IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

AUSTIN DIVISION 

Slingshot Printing LLC, 

Plaintiff 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

v. 

HP Inc., 

Defendant. 

C.A. Nos. 1:20-cv-00184-ADA 

 1:20-cv-00185-ADA 

Jury Trial Demanded 

DEFENDANT HP INC.’S OPENING CLAIM CONSTRUCTION BRIEF 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 1 of 53
i 

TABLE OF CONTENTS 

I. Introduction ............................................................................................................................... 1

II. Technical Background Regarding Inkjet Printing and the Patents at Issue .............................. 2

A. The Relevant Technical Background of Inkjet Printing ..................................................... 2

B. The Pressure/Venting Patents (-184 Case) ......................................................................... 5

C. The Ejection Chamber Patents (-185 Case) ........................................................................ 7

III. Level of Ordinary Skill in the Art ............................................................................................. 9

IV. Argument .................................................................................................................................. 9

A. Disputed Terms from the Pressure/Venting Patents (-184 Case) ....................................... 9

1. “resilient container” / “resilient air container” (’115 patent, claims 1, 3, 11) .............. 9

2. “pressure supply means” (’115 patent, claim 9) ......................................................... 15

3. “ink supply means” (’115 patent, claim 9) ................................................................. 17

4. “resilient air containing means” (’115 patent, claim 9) .............................................. 18

5. “chamber” (’593 patent, claims 1, 12, 13) .................................................................. 20

6. “substantially . . . gas impermeable cover” / “substantially . . . vapor impermeable 

cover” (’593 patent, claims 2, 13) ............................................................................... 22

7. “a first melting point” / “a second melting point” (’707 patent, claim 1) ................... 23

8. “sealing structure” (’707 patent, claim 1) ................................................................... 28

B. Disputed Terms from the Ejection Chamber Patents (-185 Case) .................................... 31

1. “heater element” (’405 patent, claims 1, 7, 17) .......................................................... 31

2. “bubble chamber[s]” (’405 patent, claims 1, 7, 17) .................................................... 33

3. “none of said convex wall portion overlies said periphery of said heater element” / 

“none of said curved wall portion overlies said periphery of said heater element” 

(’405 patent, claims 1, 7, 17) ...................................................................................... 36

4. “pitch ranging from about 600 to about 2400 dpi” (’951 patent, claim 1) ................. 39

5. “ink feed edge” (’951 patent, claim 1) ........................................................................ 42

6. “the distance from the ink feed edge is substantially the same for each of the ink 

ejection actuators” (’951 patent, claim 1) ................................................................... 44

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 2 of 53
ii 

TABLE OF AUTHORITIES 

Cases

Baldwin Graphic Sys., Inc. v. Siebert, Inc., 

512 F.3d 1338 (Fed. Cir. 2008) ................................................................................................ 38 

Convolve, Inc. v. Compaq Comput. Corp., 

812 F.3d 1313 (Fed. Cir. 2016) ................................................................................................ 15 

Cordis Corp. v. Medtronic AVE, Inc., 

339 F.3d 1352 (Fed. Cir. 2003) .......................................................................................... 20, 33 

Dow Chem. Co. v. NOVA Chems. Corp. (Canada), 

803 F.3d 620 (Fed. Cir. 2015) ............................................................................................ 26, 27 

Ergo Licensing, LLC v. CareFusion 303, Inc., 

673 F.3d 1361 (Fed. Cir. 2012) ................................................................................................ 18 

Hill-Rom Services, Inc. v. Stryker Corp., 

755 F.3d 1367 (Fed. Cir. 2014) .......................................................................................... 20, 33 

I/P Engine Inc. v. AOL, Inc., 

874 F. Supp. 2d 510 (E.D. Va. 2012) ....................................................................................... 23

Nautilus, Inc. v. Biosig Instruments, Inc., 

572 U.S. 898 (2014) .................................................................................................................. 24 

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................................... 22, 31, 34 

Polara Eng’g Inc. v. Campbell Co., 

894 F.3d 1339 (Fed. Cir. 2018) ................................................................................................ 43 

Salazar v. Procter & Gamble Co., 

414 F.3d 1342 (Fed. Cir. 2005) ................................................................................................ 39 

Springs Window Fashions LP v. Novo Indus., L.P., 

323 F.3d 989 (Fed. Cir. 2003) .................................................................................................. 47 

Teva Pharms. USA, Inc. v. Sandoz, Inc., 

789 F.3d 1335 (Fed. Cir. 2015) ................................................................................................ 26 

TF3 Ltd. v. Tre Milano, LLC, 

894 F.3d 1366 (Fed. Cir. 2018) ................................................................................................ 23 

Vitronics Corp. v. Conceptronic, Inc., 

90 F.3d 1576 (Fed. Cir. 1996) .................................................................................................. 39 

Williamson v. Citrix Online, LLC, 

792 F.3d 1339 (Fed. Cir. 2015) ................................................................................................ 29 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 3 of 53
iii 

TABLE OF EXHIBITS

Exhibit Description 

1 U.S. Patent No. 6,243,115 

2 U.S. Patent No. 6,394,593 

3 U.S. Patent No. 6,817,707 

4 U.S. Patent No. 6,719,405 

5 U.S. Patent No. 7,152,951 

6 Office Action in U.S. Patent Application No. 09/522,105 dated Nov. 30, 2000 

7 U.S. Patent No. 6,030,074 to Barinaga 

8 Amendment in U.S. Patent Application No. 09/522,105 dated Jan. 22, 2001 

9 The American Heritage Dictionary of the English Language (4th ed. 2000) (excerpt) 

10 Random House Webster’s College Dictionary (2001) (excerpt) 

11 ISO 11357-3:1999 Plastics – Differential scanning calorimetry (DSC) Part 3 

12 Webster’s Ninth New Collegiate Dictionary (1991) (excerpt) 

13 Hawley’s Condensed Chemical Dictionary (14th ed. 2001) (excerpt) 

14 U.S. Patent No. 6,435,666 to Trauernicht et al. 

15 U.S. Patent No. 7,014,299 to Parish et al. 

16 Notice of Allowability for U.S. Patent Application No. 10/396,623 

17 Amendment in U.S. Patent Application No. 10/775,874 dated May 2, 2006 

18 U.S. Patent No. 6,523,935 to Torgerson et al. 

19 McGraw-Hill Dictionary of Scientific and Technical Terms (6th ed. 2003) 

20 Office Action in U.S. Patent Application No. 10/775,874 dated June 29, 2006 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 4 of 53
1 

I. INTRODUCTION 

HP pioneered thermal inkjet printing in the late 1970s and first commercialized it in 

1984. In the 35 years since then, HP has invested billions of dollars in thermal inkjet technology. 

During all that time, HP has been an innovator and market leader. Indeed, HP invented all the 

technology at issue in this case first. 

Since it was spun out of IBM in 1991 until it sold its business to Funai in 2013, Lexmark 

also competed in the thermal inkjet print market. However, Lexmark’s investment in research 

and development and intellectual property significantly lagged behind that of HP. 

In what appears to have been a defensive measure in the five years from 1999 through 

2004, Lexmark filed a flurry of patents, including the patents asserted in this case. The patents 

are more noteworthy for their quantity than quality. Many of Lexmark’s patents copied HP’s 

designs. Others claim technology that no one practices. In 2012, Lexmark gave up on the inkjet 

business. The following year, it sold that business to Funai for $100M. 

While Funai bought Lexmark’s inkjet business, its core business has been in videotape 

players and recorders, DVD/Blu-ray players, and televisions. It manufactures DVD/Blu-ray 

products and flat-panel televisions for brands such as Magnavox, Sanyo, and Philips. With its 

purchase of Lexmark’s inkjet business, Funai tried to make a competitive go of inkjet printing. 

In 2015, it reached an exclusive license with Kodak to launch Kodak-branded ink and printers. 

Nevertheless, Funai’s inkjet business failed to thrive. For the past seven years, Funai’s inkjet 

printer sales and market share have steadily declined. 

Now, it appears that Funai has decided to try to recoup its losses with Lexmark’s patents 

through litigation. In March 2019, Funai entered into an arrangement with Slingshot to bring 

this lawsuit. Slingshot has asserted 33 patents in five cases. It has already dropped two patents 

that even a visual inspection of HP’s products reveal that HP does not practice. HP has called 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 5 of 53
2 

out fatal flaws in numerous other assertions in a Rule 11 letter that HP sent in February 2020. 

Core among HP’s complaints is that a reasonable investigation would have shown that the 

asserted patents cannot possibly be infringed if construed correctly. 

Slingshot’s claim construction positions have to overcome this same challenge – 

Lexmark’s patents claim technology that HP does not practice or that HP invented first. As a 

result, Slingshot proposes constructions that violate well-established claim construction 

principles: (1) attempting to read limitations out of claims; (2) adding ambiguity, not clarity; (3) 

creating claims of indefinite scope; and (4) disregarding the clear representations its predecessors 

made to the Patent Office to obtain allowance of the claims, often to distinguish HP prior art. 

HP’s constructions should be adopted because they accurately capture the meaning of the 

disputed claim terms. 

II. TECHNICAL BACKGROUND REGARDING INKJET PRINTING AND THE 

PATENTS AT ISSUE 

A. The Relevant Technical Background of Inkjet Printing 

The asserted patents are directed to the field of inkjet printing. When the applications for 

the asserted patents were filed, there were three primary inkjet technologies: thermal inkjet 

printers that used heat to expel ink, piezoelectric inkjet printers that used an electric charge to 

deflect a plate to eject ink, and electromechanical actuators that used a paddle to eject ink. 

A thermal inkjet printer expels ink from a nozzle by passing electric current through a 

resistor to heat a small volume of ink in an ejection chamber near the nozzle. The heat rapidly 

raises the temperature of the ink above its boiling point and causes ink within the chamber to 

vaporize and quickly expand, thereby ejecting a droplet of ink from the nozzle. This process is 

illustrated in the figures below, where a resistor (red) in the ejection chamber (green) is heated 

by a current and vaporizes ink to eject a drop of ink (cyan) through a nozzle. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 6 of 53
3 

Piezoelectric printers utilize the phenomenon that certain materials change shape when 

subjected to an electric field. This process is illustrated below: a pressure plate (red), such as a 

piezoelectric transducer, flexes in response to an electrical signal. This flexing pressurizes ink in 

a chamber (green) and ejects a drop of ink (cyan) through a nozzle. 

 

Printers that use electromechanical actuators use small, moving parts, e.g., paddles, that 

move in response to electrical stimulus to propel ink out of an ejection chamber. An exemplary 

paddle is shown in the figures below, where a heater (red) causes a paddle (orange) to propel a 

drop of ink (cyan) out of a chamber (green). 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 7 of 53
4 

In each approach to inkjet printing, the print process involves ejecting ink droplets out of 

an ejection chamber through a nozzle and onto a print medium, e.g., paper. All of these methods 

commonly used at least one array of nozzles in a printhead integrated circuit, or chip. A 

printhead chip uses the same materials and methods of construction as a semiconductor chip. By 

the early 2000s, when some of the applications for the asserted patents were filed, inkjet printers 

could already print 600 dots per inch (dpi). Print companies achieved such print resolutions by 

using semiconductor manufacturing processes for the printhead chips. 

A printhead chip is typically mounted directly on a cartridge that contains a supply of ink. 

These cartridges were often disposable, such that upon exhaustion of the supply of ink in the 

cartridge, the cartridge (and its printhead chip) would be discarded and replaced with another 

cartridge. Alternatively, a printhead chip could be permanently or semi-permanently mounted in 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 8 of 53
5 

a printer, and a remote ink supply, such as an ink tank, could provide ink to the printhead chip. 

Upon exhaustion of ink from this remote ink supply, the supply could be replenished or replaced 

without replacing the printhead. 

HP’s innovations include ink cartridge pressure regulation and supplying ink to ejection 

chambers in the printheads at an appropriate pressure (a slight vacuum) to prevent ink from 

leaking out of the printhead. Several of the asserted patents concern maintaining this pressure. 

The patents addressed in this brief fall into two areas: (1) the control and venting of 

pressure in an inkjet cartridge; and (2) the geometry of the ink ejection chambers. A brief 

description of the patents in each group is below. 

B. The Pressure/Venting Patents (-184 Case) 

Three of Slingshot’s asserted patents are directed to controlling pressure in an inkjet 

cartridge: U.S. Patent Nos. 6,243,115 (the “’115 patent”) (Ex. 1)1

; 6,394,593 (the “’593 patent”) 

(Ex. 2); and 6,817,707 (the “’707 patent”) (Ex. 3). Each is described below. 

The ’115 patent is directed to a system that uses an air pump to apply pressure to a 

resilient air container in an ink supply. The expansion of the resilient air container causes ink to 

be expelled through an ink outlet. An exemplary embodiment is shown below. 

 

1

 Citations to “Ex.” refer to the exhibits attached to the concurrently filed Declaration of Andrew 

V. Devkar in Support of Defendant HP Inc.’s Opening Claim Construction Brief. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 9 of 53
6 

Among other things, this embodiment includes an air inlet 80 (colored yellow); an ink outlet 82 

(green); an air pump (not shown) connected to the air inlet for creating a positive pressure in the 

interior of the printer cartridge 72; an ink source 76 (red); and a resilient air container 74 (blue). 

Ink is forced from the ink source 76 through the ink outlet 82 upon expansion of the resilient air 

container 74 from a positive pressure created by the air pump. 

The ’593 patent is directed to a venting system for an ink cartridge that permits air to 

flow between a chamber of a pressure regulator in the ink cartridge and the atmosphere while 

substantially inhibiting the escape of water vapor from the chamber. An exemplary embodiment 

is shown below: 

Among other things, this embodiment includes a body 10 including a first panel 22 

(green) and a second panel portion 78 (blue), which together form a cavity, some of which is 

reserved to contain ink. The embodiment also includes a chamber 66 (yellow); a “lung type” 

pressure regulator 98 (shown in Fig. 6); and an air diffusion path disposed between the chamber 

66 and atmosphere comprising an elongate flow path 81 (red).

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 10 of 53
7 

The ’707 patent is directed to a pressure-controlled ink supply assembly. The materials 

of specific components are chosen so that the melting point of a pressure control structure is 

lower than the melting point of an ink reservoir. This allows for a flexible film to be heat welded 

to the pressure control structure while avoiding warping or deformation of the ink reservoir. An 

exemplary embodiment is shown below: 

Among other things, this embodiment includes an ink reservoir 12 (green); a pressure control 

structure 26 (blue); a sealing structure 36 (yellow); a pressure regulating film 46 (red); and a 

cover 48 (orange). 

C. The Ejection Chamber Patents (-185 Case) 

Slingshot has asserted patents directed to the geometry of the ink ejection chambers and 

related features, such as the actuators and nozzles, including U.S. Patent Nos. 6,719,405 (the 

“’405 patent”) (Ex. 4) and 7,152,951 (the “’951 patent”) (Ex. 5). 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 11 of 53
8 

The ’405 patent is directed to a printhead chip having heater elements and ink ejection 

chambers of specific geometries. An exemplary embodiment is shown below: 

Among other things, this embodiment has an ink via 40 (dark blue), a substantially rectangular 

heater element 38 (red); a substantially straight ink flow channel 50 (light blue); and a bubble 

chamber 12 (green) having a curved wall portion 14 partially surrounding said heater element 38. 

The ’951 patent is directed to an inkjet printhead chip having actuators with a particular 

aspect ratio and a column of nozzles having a particular pitch (spacing). An exemplary 

embodiment is shown below: 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 12 of 53
9 

The figure shows a semiconductor substrate containing at least one ink feed edge 40 and 

a plurality of ink ejection actuators 30 (red) as well as a thick film layer having a plurality of ink 

feed chambers 32 (green) and ink feed channels (light blue). 

III. LEVEL OF ORDINARY SKILL IN THE ART 

A person having ordinary skill in the art at the time of the alleged inventions of the 

asserted patents would have been a person holding at least a Bachelor’s level college degree in 

Mechanical Engineering, Electrical Engineering, Physics, or a related field and at least two years 

of training and experience in the design of inkjet cartridges and/or printheads. 

IV. ARGUMENT 

A. Disputed Terms from the Pressure/Venting Patents (-184 Case) 

1. “resilient container” / “resilient air container” (’115 patent, claims 1, 3, 

11) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

a flexible receptacle that expands and 

collapses, such as a bag 

a container that is capable of returning to its 

original shape, position or form after being 

deformed 

Contrary to the meaning of “resilient” in the context of the ’115 patent, Slingshot wants 

to read the term “resilient container” to encompass rigid structures that do not expand or 

collapse. The terms “resilient container” and “resilient air container” are used in the 

specification exclusively to describe flexible receptacles for air or ink that expand and collapse. 

The resilient containers are shown and described as bags that expand and collapse in order to 

force ink out of an ink cartridge. During prosecution, the Applicant also distinguished prior art 

having a container with rigid walls on the basis that it lacked a “resilient air container,” and 

Slingshot cannot reclaim that claim scope now. Slingshot’s attempt to impermissibly broaden 

the scope of the claims should be rejected, and HP’s construction should be adopted. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 13 of 53
10 

a. The specification uses “resilient” exclusively to describe a 

container that expands and collapses, such as a bag. 

The ’115 patent discloses four embodiments, shown in Figures 1-4, involving different 

configurations of a resilient or non-resilient air container and a resilient or non-resilient ink 

container. Figure 1 shows a printer cartridge with a non-resilient air container (interior 13 of 

printer cartridge 10, shown in blue below) and a resilient ink container 12 (magenta). 

’115 patent at Fig. 1.2

The Specification provides that “[t]he ink source 12 is a resilient container,” which is 

shown in Figure 1 “embodied as a bag.” ’115 patent at 3:49-52. The resilient nature of the ink 

container allows “air pressure in the printer cartridge 10 [to] force collapse of the resilient 

container [12] to drive ink therefrom and through the ink outlet 11.” Id. at 3:52-54. The ’115 

patent does not disclose that printer cartridge 10 expands or collapses and does not describe it as 

resilient, which is to be expected because printer cartridges are generally constructed of rigid 

plastic. Figure 1 uses curves to depict ink source 12 (a resilient bag) and straight lines to depict 

 

2

 All colorization to figures has been added. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 14 of 53
11 

printer cartridge 10 (a non-resilient structure that does not expand or collapse during operation). 

Figure 2 discloses the opposite arrangement: the printer cartridge has a resilient air 

container 28 (blue bag shown below) and a non-resilient ink container (cartridge 26, green) with 

interior 30 containing ink (magenta). 

’115 patent at Figure 2. 

In describing this embodiment, the ’115 patent uses the term “resilient” to describe the air 

container 28 and discloses that, as “the pump 16 creates a positive pressure in the resilient air 

container 28,” it “caus[es] the container [28] to expand and force ink from the interior.” ’115 

patent at 4:57-63. In contrast, the ’115 patent does not describe printer cartridge 26 as resilient 

and does not disclose that the printer cartridge 26 expands or contracts. Moreover, as with 

Figure 1, Figure 2 uses curves to depict air container 28 (e.g., a resilient bag) and straight lines to 

depict printer cartridge 26 (non-resilient), which does not expand or collapse during operation. 

In Figures 3 and 4, both the air container (blue) and ink container (magenta) are resilient 

containers (e.g., bags); the only difference between the two cartridges is the relative location of 

the containers. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 15 of 53
12 

’115 patent at Figs. 3, 4. 

In Figure 3, the air container 48 (blue) encapsulates the ink container 54 (magenta), 

whereas in Figure 4, the air container 74 (blue) is positioned within the ink container 76 

(magenta). The ’115 patent describes all four containers in these embodiments as resilient. ’115 

patent at 5:3, 5:4-5, 5:26, 5:27. Regarding the embodiment shown in Figure 3, the ’115 patent 

states that “[t]he air pump 16 creates a positive pressure in the resilient air container 48, causing 

the resilient air container 48 to expand, which places pressure on the ink source resilient 

container 54 to collapse.” Id. at 5:13-16. Similarly, regarding the embodiment of Figure 4, the 

’115 patent states that “positive pressure in the resilient air container 74 causes expansion, which 

places pressure on the ink source resilient container 54 [sic – 76] that is bound by the printer 

cartridge 72. Thus, the expansion pressure forces ink from the ink source resilient container 

76....” Id. at 5:34-38, 6:22-35. Figures 3 and 4 depict the resilient air containers and the ink 

containers as bags. 

Therefore, in every embodiment of the ’115 patent and throughout its specification, when 

the patent describes a container as resilient, it means a container that expands and collapses, such 

as a bag. The specification specifically provides a “bag” as the example of a resilient container. 

See, e.g., id. at 2:1-2 (“The ink source is preferably a resilient container, such as a bag.”). In all 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 16 of 53
13 

of the patent figures, the resilient containers are consistently shown with rounded edges so as to 

represent a bag-like receptacle. See Figs. 1-4. In contrast, wherever a container is depicted with

straight lines, e.g., the solid body of an ink cartridge, the patent never describes the container as 

resilient and never suggests that it is intended to expand or collapse. 

b. The Applicant distinguished prior art that allegedly lacked a 

“resilient” container, and Slingshot cannot recapture this claim 

scope now. 

The prosecution history also confirms the correctness of HP’s proposed construction. 

Slingshot’s proposed construction violates an essential principle of claim construction by urging 

that the claims encompass what the Applicant surrendered during prosecution. The term 

“resilient air container” (or “resilient air containing means”) was added to the independent 

claims to overcome the prior art. 

On November 30, 2001, the Examiner issued an Office Action in which all independent 

claims were rejected as being anticipated by an HP patent, U.S. Patent No. 6,030,074 to Barinaga 

(“Barinaga”). Ex. 6 at 3-4. Barinaga discloses an apparatus for delivering pressurized ink to a 

printhead. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 17 of 53
14 

Ex. 7 at Fig. 1. 

As shown in color above, Barinaga discloses an air compressor 76 (red) that provides 

pressurized air through air chamber 85 (brown) and gas conduits 64 and 56 (yellow) to container 

10 (green). This positive pressure exerts a pressure on ink bag 13 (magenta). Ex. 7 at 4:64-5:5. 

The Examiner indicated that certain dependent claims contained allowable subject matter, 

including claims that recited a “resilient air container” or “resilient air containing means.” Ex. 6 

at 5. As shown in Fig. 1, the (non-resilient) container 10 of Barinaga is depicted with straight 

lines, just like the walls of the (non-resilient) printer cartridge in the ’115 patent specification. 

See ’115 patent, Figs. 1-4. The Applicant amended the independent claims to include the 

“resilient” elements to secure allowance. Ex. 8 at 2-6. Thus, the Examiner allowed the claims 

because Barinaga’s air container was not resilient. 

Slingshot’s attempt to recapture the surrendered claim scope contradicts the Examiner’s 

rationale in allowing the claims over the prior art. See Convolve, Inc. v. Compaq Comput. Corp., 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 18 of 53
15 

812 F.3d 1313, 1322-23 (Fed. Cir. 2016) (“In determining the scope of the claims, we apply the 

traditional claim construction principles . . . paying particular attention to the examiner’s focus in 

allowing the claims after amendment.”) (internal quotations omitted). 

Thus, the prosecution history confirms that HP’s construction is correct. 

c. Slingshot’s proposal ignores the specification and the surrender of 

claim scope during prosecution. 

Slingshot’s proposed construction of the term “resilient container” as “a container that is 

capable of returning to its original shape, position or form after being deformed” is an improper 

attempt to encompass a relatively rigid plastic ink cartridge. This is plainly inconsistent with 

usage of the term “resilient” in the ’115 patent. The ’115 patent never describes the walls of the 

ink cartridge as resilient. See Section IV.A.1.a, supra. Moreover, the Applicant secured 

allowance of the ’115 patent over the Barinaga prior art reference (which showed an air 

container with straight lined walls) by adding to the independent claims the requirement that the 

air container be resilient. Thus, a “resilient container” excludes containers having relatively rigid 

sidewalls like those shown in Barinaga. Slingshot’s proposed construction should be rejected to 

prevent it from seeking to have the claims cover what was surrendered during prosecution. 

Accordingly, in view of the specification and file history, a “resilient [air] container” 

should be construed as a flexible receptacle that expands and collapses, such as a bag. 

2. “pressure supply means” (’115 patent, claim 9) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: creating a positive pressure in the 

interior of the printer cartridge 

Structure: air pump, and equivalents thereof 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: creating a positive pressure in the 

interior of the printer cartridge 

Structure: reciprocating piston pump, vane 

pump, peristaltic pump, centrifugal pump, 

diaphragm pump, or other compressor, and 

equivalents thereof 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 19 of 53
16 

The parties agree that this term is written in means-plus-function format and is subject to 

35 U.S.C. § 112, ¶ 6. The parties also agree as to the recited function. The parties have only a 

minor disagreement as to the structure disclosed in the specification corresponding to the recited 

function. HP’s identification of the corresponding structure is correct because it follows what 

the specification specifically described as performing the recited function. 

The only structure disclosed in the specification for performing the recited function is the 

“air pump 16” (colored red in the figure below): 

’115 patent at Fig. 1. 

The ’115 patent states that “the air pump 16 creates a positive pressure in the interior 13 

of the printer cartridge 10.” Id. at 3:33-36 (emphasis added). The specification discloses that 

“[t]he air pump can be any pressure supplying device, such as a reciprocating piston pump, 

peristaltic pump, centrifugal pump, diaphragm pump, or other compressor as known in the art.” 

Id., 4:6-10 (emphasis added). Thus, the “pressure supply means” is an air pump and equivalents 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 20 of 53
17 

thereof. Slingshot’s proposed structure is incorrect because it does not identify the air pump 

specifically disclosed in the specification as performing the recited function and reflected in 

HP’s construction. In addition, to the extent Slingshot’s list of pumps are appropriate for 

performing the recited function, they are already encompassed by HP’s proposed construction. 

3. “ink supply means” (’115 patent, claim 9) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: supplying ink from the printer 

cartridge 

Structure: printer cartridge or ink bag, and 

equivalents thereof 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: supplying ink from the printer 

cartridge 

Structure: printer cartridge or ink container 

(e.g., bag), and equivalents thereof 

The parties agree that this term is recited in means-plus-function format and is subject to 

35 U.S.C. § 112, ¶ 6. The parties also agree as to the recited function. The dispute as to the 

corresponding structure is minor. HP’s proposed construction is correct and is the same 

construction that was presented in HP’s petition for IPR regarding the ’115 patent. Rather than 

agree to this construction, Slingshot proposes a trivial variation. 

The structures in the specification for performing the recited function are the resilient ink 

containers disposed within the printer cartridges—namely, ink source 12 (Fig. 1), ink source 

resilient container 54 (Fig. 3), and ink source resilient container 76 (Fig. 4): 

’115 patent at Figs. 1, 3, 4. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 21 of 53
18 

 The only other structure disclosed in the specification that can perform the recited 

function is the interior 30 of the Figure 2 cartridge: 

Id. at Fig. 2, 4:54-64 (“FIG. 2 illustrates an alternative embodiment of the ink supply and 

delivery system with printer cartridge 26 having an interior 30 filled with ink”). 

 Thus, the “ink supply means” is the printer cartridge or ink bag, and equivalents thereof. 

Slingshot’s addition of “ink container” as one of the structures linked to the claimed function is 

unsupported. “Ink container” does not appear in the specification of the ’115 patent and thus 

cannot qualify as corresponding structure. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 

F.3d 1361, 1364 (Fed. Cir. 2012) (“[A] patentee is only entitled to the corresponding structure 

described in the specification and equivalents thereof.”) (alterations omitted) (emphasis in 

original). 

4. “resilient air containing means” (’115 patent, claim 9) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: containing air and expanding from 

the positive pressure created by the pressure 

supply means for forcing the ink from the ink 

supply means through the ink outlet. 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: containing air and expanding from 

the positive pressure created by the pressure 

supply means for forcing the ink from the ink 

supply means through the ink outlet. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 22 of 53
19 

Structure: resilient air container, bag, and 

equivalents thereof 

Structure: resilient air container (e.g., bag) 

and equivalents thereof 

The parties agree this term should be construed under 35 U.S.C. § 112, ¶ 6 and agree as 

to the recited function. The dispute as to the corresponding structure is minor, but HP’s 

construction is correct because the specification specifically identifies a “bag” as corresponding 

structure. 

The ’115 patent discloses that the recited function can be performed by only the resilient 

air container 28 (Fig. 2), the resilient air container 48 (Fig. 3), and the resilient air container 74 

(Fig. 4): 

’115 patent at Figs. 2-4; see also id. at 4:58-63, 5:12-17, 5:32-39. The resilient air container is 

shown as a bag in the figures, and the specification discloses a “bag” as the example of a resilient 

container. See, e.g., ’115 patent at 2:1-2 (“The ink source is preferably a resilient container, such 

as a bag.”). 

 Thus, the “resilient air containing means” should be construed as a resilient air container, 

bag, and equivalents thereof. 

 Slingshot’s proposal to add “e.g.,” and parentheticals for the recitation of “bag” is similar 

to HP’s proposed construction on its face but improperly suggests that there are other examples 

disclosed in the specification. HP’s proposal should be adopted because a bag is the specifically 

disclosed structure in the specification corresponding to the recited function. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 23 of 53
20 

5. “chamber” (’593 patent, claims 1, 12, 13) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

an enclosed space having one or more walls an expanding and contracting enclosed space 

The parties agree that the claimed chamber is an “enclosed space.” The parties disagree 

as to whether the enclosed space must be “expanding and contracting.” The plain and ordinary 

meaning of “chamber” does not include this requirement. Rather, the more common meaning of 

“chamber” is a static space such as a room. Ex. 9 at 308; Ex. 10 at 202. Nothing in the 

specification or file history suggests that “chamber” should be construed narrowly as Slingshot 

suggests. Thus, the term “chamber” encompasses both static spaces and non-static spaces, unless 

the Applicant clearly disclaimed static spaces or otherwise redefined the term to refer only to 

expanding and contracting spaces. Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 

(Fed. Cir. 2003) (holding that disclaimer of claim scope “requires clear and unmistakable 

statements of disavowal”); Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. 

Cir. 2014) (holding that the standard to show that the patentee acted as its own lexicographer is 

“exacting”). The Applicant did neither. 

HP’s proposed construction is consistent with the plain and ordinary meaning of 

“chamber.” “Having one or more walls” clarifies that a “chamber” has a volume, i.e., that it 

represents an enclosed space. In contrast, Slingshot’s proposed construction of “chamber” turns 

the ordinary meaning of the term on its head. Slingshot wants to read “chamber” on the interior 

of a collapsible bag, but a “bag” is not a chamber, nor can a chamber be something that does not 

occupy space, e.g., a collapsed bag. 

HP’s proposed construction is confirmed by the specification. The ’593 patent discloses 

a chamber 66 (yellow in the images below) that is formed by lung frame walls 70, 72, 74, and 76 

(brown) and a portion of first side panel portion 22 (green). ’593 patent at 4:25-29. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 24 of 53
21 

’593 patent at Figs. 1, 6. 

Lung frame walls 70, 72, 74, and 76 (brown) ensure that chamber 66 (yellow) is an 

enclosed space and that chamber 66 can never collapse. Piston member 106 (dark green) and 

urging member 108 (blue), which are disposed in cavity 12, urge polymeric material 100 (dark 

purple in Fig. 6) toward the first side panel portion 22, but the polymeric material 100 (dark 

purple) will be kept away from the first side panel portion 22 (green) near the lung frame walls 

70, 72, 74, and 76 (brown). See ’593 patent at 6:65-7:1. 

HP’s proposed construction should be adopted because it is consistent with the plain and 

ordinary meaning of the term “chamber” and the intrinsic evidence. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 25 of 53
22 

6. “substantially . . . gas impermeable cover” / “substantially . . . vapor 

impermeable cover” (’593 patent, claims 2, 13) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

a cover having properties such that the 

transmission of gas through the cover is 

substantially less than the diffusion of gas out 

of the channel to the atmosphere / a cover 

having properties such that the transmission 

of vapor through the cover is substantially 

less than the diffusion of vapor out of the 

channel to the atmosphere 

a cover having properties such that the 

transmission of gas through the cover is 

substantially less than the diffusion of gas out 

of the channel to the atmosphere, (i.e., the 

cover is substantially impermeable to 

liquid/gas so that liquid/gas is directed 

through the channel) / a cover having 

properties such that the transmission of vapor 

through the cover is substantially less than the 

diffusion of vapor out of the channel to the 

atmosphere, (i.e., the cover is substantially 

impermeable to liquid/vapor so that 

liquid/vapor is directed through the channel) 

HP’s proposed construction tracks the definition for “substantially vapor impermeable” in 

the specification. This definition is equally applicable to the term “substantially . . . gas 

impermeable,” as Slingshot appears to concede. The parties disagree as to whether the additional 

language that Slingshot appends to the specification’s definition (the language following the 

“i.e.”) should be included. HP’s proposal should be adopted because it is the precise definition 

provided by the specification. 

A patent applicant may assign a specific meaning to a claim term by acting as a 

lexicographer. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The 

patentee expressly defined the term “vapor impermeable” as follows: “[t]he term ‘substantially 

vapor impermeable’ means that the transmission of water vapor through the cover 93 is 

substantially less than the diffusion of water vapor out of end 87 of the conduit 81 to the 

atmosphere.” ’593 patent at 6:7-11 (emphasis added). HP’s proposed construction adopts this 

clear definition. Slingshot does not dispute that the definition supplied by the applicant for 

“substantially . . . vapor impermeable” applies equally to the term “substantially . . . gas 

impermeable.” 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 26 of 53
23 

Slingshot’s additional language is unnecessary and would reduce clarity. First, “i.e.” is a 

term that can cause disagreement, even by trained legal professionals. See TF3 Ltd. v. Tre 

Milano, LLC, 894 F.3d 1366, 1372 (Fed. Cir. 2018) (overturning PTAB’s interpretation of “i.e.” 

in patent specification). Given that the goal of claim construction is to clarify claim terms for a 

jury, see I/P Engine Inc. v. AOL, Inc., 874 F. Supp. 2d 510, 523 (E.D. Va. 2012), “i.e.” should be 

avoided. Second, the words added by Slingshot recycle the claim language itself (as shown 

below), and add unnecessary words without providing any clarity. 

the cover is substantially impermeable to liquid/gas so that liquid/gas is directed 

through the channel 

the cover is substantially impermeable to liquid/vapor so that liquid/vapor is 

directed through the channel 

For these reasons, HP’s proposal should be adopted. 

7. “a first melting point” / “a second melting point” (’707 patent, claim 1) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Indefinite 

--Alternatively-- 

 the temperature at which the first material 

changes phase from a solid to a liquid / the 

temperature at which the polymeric material 

changes phase from a solid to a liquid 

a temperature at which the first material 

changes phase from a solid to a liquid / a 

temperature at which the polymeric material 

changes phase from a solid to a liquid 

These claim terms recite a “melting point,” and the fact-finder therefore needs reasonable 

clarity as to a specific point that melting occurs. However, the terms are indefinite because many 

materials, including plastics used in the inkjet printing art, do not melt at a single temperature. 

Rather, these materials change phase over a range of temperatures—in some cases, a 

significantly broad range. A person of ordinary skill in the art would not know which 

temperature in such a melting range to identify as the “melting point,” and the ’707 patent 

provides no guidance on this issue. Precision for these terms is critical because the claims 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 27 of 53
24 

require that the second melting point be lower than the first melting point. Without precision as 

to how the “melting point” of the materials should be determined, a person of ordinary skill in 

the art would not know how to apply the claim. Under binding precedent, the terms are therefore 

indefinite. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014) (holding that, to 

be definite, a patent’s claims must “inform those skilled in the art about the scope of the 

invention with reasonable certainty”). 

If the Court determines that the terms are not indefinite, then the terms must be construed 

as “the temperature”—the specific temperature constituting the melting point—at which the 

respective materials change phase. Slingshot’s proposed construction, “a temperature” at which 

the respective materials change phase, lacks precision in the context of materials that change 

phase over a temperature range and would improperly force a jury to identify a specific 

temperature within ranges to use when comparing two such melting points. 

a. The first and second “melting point” terms are indefinite. 

Many materials and substances have a well-defined “melting point.” For example, H20 

has a melting point of 0 °C (at atmospheric pressure). At any temperature below 0 °C, H20 is 

ice. At any temperature above 0 °C, it is water. 

The first and second “melting point” terms are indefinite because the claims of the ’707 

patent purport to cover materials that do not change phase at a single discrete temperature. The 

’707 patent claims, however, require that the materials have a single, discrete melting 

temperature. See ’707 patent at 3:21-22, 3:38-40 (stating that the material of the ink reservoir 

preferably has “a melting or softening point above about 150° C” and that the material of the 

pressure control structure preferably has “a melting point of about 120° C”). It is not clear 

whether the patent’s mention of a “softening point” is different from the claimed “melting 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 28 of 53
25 

point.” However, even in the context of a “softening point,” the ’707 specification implies that 

there is a single, identifiable softening point (temperature). See id.

For the thermoplastic materials disclosed in the specification, some parts liquefy at a first 

temperature, other parts of the material remain solid until a higher temperature, and the 

remaining parts of the material melt at some intermediate temperature or range of temperatures. 

This phenomenon is described in an International Organization for Standardization (ISO) 

standard. In particular, ISO standard 11357-3, which would have been the relevant standard at 

the time of the ’707 patent, “specifies a method for the determination of the temperature and 

enthalpy of melting and crystallization of crystalline or semi-crystalline plastics.” As shown in 

Figure 1 of the standard, there is no single temperature at which such plastics melt. 

Ex. 11 at Figure 1 (partial). The image above represents the differential scanning calorimetry 

(DSC) curve of a crystalline or semi-crystalline plastic. Id. at 1-2. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 29 of 53
26 

As shown in Figure 1, a characteristic crystalline or semi-crystalline plastic melts over a 

range of temperatures, spanning from temperature Tim though Temperature Tfm. Other 

designated temperatures within this range include Teim (defined as the extrapolated onset 

temperature), Tpm (defined as the peak temperature) and Tefm (defined as the extrapolated end 

temperature). See id. The ISO standard does not specify which, if any, of these five different 

temperatures, is the “melting point” of the plastic. See id. Likewise, the ’707 patent does not 

provide any guidance on this issue. 

In summary, many plastics change phase over a range of temperatures, and the ’707 

patent fails to specify any precise temperature within such a range to treat as the “melting point.” 

Accordingly, because the specification teaches that such plastics are the intended materials for 

embodiments of the ’707 patent claims, the “melting point” claim terms are indefinite. See ’707 

patent at 3:11-25, 4:14-42. 

The Federal Circuit has found similar claims indefinite in Teva Pharms. USA, Inc. v. 

Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) and Dow Chem. Co. v. NOVA Chems. Corp. 

(Canada), 803 F.3d 620 (Fed. Cir. 2015). In Teva, the claim at issue was directed to a method of 

manufacturing a particular copolymer with a “molecular weight” falling within a certain range. 

Teva, 789 F.3d at 1338. Because the “molecular weight” of a polymer could be measured in 

three different ways, yielding three different results, and because the patent did not specify which 

method it contemplated, the Federal Circuit held that the claim was indefinite. Id. at 1345 

(“[T]here is not reasonable certainty that molecular weight should be measured using [one of the 

three ways].”). 

In Dow, the claims were directed to a polymer having a material property defined as “a 

slope of strain hardening coefficient greater than or equal to 1.3.” Dow, 803 F.3d at 624-25. The 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 30 of 53
27 

patent taught that the slope of strain hardening coefficient (SHC) is calculated according to the 

formula SHC = (slope of strain hardening)*(I2)

0.25, where I2 = melt index in grams/10 minutes. 

Id. at 631. However, the patent did not teach how the “slope of strain hardening” was to be 

calculated, and four different methods existed, each yielding a unique result. Id. at 633. The 

choice as to which method to use could determine whether or not a given product infringes the 

claim. Id. at 634. Based on this uncertainty, the Court found the claims invalid as indefinite. Id. 

Here, as in Teva and Dow, any of the values for the five temperatures Tim, Teim, Tpm, Tefm, 

and Tfm, might be identified as the purported “melting point” for crystalline or semi-crystalline 

plastics. The ’707 patent does not specify which point (if any) might be identified as the 

“melting point.” Accordingly, the claims are indefinite under Federal Circuit precedent. 

b. If the Court believes the “melting point” terms are amenable to

construction, they must be construed as “the temperature” at which 

the respective materials change phase. 

If the Court does not determine the “melting point” terms to be indefinite, the terms must 

be construed to require a specific temperature at which the recited materials change phase. This 

is necessary so that the first and second melting points may be compared to each other, as 

required by claim 1 of the ’707 patent. HP’s alternative construction, beginning “the

temperature...,” is consistent with the plain and ordinary meaning of the term “melting point.” 

Ex. 12 at 740 (defining “melting point” as “the temperature at which a solid melts”) (emphasis 

added); see also Ex. 13 at 704. 

Slingshot’s proposal, that the “melting point” terms be construed as “a temperature” at 

which a material changes phase, invites ambiguity and should be rejected. For materials that 

change phase over a range of temperatures, Slingshot’s apparent goal is to be able to choose any 

temperature in that range. However, the Federal Circuit’s holdings in Teva and Dow do not 

permit claim scope to depend on the post hoc whim of the plaintiff. The claims require a 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 31 of 53
28 

material to have a melting point—this needs to be an identifiable temperature, or the claims are 

indefinite. It is unacceptable to suggest that a material has a “melting point” consisting of any 

temperature, or all temperatures, within a potentially broad range of melting temperatures. 

Slingshot’s proposal is especially problematic in view of the claim language requiring a 

comparison of two melting points (“second melting point lower than the first melting point”). A 

simple hypothetical illustrates the problem with Slingshot’s proposal. Assume Material A melts 

in the range of 100 °C to 120 °C and Material B melts in the range of 105 °C to 115 °C. Material 

A might be argued to have a lower melting point under Slingshot’s proposal, because Material A 

begins to change phase at 100 °C and, at that temperature, Material B does not undergo any 

phase transformation. On the other hand, Material B might be argued to have a lower melting 

point because, after it has reached 115 °C, it has fully changed phase, while Material A is still 

undergoing phase change. Either argument would be incorrect, and the Court should foreclose 

the possibility that the fact-finder has to try to answer these improper inquiries. 

8. “sealing structure” (’707 patent, claim 1) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Subject to 35 U.S.C. § 112, ¶ 6 

Function: forming a liquid tight seal between 

the sidewalls of the ink reservoir and the side 

surface of the pressure control structure 

Structure: elastomeric o-ring or bead of 

adhesive, and equivalents thereof 

Plain and ordinary meaning 

 Claim 1 recites: “a sealing structure for forming a liquid tight seal between the sidewalls 

of the ink reservoir and the side surface of the pressure control structure.” This element is 

recited in functional language and should be construed under § 112, ¶ 6. The term “sealing 

structure” does not define a definite structure but rather purports to cover all structures that 

perform the function of sealing the ink reservoir to the pressure control structure. Although the 

term does not use the word “means” (i.e., “sealing means”), the element is otherwise recited just 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 32 of 53
29 

as if the term “means” had been used. Moreover, the term “structure” is exactly the type of 

“nonce” word that operates as a substitute for “means” in the context of § 112, ¶ 6: 

Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that 

reflect nothing more than verbal constructs may be used in a claim in a manner that is 

tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently 

definite structure’ and therefore may invoke § 112, para. 6. 

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015). The term “structure” 

does not provide any indication of specific structure “because it sets forth the same black box 

recitation of structure for providing the same specified function as if the term ‘means’ had been 

used.” Id. Therefore, under the well-established Williamson standard, “sealing structure” is a 

textbook example of a term that should be construed under § 112, ¶ 6. 

The recited function for the claimed “sealing structure” is: “forming a liquid tight seal 

between the sidewalls of the ink reservoir and the side surface of the pressure control structure.” 

As shown below, the corresponding structure for this function is an elastomeric o-ring or bead of 

adhesive. With reference to the figure below, the ’707 patent discloses “A sealing structure 36 is 

provided on side surface 32 for forming a liquid tight and air tight seal between the inner surface 

38 of side walls 16 and the side surface 32 of the pressure control structure 26.” 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 33 of 53
30 

’707 patent at Fig. 1. 

The specification further provides that sealing structure 36 may be an elastomeric o-ring: 

The sealing structure 36 preferably provides a liquid tight and air tight seal by 

purely mechanical means. Accordingly the sealing structure 36 may be selected 

from elastomeric materials and adhesives. A particularly preferred sealing 

structure 36 is an elastomeric o-ring made from ethylene propylene diene 

monomer (EPDM). Regardless of whether the sealing structure 36 is an adhesive 

or elastomeric o-ring material, it is preferred that the sealing structure 36 be 

substantially chemically resistant to the components of ink used in the printhead 

assembly 10. 

Id. at 3:54-64. 

The specification also discloses that an adhesive bead may be used as the sealing 

structure 36: 

As shown in more detail in FIG. 2, the pressure control structure 26 preferably 

includes a peripheral groove 40 in the side surface 32 thereof. The groove 40 is 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 34 of 53
31 

preferably dimensioned to accept an o-ring or bead of adhesive as the sealing 

structure 36. 

Id. at 3:65-4:2. Accordingly, HP’s proposed construction should be adopted under a 

straightforward application of Williamson. 

B. Disputed Terms from the Ejection Chamber Patents (-185 Case) 

1. “heater element” (’405 patent, claims 1, 7, 17) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Plain and ordinary meaning a heater that vaporizes ink 

In an attempt to avoid invaliding prior art, Slingshot violates claim construction 

principles by seeking to import aspects of the preferred embodiment. There is no basis to narrow 

the term “heater element” as Slingshot proposes. 

The term “heater element” is straightforward and does not require construction. 

Slingshot recycles the word “heater” in its proposed construction, implicitly conceding that 

“heater” does not need further explanation. That leaves the word “element.” Slingshot replaces 

“element” with the limitation that the heater “vaporizes ink.” However, there is no reason to 

limit the claimed “heater element” to only one “that vaporizes ink.” That the preferred 

embodiment of the ’405 patent includes a heater that vaporizes ink is not a sufficient basis to 

limit the claims. Phillips, 415 F.3d at 1323 (“In particular, we have expressly rejected the 

contention that if a patent describes only a single embodiment, the claims of the patent must be 

construed as being limited to that embodiment.”). Instead, “heater element” should be given its 

plain and ordinary meaning unless one of the recognized exceptions apply. A person of ordinary 

skill in the art would have known that there are various types of heater elements in the art of 

inkjet printing. In fact, Slingshot’s other asserted patents in these actions confirm the breadth of 

the known heater elements (fluid firing elements) that are known in the art. See, e.g., ’299 patent 

at 2:53-57 (“The fluid firing elements may embody thermally resistive heater elements formed as 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 35 of 53
32 

thin film layers on a silicon substrate or piezoelectric elements despite the thermal technology 

implication derived from the name heater chip.”). 

The prior art that Slingshot is attempting to avoid includes an “electroresistive heater 22.” 

Slingshot attempts to improperly import limitations into “heater element” to avoid the type of 

heater element in the prior art. More specifically, the prior art reference relates to an inkjet 

printer that uses these electroresistive heaters 22 to mechanically deform paddles to fling 

droplets of ink from an ejection chamber. As shown below, heating an “electroresistive heater 

22” (shown in red below) causes thermal expansion and thus the bending of thermal actuator 20. 

Ex. 14 at Figs. 4(a), 4(b). Figure 4(a) shows a relaxed, unenergized position of the thermal 

actuator 20, comprised of electroresistive heater 22 (heater element, shown in red) and overlayer 

24 and passivation layer 26 (both shown in orange). Id. at 6:24-25. Figure 4(b) shows the 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 36 of 53
33 

actuator 20 bent in response to thermal heating via electroresistive heater 22 (heater element, 

red). See id. at 6:25-26. 

In view of this invalidating prior art, Slingshot seeks to narrow the term “heater element” 

so that the electroresistive heaters 22 are not within its scope. Slingshot’s attempt to read in the 

limitation that the heater element must vaporize ink is improper. This is an attempt to read in a 

limitation from the preferred embodiment, plain and simple. There is no clear and unmistakable 

disclaimer of claim scope indicated in the intrinsic evidence. As shown in the prior art, there are 

“heater elements” that effectuate ink ejection by means other than vaporizing ink. The claim 

term would exclude these heaters only if the patentee acted as a lexicographer to define “heater 

element” contrary to its ordinary meaning or disavowed the full scope of “heater element.” 

Neither action occurred. See Cordis, 339 F.3d at 1358 (holding that disclaimer of claim scope 

“requires clear and unmistakable statements of disavowal”); Hill-Rom, 755 F.3d at 1371 

(standard for lexicography is “exacting”). Likewise, Slingshot has indicated that it may cite a 

number of HP patents in its argument. However, these patents (extrinsic to the ’405 patent) 

provide no basis to narrow the term “heater element” in the ’405 patent. Just as it is improper to 

limit the claims to the preferred embodiment of the patent in which they appear, it is improper to 

limit the claims to the preferred embodiment of other, unrelated patents. 

Accordingly, the term “heater element” requires no construction. Alternatively, if a 

construction is desired, it should be non-limiting as to any specific type of heater element. 

2. “bubble chamber[s]” (’405 patent, claims 1, 7, 17) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

chamber[s] from which ink is ejected chamber[s] in which ink is vaporized to form 

a bubble 

The term “bubble chambers” in the ’405 patent refers to the chambers from which ink is 

ejected, regardless of the underlying inkjet technology. In violation of claim construction 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 37 of 53
34 

principles, Slingshot improperly limits the term to thermal inkjet printing. See Phillips, 415 F.3d 

at 1323 (rejecting contention that claims must be limited to the single embodiment described in a 

patent). 

At least three inkjet technologies were known to those of skill in the art at the time of the 

purported invention of the ’405 patent, and all three ejected ink droplets from a chamber. First, a 

thermal inkjet printer expels ink from a nozzle by passing electric current through a resistor, 

which heats a small volume of ink beyond its boiling point in an ejection chamber near the 

nozzle. The heat causes ink in the ejection chamber to vaporized and quickly expand, thereby 

ejecting a droplet of ink from the nozzle. This process is illustrated in the figures below, where a 

resistor (red) is heated by a current and vaporizes ink in the ejection chamber (green) to eject a 

drop of ink (cyan) through a nozzle. 

 

Second, piezoelectric printers utilize the phenomenon that certain materials change shape 

when subjected to an electric field (voltage). This process is illustrated below: a pressure plate 

(red), such as a piezoelectric transducer, flexes in response to an electrical signal. This flexing 

pressurizes ink in a chamber (green) and ejects a drop of ink (cyan) through a nozzle. 

 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 38 of 53
35 

A third solution employs electromechanical actuators. Such actuators are small, moving 

parts (e.g., “paddles”) that move in response to electrical stimulus to propel ink out of an ejection 

chamber. An exemplary paddle, described in Kodak’s U.S. Patent No. 6,435,666, is shown in 

the figures below, where a heater (red) causes a paddle (orange) to propel a drop of ink (cyan) 

out of a chamber (green). 

Ex. 14 at Figs. 4(a), 4(b). 

All of these inkjet technologies employ a chamber, and the chambers are simply an 

enclosed space from which ink is ejected. In other words, the terms “thermal inkjet chamber,” 

“bubble chamber,” and “chamber” are relatively generic terms in the art of inkjet printing. The 

claims were not intended to be limited to any type of inkjet printing (or to any preferred 

embodiment). This intent is confirmed by the ’405 patent specification. The claims at issue 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 39 of 53
36 

begin by reciting “[a]n inkjet printhead,” and the ’405 patent states: “[a]s described herein, the 

term inkjet printhead may in addition to thermal technology include piezoelectric technology, 

or other.” ’405 patent, 7:65-67 (emphasis added). This is consistent with Slingshot’s other 

asserted patents in these actions, which also confirm an intent to broadly cover the known inkjet 

technologies in its patents. See, e.g., U.S. Patent No. 7,014,299 (Ex. 15) at 2:53-57 (“The fluid 

firing elements may embody thermally resistive heater elements formed as thin film layers on a 

silicon substrate or piezoelectric elements despite the thermal technology implication derived 

from the name heater chip.”). 

Accordingly, the term “bubble chamber” should not be construed to exclude any type of 

inkjet printing, and HP’s construction should be adopted. 

3. “none of said convex wall portion overlies said periphery of said heater 

element” / “none of said curved wall portion overlies said periphery of 

said heater element” (’405 patent, claims 1, 7, 17) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Plain and ordinary meaning 

If construction is required: no part of the 

convex wall portion [curved wall portion] 

overlies said periphery of said heater element 

no wall of the bubble chamber that is convex 

[curved] overlies the periphery of the heater 

element 

Slingshot seeks to rewrite this claim element to avoid invalidating prior art. The terms at 

issue appear in claims 1, 7, and 17, and the only difference among the terms is that claim 7 

recites “curved wall portion” while claims 1 and 17 recite “convex wall portion.” Because the 

parties agree that “convex wall portion” should be construed as “curved wall portion,” HP 

addresses the term in claim 7, but this analysis applies equally to the terms in claims 1 and 17. 

Claim 7 recites a heater element and a bubble chamber having a wall portion that 

partially surrounds the heater element. Claim 7 also cites that “none of said curved wall portion 

overlies [a] periphery of said heater element.” This is straightforward. If a chamber has a 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 40 of 53
37 

curved wall portion that partially (or in the case of claim 17, substantially) surrounds a heater 

element and does not overlay a periphery of the heater element, the element is satisfied. 

Accordingly, if the Court finds that this term requires construction, it should be construed as “no 

part of the convex wall portion [curved wall portion] overlies said periphery of said heater 

element.” 

Slingshot seeks construction of this term because the prior art is replete with chambers 

that satisfy the claim element. Thus, Slingshot is trying to rewrite the claim so that a printhead 

having multiple curved wall portions, some of which overlay a printhead and some of which do 

not, is outside of the scope of the claim. 

The specification does not support Slingshot’s attempt to rewrite the claims. On the 

contrary, the specification discloses that a chamber may include multiple wall portions and that 

only one of these portions needs to meet the required limitation. In particular, in the embodiment 

shown in Figure 3, a chamber wall includes multiple curved portions: G-H (colored green 

below), H-I (colored yellow below), and I-J (colored blue below). 

’405 patent at Fig. 3 (partial, annotated). 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 41 of 53
38 

The specification describes these curved wall portions as corresponding to portions of an 

oval. ’405 patent at 5:30-32. Thus, according to the specification, “a radius greater than the 

width of the heater element and shorter than the length dimension only exists for arc portions 

between points G and H [green] and I and J [blue] because a straight line essentially exists 

between points H and I.” ’405 patent at 5:32-36. In other words, the radius of arc H-I (yellow) 

is greater than the length of the heater element. However, the specification makes clear that this 

embodiment is not excluded from the invention even though segment H-I (yellow) does not have 

the required radius of curvature: “Neither embodiment, however, should limit the curved wall 

portion to a particular shape, size or arc radius nor should it limit its position relative to the 

heater element resident in the bubble chamber.” ’405 patent at 5:36-39. Therefore, curved wall 

portions G-H (green) and I-J (blue) are sufficient to satisfy the claim element. Other curved wall 

portions may be disregarded. 

Applying the same reasoning, as long as “a curved wall portion,” i.e., one or more curved 

wall portions, does not overlay a heater element, the disputed limitation is satisfied. See Baldwin 

Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“That ‘a’ or ‘an’ can 

mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a 

convention.”). The presence of other curved wall portions that may or may not overlay a heater 

is irrelevant. Under Slingshot’s apparent logic, the element “said curved wall portion having a 

radius of an arc that is greater than about 0.5 said width dimension and less than said length 

dimension” would require that any curved wall portion have a radius within that range. But this 

would exclude the embodiment of Figure 3, contrary to both the specification and settled case 

law. See ’405 patent at 5:36-39; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 42 of 53
39 

Cir. 1996) (holding that an interpretation of a claim that would exclude a preferred embodiment 

is “rarely, if ever, correct.”). 

The Court should also reject Slingshot’s attempt to twist the Examiner’s Notice of 

Allowability in an effort to support its proposed construction. In the Notice of Allowability, the 

Examiner briefly characterized the invention and the prior art. In describing the perceived 

shortcomings in the prior art of record, the Examiner stated that it failed to disclose “the chamber 

walls do not overlie the heater.” Ex. 16 at 2. Even if this statement accurately characterizes the 

prior art, it is not—and was not meant to be—a characterization of the claims. Thus, this 

statement falls far short of what would be necessary to support Slingshot’s modification of the 

claims. See Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) (holding 

that an Examiner’s unilateral statements in a Notice of Allowance do not constitute a clear and 

unambiguous disavowal of claim scope). 

4. “pitch ranging from about 600 to about 2400 dpi” (’951 patent, claim 1) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

pitch ranging from greater than 600 to 2400 

dpi 

Plain and ordinary meaning 

This term relates to a pitch range of dots per inch (or “dpi”), which represents the number 

of ink dots per inch that a printhead can print at one time. Printheads of 600 dpi were wellknown in the prior art. As explained below, the Applicant excluded 600 dpi systems from its 

claimed range of “about 600 to about 2400 dpi.” Thus, if the phrase is to be construed to 

preserve validity, it must mean a pitch ranging from “greater than 600 to [about] 2400 dpi.” 

On two occasions, the Applicant represented to the Examiner that the claims of the ’951 

patent do not cover nozzle spacing frequency of 600 dpi (dots per inch), to overcome cited prior 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 43 of 53
40 

art. First, in distinguishing the claims from an HP patent, U.S. Patent No. 6,523,935 to 

Torgerson et al. (“Torgerson”), the Applicant stated: 

That is, adjacent nozzles in the ’935 patent [Torgerson] are spaced apart with a 

pitch of 600 dpi or less. See column 4 lines 53-58 of the ’935 patent. A second 

column of nozzles having the same pitch is offset from a first column of nozzles 

1/1200 of an inch along the L axis. . . . Hence, unlike the present invention, the 

’935 patent [Torgerson] requires two spaced apart and staggered columns of 

nozzles to achieve the same pitch or print resolution as a single column of nozzles 

provided by the invention of claims 1 and 20. 

Ex. 17 at 5. 

The Applicant’s understanding that Torgerson discloses nozzles spaced apart with a pitch 

of 600 dpi was correct. Torgerson discloses that “the nozzle pitch P . . . is in the range of 1/300 

inch to 1/600 inch.” Ex. 18 at 4:53-58. “Pitch” is the distance between evenly spaced items. Ex. 

19 at 1604 (defining “pitch” as “[t]he distance between similar elements arranged in a pattern or 

between two points of a mechanical part.”); ’951 patent at 2:25-29 (“For purposes of this 

invention, the term ‘pitch’ as it is applied to nozzles or ink ejection actuators is intended to mean 

a center to center spacing between adjacent nozzles or ejection actuators in a direction 

substantially parallel with an axis aligned with a columnar nozzle array.”). Thus, Torgerson’s 

disclosure of a pitch of 1/600 inch means a nozzle frequency of 600 nozzles per inch, or “dpi,” as 

the ’951 patent uses the term. 

Second, in the same May 2, 2006 Amendment, the Applicant stated: 

[T]he Examiner has omitted some of the claimed elements, or at least certain 

important aspects of the claimed elements, especially those found in the 

independent claims. For example, Applicant’s nozzle hole spacing dpi values of 

about 1200 and up to 2400 dpi using adjacent nozzles (i.e., a single column of 

nozzles). 

Ex. 17 at 11. 

All independent claims at that time recited “a pitch ranging from about 600 to about 

2400 dpi” or “a pitch ranging from about 600 to about 1200 dpi.” However, the above statement 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 44 of 53
41 

of Applicant’s dpi values of about 1200 dpi and higher makes sense in view of the Applicant’s 

disavowal of 600 dpi. In the inkjet printing art, nozzle spacing is often set at discrete levels, e.g., 

300 dpi, 600 dpi, 1200 dpi. Thus, if a claim requires a pitch greater than 600 dpi, 1200 dpi is a 

logical next step, and this is consistent with Applicant’s description of its nozzle spacing being 

“about 1200 and up to 2400 dpi.” Other nozzle pitches, e.g., 900 dpi, are also possible. 

However, the Applicant indicated that 1200 dpi and higher was contemplated for the ’951 patent 

claims. 

Not only did the Applicant distinguish over 600 dpi in the prior art, but the Examiner 

relied on this representation that the claims exclude 600 dpi when allowing the claims over the 

prior art. In particular, the Examiner stated that Torgerson “do[es] not disclose adjacent nozzle 

holes spaced apart at a pitch ranging from about 600 to about 2400 dpi.” Ex. 20 at 5 (emphasis 

added). As set forth above, Torgerson discloses nozzles spaced apart at 600 dpi. Ex. 18 at 4:53-

58. Thus, the Examiner’s statement reveals a mutual understanding and reliance upon the 

Applicant’s representations that 600 dpi was excluded from the scope of the claims. Therefore, 

Slingshot’s attempt to construe the claimed range to encompass 600 dpi is improper and should 

be rejected. 

Slingshot’s proposal of “plain and ordinary meaning” invites error and seeks to ignore the 

Applicant’s disavowal of 600 dpi. To secure allowance, the Applicant represented to the Patent 

Office that the claims do not cover 600 dpi in order to overcome HP prior art, but Slingshot is 

now trying to read the claims on HP 600 dpi products. The Court should adopt HP’s proposed 

construction of “pitch ranging from greater than 600 to 2400 dpi.” 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 45 of 53
42 

5. “ink feed edge” (’951 patent, claim 1) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

Plain and ordinary meaning an edge of the substrate over which ink is fed 

onto the substrate, e.g., the edge of an ink slot 

through the substrate or the outer edge of the 

substrate 

Slingshot’s proposed construction transforms three straightforward words into thirty and 

introduces confusion, not clarity. Moreover, each of the three words of the original term also 

reappear in Slingshot’s proposed construction (including a change of “feed” to its past tense): 

an edge of the substrate over which ink is fed onto the substrate, e.g., the edge of 

an ink slot through the substrate or the outer edge of the substrate 

Slingshot’s construction lists a couple of purported examples as to what would satisfy the claim 

element, but this does not meaningfully clarify the scope of the term. 

 The term simply refers to a line from which ink is supplied. The ’951 patent shows an 

exemplary prior art printhead in Figure 5: 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 46 of 53
43 

’951 patent at Fig. 5 (annotated). 

The ’951 patent discloses that this printhead includes an “ink feed edge 54” (highlighted 

in the figure above). ’951 patent at 3:54. This “ink feed edge” is simply a line from which ink is 

supplied to ink chambers 50 and 52. The claim term is straightforward and requires no 

construction. See Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339, 1352 n.5 (Fed. Cir. 2018) 

(holding that the district court sufficiently resolved the parties’ claim construction dispute by 

instructing jury on plain and ordinary meaning). If the Court believes that a construction is 

necessary, HP proposes “a line from which ink is supplied.” 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 47 of 53
44 

6. “the distance from the ink feed edge is substantially the same for each of 

the ink ejection actuators” (’951 patent, claim 1) 

HP’s Proposed Construction Slingshot’s Proposed Construction 

the distance from the ink feed edge to each 

actuator is approximately the same such that 

the actuators are in a substantially linear 

arrangement, as opposed to a staggered 

arrangement 

the distance from the ink feed edge to each 

actuator is approximately the same such that 

the actuators are in a substantially linear 

arrangement 

The parties’ dispute concerns only the language “as opposed to a staggered arrangement.” 

This language is drawn directly from the Applicant’s statement during prosecution when 

distinguishing the purported invention from prior art with a “staggered arrangement” of ink 

ejection actuators. The language should therefore be included, as proposed by HP. 

The ’951 patent is directed at a “high resolution printhead for an ink jet printer.” ’951 

patent at Abstract. The applicant of the ’951 patent recognized that the prior art included tightly 

spaced nozzles that yielded a high resolution. An exemplary embodiment from the prior art is 

shown in Figure 5 of the ’951 patent. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 48 of 53
45 

’951 patent at Fig. 5. 

The ’951 patent criticizes this nozzle arrangement as “staggered.” ’951 patent at 3:54-57. 

The ’951 patent defines “staggered” as follows: 

By “staggered” it is meant that a center of nozzle 46 is a distance T1 that is less 

than a distance T2 of a center of nozzle 48 to the ink feed edge 54. 

’951 patent at 3:57-60. 

In contrast to the prior art, the ’951 patent teaches that the ink chambers are aligned in a 

single column, as shown in the exemplary embodiment below: 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 49 of 53
46 

’951 patent at Fig. 6. 

The Applicant represented this feature as one of the purportedly distinguishing 

characteristics over the prior art. In order to overcome a prior art rejection, the Applicant stated: 

[A]spects of the invention enable a substantially linear arrangement of ink 

chambers 32 in a single column or array as shown in FIG. 6, as opposed to a 

staggered arrangement of ink chambers 50 and 52 as shown in FIG. 5.” 

Ex. 17 at 5 (emphasis added). 

Therefore, the Applicant distinguished the purported invention in that it does not include 

a “staggered” arrangement of ink chambers. The Applicant also clearly defined “staggered” to 

mean having different distances from an ink feed edge. The Examiner allowed the claims in 

view of these statements. Therefore, the phrase “the distance from the ink feed edge is 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 50 of 53
47 

substantially the same for each of the ink ejection actuators” should be construed to reflect the 

Applicant’s representations. See Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 

989, 995 (Fed. Cir. 2003) (“The public notice function of a patent and its prosecution history 

requires that a patentee be held to what he declares during the prosecution of his patent.”). 

Slingshot again improperly ignores the representations made to the Patent Office to 

obtain its claims in order to recapture what was disclaimed during prosecution. HP’s 

construction should be adopted. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 51 of 53
48 

Dated: July 1, 2020 /s/ Barry K. Shelton 

Rick L. Rambo 

Texas State Bar No. 00791479 

MORGAN, LEWIS & BOCKIUS LLP 

1000 Louisiana Street, Suite 4000 

Houston, TX 77002-5006 

rick.rambo@morganlewis.com 

Telephone: +1.713.890.5000 

Facsimile: +1.713.890.5001 

Andrew V. Devkar (admitted pro hac vice) 

MORGAN, LEWIS & BOCKIUS LLP

2049 Century Park East, Suite 700 

Los Angeles, CA 90067-3109 

andrew.devkar@morganlewis.com

Telephone: +1.310.907.1000 

Facsimile: +1.310.907.1001 

Amanda S. Williamson (admitted pro hac vice) 

MORGAN, LEWIS & BOCKIUS LLP 

77 West Wacker Drive, Fifth Floor 

Chicago, IL 60601 

amanda.williamson@morganlewis.com 

Telephone: +1.312.324.1000 

Facsimile: +1.312.324.1001 

Barry K. Shelton 

Texas State Bar No. 24055029 

SHELTON COBURN LLP 

311 RR 620, Suite 205 

Austin, TX 78734-4775 

bshelton@sheltoncoburn.com 

Telephone: +1.512.263.2165 

Facsimile: +1.512.263.2166 

Attorneys for Defendant HP Inc. 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 52 of 53
CERTIFICATE OF SERVICE 

I hereby certify that on this 1st day of July, 2020, I electronically filed the foregoing with 

the Clerk of Court using the CM/ECF system which will send notification of such filing to the 

following: 

Raymond W. Mort, III 

THE MORT LAW FIRM, PLLC 

100 Congress Avenue, Suite 2000 

Austin, Texas 78701 

Tel/Fax: 512-865-7950 

raymort@austinlaw.com 

Ronald M. Daignault 

Chandran B. Iyer 

Michael A. Siem 

Jason S. Charkow 

GOLDBERG SEGALLA LLP 

711 Third Avenue, Suite 1900 

New York, New York 10017 

Telephone: (646) 292-8700 

rdaignault@goldbergsegalla.com 

ciyer@goldbergsegalla.com 

msiem@goldbergsegalla.com 

jcharkow@goldbergsegalla.com 

Richard Juang 

GOLDBERG SEGALLA LLP 

8000 Maryland Avenue, Suite 640 

St. Louis, Missouri 63105 

Telephone: (314) 446-3367 

rjuang@goldbergsegalla.com 

/s/ Barry K. Shelton 

Barry K. Shelton 

Case 1:20-cv-00184-ADA Document 57 Filed 07/01/20 Page 53 of 53