. Multimetrixs, LLC, 2008 WL 2892453 (N.D. Cal. 2008), aff'd, 404 Fed.Appx. 493 (Fed.Cir. 2010), where one co-inventors oath was forged: ...the Federal Circuit has found that the submission of false affirmative affidavits, even if not related to critical issues such as patentability or inventorship, may be determined to be inherently material. Digital Control, 437 F.3d at 1318. For example, in General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405 (Fed.Cir.1994), the applicant submitted in support of a petition to make special (i.e. a petition to expedite processing by placing an application at the front of the examination queue) a false affidavit claiming that he had conducted a careful and thorough search of the prior art. Id. at 1407-08. The Federal Circuit held as a matter of law that the false affidavit was material because it succeeded in prompting the PTO to expedite consideration of the application. Id. at 1411. Similarly, the Federal Circuit has stated that there is no serious question ... as to the materiality of a false representation of small entity status made for the purpose of obtaining reduced maintenance fees. Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1146 (Fed.Cir.2003) (vacating district court's grant of summary judgment on the basis of inequitable conduct because genuine issues of material fact remained as to intent ). Such a misrepresentation did not induce issuance of the patent-indeed, the misrepresentation was made years after the patent had issued. Id. at 1146, 1142. Nevertheless, it induced the PTO to accept reduced maintenance fees and thus, contributed to the survival of the patent. Id. at 1146. In finding inequitable conduct on the basis of false affidavits, the Federal Circuit has repeatedly commented that [i]n contrast to cases where allegations of fraud are based on the withholding of prior art, there is no room to argue that submission of false affidavits is not material. Digital Control, 437 F.3d at 1318; Ulead Systems, 351 F.3d at 1146; Perseptive, 225 F.3d at 1322; General Electro, 19 F.3d at 1411; Rohm & Haas v. Crystal Chemical Co., 722 F.2d 1556, 1571 (Fed.Cir.1983). Accordingly, whether the false affidavit concerns a procedural advantage such as expediting the processing of an application ( General Electro ) or obtaining payment of a reduced maintenance fee ( Ulead Systems ), or whether the false affidavit concerns a more central issue such as inventorship ( Perseptive ), the false affidavit is material for purposes of inequitable conduct. * * * * * The submission of documents containing David Margulis' forged signature was not an accident or an honest mistake. Regardless of who in fact forged the signature, the surviving inventors knew David Margulis was dead and they knew his signature was a fake. They submitted the signed documents hoping to deceive the PTO into believing that David Margulis was alive

125 when in fact he was not. The conduct and testimony of the surviving inventors during discovery and at trial in this case provide a wealth of circumstantial evidence to establish that they knew what they had done was deceptive and invented a story to maintain the deception. Here, plaintiff submitted oaths asserted to bear the inventors signature, when in fact the signature was by another. Those submissions were done with the intent to deceive the Patent Office and the examiner to pass on the reissue application, and to grant the broadening amendments proffered by the plaintiff-assignee. B. U.S. Published patent application US 2008/0180001, a/k/a 11/968,639, titled Hank Crank Generator, was assigned to Daniel Tai by a document executed on Dec. 24, 2007 that was recorded in the U.S. Patent Office on Jan. 2, 2008, at Reel/Frame 02310/0227. The assignor was Jen Hao Dai, who it is understood is the brother of the assignee Daniel Tai, who is the owner and sole executive and/or employee of plaintiff Original Creations, Inc. It claims priority to TW 96201562, which has a filing date Jan. 26, 2007, and the application issued as U.S. Patent no. 7,723,880 B2. The specification filed with the application acknowledges Prior Art for Small size electric appliances, e.g., flashlight, battery charger and the presence of a hand crank generator in the market, and that the hand crank generator of the prior art operates by cranking to drive gears to rotate, those gears in turn directly drives the generator. Mr. Tai, as assignee/owner of the application, knew that it pertained to certain prior art for hand crank generators to power small size electric gadgets, but Tai did not disclose the application, which was co-pending with the reissue application of the patent in suit.

126 Well after the date the application was assigned to Tai, the patent examiner issued on Dec. 16, 2009: (i) a non-final rejection, and, (ii) a Notice of References Cited (described on the PAIR electronic docket as List of references cited by examiner). These documents were issued weeks prior to the date of reissue of RE41,060, the patent in suit. Mr. Tai, being the assignee/owner of the application, would have been sent a copy of these documents. In (i) the non-final rejection, the patent examiner asserted a prior art patent to inventor Tada, U.S. Patent no. 5,998,975, and notes that it teaches a hand crank generator. Mr. Tai did not cite the Tada `975 patent to the examiner then considering the reissue application of his company Original Creations, which issued as the patent in suit. Tai withheld this material information from the examiner intending that by concealment, the reissue application would issue without the examiner ever being made aware of the prior art Tada `975 reference. In document (ii) the Notice of References Cited, the parent patent 6,690,141 to inventor Yu, was cited. This citation at least would make the assignee Tai aware that the art cited in the Hank Crank Generator, patent application US 2008/0180001, a/k/a 11/968,639, was material to the reissue application for that parent patent. Tai did not disclose information from the Hand Crank Generator application that was material to the reissue application, even though he was made aware of that weeks prior to the date that the reissue patent application issued. Further, the Notice of References Cited lists two patents that name inventor Campagnuolo, U.S. Patent no. 4,746,806 and no. 4,701,835. Campagnuolo `835 is in the same class 362 as the references cited in the IDS filed by inventor Yu, and the `835 has been cited by the examiner in over 40 issued U.S.

127 patents, but inventor Yu did not disclose it to the examiner considering his application, and plaintiff did not cite it to the examiner of its reissue application. Tai did not disclose in the reissue application process either Campagnuolo patent, about which he was made aware by the examiner while that reissue application still was pending. The Campagnuolo `835 is highly material, prior art to the invention claimed in the reissue patent in suit, but Tai did not disclose it. In the reissue application, Tai through his company Original Creations, Inc. disclose a less-material patent naming inventor Campagnuolo, U.S. Patent no. 4,227,092. Tai held back the information he had been provided about the Campagnuolo patents, in particular the `835, so that the examiner would not reopen the prosecution of the reissue application. Tai planned to use the reissue patent to launch a licensing and litigation scheme, and he knew that a further citation of material prior art to the examiner might delay his plans. The document (ii) the Notice of References Cited, also lists the Tada `975 patent. C. When U.S. Published patent application US 2008/0180001, a/k/a 11/968,639, titled Hank Crank Generator, which was assigned to Daniel Tai, action was taken to conceal his identity as the assignee. Filed as the issue Fee Transmittal form filed identified the assignee as Daniel Tsai, instead of Tai. This was done to mislead the Patent Office, and the public, who would not locate the patent if they searched for Tai as the assignee. D. Next, when the patent was subjected to an ex parte reexamination, the plaintiffs principal, Daniel Tai, submitted affidavits that contained false or misleading statements.

128 Tai swore that the market was raft with devices that infringed the patent in suit, and that he had searched out these devices. In fact, discovery has indicated that this statement and others in the affidavit Tai submitted to the Patent Office were not based in fact. These sworn submissions were done with the intent to deceive, and to urge the reexam process forward, e.g., that the delay was allowing scores of infringers to continue infringing. Discovery, especially the review of the entire file of plaintiffs counsel, and that of any co-counsel or predecessor counsel, and too, the deposition of attorney Mazza, would be likely to disclose whether the non-disclosures of prior art to the patent office, and the submission of forged oaths and declarations of the inventor, were known to all persons having a duty of disclosure under Patent Office Rule 1.56. It would determine whether submissions and non-citations were done with the knowledge and intent of the inventor, or the applicant, or of patent counsel, or all of them. Material information may not have been provided to attorney Mazza, or he may have recommended that material information not be submitted. Based on the foregoing, and on the acts of attempting to enforce a patent known to be unenforceable or invalid, the Court should declare the patent in suit to be invalid and unenforceable. CONCLUSION. These contentions may be supplemented, as provided by Rules of Civil Procedure and amended pursuant to the Local Patent Rules. As indicated, where to Final Noninfringement Contention indicate a proposed interpretation of claim terms and claim recitations, or indicate that none was provided yet by plaintiff, those remarks are incorporated here by reference.

129 DATE: 16 AUG 2012

~ S ~ Charles L. Thomason Charles L. Thomason, pro hac vice 55 W. 12th Ave. Columbus, OH 43210 thomason@spatlaw[dot]com Telep. (502) 349-7227 Telefax: none