6532708 re examination Application/Control Number: 90/013,683

Application/Control Number: 90/013,683

Art Unit: 3993

The present application is being examined under the pre-AIA first to invent

provisions.

Decision Granting Ex Parte Reexamination

Page 2

A Substantial New Question of patentability (SNQ) affecting claims 1-8 of United

States Patent Number 6,532,708 to Baerveldt ("the '708 patent") is raised in the request

for ex parte reexamination filed by a third party Requestor on January 19, 2016.

Summary of the Prosecution History of the '708 Patent

• U.S. Patent Application 09/654,932 (which issued as the subject '708 patent) was

filed August 31, 2000. Claims 1-17 were presented in a preliminary amendment filed

therewith.

• In the non-final Office action 1 mailed August 17, 2001, claims 1-4 and 6 were

rejected under 35 U.S.C 103 and dependent claims 5 and 7 were indicated as

containing allowable subject matter. This action included the reasons for allowance of

claims 5 and 7, which is reproduced below on page 4.

• In the Response filed January 10, 2002, Patent Owner argued the rejection set

forth in the previous Office action, and did not amend any of the claims.

• The non-final Office action mailed March 18, 2002 set forth a new grounds of

rejection for claims 1-4, 6, 8, 13, 14, and 16 under 35 U.S.C. 103. Dependent claims 5,

7, 9-12, 15, and 17 were indicated as containing allowable subject matter.

1 Claims 8-17 were indicated as rejected on the Office Action Summary, but were not addressed in the Detailed Action.

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UNITED STA TES p A TENT AND TRADEMARK OFFICE

APPLICATION NO. FILING DATE

90/013,683 01/19/2016

49698 7590 02/25/2016

MKGLLC 306 INDUSTRIAL PARK ROAD SUITE 206 MIDDLETOWN, CT 06457

FIRST NAMED INVENTOR

6532708

UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS

P.O. Box 1450 Alexandria., Virginia 22313-1450 www .uspto.gov

ATTORNEY DOCKET NO. CONFIRMATION NO.

4092

EXAMINER

STORMER, RUSSELL D

ART UNIT PAPER NUMBER

3993

MAIL DATE DELIVERY MODE

02/25/2016 PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

DO NOT USE IN PALM PRINTER

(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)

PETER B. GOLDMAN

DECONCINI MCDONALD YETWIN & LACY, P. C.

2525 EAST BROADWAY BLVD., SUITE 200

TUSCON, AZ 85716

Commissioner for Patents United States Patent and Trademark Office

P.O. Box 1450 Alexandria, VA 22313-·1450

W"W."I.IJ:.'=ptO.QOV

EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM

REEXAMINATION CONTROL NO. 90/013.683.

PATENT NO. 6532708.

ART UN IT 3993.

Enclosed is a copy of the latest communication from the United States Patent and Trademark Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).

Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a reply has passed, no submission on behalf of the ex parte reexamination requester will be acknowledged or considered (37 CFR 1.550(g)).

PTOL-465 (Rev.07-04)


Art Unit: 3993

Page 3

• Claim 5 recited: A joint seal and cover as claimed in claim 4, wherein said

upper flange of each said C-shaped member is the laterally extending portion

of a right angle member that is affixable to said web at selected heights.


compressible foam layer has a low modulus elastomeric sealant applied to

the top surface thereof.

• Claim 9 depended from claim 5.




• Claim 11 recited: A joint seal and cover as claimed in claim 4 wherein said








This Office action also referred to the previous action for the reasons for the

indication of allowable subject matter. The previous action stated:

In claim[] 5, [the] prior art does not disclose an upper flange of a c-shaped portion that is af[f]ixable to a web at selected heights. With regards to claim 7, the prior art fails to teach the use of an elastomeric sealant applied to the top of the compressible material.

• In the response filed July 23, 2002, claims 5, 7, 10, 11, and 12 were rewritten in

independent form, and claims 1-4, 6, 8, 13, 14, and 16 were cancelled.


Art Unit: 3993

Page 4

• Claims 5, 7, 9-12, 15, and 17 were allowed in the Notice of Allowability mailed

October 8, 2002. Independent claims 5, 7, 10, 11, and 12 were renumbered as 1, 4, 6,

7, and 8, respectively.

From the prosecution history it is clear that the '708 patent was allowed because

of specific limitations defining the upper flange of each C-shaped member, and the

compressible foam layer, with the salient features being:

"said upper flange of each said C-shaped members is the laterally extending

portion of a right angle member that is affixable to said web at selected heights" as set

forth in patent claim 1; and

"said compressible foam layer has a low modulus elastomeric sealant applied to

the top surface thereof' as set forth in patent claims 4, 6, 7, and 8.

Concurrent Reexamination Proceedings

The '708 patent is the subject of two prior reexamination proceedings:

90/013,472 filed April 3, 2015, and 90/013,473 filed March 24, 2015 ("the '472

proceeding" and "the '473 proceeding," respectively). Reexamination was ordered for

claims 1-8 in each of these proceedings, and the proceedings were merged as set forth

in the Decision mailed July 31, 2015. See the files of these two proceedings for more

information.

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Art Unit: 3993

Prior Art Documents Relied Upon in the Request

Page 5

Dow Corning; Dow Corning 790 Silicone Building Sealant Data Sheet;© 1995,

1999 ("Dow 790").

Dow Corning; Dow Corning 890 Self-Leveling Silicone Joint Sealant Data Sheet;

© 1996, 1999 ("Dow 890").

U.S. Patent No. 2,544,532 to Hill ("Hill").

U.S. Patent No. 945,914 to Colwell ("Colwell")

U.S. Patent No. 3,712,188 to Warson ("Warson").

U.S. Patent No. 4,018,539 to Puccio ("Puccio").

U.S. Patent No. 6,039,503 to Cathey ("Cathey").

U.S. Patent No. 1,371,727 to Blickle ("Blickle").

None of these references were considered during the original examination of the

'708 patent. The use of an ultra-low modulus sealant "such as Dow Corning 890 RTV

Silicone Sealant" is mentioned in column 4 of the '708 patent, but during the

examination Patent Owner did not cite a document disclosing this sealant, and there

was no mention of Dow Corning 890 sealant by the Examiner or Patent Owner.

None of these references were asserted or found to raise an SNQ in either of the

'472 and '473 proceedings.

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Art Unit: 3993

Analysis of the Substantial New Questions of Patentability Raised by the Request

The Request points out the SNQs on pages 6-18 of the Request.

SNQs Raised

Dow 790 raises an SNQ with respect to claims 4-8 of the '708 patent.

Page 6

Dow 790 discloses an ultra-low-modulus silicone sealant for use in joints. As

shown in figure 1, and noted on pages 8-9 of the Request, the Dow 790 sealant may be

applied to the top surface of a backer rod. The backer rod may be closed-cell

polyethylene or open-cell polyurethane as described on page 3 of Dow 790.

Therefore, Dow 790 appears to have new, non-cumulative technical teachings

relevant to the limitations argued or found to be missing from the prior art used during

the prosecution of the '708 patent, and there is a substantial likelihood that a reasonable

Examiner would consider the above teachings of Dow 790 to be important in

determining the patentability of claims 4 and 6 of the '708 patent.

The Request asserts an SNQ only for claims 4-6 with respect to Dow 790.

However, as noted in MPEP 2240, the decision to reexamine any claim for which

reexamination has not been requested lies within the sole discretion of the Office, to be

exercised based on the individual facts and situation of each individual case. If the

Office chooses to reexamine any claim for which reexamination has not been

requested, it is permitted to do so. See Sony Computer Entertainment America Inc. v.

Dudas, 85 USPQ2d 1594 (E.D. Va 2006).

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Art Unit: 3993

Because claims 7 and 8 include the same limitation of "a low modulus

Page 7

elastomeric sealant applied to the top surface thereof' of a foam sealant set forth in

claims 4 and 6, Dow 790 is considered to raise an SNQ as to claims 7 and 8.

Accordingly, it is agreed that Dow 790, taken alone, raises an SNQ as to claims

4, 5 (which depends from 4), 6, 7, and 8 of the '708 patent.

Dow 890 raises an SNQ with respect to claims 4-8 of the '708 patent.

Dow 890 discloses an ultra-low-modulus silicone sealant for use in joints. As

shown in figures 1 and 2, and noted on pages 7-8 of the Request, the Dow 890 sealant

may be applied to the top surface of an open or closed-cell (foam) backer rod.

Therefore, Dow 890 appears to have new, non-cumulative technical teachings



Examiner would consider the above teachings of Dow 890 to be important in

determining the patentability of claims 4 and 6 of the '708 patent.

The Request asserts that Dow 890 raises an SNQ only for claims 4-6. However,

as noted above, claims 7 and 8 are substantially the same as claims 4 and 6 with

respect to the salient limitations. Therefore, Dow 890 is considered to raise an SNQ as

to claims 7 and 8.

Accordingly, it is agreed that Dow 890, taken alone, raises an SNQ as to claims

4, 5 (which depends from 4), 6, 7, and 8 of the '708 patent.

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Art Unit: 3993

Worson raises an SNQ with respect to claims 4-8 of the '708 patent.

Page 8

Warson discloses a seal for an expansion joint comprising a pair of polyurethane

foam members 26 and a sealing means 10 or 42. The sealing means includes sheath

24 having a central wall 40 which extends between the members 26, and an upper

portion which overlies the foam members. The sheath may be made of neoprene

rubber or the like. The Request considers the sheath 24 to be an elastomeric sealant

applied to the top surface of the foam layers 26, noting that a separation of the foam

and the elastomeric sealant is not precluded by the claims.

As asserted on pages 12-13 of the Request, it is well-known that neoprene

rubber is used in seals, and the upper portion of the sheath can be considered to be

applied to a top surface of the foam members.

Therefore, Warson appears to have new, non-cumulative technical teachings



Examiner would consider the above teachings of Warson to be important in determining

the patentability of claims 4 and 6 of the '708 patent.

The Request asserts that Warson raises an SNQ only for claims 4-6. However,

since claims 7 and 8 include the same salient limitations as claims 4 and 6, Warson is

considered to raise an SNQ as to claims 7 and 8.

Accordingly, it is agreed that Warson, taken alone, raises an SNQ as to claims 4,

5 (which depends from 4), 6, 7, and 8 of the '708 patent.

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Art Unit: 3993

Cathey raises an SNQ with respect to claims 4-8 of the '708 patent.

Cathey discloses a joint seal comprising a low-modulus silicone sealant 54

applied over the top surface of a closed cell backer rod 52. See figure 5.

Page 9

Therefore, Cathey appears to have new, non-cumulative technical teachings



Examiner would consider the above teachings of Cathey to be important in determining

the patentability of claims 4 and 6 of the '708 patent.

The Request asserts an SNQ only for claims 4-6 with respect to Cathey.

However, since claims 7 and 8 are substantially the same as claims 4 and 6 with

respect to the salient limitations as noted above, Cathey is considered to raise an SNQ

as to claims 7 and 8.

Accordingly, it is agreed that Cathey, taken alone, raises an SNQ as to claims 4,

5 (which depends from 4), 6, 7, and 8 of the '708 patent.

SNQs Not Raised

Hill does not raise an SNQ with respect to claims 1-3 of the '708 patent.

Hill discloses a bench clamp having adjustable jaws 17, 18 for securing a piece

of lumber or other material to be worked. A bar 12 includes a plurality of threaded holes

14, and the jaw 17 may be longitudinally positioned along the bar and locked in place by

thumb screws 15, thereby adjusting the opening between the jaws 17 and 18.

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Art Unit: 3993

Page 1 O

On pages 9-10, the Request asserts that the clamp of Hill "operates similarly to

the adjustable, clamping spine with an adjustable height of claims 1-3 of the '708 patent"

Referring to figure 4 of Hill, the Request asserts "a C-shaped member is provided as

defined between base 12 (which serves as the web), first right angle member 26 and a

second right angle member 28. The laterally extending portion of right angle member

26 is seen to be affixable to the web 12 at selected heights defined by holes 16 and

winged screw 15, which connects angle member 26 to web 12."

This is not persuasive at least because Hill does not teach the mirror-image

generally C-shaped members of the salient limitation. While Hill arguably provides a

basic teaching of right angle members (26, 28) adjustably affixed to a base (12) to form

a C-shaped member, there is only one and therefore no teaching of mirror-image C-

shaped members. Moreover, the angle members do not extend laterally and are not

affixable to the web at selected heights as required by claim 1.

Hill is not analogous art. Hill teaches a bench clamp having fixed and pivoted

jaws 17, 18, which are movable to clamp a workpiece. The jaws include angle

members 26, 28 which may be selectively positioned horizontally on an elongated bar

12 to adjust the spacing between the jaws 17, 18. In the '708 patent, the upper flanges

are selectively mounted to the central spine to adjust the final position of a cover plate

that is attached to the upper flanges to overlie an expansion joint. The clamp of Hill is

not from the same field of endeavor as the invention claimed in the '708 patent. Despite

the adjustable feature, Hill is not reasonably pertinent to the problem addressed in the


Art Unit: 3993

Page 11

'708 patent, and a reasonable Examiner would not consider Hill to be important in

deciding the patentability of claim 1.

Therefore, the Request fails to show that Hill provides a new, non-cumulative

technical teaching relevant to the limitations argued or found to be missing from the

prior art used during the examination of the '708 patent.

Accordingly, it is not agreed that Hill raises an SNQ as to any of claims 1-3 of the

'708 patent.

Colwell does not raise an SNQ with respect to claims 1-3 of the '708 patent.

Colwell discloses a bench clamp for holding a workpiece between a fixed rest 8

and sliding clamp or block 12. The bench clamp comprises a base 1 having a dovetail

seat for mounting the rest 8, and a plurality of grooves 10 separated by teeth 11. The

sliding clamp 12 includes a dog 14 which engages the teeth to fix the clamp to the base

at selected positions, and an auxiliary clamping member 16 which moves to clamp the

workpiece between the sliding clamp and the rest.

On page 11, the Request asserts that the clamp of Colwell "operates similarly to

the adjustable, clamping spine with an adjustable height of claims 1-3 of the '708

patent." Referring to figure 1 of Colwell, the Request asserts "a C-shaped member is

provided as defined between base 1 (which serves as the web), first right angle member

17 and 12, and a second right angle member 8. The laterally extending portion of right

angle member 12 is seen to be affixable to the web at selected heights defined by teeth

11 and interfacing tooth 14."


Art Unit: 3993

Page 12

This is not persuasive at least because Colwell does not teach the mirror-image

generally C-shaped members of the salient limitation. While the block 12 and the rest 8

extend from the base at right angles to arguably form a C-shaped structure, there is no

teaching of mirror-image C-shaped members, and the angle members do not extend

laterally and are not affixable to the web at selected heights as required by claim 1.

Colwell is not analogous art. Colwell teaches a bench clamp having a sliding

clamp or block 12 which may be selectively positioned along the base, and the auxiliary

clamping member 16 is movable to clamp a workpiece against a fixed rest. In the '708

patent, the upper flanges are selectively mounted to the central spine to adjust the final

position of the cover plate that is attached to the upper flanges to overlie an expansion

joint. The clamp of Colwell is not from the same field of endeavor as the invention

claimed in the '708 patent. Despite the selective positioning of the block 12 and the

adjustability of clamping member 16, Colwell is not reasonably pertinent to the problem

addressed in the '708 patent. A reasonable Examiner would not consider Colwell to be

important in deciding the patentability of claim 1.

Therefore, Colwell does not provide new, non-cumulative technical teachings


the examination of the '708 patent.

Accordingly, it is not agreed that Colwell raises an SNQ as to any of claims 1-3

of the '708 patent.


Art Unit: 3993

Page 13

Puccio does not raise an SNQ with respect to claims 4-6 of the '708 patent.

On page 13, the Request asserts that Puccio "teaches an expansion joint having

a compressible sealant on two opposite sides of a spine, with an elastomeric sealant

applied to the top surface of said foams." On page 14, the Request characterizes

Puccio as comprising "compressible sealants" 22 having "multiple layers" including a

"top layer 22b."

Puccio does not teach the use of a foam sealant or members, and instead

discloses an elastomeric sealing member 22 for sealing an expansion joint. The sealing

member 22 is a single element having a top wall 22b and a bottom wall 22c, which are

connected by end walls 22a. Internal support members 30, 32 extend between the

walls.

To characterize the walls as "layers" is incorrect, as is Requestor's assertion that

the top wall 22b is a layer of low modulus sealant that is applied to the top surface of the

sealing member. Puccio's the top wall 22b is not a separate element applied to a top

surface of the remainder of the seal, and cannot teach the limitation of an elastomeric

sealant applied to the top surface of the foam layers as recited in claims 4 and 6 of the

'708 patent. Therefore, Puccio does not teach the salient limitation of a low modulus

elastomeric sealant applied to the top surface of a layer of foam sealant.

As such, the Request fails to show that Puccio provides a new, non-cumulative

technical teaching relevant to the limitations argued or found to be missing from the

prior art used during the examination of the '708 patent.


Art Unit: 3993

Page 14

Accordingly, it is not agreed that Puccio raises an SNQ as to claims 4-6 of the

'708 patent.

Blickle does not raise an SNQ with respect to claims 1-3, 7, or 8 of the '708

patent.

On pages 17-18, Request alleges that Blickle "shows the upper flange of the C-

shaped member being a right angled member attachable to the web of the connected

C-shaped members at varying heights, as seen in Fig. 1 and as described." The

Request fails to point out where the "varying heights" is described in Blickle, and asserts

"[t]wo C-shaped members are attached back to back by rivets 5; and could be attached

such that one of the right angle members 3 is at a selected height with respect to the

web of the C-shaped member to which it is attached." (emphasis added)

Blickle discloses a C-shaped member having a web 2 and upper and lower

flanges 3. A pair of C-shaped members may be joined back-to-back using rivets 5 to

approximate an I-beam. Blickle does not teach or suggest that the flanges are or even

could be selectively fastened to the webs, and does not teach or suggest that the webs

could be joined in any configuration other one in which the upper flanges are aligned as

shown in figure 1. In fact, adjacent floor plates 6 are positioned over the joined C-

shaped members such that their edges meet at the center of the compound beam as

described in lines 93-99 of page 1. This arrangement taught by Blickle would not be

possible if the webs and flanges were offset as appears to be suggested in the Request.


Art Unit: 3993

Page 15

Therefore, Blickle does not teach or suggest the salient limitation of "said upper

flange of each said C-shaped members is the laterally extending portion of a right angle

member that is affixable to said web at selected heights" as set forth in patent claim 1.

The Request asserts Blickle raises an SNQ as to claims 7 and 8. Claims 7 and 8

include the C-Shaped members, but do not recite the salient "selected heights"

limitation. A review of the prosecution history shows that claims 7 and 8 were allowed

because of the limitation of "a low modulus elastomeric sealant applied to the top

surface" of the layers of foam sealant. (see page 3 above) Blickle does not teach an

elastomeric sealant and cannot raise an SNQ as to claims 7 and 8.

The Request fails to show that Blickle provides a new, non-cumulative technical

teaching relevant to the limitations argued or found to be missing from the prior art used

during the examination of the '708 patent.

Accordingly, it is not agreed that Blickle raises an SNQ as to claims 1-3, and/or

claims 7 and 8 the '708 patent.

SNQs Not Asserted

The following references are mentioned in the Request, but are not asserted to

raise SNQs:

U.S. Pat. No. 3,606,826 to Bowman

U.S. Pat. No. 5,130,176 to Baerveldt

Canadian Pat. No. 1,280,007 to Baerveldt


Art Unit: 3993

Page 16

Emseal Corp.; HORIZONTAL COLORSEAL Data Sheet; June 1997.

Em seal Corp.; 20H System Data Sheet; September 1996.

These reference wills not be analyzed as to an SNQ.

Conclusion

Dow 790, Dow 890, Warson, and Cathey, taken individually, have been shown to

raise an SNQ as to claims 4-8 of the subject '708 patent.

Hill, Colwell, Puccio, and Blickle have not been shown to raise an SNQ as to any

of the claims of the subject patent.

Accordingly, claims 4-8 of the '708 patent will be reexamined.

Waiver of Right to File Patent Owner Statement

The Patent Owner did not agree to waive its right to file a Patent Owner

Statement under 37 C.F.R. 304. USPTO personnel were unable to reach the Patent

Owner by telephone.

Extensions of Time

Extensions of time under 37 CFR 1.136(a) will not be permitted in these

proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and

not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that

ex parte reexamination proceedings "will be conducted with special dispatch" (37 CFR

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Art Unit: 3993

Page 17

1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in

37 CFR 1.550(c).

Notice of Concurrent Proceedings or Litigation

The patent owner is reminded of the continuing responsibility under 37 CFR

1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent

proceeding, involving Patent No. 6,532,708 throughout the course of this reexamination

proceeding. The third party requestor is also reminded of the ability to apprise the

Office of any litigation activity, or other prior or concurrent proceeding, involving the '708

patent. See MPEP §§ 2207, 2282 and 2286.

Submissions

In order to ensure full consideration of any affidavits or declarations or other

documents as evidence of patentability, such documents must be submitted in response

to the first Office action on the merits (which does not result in a close of prosecution).

Submissions after the second Office action on the merits, which is intended to be a final

action, will be governed by the requirements of 37C. F. R. 1.116, after final rejection and

by 37 C.F.R. 41.33 after appeal, which will be strictly enforced.


Art Unit: 3993

Correspondence

Page 18

All correspondence relating to this ex parte reexamination proceeding should be directed:

By EFS: Registered users may submit via the electronic filing system EFS-Web, at htt_gs://efs.us_gto.goviefile/my_gortal/efs-registered

By Mail to: Mail Stop Ex Parte Reexam Attn: Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

By FAX to: (571) 273-9900 Central Reexamination Unit

By hand: Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1 )(i) (C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication or earlier communications from the Examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

/Russell D. Stormer/

Russell D. Stormer Primary Examiner Central Reexamination Unit Art Unit 3993 (571) 272-6687

Conferee: /SC/

Conferee: /GAS/

Order Granting Request For Ex Parte Reexamination

Control No.

90/013,683

Examiner

Russell Stormer

Patent Under Reexamination

6532708

Art Unit

3993

--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--

The request for ex parte reexamination filed 19 Januarv2016 has been considered and a determination has been made. An identification of the claims, the references relied upon, and the rationale supporting the determination are attached.

Attachments: a)D PT0-892, b)~ PTO/SB/08, c)D Other: __

1. ~ The request for ex parte reexamination is GRANTED.

RESPONSE TIMES ARE SET AS FOLLOWS:

For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication (37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).

For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester is permitted.

cc:Renuester I if third nartv renuester \ U.S. Patent and Trademark Office

PTOL-471 G(Rev. 01-13) Office Action in Ex Parte Reexamination Part of Paper No. 20160129

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Reexamination Application/Control No.

90013683 Certificate Date

Applicant(s)/Patent Under Reexamination 6532708 Certificate Number

Requester Correspondence Address: D Patent Owner [8J Third Party

PETER B. GOLDMAN DECONCINI MCDONALD YETWIN & LACY, P. C. 2525 EAST BROADWAY BLVD., SUITE 200 TUSCON, AZ 85716

LITIGATION REVIEW [gl

Case Name

Emseal Joint Systems, Ltd. v. MM Systems Corp

1 :14 cv 14706 (Stayed)

Emseal Joint Systems, Ltd. v. MM Systems Corp.

0:09 cv 137 (closed)

/rstormer/ 02/08/2016 (examiner initials) (date)

Director Initials

GAS for JRC

GAS for JRC

COPENDING OFFICE PROCEEDINGS

TYPE OF PROCEEDING NUMBER

1 . Reexamination 90/013,472 and 90/013,473 (Merged)

U.S. Patent and Trademark Office DOC. CODE RXFILJKT

900'13683 .. GAU: 3993 Receiptdate: Oi/19/2016

Doc code: IDS PTOIS8108a (01-10)

Doc description: Information Disclosure Statement (IDS) Filed Approved for use through 07/31/2012. 0MB 0651-0031 U.S. Patent and Trademarlo: Office; U.S. DEPARTMENT OF COMMERCE

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Application Number

Filing Date INFORMATION DISCLOSURE First Named Inventor I Konrad Baerveldt STATEMENT BY APPLICANT

Art Unit ( Not for submission under 37 CFR 1.99)

I Examiner Name

Attorney Docket Number

U.S.PA TENTS

Examiner Cite Kind Name of Patentee or Applicant Pages,Columns,Lines where

Patent Number Issue Date Relevant Passages or Relevant Initial* No Code1 of cited Document

Figures Appear

1 2544532 1951-03-06 Thomas T. Hill

2 0945914 1909-04-27 Robert J. Colwell

3 3712188 1973-01-23 Lee Warson

4 3606826 1971-09-21 Thomas C. Bowman

5 4018539 1977-04-19 Guy S. Puccio

6 6039503 2000-03-21 Joe Ray Cathey

7 1371727 1921-03-15 Herman R. Blickle

8 5130176 1992-07-14 Konrad Baerveldt

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EFS Web 2.1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /r.d.s./

900"13683 .. GAU: 3993 Receiptdate: Oi/19/2016

Application Number


Art Unit ( Not for submission under 37 CFR 1.99}

Examiner Name I Attorney Docket Number

U.S.PATENT APPLICATION PUBLICATIONS

Examiner Publication Kind Publication Name of Patentee or Applicant Pages,Columns,Lines where

Initial* Cite No

Number Code1 Date of cited Document Relevant Passages or Relevant Figures Appear

1

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FOREIGN PATENT DOCUMENTS

Name of Patentee or Pages,Columns,Unes Examiner Cite Foreign Document Country Kind Publication Applicant of cited

where Relevant TS Initial* No NumberJ Code2i Code4 Date Passages or Relevant

Document Figures Appear

1 128007 CA 1991-02-12 Baerveldt D

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NON-PATENT LITERATURE DOCUMENTS

Examiner Cite Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of the item

Initials* No (book, magazine, journal, serial, symposium, catalog, etc), date, pages(s), volume-issue number(s), TS publisher, city and/or country where published.

1 Complaint Filed in Emseal Joint Systems, LTD v. MM Systems Corporation, Civil Action No. 1:14-cv-14706-RWZ. D

2 Dow Corning® 790 Silicone Building Sealant; Dow Corning Corporation; 1995, 1999 D

3 Dow Corning® 890 Self-Leveling Silicone Joint Sealant; Dow Corning Corporation; 1996, 1999 D

4 EMSEAL CORP., Horizontal Colorseal Data Sheet, June 1997. D

EFSWeb2,1.17 ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH. /r.d.s./

900.13683 .. GAU: 3993 Receiptdate: Oi/19/2016

Application Number


Art Unit ( Not for submission under 37 CFR 1.99)

Examiner Name I Attorney Docket Number

5 EMSEAL CORP., 20H System Data Sheet, September 1996. D

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EXAMINER SIGNATURE

Examiner Signature I /Russell D. Stormer/ I Date Considered I 02/08/2016

*EXAMINER: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through a citation if not in conformance and not considered. Include copy of this form with next communication to applicant.

1 See Kind Codes of USPTO Palen! Documents at www USPTO GOV or MPEP 901.04. 2 Enter office that issued the document, by the two-letter code (WIPO Standard ST.3). 3 For Japanese patent documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. 4 Kind of document by the appropriate symbols as indicated on the document under WIPO Standard ST.16 if possible. 5 Applicant is to place a check mark here i English language translation is attached.

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Litigation Search Report CRU 3999

-!:liii::liiiiil:1111111111111111111 J

To: Examiner location: CRU Art Unit: 3993 Date: 01/20/2016

U.S. Patent No. 6,532,708

From: Renee Preston Location: CRU 3999 MDE 4815 Phone: (571) 272-1607 [email protected]

1) I performed a KeyCite Search in Westlaw, which retrieves all history on the patent including any litigation.

2) I performed a search on the patent in Lexis CourtLink for any open dockets or closed cases.

3) I performed a search in Lexis in the Federal Courts and Administrative Materials databases for any cases found.

4) I performed a search in Lexis in the IP Journal and Periodicals database for any articles on the patent.

5) I performed a search in Lexis in the news databases for any articles about the patent or any articles about litigation on this patent.

Litigation found

Status Description Court Docket Number Open Emseal Joint Systems, Ltd v. Systems Corporation US-DIS-MAD 1:14cv14706 Closed Emseal Joint Systems, Ltd v. Systems Corporation US-DIS-MND 0:09cv137

Citing References (30)

US PAT 9068297 , U.S. F'TO Utiiity

US PAT 8739495, U.S. PTO Utiiity

27 .. Jt)~NT~Nt1 STRUCTUHE ()F VEM~CLE TH.AVEL~NC1 P.ATH ~JCl~NTS Ht\V~NC1 EXPi\NS~!)N FUNCT~()N /:\ND ~flETH()D ()F ~tl()UNT~NC~

LexisN l of 1 DOCUJVIENT

UNITED STATES PATENT AND TRADEMARK OFFICE GRANTED PATENT

EXPIRATION: March 18, 2007 -August 4, 2008 -September 2, 2008)

6532708

Link to Claims Section

March 18, 2003

Expansion and seismic joint covers

due to failure to pay maintenance fees. (0.(i May 15, 2007) REINSTATED due to acceptance of delayed payment of maintenance fee.

REEXAlVr -LITIGATE:

Page 1

<0.G.

Reexamination requested March 24, 2015 by MM Systems Corporation, Peter B. Goldman, DeConcini McDonald Yetmin & Lacy, Tucson, AZ, Reexamination No. 90/013,473 (0.G. May 12, 2015) Ex. Gp.: 3993 March 24, 2015

NOTICE OF LITIGATION

Emseal Joint Systems, Ltd v. MlVI Systems Corporation, Filed January 21, 2009, D.C. Minnesota, Doc. No. 0:09cv137

NOTICE OF LITIGATION

Emseal Join! Systems, Ltd v. l'vim Systems Corporalion, Filed December 22, 2014, D.C. J\fassachusetls, Doc. No. 1 :14cv 14706

INVENTOR: Baerveldt, Konrad - 180 Highbourne Road, Toronto, Ontario, Catiada (CA), M5P 2J7

APPL-NO: 654932 (09)

FILED-DATE: August 31, 2000

GRANTED-DATE: March 18, 2003

654932 (09) 6532708 March 18, 2003

PRIORITY: January 18, 2000 - 2296228, Canada (CA)

ASSIGNEE-AT-ISSUE: BAERVELDT KONRAD

ASSIGNEE-AFTER-ISSUE: November 15, 2005 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)., EMSEAL CORPORATION, 120 CARRIER DRIVE, TORONTO, ONTARIO M9W SR l, CANADA ( ), Reel and Frame Number: 0 l 7230/0777 November 17, 2008 -ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)., EMSEAL CORPORATION, 120 CARRIER DRIVE, TORONTO, ONTARIO, CANADA ( ), M9W SR I, Reel and Frame Number: 021838/0568 November l 8, 2008 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)., NORTH SEAL, LLC, 593 WASHINGTON STREET, \VELLESLFY, MASSACHUSETTS, UNITED STATES OF AMERICA (US), 02482, Reel and Frame Number: 021838/0889 November 19, 2008 ·· CHANGE OF NAME (SEE DOCUMENT FOR DETAILS)., EMSEAL, LLC, 593 \VASHINGTON STREET, WELLESLEY, MASSACHUSETTS, UNITED STATES OF AMERICA (US), 02482, Reel and Frame Number: 021849/0746 July l, 2014 - ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)., EMSEAL JOINT SYSTEMS LTD., 25 BRIDLE LANE, \V'ESTBOROUGH, MASSACHUSETTS, UNITED STATES OF AMERICA (US), 0 l 58 l, Reel and Frame Number: 033223/0557

U~GAL-REP: Knuth, Randall J.

PUB-TYPE: March 18, 2003 ·· Patem withou1 a pre--gran1 publicalion (Bl)

PUB-COUNTRY: United States of America (US)

LEGAL-STATUS:

November 15, 2005 -ASSIGNMENT October 4, 2006 - MAINTENANCE FEE REJVIINDER l\'1AILED March 18, 2007 - REINSTATEMENT AFTER MAINTENANCE FEE PAYMENT CONFIRMED May 15, 2007 - EXPIRED DUE TO FAILURE TO PAY MAINTENANCE FEE August 4, 2008 - FEE PAYMENT August 4, 2008 - PATENT REINSTATED DUE TO THE ACCEPTANCE OF A LATE MAINTENANCE FEE August 4, 2008 - SURCHARGE FOR LATE PAYMENT November 17, 2008 -ASSIGNMENT November 18, 2008 -ASSIGNMENT November l 9, 2008 - ASSIGNMENT August 26, 2010 - FEE PAYMENT July 1, 2014 - ASSIGNMENT August 1, 2014 - FEE PAYMENT October 4, 2006 - Maintenance Fee Reminder l\failed. March 18, 2007 - Patent Reinstated After Maintenance Fee Payment Confirmed. August 4, 2008 - Payment of Maintenance Fee, 4th Year, Large Entity. August 4, 2008 - Surcharge, Petition to Accept Pymt After Exp, Unintentional. August 4, 2008 - Petition Related to Maintenance Fees Granted. August 4, 2008 - Petition Related to Maintenance Fees Filed. August 4, 2008 - Entity Status Set to lJndiscounted

654932 (09) 6532708 March 18, 2003

August 26, 2010 - Payment of Maintenance Fee, 8th Year, Large Entity. July 30, 2014 - Entity Status Set to Small August 1, 2014 - Payment of Maintenance Fee, 12th Yr, Small Entity.

FILING-LANG: English (EN) (ENG)

PUB-LANG: English (EN) (ENG)

US-MAIN-CL: 52#396.05

US-ADDL-CL: 52#167.7, 52#395, 52#402, 404#47, 404#68

CL: 52,404

SEARCH-FLU: 52#167.1, 52#167.7, 52#395, 52#396.04, 52#396.05, 52#402, 404#47, 404#50, 404#56, 404#68

!PC-MAIN-CL: [7J E04B 001#682

lPC-MAIN-CL: [SJ EOlD O l 9#06 (20060 l O l) Advanced Inventive 20051008 (A IR M EP)

IPC-ADDL-CL: [8] E04B 001#68 (20060101) Advanced lnventiw 20051008 (A IR M EP)

IPC-ADDL-CL: [8] E04B 00 l 11682 (20060 l OJ) Advanced Inventive 20060521 (A JR MUS)

PRll\1-EXlVlR: Horton, Yvonne lVL

REF-CITED:

4453360, June l 2, 1984, Barenberg, United States of America (US) 5607253, Marcb 4, 1997, Almstmm, United Stares of America (US) 6 l 02407, Augus! 15, 2000, Mori ya et al., United States of America (US)

ENGLISH-ABST:

Page 3

A seismic/expansion joint seal and cover comprises a cover plate, and a central spine extending downwardly from said cover plate. /\t least one layer of a resilient compressible foam sealam is provided on each side of !he spine.

NO-OF-CLAIMS: 8

EXMPL-CLAIM: l

NO-OF-FIGURES: 10

NO-DRvVNG-PP: 6

SUMMARY:

BACKGROUND OF THE INVENTION

654932 (09) 6532708 March 18, 2003

·n1e present invention relates to the field of seismic and expansion joint covers.

FIELD OF THE INVENTION

Expansion and seismic joint covers are, essentially, covers or mechanism devices to cover expansion and seismic joints to provide pedestrian or vehicular passage over a joint, and provide a smooth transition from one slab to another, while not inhibiting joint movement or restricting this movement as a result of the mechanism employed. Generally, the mechanisms employed to position the expansion/seismic joint cover over the joint are either of a mechanical nahJre or make use of an elastic and recoverable element to provide the impetus (spring-memory or return-force) to maintain the joint cover in a median position relative to the joint movements occurring. 111ese movements may be experienced in all three planes, such as expansion and contraction, deflection and shear of the joint.

Various mechanisms are thus employed to deal ,vith this three directional movement and !he mechanism to stabilize the expansion joint cover and restore it into a "neutral position" relative !o the movement that has taken place.

FIG. lis a typical prior art expansion/seismic joint cover manufactured by Migua Fugensysteme GmbH & CO. KG·, in G·ermany particularly for Seismic Joints. As can be seen, this has a cover plate extending across the width of the joint to allow for both vehicular and pedestrian traffic. As a self-centring mechanism, it utilizes the recovery ability of elastomeric extrusions. These extrusions exert the rehlrn force required to reposition the cover plate as a result of movements occurring in the joint. The dotted line, seen midway through the joint, is a horizontal bar set across the width of the joint to act as a stabilizing element for the elastomeric extrnsions in the centre. It is there to add stability to the joint and allow the central (metallic) part of the joint to be fastened to the cover plate, prior to its (the horizontal bar) removal. This expansion/seismic joint cover is intended to be watertight. The waterproofing is confined substantially to the upper surfaces of the joint immediately below the cover plate. However, once the horizontal (stabilizing) bar is removed, remedial \Vork on the joint is difficult as removal of the cover plate will allow the central portion of the joint to collapse as it is no longer supported (by the horizontal bar).

FIG. 2shmvs an expansioniseismic join! made by Walson Bmvman Acme Corp., in the U.S.A. ln this design, the cover plate is attached !o a scissors-type mechanical device immediately below it. The scissors-type mechanism is similar to a "pantograph" or expanding scissors type hot-plate mat. In other ,vords, a scissors-type movement contained between nylon bearings and running the length of the joint. In this type of mechanism, an increase or decreases in the joint width ,vill result in the repositioning of the cover plate along the centre line. However, this expansion/seismic join! cover is not watertight immediately below !he cover pla!e--as is the case with the expansion/seismic joint cover in FKil. Thus, an elaborate system of gutters attempts to provide a solution to the watertight issue. The joint, in effect, suffers from three major problems. Firstly, an inability to inspect and clean out the joint other than by removal of the whole joint assembly (the scissors mechanism prevents direct access into the joint below the cover or slide plate). Secondly, the ingress of waterborne salts into the joint will seriously affect the long term performance of the self-centring mechanism. Thirdly, the joint design lacks "wate1iight properties".

TI,e above prior art illustrates two objects of the present invention. The first is that tbe cover plate should he removable to permit inspection of tbe joint below. The second object is that the joint sbould be watenight at, or immediately below, the line of wateiproofing that is applied to the deck. This \vill ensure a waterproofing line of integrity across both decks, on either side of the joint, and tbrough the actual joint itself.

It can be seen fromFJGS. 1 and 2that the emphasis, until this point in time, has been to utilize either a mechanical mechanism or elastomeric extruded profile as the correcting or centring element required to maintain the cover plate in its correct position relative to joint movement occurring beneath it. ln other \Vords, the cover plate cannot be allowed to merely sit on the surface of the joint but must be guided to maintain a central position or neutral position relative to the joint movement occurring.

654932 (09) 6532708 March 18, 2003

SUMMARY OF THE INVENTION

In the present invention, the use of an impregnated foam sealanl as an elastic recovery or return force mechanism has the dual advantage thal the syslem can remain waterlight immediately below the level of !he cover plate ,vhile at the same time the impregnated foam sealant acts as the return force or slabilizing elemenl for the cover plale.

In the present invention, then, relates to a seismiciexpansion joint seal and cover comprising a cover plate, a central spine extending dmvnwardly from said cover plate, and at least one layer of a resilient compressible foam sealant on each side of said spine.

DRWDESC:

BRIEF DESCRIPTION OF THE DRAWINGS

The above-mentioned and other features and advantages of this invention, and the manner of attaining them, will become more apparenl and the invention will be better understood by reference to !he following description of an embodiment of the invention taken in conjunction ,vith the accompanying drawings, wherein:

FIG. lis a cross-sectional view of a prior art seismic/expansion joint cover made by MTGUA;

FIG. 2is a cross-sectional view of a prior art seismic/expansion joint cover made by ·watson Bowman;

HG. 3is a cross-sectional view· of a first embodiment of the present invention;

HG. 4is a cross--sectional view of a second embodiment of the present invention;

FIG. Sis a cross-sectional view of a third embodiment of the present invention;

FIG. 6is a cross-sectional view of a fourth embodiment of the present invention;

FIG. 7is a cross-sectional view of a modified form of the embodimenl shmvn inFlG. 5;

FIG. Sis a cross-sectional vie\v of another modified form of the embodiment shmvn inFICi 5;

FIG. 9is a cross-sectional view of a further modified form of the embodiment shown inHG. 5; and

HG. l Ois a cross-sectional view of a modified form of the embodiment shown in HG.6.

DETDESC:

Con-esponding reference characters indicate conesponding parts throughout the several views. The exemplification set out herein illustrates one preferred embodiment of the invention, in one form, and such exemplification is not to be construed as limiting the scope of the invention in any manner.

DETAILED DESCRIPTION

HG. 3illustrates the simplest formlof the present invention. This essentially consists of a T-piece2that acts as both the cover/slide plate and mechanism for the self-centring of the cover plate. The leg of the T extends into the joint.

654932 (09) 6532708 March 18, 2003

Its length is dependent on joint dimensions and the size of pre-compressed expanding foam sealant3placed on either side of the leg. As can be seen fromFlG. 3, impregnated expanding foam sealant such as 20H[TM] System or GH.EYFLEX[TMJ from Emseal Corporation is placed on either side of the leg of the T. Thus, the system is in equilibrium if the expansion force of the impregnated expanding foam sealant to the left of the T is equal or equivalent to that being exerted by the impregnated expanding foam sealant to the right of the T. The system, such as, can be considered "at rest". Should the joint experience an extension due to a decrease in temperature or as a result of other movements, the impregnated expanding foam sealant will have to fill a greater void or distance between the faces of the joint. Due to its expanding nature, it will do so in relation to the movement experienced and thus come to a new ''rest" position. In this ne\v rest position, forces to the left of the T will balance those to the right of the T thus enabling the cover plate/slide plate to remain centred over the joinL

However, theFIG. 3confignration does no! allow for an inspection of the joint beneath the slide plate as the T section is one solid piece. Therefore, provision mnst be made, as inFIG. 4onwards, for the ability to remove the top cover plate/slide assembly from that portion contained within the throat of the joint. This is achieved as shown in FIG.4. In addition, the section contained in the joint may be provided with upper and lmver base flangesS(as shmvn) to position the impregnated expanding foam sealantSmore accurately and, in addition, enable the vertical element2to be secured to the cover plate/slide plate4.

FIG. Sis an alternate embodiment that allows for the removal of the cover plate/slide plate4. This design allows for the fact that irregularities in joint construction may exist in regard to both the borizontal and vertical joint sizing parameters. In other words, joint sides may not be perfectly parallel to one another or equidistant from one another. The joint design criteria may not be met during actual field construction of the joint. Tn this case, the expansion of the impregnated expanding foam sealant on the left of the T piece may not be perfectly matched with tbe expansion cbarackristics of the impregnated expanding foam sealant on the right hand side of the T piece. This will be due to joint imcgularity, in width, vertical, and borizontal alignment, occurring during the construction process. This situation should be cotTected to allow the cover plateislide plate to remain (slide) in contact with both opposing slabs that form the upper surface of the joint. Tbe configuration ofFTG. Swill all(JW, by tigbtening of the respective screws6, the ability to pull do\vn the slide/cover plate to the degree that is necessary and so enable it to rest on one or other side of tbe joint in the crnTect manner.

The embodiment ofFKi 6is an adaptation of that shown in FlG.5. However, in this case, the means to adjust the final position of the cover plate/slide plate is moved to immediately belmv the cover/slide plate.

H will be observed that the upper base flange in the embodiment ofFI(} 6is incorporated in an angulated portion7that is adjustable relative to the central spine8by means of vertically extending slots in the spine and/or the angulated portion, through whicb bolts9extend, which can be tightened after the angulated portion is at the correct heighL It will be appreciated that in selecting the material from which the angulated portion is to be fabricated, consideration should be given to flexibility, since a joint may be somewbat uneven along its length. Foam3is not sbown inFIG. 8for clarity of illustrating the other clements.

Referring now toFKi 7, modifications to enhance the water resistance of the joint directly beneath the cover plate are illustrated. The watertight properties of an impregnated expanding foam sealant both to the left and right of the T piece may be enhanced by the creation of a double seal at the upper surface level of the impregnated expanding foam sealant closest to the cover/slide plate. This may be achieved through the use of a lmv modulus or ultra low modulus sealan110being applied to this surface layer. The use of an ultra low modulus sealant (such as Dow Coming 890 RTV Silicone Sealant) \Vill provide the surface of the impregnated expanding foam sealant3with a closed cell finish and additional sealant layer which will reduce the depth requirement of the impregnated expanding foam sealant beneath the low modulus sealant. In addition, the use of the correctly chosen wet sealant adhered to both the central spline and joint substrate will enhance the elastic properties of the double seal configuration. In theFlG. ?configuration, the impregnated expanding foam sealant3will act as the primary return force or memory, while the ultra low modulus sealant will act as the primary watertight barrier, while also enhancing the return force or memory of the composite seal. It can be seen

654932 (09) 6532708 March 18, 2003

from this configuration that if this ultra low modulus sealant is applied in a self-levelling format, after the impregnated expanding foam sealant has been placed in the joint and allowed to recover to joint size, that a watertight clement is obtained in terms of adhesion to the substrates.

TheFIG. /installation is effected firstly by the installation of the T piece wilh impregnated expanding foam sealant applied to both sides of the T piece or central spline. This assembly is adhered to the join! faces by means of a suitable adhesive and allowed to recover from its pre-compressed delivery and installation format. Afler recovery of !he pre-compressed impregnated expanding foam sealant, the ultra low modulus self-leveling sealant (or other suitable sealanl) is applied to the lop exposed surface of the impregnated expanding foam sealant on either side of !he cenlral spline. Once the sealant has been applied, a level may be applied across the top surface of the joint to correctly align the brackets and cover plateislide plate. The cover/slide plate4is then screwed into position.

FIG. 8shows a further modification and makes use of a prepackaged productlkonsisting of layers of compressible and non-compressible foam, with a sealant applied to the top surface thereof, sold under the trade mark COLORSEAL, by Emseal Corporation. ln the case of the use of the Colorseal product, a finishing of the detail will require that a corner or "heel" bead be applied between the substrate and the Colorseal product to effect the proper chemical termination and adhesion of the top sealant to the substrate.

It can be seen fromFlGS. 7 and 81hat the system can be extended to utilize interleaving layers of impregnated expanding foam sealanl and dosed cell foam or other resilienl material to assist in the recovery and stability of the composite strncture that is placed on either side of the central spline. ln olher words, a composile matrix may be ulilized as the return or recovery force on either side of the central spline. The prime requiremenl is that the material to be inserted into the joint is capable of being pre-compressed and holding !his pre-compression during the time laken to install !he material correctly inlo the joint So, a series of both differing densities of impregnated expanding foam sealant and closed cell foam may be used to provide the recovery force. This recovery force and the composition of the structure will, to a large extent, depend on the size (width) of joint to be formed together with the performance characteristics required from the joint (such as seismic or thermal movement characteristics, etc.)

It \vill be observed fromFlGS. 9 and lOthat further combinations are possible.FTCr. 9illustrates a form of the present invention utilizing a split central T-piece similar to that shown inFIGS. 5 and 7, witb a layered compressible and non--compressibie foam layers, available from Emseal Corporation under the trade mark BACKERSEAIJ2applied on each side of the T--piece, and a low modulus wet sealant applied in the field on the top surface of same, after it bas expanded on each side to centre the T--piece.

FIG. lOillustratcs a modification of theFIG. 6form of the invention, described in foll above, but utilizing the COLORSEAL product12as a centring means on each side of the T.

·n1e covcrislidc plate constrnction may be chosen from the metallic group of materials including stainless steel, bronze, brass, aluminum, galvanized or plated steel, etc. The main criterion for the choice of material is the allowable degree of flexing tbat is undergone during tbe passage of vehicular or pedestrian traffic while the material still retains its ability to bridge the joint in tbe manner required by the design engineer. In addition, the material should display corrosion--resistant properties if used in an external environment. Thus, the larger the joint that must be spanned by the covet/slide plate, the more rigid the materiaL Conversely, as the gap to be spanned becomes natTower, tbe distance between the joint faces is less and alternate materials may be used, such as thermo-plastics or thermo--plastic alloys (elastomers). The main criteria for the use of such alloys are impact resistance, rigidity in load transfer, and temperature resistance if exposed to an external environment. it can thus also be seen that tbe covet/slide plate may also he constructed from composite materials such as fiber resins.

Thus, the final choice of material \Vill depend on joint width, load transfer, and structural integrity of the joint assembly.

654932 (09) 6532708 March 18, 2003

·n1e sub-assembly beneath cover/slide plate may be chosen from the group of metals including steel, aluminum, brass and bronze, which may be extruded or rolled to form the necessary sections. 111e material should display corrosive-resistance properties in accordance with the environment in which it will operate (interior/exterior). However, the choice of material may also include rigid plastics, thermo-plastic alloys, and co-extrnsions that are able to be fastened to the cover/slide plate and provide the cover/slide plate with sufficient retention and movement capability in relation to the movements being experienced by the joint.

The preferable choice of material would be aluminum extrnsions.

It is to be understood that the examples described above are not meant to limit the scope of the present invention, it is expected that the numerous variants will be obvious to one skilled in the field of joint seal design without any departure from the spirit of the invention. The intended claims, properly constrned, form the only limitation on the scope of the invention.

ENGLISH-CLAIMS: Rel urn to Top of Patent

T claim:

1. A seismic/expansion joint seal and cover comprising:

a cover plate;

a central spine extending dowmvardly from said cover plate, said cover is detachable from said spine, said cover is screwed to said spine; and

at least one layer of a resilient compressible foam sealant on eacb side of said spine, said spine is composed of two mitTor-image generally C-shaped members, each of which has a lower base flange, an upper base flange imo which said cover is screwed, and a flat web ex!ending between tbe flanges, against which said foam sealant is positioned, said upper flange of each said C-shaped members is the laterally extending portion of a right angle member that is affixable to said web at selected heights.

2. A joint seal and cover as claimed in claim 1, wherein said C-shaped members are separated by a strip of incompressible foam.

3. A joint seal and cover as claimed in claim 1, wherein a head of sealant is applied between said spine and said cover.


a cover plate;

654932 (09) 6532708 March 18, 2003

a cenlral spine extending downwardly from said cover plale; and

at least one layer of a resilient compressible foam sealant on each side of said spine, said compressible foam layer has a low modulus elastomeric sealant applied to the top surface thereof.

Page9

S, A joint seal and cover as claimed in claim 4, ,vherein a bead of sealant is applied bet,veen said spine and said cover,

(i A seismic/expansion joint seal and cover comprising:

a cover plate;

a central spine ex!ending downwardly from said cover plate, said cover is detachable from said spine; and

at least one layer of a resilient compressible foam sealant on each side of said spine, said compressible foam layer has a low modulus elastomeric sealant applied to the top surface thereof.

7, A seismic/expansion joint seal and cover comprising:

a cover plate;

a cenlral spine extending downwardly from said cover plate, said cover is detachable from said spine, said cover is screwed to said spine: and

at least one layer of a resilient compressible foam sealant on each side of said spine, said spine is composed of t\vo mirror-image generally C-shaped members, each of which has a lower base flange, an upper base flange into which said cover is screwed, and a flat \Veb extending between the flanges, against which said foam sealant is positioned, said compressible foam layer has a low modulus elastomeric sealant applied to the top surface thereof.

654932 (09) 6532708 March 18, 2003


a cover plale;

a central spine extending dowmvardly from said cover plate, said cover is detachable from said spine, said cover is screwed to said spine; and

at least one layer of a resilienl compressible foam sealant on eacb side of said spine, said spine is composed of two rnitTor-image generally C-shaped members, each of which has a lower base flange, an upper base flange imo which said cover is screwed, and a flal web ex!ending between tbe flanges, agains1 which the said foam sealant is posi1ioned, said compressible foam layer bas a low modulus elaslomeric sealant applied lo the lop surface tbereof, said C-·sbaped members are separa!ed by a strip of incompressible foam.

LOAD-DATE: May 13, 2015

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LexisNexis CourtLink - Show Docket Page 1 of 8

US District Court Civil Docket

1: 14cv14706

Emseal Joint Systems, Ltd v. MM Systems Corporation

This case was retrieved from the court on Wednesday, January 20, 2016

L •••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••••.

t)"~!:~ rn~ci: 1212212014 ,~~,~,igned T~): Judge Rya w. Zobel

Cai~s:§S<!: Patent Infringement

Litigants

Emseal Joint Systems, Ltd Plaintiff

Attorneys

John H. Mutchler LEAD ATIORNEY;ATIORNEY TO BE NOTICED MKG, LLC 101 Centerpoint Middletown , CT 06457 USA 860-632-7200 Email: [email protected]

Peter A. Nieves LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED Sheehan Phinney Bass Green PA 1000 Elm Street 17th Floor (603) 627 -8134 Manchester, NH 03101 USA

Robert R. Lucic LEAD ATIORNEY;ATIORNEY TO BE NOTICED Sheehan, Phinney, Bass & Green Professional Association 1000 Elm Street Manchester, NH 03105 USA 603-627-8188 Email: Rlucic@sheehan .Com (Inactive)

Robert L. Rispoli LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED

https :// courtlink.lexisnexis. com/ControlSupport/U serControls/ShowDocket.aspx?Key=23 2... 1/20/2016

LexisNexis CourtLink - Show Docket

Mm Systems Corporation Defendant

MKG, LLC 101 Centerpoint Middletown , CT 06457 USA (860) 632-7200 Email :[email protected]

Michael J. Lambert ATTORNEY TO BE NOTICED Sheehan Phinney Bass Green, PA 255 State Street 5th Floor Boston , MA 02109 USA 617-897-5600 Fax: 617-439-9363 Email: [email protected]

Gary E. Lambert

Page 2 of 8

LEAD ATTORNEY;ATTORNEY TO BE NOTICED Lambert & Associates 92 State Street Boston , MA 02109 USA 617-742-8782 Fax: 617-227-0313 Email: Lambert@lambertpatentlaw .Com

Lisa Anne Smith LEAD ATTORNEY;PRO HAC VICE;ATTORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Blvd. Suite 200 Tucson , AZ 85716 USA (520) 322-5000 Email :[email protected]

Peter B. Goldman LEAD ATTORNEY;PRO HAC VICE;ATTORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Boulevard Suite 200 Tucson , AZ 85716 USA 520-322-5000 Fax: 520-322-5585 Email :[email protected]

Sesaly 0. Stamps LEAD ATTORNEY;PRO HAC VICE;ATTORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Blvd. Suite 200 Tucson , AZ 85716 USA (520) 322-5000 Email:[email protected]

Brendan M. Shortell ATTORNEY TO BE NOTICED Lambert & Associates



Mm Systems Corporation Counter Claimant

Emseal Joint Systems, Ltd Counter Defendant

92 State Street Boston , MA 02109 USA 617-720-0091 Email :Shortell@lambertpatentlaw .Com

Gary E. Lambert

Page 3 of 8

LEAD ATIORNEY;ATIORNEY TO BE NOTICED Lambert & Associates 92 State Street Boston , MA 02109 USA 617-742-8782 Fax: 617-227-0313 Email: Lambert@lambertpatentlaw .Com

Lisa Anne Smith LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Blvd. Suite 200 Tucson , AZ 85716 USA (520) 322-5000 Email :[email protected]

Peter B. Goldman LEAD ATIORNEY;ATIORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Boulevard Suite 200 Tucson , AZ 85716 USA 520-322-5000 Fax: 520-322-5585 Email :[email protected]

Sesaly 0. Stamps LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED DeConcini McDonald Yetwin & Lacy, P.C. 2525 E. Broadway Blvd. Suite 200 Tucson , AZ 85716 USA (520) 322-5000 Email:[email protected]

Brendan M. Shortell ATIORNEY TO BE NOTICED Lambert & Associates 92 State Street Boston , MA 02109 USA 617-720-0091 Email :Shortell@lambertpatentlaw .Com

John H. Mutchler LEAD ATIORNEY;ATIORNEY TO BE NOTICED MKG, LLC 101 Centerpoint Middletown , CT 06457



USA

Peter A. Nieves LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED Sheehan Phinney Bass Green PA 1000 Elm Street 17th Floor (603) 627 -8134 Manchester, NH 03101 USA

Robert R. Lucic LEAD ATIORNEY;ATIORNEY TO BE NOTICED Sheehan, Phinney, Bass & Green Professional Association 1000 Elm Street Manchester, NH 03105 USA 603-627-8188 Email: Rlucic@sheehan .Com (Inactive)

Robert L. Rispoli LEAD ATIORNEY;PRO HAC VICE;ATIORNEY TO BE NOTICED

Date #

MKG, LLC 101 Centerpoint Middletown , CT 06457 USA (860) 632-7200 Email :[email protected]

Michael J. Lambert ATIORNEY TO BE NOTICED Sheehan Phinney Bass Green, PA 255 State Street 5th Floor Boston , MA 02109 USA 617-897-5600 Fax: 617-439-9363 Email: [email protected]

Proceeding Text

12/22/2014 1 COMPLAINT against All Defendants Filing fee: $ 400, receipt number 0101-5334974 (Fee Status: Filing Fee paid), filed by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, part 1, # 7 Exhibit F, part 2, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit !)(Lambert, Michael) (Entered: 12/22/2014)

12/22/2014 2 Civil Cover Sheet & Category Sheet by EMSEAL Joint Systems, Ltd. (Lambert, Michael) (Entered: 12/22/2014)

12/22/2014 3 CORPORATE DISCLOSURE STATEMENT by EMSEAL Joint Systems, Ltd. (Lambert, Michael) (Entered: 12/22/2014)

12/23/2014 4 NOTICE of Case Assignment. Magistrate Judge Judith G. Dein assigned to case. Plaintiff's counsel, or defendant's counsel if this case was initiated by the filing of a Notice of Removal, are directed to the Notice and Procedures regarding Consent to Proceed before the Magistrate Judge which can be downloaded here. These documents will be mailed to counsel not receiving notice electronically. (Abaid, Kimberly) (Entered: 12/23/2014)

12/23/2014 5

Source



Summons Issued as to MM Systems Corporation. Counsel receiving this notice electronically should download this summons, complete one for each defendant and serve it in accordance with Fed.R.Civ.P. 4 and LR 4.1. Summons will be mailed to plaintiff(s) not receiving notice electronically for completion of service. (Abaid, Kimberly) (Entered: 12/23/2014)

01/15/2015 6 WAIVER OF SERVICE Returned Executed by EMSEAL Joint Systems, Ltd. MM Systems Corporation waiver sent on 1/5/2015, answer due 3/6/2015. (Lambert, Michael) (Entered: 01/15/2015)

01/30/2015 7 NOTICE of Appearance by Gary E. Lambert on behalf of MM Systems Corporation (Lambert, Gary) (Entered: 01/30/2015)

01/30/2015 8 MOTION for Leave to Appear Pro Hae Vice for admission of Peter B. Goldman Filing fee: $ 100, receipt number 0101-5390248 by MM Systems Corporation. (Attachments: # 1 Affidavit OF PETER B. GOLDMAN) (Lambert, Gary) (Main Document 8 replaced on 2/4/2015) (Quinn, Thomas). (Entered: 01/30/2015)

02/03/2015 9 Magistrate Judge Judith G. Dein: ELECTRONIC ORDER entered granting 8 Motion for Leave to Appear Pro Hae Vice -- Added Peter B. Goldman. Attorneys admitted Pro Hae Vice must register for electronic filing if the attorney does not already have an ECF account in this district. To register go to the Court website at www.mad.uscourts.gov. Select Case Information, then Electronic Filing (CM/ECF) and go to the CM/ECF Registration Form. (Dambrosio, Jolyne) (Entered: 02/03/2015)

02/03/2015 10 ELECTRONIC REMINDER TO COUNSEL: A notification form indicating whether or not the parties have consented to proceed before a U.S. Magistrate Judge has not been filed. Submission of the form is mandatory and a completed form should be filed promptly. Additional forms can be obtained on the Court's web page at http://www.mad.uscourts.gov. (Dambrosio, Jolyne) (Entered: 02/03/2015)

02/03/2015 11 Refusal to Consent to Proceed Before a US Magistrate Judge .. (Lambert, Gary) (Entered: 02/03/2015)

02/04/2015 12 ELECTRONIC NOTICE of Reassignment. Judge Rya W. Zobel added. (Abaid, Kimberly) (Entered: 02/04/2015)

02/13/2015 13 MOTION for Leave to Appear Pro Hae Vice for admission of Lisa Anne Smith Filing fee: $ 100, receipt number 0101-5408803 by MM Systems Corporation. (Attachments: # 1 Affidavit Lisa Anne Smith)(Shortell, Brendan) (Additional attachment(s) added on 3/26/2015: # 2 Certificate of Good Standing) (Gioia, AnaMaria). (Entered: 02/13/2015)

02/13/2015 14 MOTION for Leave to Appear Pro Hae Vice for admission of Sesaly 0. Stamps Filing fee: $ 100, receipt number 0101-5408876 by MM Systems Corporation. (Attachments: # 1 Affidavit Sesaly 0. Stamps)(Shortell, Brendan) (Additional attachment(s) added on 3/26/2015: # 2 Certificate of Good Standing) (Gioia, AnaMaria). (Entered: 02/13/2015)

02/17/2015 15 Defendant's ANSWER to 1 Complaint, with Jury Demand , COUNTERCLAIM and Affirmative Defenses against MM Systems Corporation by MM Systems Corporation. (Attachments: # 1 Exhibit Exhibit 1, # 2 Exhibit Exhibit 2, # 3 Exhibit Exhibits 3 and 4, # 4 Exhibit Exhibit 5, # 5 Exhibit Exhibit 6, # 6 Exhibit Exhibit 7, # 7 Exhibit Exhibit 8, # 8 Exhibit Exhibit 9, # 9 Exhibit Exhibits 10 and ll)(Goldman, Peter) (Entered: 02/17/2015)

02/24/2015 16 Assented to MOTION for Leave to Appear Pro Hae Vice for admission of Robert L. Rispoli, John H. Mutchler and Peter A. Nieves Filing fee: $ 300, receipt number 0101-5421135 by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Lambert, Michael) (Additional attachment(s) added on 3/6/2015: # 4 Certificates of Good Standing for Peter A. Nieves) (Gioia, AnaMaria). (Additional attachment(s) added on 4/1/2015: # 5 Certificate of Good Standing for John H. Mutchler) (Gioia, AnaMaria). (Entered: 02/24/2015)

Page 5 of 8



03/09/2015 17 Amended ANSWER to Counterclaim, Amended COUNTERCLAIM against MM Systems Corporation by MM Systems Corporation. (Attachments: # 1 Exhibit 12, # 2 Exhibit 13 and 14, # 3 Exhibit 15, # 4 Exhibit 16, # 5 Exhibit 17, # 6 Exhibit 18, # 7 Exhibit 19, # 8 Exhibit 20)(Goldman, Peter) (Entered: 03/09/2015)

03/09/2015 19 ANSWER to Counterclaim by EMSEAL Joint Systems, Ltd.(Gioia, Ana Maria) (Entered: 03/10/2015)

03/10/2015 18 NOTICE of Scheduling Conference Scheduling Conference set for 4/8/2015 02:30 PM in Courtroom 12 before Judge Rya W. Zobel. (Urso, Lisa) (Entered: 03/10/2015)

03/11/2015 20 NOTICE by MM Systems Corporation re 17 Answer to Counterclaim,,, of Filing Correct Exhibit 14 (Attachments: # 1 Exhibit Correct Exhibit 14) (Goldman, Peter) (Entered: 03/11/2015)

03/26/2015 21 Judge Rya W. Zobel: ELECTRONIC ORDER entered granting 13 Motion for Leave to Appear Pro Hae Vice Added Lisa Anne Smith. Attorneys admitted Pro Hae Vice must register for electronic filing if the attorney does not already have an ECF account in this district. To register go to the Court website at www.mad.uscourts.gov. Select Case Information, then Electronic Filing (CM/ECF) and go to the CM/ECF Registration Form. (Gioia, Ana Maria) (Entered: 03/26/2015)

03/26/2015 22 Judge Rya W. Zobel: ELECTRONIC ORDER entered granting 14 Motion for Leave to Appear Pro Hae Vice Added Sesaly 0. Stamps. Attorneys admitted Pro Hae Vice must register for electronic filing if the attorney does not already have an ECF account in this district. To register go to the Court website at www.mad.uscourts.gov. Select Case Information, then Electronic Filing (CM/ECF) and go to the CM/ECF Registration Form. (Gioia, Ana Maria) (Entered: 03/26/2015)

03/26/2015 23

03/26/2015 24

03/30/2015 25

03/30/2015 26

03/30/2015 27

03/30/2015 28

04/01/2015 29

04/01/2015 30

04/08/2015 31

MOTION to Stay Litigation by MM Systems Corporation.(Goldman, Peter) (Entered: 03/26/2015)

MEMORANDUM in Support re 23 MOTION to Stay Litigation filed by MM Systems Corporation. (Attachments: # 1 Exhibit 1-5, # 2 Exhibit 7-8) (Goldman, Peter) (Entered: 03/26/2015)

NOTICE by MM Systems Corporation re 24 Memorandum in Support of Motion Re: Notice of Errata (Goldman, Peter) (Entered: 03/30/2015)

CERTIFICATION pursuant to Local Rule 16.1 by EMSEAL Joint Systems, Ltd.(Lambert, Michael) (Entered: 03/30/2015)

JOINT SUBMISSION pursuant to Local Rule 16.1 by EMSEAL Joint Systems, Ltd.(Lambert, Michael) (Entered: 03/30/2015)

CERTIFICATION pursuant to Local Rule 16.1 . (Goldman, Peter) (Entered: 03/30/2015)

Disclosure pursuant to Rule 26 by MM Systems Corporation.(Goldman, Peter) (Entered: 04/01/2015)

ANSWER to Counterclaim by EMSEAL Joint Systems, Ltd.(Lambert, Michael) (Entered: 04/01/2015)

ELECTRONIC Clerk's Notes for proceedings held before Judge Rya W. Zobel: Scheduling Conference held on 4/8/2015, (Hearing set for 7/8/2015 02:30 PM in Courtroom 12 before Judge Rya W. Zobel.), Set Deadlines/Hearing as to 23 MOTION to Stay Litigation :( Responses due by 4/9/2015, 5 page Replies due by 4/23/2015.). (Court Reporter: No Court Reporter Used.)(Attorneys present: various) (Urso, Lisa) (Entered: 04/09/2015)

04/09/2015 32 Opposition re 23 MOTION to Stay Litigation filed by EMSEAL Joint Systems, Ltd. (Lambert, Michael) (Entered: 04/09/2015)

04/09/2015 33

Page 6 of 8



MEMORANDUM in Opposition re 23 MOTION to Stay Litigation filed by EM SEAL Joint Systems, Ltd. (Lambert, Michael) (Entered: 04/09/2015)

04/15/2015 34 Joint MOTION for Extension of Time to April 20, 2015 to File Protective Order by MM Systems Corporation.(Goldman, Peter) (Entered: 04/15/2015)

04/17/2015 35 Judge Rya W. Zobel: ELECTRONIC ORDER entered granting 34 Motion for Extension of Time to File to 4/20/15 (Urso, Lisa) (Entered: 04/17/2015)

04/21/2015 36 Judge Rya W. Zobel: ELECTRONIC ORDER entered granting 16 Motion for Leave to Appear Pro Hae Vice Added Robert L. Rispoli, John H. Mutchler and Peter A. Nieves. Attorneys admitted Pro Hae Vice must register for electronic filing if the attorney does not already have an ECF account in this district. To register go to the Court website at www.mad.uscourts.gov. Select Case Information, then Electronic Filing (CM/ECF) and go to the CM/ECF Registration Form. (Gioia, AnaMaria) (Entered: 04/21/2015)

04/21/2015 37

04/23/2015 38

05/01/2015 39

05/08/2015 40

05/08/2015 41

05/11/2015 42

05/20/2015 43

Disclosure pursuant to Rule 26 by EMSEAL Joint Systems, Ltd.(Lucic, Robert) (Entered: 04/21/2015)

REPLY to Response to 23 MOTION to Stay Litigation filed by MM Systems Corporation. (Attachments: # 1 Exhibit 1 and 2, # 2 Exhibit 3, # 3 Exhibit 4 )(Goldman, Peter) (Entered: 04/23/2015)

Judge Rya W. Zobel: ORDER entered. re 37 Disclosure pursuant to Rule 26 filed by EMSEAL Joint Systems, Ltd (Urso, Lisa) (Entered: 05/01/2015)

Joint MOTION for Protective Order by EMSEAL Joint Systems, Ltd.(Rispoli, Robert) (Entered: 05/08/2015)

Disclosure pursuant to Rule 26 by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Exhibit A)(Mutchler, John) (Entered: 05/08/2015)

Judge Rya W. Zobel: ENDORSED ORDER entered granting 40 Motion for Protective Order (Urso, Lisa) (Entered: 05/11/2015)

MOTION for Leave to File Supplemental Memorandum in Support of Stay Based on Grant of Reexamination by MM Systems Corporation. (Attachments: # 1 Exhibit Exhibit A, # 2 Exhibit Exhibit 1 to Exhibit A) (Goldman, Peter) (Entered: 05/20/2015)

06/01/2015 44 STATUS REPORT BASED ON US PATENT OFFICE GRANT OF SECOND REEXAMINATION OF 708 PATENT by MM Systems Corporation. (Attachments: # 1 Exhibit A - Reexamination Grant, # 2 Exhibit B -Reexamination Grant Two)(Lambert, Gary) (Entered: 06/01/2015)

06/02/2015 45 MOTION for Leave to File A RULE 26(f) ELECTRONIC DISCOVERY PLAN by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Exhibit A, # 2 Memorandum, # 3 Affidavit, # 4 Exhibit 1, # 5 Exhibit 2, # 6 Exhibit 3, # 7 Exhibit 4, # 8 Exhibit 5, # 9 Exhibit 6, # 10 Exhibit 7, # 11 Exhibit 8, # 12 Exhibit 9-1, # 13 Exhibit 9-2, # 14 Exhibit 10, # 15 Exhibit 11, # 16 Exhibit 12, # 17 Exhibit 13, # 18 Exhibit 14, # 19 Exhibit 15, # 20 Exhibit 16, # 21 Exhibit 17, # 22 Exhibit 18, # 23 Exhibit 19, # 24 Exhibit 20, # 25 Exhibit 21)(Mutchler, John) (Entered: 06/02/2015)

06/02/2015 46 MOTION to Compel DEFENDANT TO RESPOND TO PLAINTIFFS FIRST REQUEST FOR DOCUMENTS AND THINGS by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Memorandum, # 2 Affidavit, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9-1, # 12 Exhibit 9-2, # 13 Exhibit 10, # 14 Exhibit 11, # 15 Exhibit 12, # 16 Exhibit 13, # 17 Exhibit 14, # 18 Exhibit 15, # 19 Exhibit 16, # 20 Exhibit 17, # 21 Exhibit 18, # 22 Exhibit 19, # 23 Exhibit 20, # 24 Exhibit 21)(Mutchler, John) (Entered: 06/02/2015)

06/03/2015 47 Opposition re 43 MOTION for Leave to File Supplemental Memorandum in Support of Stay Based on Grant of Reexamination filed by EMSEAL Joint Systems, Ltd. (Attachments: # 1 Memorandum)(Mutchler, John) (Entered: 06/03/2015)

Page 7 of 8



06/04/2015 48 MOTION for Leave to File Reply to Plaintiff's Objection to Defendant's Motion for Leave to File Supplemental Memorandum in Support of Motion for Stay Based on Newly Acquired Evidence by MM Systems Corporation. (Attachments: # 1 Exhibit Exhibit A)(Goldman, Peter) (Entered: 06/04/2015)

06/08/2015 49 ELECTRONIC NOTICE of Hearing. Telephone Conference set for 6/18/2015 02:00 PM in Courtroom 12 before Judge Rya W. Zobel. COUNSEL TO SET UP TELEPHONE CONFERENCE AND SEND COURT THE DIAL-IN NUMBER. (Urso, Lisa) (Entered: 06/08/2015)

06/15/2015 50 MOTION for Protective Order by MM Systems Corporation.(Goldman, Peter) (Entered: 06/15/2015)

06/15/2015 51 MEMORANDUM in Support re 50 MOTION for Protective Order filed by MM Systems Corporation. (Attachments: # 1 Affidavit, # 2 Exhibit A, # 3 Exhibit A-1, # 4 Exhibit A-2, # 5 Exhibit A-3, # 6 Exhibit A-4, # 7 Exhibit A-5, # 8 Exhibit A-6, # 9 Exhibit A-7, # 10 Exhibit A-8, # 11 Exhibit A-9, # 12 Exhibit A-10, # 13 Exhibit A-11, # 14 Exhibit B, # 15 Exhibit C, # 16 Exhibit D, # 17 Exhibit E, # 18 Exhibit F, # 19 Exhibit G, # 20 Exhibit H, # 21 Exhibit I, # 22 Exhibit 2, # 23 Exhibit 3, # 24 Exhibit 4, # 25 Exhibit 5)(Goldman, Peter) (Entered: 06/15/2015)

06/16/2015 52 Opposition re 46 MOTION to Compel DEFENDANT TO RESPOND TO PLAINTIFFS FIRST REQUEST FOR DOCUMENTS AND THINGS filed by MM Systems Corporation. (Attachments: # 1 Affidavit Exhibit 1, # 2 Exhibit A, # 3 Errata A-1, # 4 Exhibit A-2, # 5 Exhibit A-3, # 6 Exhibit A-4, # 7 Exhibit A-5, # 8 Exhibit A-6, # 9 Exhibit A-7, # 10 Exhibit A-8, # 11 Exhibit A-9, # 12 Exhibit A-10, # 13 Exhibit A-11, # 14 Exhibit B, # 15 Exhibit C, # 16 Exhibit D, # 17 Exhibit E, # 18 Exhibit F, # 19 Exhibit G, # 20 Exhibit H, # 21 Exhibit I, # 22 Affidavit Exhibit 2, # 23 Affidavit Exhibit 3, # 24 Affidavit Exhibit 4, # 25 Affidavit Exhibit 5)(Goldman, Peter) (Entered: 06/16/2015)

06/16/2015 53 Opposition re 45 MOTION for Leave to File A RULE 26(f) ELECTRONIC DISCOVERY PLAN filed by MM Systems Corporation. (Attachments: # 1 Affidavit Exhibit 1, # 2 Affidavit Exhibit 2)(Goldman, Peter) (Entered: 06/16/2015)

06/18/2015 54 Judge Rya W. Zobel: ORDER entered denying 46 Motion to Compel; granting 50 Motion for Protective Order (Urso, Lisa) (Entered: 06/18/2015)

06/18/2015 55 ELECTRONIC Clerk's Notes for proceedings held before Judge Rya W. Zobel: granting 23 Motion to Stay ; Telephone Conference held on 6/18/2015; ( Joint Status Report due by 11/18/2015). (Court Reporter: None.)(Attorneys present: various) (Urso, Lisa) (Entered: 06/18/2015)

11/17/2015 56 STATUS REPORT and Stipulated Motion to Extend Stay by MM Systems Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text of Proposed Order)(Goldman, Peter) (Entered: 11/17/2015)

11/18/2015 57 Judge Rya W. Zobel: ENDORSED ORDER entered. re 56 Status Report filed by MM Systems Corporation. Noted and the motion to extend stay is allowed. The parties shall file a further status report by 5/18/16. (Urso, Lisa) (Entered: 11/19/2015)

11/18/2015 58 Set/Reset Deadlines: Status Report due by 5/18/2016 (Urso, Lisa) (Entered: 11/19/2015)

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Page 8 of 8



US District Court Civil Docket

0:09cv137

Emsea~ Joint Systems, Ltd. v. MM Systems Corporation

This case was retrieved from the court on Wednesday, January 20, 2016

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. A§5!~F1~s:! T~: Judge Ann D. Montgomery

}t~f~rrn~:I T©: Magistrate Judge Jeffrey J. Keyes

~mit.: Patent (830)

C,m§S:!: Patent Infringement

Jt~r~~d~ct~~~1~ Federal Question

Litigants Attorneys

Geoffrey P Jarpe Emseal Joint Systems, Ltd. Plaintiff LEAD ATIORNEY;ATIORNEY TO BE NOTICED

Maslon LLP 90 S 7th St Ste 3300 Mpls, MN 55402 USA (612) 672-8200 Fax: (612) 642-8360 Email :[email protected]

George - NA D Moustakas LEAD ATIORNEY;ATIORNEY TO BE NOTICED Not Admitted

Mm Systems Corporation Defendant

Date # Proceeding Text

01/21/2009 1 COMPLAINT against MM Systems Corporation ( Filing fee$ 350 receipt number 40029835.) assigned to Judge Ann D. Montgomery per Patent List and referred to Magistrate Judge Jeffrey J. Keyes, filed by Emseal Joint Systems, Ltd. (Attachments: # 1 Exhibit A, # 2 Civil Cover Sheet) (kt) (Entered: 01/21/2009)

01/21/2009 Summons Issued as to MM Systems Corporation. (kt) (Entered: 01/21/2009)

Source



01/21/2009 2 RULE 7.1 DISCLOSURE STATEMENT by Emseal Joint Systems, Ltd. that there is no such parent or publicly held corporation to report. (kt) (Entered: 01/21/2009)

11/10/2009 3 ORDER: Accordingly, counsel for Plaintiff is directed to: 1. Notify defense counsel immediately that he/she is required to make an appearance or move for an extension of time to do so; 2. File an application for entry of default unless the required pleading is filed within ten (10) days; or 3. Advise the Court in writing of any good cause to the contrary. Unless Plaintiff's counsel complies with this order within 20 days of this date, this case will be dismissed for lack of prosecution. Signed by Magistrate Judge Jeffrey J. Keyes on 11/10/2009. (MMP) (Entered: 11/10/2009)

11/10/2009 4 NOTICE of Voluntary Dismissal by Emseal Joint Systems, Ltd. (Jarpe, Geoffrey) (Entered: 11/10/2009)

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6532708 re examination Application/Control Number: 90/013,683

Engineering

Transcript of 6532708 re examination Application/Control Number: 90/013,683