001 United States District Court District of Nevada SYMBOL...

001

United States District CourtDistrict of NevadaLas Vegas, Nevada

SYMBOL TECHNOLOGIES, INC., .et al., . Docket No. CV-S-01-701-PMP(RJJ) Plaintiffs . CV-S-01-702-PMP(RJJ) . CV-S-01-703-PMP(RJJ)

vs. . .LEMELSON MEDICAL, EDUCATION .& RESEARCH FOUNDATION, .LIMITED PARTNERSHIP . . Defendant . Las Vegas, Nevada . January 08, 2003 . . . . . . . . . . . . . . . 8:45 a.m.And related cases and parties

COURT TRIAL - DAY 21

THE HONORABLE PHILIP M. PRO PRESIDINGCHIEF UNITED STATES DISTRICT COURT JUDGE

COURT RECORDER: TRANSCRIPTION BY:

ERICA DAVIS NORTHWEST TRANSCRIPTS, INC.U.S. District Court Las Vegas Division

P.O. Box 35257Las Vegas, Nevada 89133-5257(702) 658-9626

Proceedings recorded by electronic sound recording, transcript

002

produced by transcription service.APPEARANCES:

FOR THE PLAINTIFFS: JESSE J. JENNER, ESQ.STEVEN C. CHERNY, ESQ.CHARLES QUINN, ESQ.ALBERT E. FEY, ESQ.KENNETH B. HERMAN, ESQ.WILLIAM McCABE, ESQ.PABLO D. HENDLER, ESQ.JOHN P. HANISH, ESQ.KHUE V. HOANG, ESQ.KATHERINE NYARADY, ESQ.Fish & Neave1251 Avenue of the AmericasNew York, New York 10020

ELISSA F. CADISH, ESQ.Hale, Lane, Peek, et al.2300 West Sahara Avenue, #800Las Vegas, Nevada 89102

FOR THE DEFENDANTS: GERALD HOSIER, ESQ.8904 Canyon Springs DriveLas Vegas, Nevada 89117

VICTORIA GRUVER CURTIN, ESQ.LOUIS JAMES HOFFMAN, ESQ.14614 N. Kierland Blvd., 300Scottsdale, Arizona 85254

003

PROCEEDINGS BEGIN AT 8:45 A.M.1

THE COURT: All right, have a seat, everybody. Good2

morning.3

We are reconvened for trial, and I understand4

there's an issue regarding an exhibit. Is this one from5

yesterday or --6

MR. McCABE: Yes, Your Honor. I don't have my --7

THE COURT: There it goes.8

MR. McCABE: I don't have my Putnam notes with me9

today, but, looking at the minutes, the minutes indicate that10

Exhibit 2281 was admitted into evidence and my recollection is11

that was not offered and not admitted. And what it was --12

THE COURT: Let me -- Bear with me one second.13

David, would you call Anita at 5510, please, and ask14

her to bring the files from my stand-up desk? I neglected to15

bring them in when I walked in.16

I'll have my files and that will probably tell me.17

MR. McCABE: I think we may have solved the problem.18

THE COURT: Okay.19

MS. CURTIN: Actually, Your Honor, I'm looking at my20

notes and that was one exhibit that Mr. Lisa did not21

specifically offer and so I would assume that he did that on22

purpose. He was pretty careful about offering what he wanted23

in as opposed to just look at.24

THE COURT: He was. What was the exhibit again?25

004

MS. CURTIN: 2281.1

MR. McCABE: Right.2

THE COURT: 2281.3

MS. CURTIN: It was a PowerPoint at the front of tab4

16.5

MR. McCABE: Right, in the big binder, tab 16.6

THE COURT: I've got it right here.7

MR. McCABE: Right.8

THE COURT: Let me just look at it.9

MR. McCABE: And I was trying to be pretty careful10

about objecting, so --11

THE COURT: Yeah.12

MR. HOSIER: Mr. McCabe also advises us, Your Honor,13

that perhaps --14

THE COURT: Yeah, I think that's -- I'm sorry, I15

think that's correct. I don't think that was -- I don't16

recall that was offered.17

MS. CURTIN: So I think it needs to come off the18

admitted list, Your Honor.19

MR. HOSIER: Right.20

THE COURT: Okay. I'll ask the Clerk then to remove21

2281 from -- and not show that as having been received then,22

nor, for that matter, was it offered.23

Thanks.24

MS. CURTIN: Your Honor, just for the record, that25

005

is DTX 2281.1

MR. McCABE: Right.2

THE COURT: Right.3

MR. McCABE: Right.4

THE COURT: Defendant's, yes. Yes, indeed. Thanks.5

MR. McCABE: Your Honor, we've had a chance to take6

a look at the Wal-Mart and Peak documents last evening.7

THE COURT: Right.8

MR. McCABE: And some of them, on their face, we9

would probably not dispute that they're business records. 10

Others we have issues with.11

THE COURT: Okay.12

MR. McCABE: Okay. I'm happy to address it now.13

I understand from Mr. Hosier that Mr. Lisa is not14

available this morning and, if Mr. Hosier would prefer to put15

that off, I'm happy to do that.16

MR. HOSIER: Well, it might be well if he could17

address those records.18

And why Mr. Lisa isn't here this morning is last19

evening he took rather violently ill and certainly you don't20

want to go to an emergency room in Las Vegas if you're only21

violently ill. I guess, if you're bleeding to death, it's22

probably okay, but ultimately he got some medical help.23

I'm not sure he's going to be able to go with Dr.24

Grindon this afternoon, Your Honor.25

006

THE COURT: All right.1

MR. HOSIER: And it occurred so late that we didn't2

get our 24-hour list then on Mr. Witherspoon, so we might have3

difficulty putting Dr. Grindon on this afternoon depending4

upon the circumstances. Mr. Lisa said maybe at noon or so, if5

he's up and about and if he feels better. My little bit of a6

concern is he might, you know, by trying to get back too7

early, have a bit of a relapse.8

THE COURT: Yeah.9

MR. HOSIER: But, in any event, I think, if we have10

the identification of what they agree to put in, then we can11

study it and see if we need the other items and maybe we can12

forego the other items and reach a compromise that will solve13

that problem.14

THE COURT: All right. Well, you all can -- there's15

no need taking up Court time right now doing that then. You16

can talk about that. I'm sorry to hear Mr. Lisa's ill and, if17

something's happened that caused him to be incapacitated18

today, then he's incapacitated and we'll just have to deal19

with it. There's not much we can --20

MR. HOSIER: Now I think there's also one way --21

THE COURT: I guess I have to ask you where you all22

have been eating. You know, it's kind of --23

MR. HOSIER: And stay away from there.24

THE COURT: Yeah.25

007

MR. HOSIER: I just had an idea as well that I think1

we might even be able to recapture and maybe considerably more2

than the time that might be lost even this afternoon, assuming3

Mr. Lisa isn't able to go forward.4

THE COURT: Uh-huh.5

MR. HOSIER: And that is earlier Your Honor will6

recall that Ms. Cadish brought up the issue that they had not7

put in any evidence of non-obviousness and there was then the8

issue about licensing going in and there was a suggestion that9

Dr. Carlton then wouldn't testify. I think they've reserved10

on that, as to whether Dr. Carlton would testify.11

The order in which we now have the case, with the12

nominal defendants going first, which I think, frankly, was a13

good idea, even though I had a motion to the contrary, the14

normal course of things is we would have put on our prima15

facie case, Dr. Carlton would have testified in their16

answering case and Mr. Niro, who's a response to Dr. Carlton,17

would testify in rebuttal.18

Now I'm a bit in the awkward position of really19

having Mr. Niro potentially testify in anticipation of20

testimony of Dr. Carlton in our case and thereby potentially21

provoke the need for them to put on Dr. Carlton. And what I22

would suggest, if Your Honor would accept this proposal, is23

that we be permitted to reserve Mr. Niro for potential24

surrebuttal and, if Dr. Carlton doesn't testify, then Mr. Niro25

008

doesn't testify and we've eliminated two witnesses. And, if1

Mr. Niro testifies, it would only be in response to Dr.2

Carlton.3

THE COURT: Okay.4

MR. HOSIER: And it would only then be targeted and5

would be much more narrow and I think might also be in the6

normal order.7

THE COURT: Well, no, I'm not going to force you to8

call a witness. 9

I don't know, what's the thought of counsel for10

plaintiffs as to that? I mean, obviously it's -- ultimately11

it's going to be defendant's choice, whether they put Dr. Niro12

on the stand, just as it's yours on Carlton.13

MR. JENNER: Well, I think there are more things to14

come together here. Mr. Hosier and I did discuss this briefly15

a couple of minutes ago and we haven't had much chance to16

caucus and think about it, but it occurs to me that the17

problem is more complex than that because it's not just Mr.18

Niro. It's, in fact, the very testimony that's about to19

happen now, which is Mr. Hoffman putting in the licensing20

program so that, even if Mr. Niro didn't testify, the fact of21

this information coming in, we may have to call Mr. Carlton22

anyway.23

THE COURT: Okay.24

MR. JENNER: If Carlton testifies and the issue25

009

comes up about Niro being now a surrebuttal witness, I think1

we would probably object to that. I think that if Niro's2

going to testify, he should testify in their case.3

So that may be something anticipatory that you don't4

have to deal with yet, but it seems to me they ought to put on5

their case and complete their case and we would almost surely6

object to him being held back as a surrebuttal witness.7

MR. HOSIER: But that's --8

MR. JENNER: They have Dr. Carlton's expert report. 9

They've taken his deposition. They know essentially what he's10

going to testify about. There isn't any -- It's not as though11

he's a mystery witness that's coming on.12

THE COURT: Yeah.13

MR. JENNER: And they don't know anything about it.14

THE COURT: All right. Well, let's do this15

regarding witnesses. I mean, if the parties obviously were16

agreeable to it, that's one thing. Absent that, I think17

defendants will simply have to make their decisions as to how18

they're going to present their case and you can --19

MR. HOSIER: But, I mean, normally, Your Honor, in20

the normal course of things, you don't put on witnesses in21

anticipation of testimony. You only put it on -- And it's22

just because the order has been reversed.23

THE COURT: Yeah. I'm not suggesting -- I'm not24

telling you to put somebody on in anticipation. If he doesn't25

0010

have something to offer in defendant's case in chief or in1

defense of claims that have already -- or witnesses that have2

already testified, then it's not necessary to call him. If3

there's an attempt at rebuttal through Dr. Carlton that goes4

into stuff other than, of course, what Mr. Hoffman might5

testify to that would warrant putting Niro on as surrebuttal,6

I would allow it. I mean, I just would.7

MR. HOSIER: Okay, that's fine, Your Honor.8

THE COURT: I'm not going to make the record9

incomplete, but I'm not going to sit here and determine in a10

vacuum, you know, what the circumstances will be.11

MR. HOSIER: I understand.12

THE COURT: So you can make your, you know, your13

choices in terms of order of witnesses. If Mr. Lisa is not14

available this afternoon with Dr. Grindon because of his15

illness, I mean, he's not available. There's not much we can16

do. That is an unfortunate event, but it's hard to get17

through any trial of any length without something happening18

like that.19

We'll go with Hoffman. Is there anybody --20

Obviously, Dr. Hunt is going to be a lengthy --21

MR. HOSIER: Well, Dr. Hunt is again a witness that22

Mr. Lisa's going to take and that would be immediately after.23

THE COURT: Yeah.24

MR. HOSIER: We have only these three witnesses25

0011

left, except for Mr. Niro.1

THE COURT: Hoffman, Grindon, Hunt.2

What about Witherspoon?3

MR. HOSIER: Witherspoon, yes. I meant Witherspoon,4

Grindon --5

THE COURT: Oh, Witherspoon, Grindon and Hunt after6

Mr. Hoffman.7

MR. HOSIER: Correct.8

THE COURT: Okay, and the potentiality of Niro.9

MR. HOSIER: Now I expect Mr. Lisa probably to be10

fit by tomorrow morning, because I think this was a short term11

kind of illness, in which case we'd go forward --12

THE COURT: Is he directing all three witnesses?13

MR. HOSIER: No. I will take Mr. Witherspoon.14

THE COURT: Okay.15

MR. HOSIER: And just to give him a break, really16

what we had was going to do Grindon, Witherspoon, Hunt.17

THE COURT: Okay.18

MR. HOSIER: Which is what we've already advised.19

THE COURT: All right. Well, if Mr. Lisa's not20

available this afternoon, then he's not available and we wait21

until tomorrow morning with Grindon.22

MR. HOSIER: And we may get some notice from him in23

another -- you know, by noon or so that he might be -- had a24

miraculous recovery and, if he does, we're happy to go25

0012

forward.1

THE COURT: All right. I take it was something of2

an intestinal nature or something or --3

MR. HOSIER: Yeah. And I'm not sure, I think he had4

a bit of a cold or something. I think he took an antibiotic5

and within 20 minutes had this violent nausea.6

THE COURT: Okay.7

MR. HOSIER: That may -- We're not sure it was8

connected, but ultimately, at the hotel where his parents were9

staying, that's where they finally found a doctor that could10

help him a bit and I think he might be okay some time today.11


MR. HOSIER: But I think he's still sleeping now and13

we'll find out.14

THE COURT: All right. Well, let's get started with15

Mr. Hoffman then.16

MR. HOSIER: Have we covered everything?17

MR. JENNER: I think we've covered the waterfront. 18

I don't know -- I guess what makes sense is certainly it would19

be a hardship on Mr. Lisa even to consider going today.20

THE COURT: It sounds like. If it is, we'd start21

tomorrow morning with Grindon. I mean, that's what we'd do.22

MR. HOSIER: I considered doing it. I just -- I23

haven't spent any time with him. Mr. Lisa literally spent24

weeks with Dr. Grindon and it's a --25

0013

MR. JENNER: I guess what I'm wondering is if Steve1

-- if Mr. Lisa is not fit tomorrow morning, do you want to be2

in a position to proceed with Witherspoon tomorrow morning?3

MR. HOSIER: Yes, if that would be acceptable to4

you.5

THE COURT: That would be a good idea.6

MR. HOSIER: Yes. I will definitely be ready to do7

that.8

THE COURT: Yeah, let's plan on that. So maybe9

somebody, during the noon hour, if not before, can touch base10

with Mr. Lisa and see how he's feeling and let him know that,11

if he needs the rest to get ready for tomorrow morning, then12

fine, but, if it's really more severe and he's got more13

problems, then plan on Witherspoon tomorrow.14

MR. JENNER: So I guess where we are, and subject to15

Your Honor's approval, what I would want to do is advise our16

people that Grindon will not go today.17

THE COURT: Right.18

MR. JENNER: And either Grindon or Witherspoon will19

go tomorrow morning and the people dealing with that should20

prepare accordingly.21

MR. HOSIER: And I'd like, maybe a little later in22

the afternoon, to be able to answer that question.23

MR. JENNER: That's fine.24

MR. HOSIER: As to which one's going. I mean, I25

0014

think --1

THE COURT: Right.2

MR. HOSIER: I'm not sure he's going to know by3

noon, but maybe by 4:00 or 5:00 o'clock he ought to know.4

THE COURT: Okay. Okay, let's plan on -- let's save5

Mr. Lisa the trouble of even trying to be here this afternoon6

with Grindon then.7

MR. JENNER: All right.8

THE COURT: And then later this afternoon tell Mr.9

Jenner and others as to whether it will be Witherspoon or10

Grindon.11

MR. HOSIER: Yes.12

MR. JENNER: All right. And if Your Honor doesn't13

mind, what I would do is just step outside for 30 seconds,14

call our office and tell them this so that other people can be15

aware.16

THE COURT: Sure, absolutely.17

MR. HOSIER: Sure.18

THE COURT: Yeah, go ahead.19

MR. HOSIER: Thank you much, Your Honor.20

MR. JENNER: Thank you.21

THE COURT: All right. And who's going to be22

handling the cross of Mr. Hoffman?23

MR. HENDLER: I am, Your Honor, Pablo Hendler.24

THE COURT: All right, great. I apologize, counsel,25

0015

your last name again?1

MR. HENDLER: Sure, Hendler.2

THE COURT: Hendler?3

MR. HENDLER: Yes, sir.4

THE COURT: Thank you, Mr. Hendler. And you may5

have appeared previously. I just didn't recall.6

MR. HENDLER: That's quite all right.7

THE COURT: We've had an awful lot of counsel coming8

through.9

All right, Ms. Curtin, are you going to handle,10

then, the direct of Mr. Hoffman?11

MS. CURTIN: I get that pleasure, Your Honor.12

THE COURT: All right, great.13

Mr. Hoffman, come on up, if you would, and be sworn14

by the Clerk, first of all.15

MR. HENDLER: Your Honor, sorry for the16

interruption. I just also want to introduce a new face as17

well, Katherine Nyarady.18

MS. NYARADY: Good morning, Your Honor.19

THE COURT: Great. And your last name again?20

MS. NYARADY: Nyarady.21

THE COURT: How do you spell that?22

MS. NYARADY: It's N-Y-A-R-A-D-Y.23

THE COURT: Thank you, counsel.24

THE CLERK: Sir, please raise your right hand.25

HOFFMAN - DIRECT0016

JAMES LOUIS HOFFMAN, DEFENDANT'S WITNESS, IS SWORN1

THE CLERK: Please have a seat.2

If you will, state your full name and spell your3

last name for the record.4

THE WITNESS: My name is Louis Hoffman,5

H-O-F-F-M-A-N.6

THE COURT: All right, go ahead, Ms. Curtin. 7

DIRECT EXAMINATION8

BY MS. CURTIN:9

Q Could you please state your residence address for the10

record?11

A 6003 East Shangri-la Road, Scottsdale, 85254.12

Q Could you briefly summarize your education and your work13

background?14

A Yes. I graduated, undergraduate, from Princeton15

University, Harvard Law School afterwards. I joined Brown &16

Bain, which is a law firm in Phoenix, doing intellectual17

property law. After several years I joined the law firm of18

Lisa & Lisa, which was a law firm with Steve Lisa and his19

father, Don, and then Steve and I left to start a practice in20

Scottsdale, opened our own offices.21

Q When did that occur?22

A That occurred in August of 1990.23

Q When did you first begin working on matters related to24

Mr. Lemelson?25


A I'm sorry, it was --1

Q When did you --2

A Just a moment. It was August of 1991. Sorry, I had the3

year wrong there.4

I first began working on Lemelson matters, to the best of5

my recollection, in the first couple of months of 1991, while6

still at Lisa & Lisa.7

Q When did you become custodian of records for documents8

relating to Mr. Lemelson?9

A In approximately 1992.10

Q How did that occur?11

A There was a lot of documents that were being collected12

because of the licensing program and because of litigation13

that was either contemplated or about -- well, at the time14

contemplated and documents were scattered around the country,15

either at Mr. Lemelson's residence or in the possession of16

certain attorneys.17

In addition, at around the same time, there was patent18

prosecution being done and, in a sense, consolidated in19

certain areas with Mr. Lisa and I and so we needed to collect20

file histories and licensing matters from various lawyers and21

from Mr. Lemelson himself.22

THE COURT: Let me make sure I understand. Mr.23

Lemelson, of course, was alive in 1992 when you undertook --24

THE WITNESS: Yes.25


THE COURT: -- this task or commenced it. How did1

Mr. Lemelson operate at that time? In other words, was he2

incorporated in some fashion? Did he have an office3

maintained with staff or was it similar to what we've heard4

when Mrs. Lemelson testified, the early years where much of5

the work might have been done from his house or things of that6

sort and a typist now and then who helped out, that kind of7

thing?8

THE WITNESS: It was somewhat similar. He had a --9

He worked out of his house. He had a -- He was not10

incorporated as such and he had an assistant, like a personal11

assistant, who was a full-time employee who would help him get12

out letters and do documents and the like.13

THE COURT: All right, but he didn't report to some14

laboratory in Menlo Park and go to work there and have a staff15

and so forth, people who were gathering a lot of these records16

anyway?17

THE WITNESS: Right. He had allocated space in his18

house for his office work and so he would, you know, walk19

upstairs and report to his office.20

THE COURT: Right. Okay.21

THE WITNESS: And as far as the -- I didn't22

understand what you were asking about people gathering the23

stuff anyway.24

THE COURT: Well, in terms of a business, in 25


essence --1

THE WITNESS: Oh.2

THE COURT: -- there would be custodians of records3

for a host of records that they might have. I realize he was4

working with counsel and others, I assume, in connection with5

patent applications and so forth.6

THE WITNESS: Right. Yeah, he had -- a lot of his7

records would be -- well, he had his own set of records that8

were to some degree of completeness or another and then there9

was other records that were at a particular lawyer who may10

have been handling this --11


THE WITNESS: -- range of patent applications and so13

forth.14

THE COURT: Right.15

All right, go ahead.16

BY MS. CURTIN:17

Q What types of documents were collected from Mr.18

Lemelson's residence?19

A There were -- The principal categories were patent20

prosecution files and licensing materials.21

Q And how were those documents conveyed to your office?22

A In 1992?23

Q In 1992.24

A In 1992 there was a set of brown boxes that were -- and25


this is like a nice brown box, not just a -- not like -- not1

just that manila cover. I'm not trying to say those aren't2

nice, but not the -- you know, it was --3

Q A dark brown.4

A -- a dark brown kind of formal looking box and they were5

boxed up.6

THE COURT: They looked better last year.7

THE WITNESS: They were boxed up in his house up in8

Nevada and then shipped down to our offices in Scottsdale.9

BY MS. CURTIN:10

Q And where did you store those boxes when you received11

them?12

A Initially, there was an unfinished section of the office. 13

There was like a room next to the finished section and we put14

it in there and used it as a storeroom. Shortly afterward,15

when the volume became a little bit bigger, we rented some16

storerooms, which are like mini -- at a Mini-Store nearby and,17

over the course of time, rented several different small rooms18

that are adjacent or close to adjacent to each other in the19

Mini-Store.20

THE COURT: And was your goal to gather all patent21

prosecution files and then later licensing materials that Mr.22

Lemelson had or had generated during his history as an23

inventor?24

THE WITNESS: Yes, that was eventually the goal and25


initially only certain things came down and then, over time,1

it became, very quickly afterwards, within a year or two, it2

became everything. And, yes, it was also with regard to3

everything he had done as a history -- through his history and4

it was either from him or his attorneys.5

THE COURT: So your law firm or that part of your6

law firm became a repository basically for it?7

THE WITNESS: Correct.8

THE COURT: Okay.9

BY MS. CURTIN:10

Q Did you have an occasion to search the files that came11

down from Mr. Lemelson's residence recently?12

A Yes, I did, over the break, in response to certain13

questions about the authenticity of a couple of documents that14

were questioned during the first part of the trial. I went15

into the storeroom and performed some searches to try to see16

if I could find the originals or anything that might relate to17

those documents that were questioned.18

MS. CURTIN: Your Honor, may I approach?19

THE COURT: Certainly.20

(Pause in the proceedings)21

BY MS. CURTIN:22

Q Mr. Hoffman, you have in front of you a manila folder. 23

What is it?24

A This is a file that I found in one of those storerooms in25


one of the brown boxes that I described over the break. It1

contains a series of letters in 1994.2

Q 1994?3

THE COURT: '84, actually.4

THE WITNESS: I'm sorry, 1984 from -- that related5

to licensing of certain Lemelson patents.6

BY MS. CURTIN:7

Q What kind of letters?8

A These were letters that are -- a form that was sent,9

apparently sent, to a variety of different addresses and half10

of the letters were dated June 13, '84 and half of them were11

dated on June 14, '84 and there are a couple of other letters12

in there.13

Q June 14 or June 15?14

MR. HENDLER: Objection, Your Honor, before we go15

any further.16

THE COURT: Yes, Mr. Hendler.17

THE WITNESS: June 15. I'm sorry.18

MR. HENDLER: Clearly, the witness doesn't -- can't19

have any knowledge about what, in fact, actually happened in20

1984.21

THE COURT: Right. No, he's just identifying what22

they --23

MR. HENDLER: Well, I think I -- I apologize. I24

think I heard him testify as to whether or not they were sent.25


MS. CURTIN: No.1

MR. HENDLER: Or his belief of whether or not they2

were sent.3

MS. CURTIN: He said that's why he was looking for4

the documents, is because a question had been raised as to5

whether they were sent.6

THE COURT: Right.7

Go ahead. The witness can -- Ask another question8

of the witness, but obviously in June of 1984 you, I take it,9

were not counsel for Mr. Lemelson.10

THE WITNESS: I was graduating from law school in11

June of '84.12

THE COURT: And at that time you were not otherwise13

connected with Mr. Lemelson then?14

THE WITNESS: That's right.15

THE COURT: You had no personal knowledge of the16

preparation of these particular documents?17

THE WITNESS: That's correct.18

THE COURT: Okay.19

THE WITNESS: I wasn't around in 1984 in connection20

with Mr. Lemelson.21

THE COURT: All right, go ahead.22

MS. CURTIN: Okay.23


//25


BY MS. CURTIN:1

Q You have in front of you what's been marked as2

Defendant's Trial Exhibit 1053A and 1054A. Are those color3

copies of letters that you found in that original file in the4

brown box that came from Mr. Lemelson's residence?5

A Yes, it is. Yes, they are.6

Q Okay. You also have in front of you Defendant's Trial7

Exhibit 2316. What is that?8

A These are black and white -- This is two pages that are9

black and white copies of two of the letters that were located10

in the same file folder. I think I neglected to say that the11

file folder had a tab entitled "Scanning Apparatus and Method"12

on the manila folder, the original manila folder.13

MS. CURTIN: Your Honor, we would offer Defendant's14

Trial Exhibits 1053A, 1054A and 2316.15

THE COURT: All right, Mr. Hendler.16

MR. HENDLER: Yeah, we have an objection to these17

documents, Your Honor. These are hearsay. The witness18

himself, while he may be the custodian of records as of 199219

and on, he certainly, as Your Honor inquired, has no20

information about these documents from 1984 and so he21

certainly cannot testify as being the custodian of these22

documents. He cannot testify about how these documents were23

kept, maintained, prepared. In fact, his testimony was that24

before he got on the scene the documents were scattered all25


over the country.1

So I guess our objection would be that they are2

hearsay.3


MS. CURTIN: Your Honor?5

THE COURT: Yes.6

MS. CURTIN: Mrs. Lemelson did authenticate the7

black and white copies of 1053A and 1054A that were attached8

to Mr. Quinn's declaration, which is 2046A, and we think on9

that basis that they come in as authentic. These are simply10

color copies of Mr. Lemelson's file originals, which we11

located. We are not offering them for the truth of the12

matter, but for purposes of notice and I think, for that13

purpose, they come in.14

MR. HENDLER: Your Honor, maybe --15

THE COURT: Well, for purposes of notice really16

wouldn't be for truth of the matter. I don't know how it --17

That's pretty much inescapable. You're right, Mrs. Lemelson18

did testify and she even talked about the signature of Ms.19

Simon, I think it was --20

MS. CURTIN: Yes.21

THE COURT: -- the person who, in her routine, as22

she recalled it, in terms of signing documents that were sent.23

Let me just ask the witness, because it's not,24

obviously, required that a custodian have been the custodian25


at the time the records were generated, but, other than what1

you heard Mrs. Lemelson testify to, do you have any other2

personal knowledge as to how records were generated by Mr.3

Lemelson when you assumed responsibilities as custodian --4

First of all, did Ms. Simon still work for him?5

THE WITNESS: No, she didn't, at least not to my6

knowledge.7

THE COURT: Didn't perform services or typing8

services and so forth for him.9

Do you have any other knowledge concerning the10

circumstances of the preparation of any of these documents11

then?12

THE WITNESS: No, Your Honor. I can simply say that13

I found them in Mr. Lemelson's business records.14

THE COURT: And the records that you found, you15

found them in one of the boxes.16

When you located them, were they located with other17

correspondence of approximately the same date?18

THE WITNESS: Yes. Perhaps it might be helpful if19

you were to look at the entire file, but they were in this20

file which has a series of letters.21


THE WITNESS: All approximately the same dates.23

THE COURT: Let me see it. So this is the actual --24

THE WITNESS: That's the original file.25


THE COURT: The older file folder that says1

"Scanning Apparatus Methods," TP66 something, was intact in a2

box and from that file folder you found 1053A, 1054A and 2316?3

THE WITNESS: Correct. And there were other folders4

in the box that filled up the box that were also5

correspondence from Mr. Lemelson's house.6



THE COURT: All right, I haven't counted them, but9

there's probably 40 --10

THE WITNESS: 52.11

THE COURT: 52? Okay.12

THE WITNESS: There are 52.13

THE COURT: I was going to say 40 to 50.14

THE WITNESS: Let me say, there are 52 letters going15

out from Mr. Lemelson. There are couple of other letters that16

are --17

THE COURT: All right. And they all bear either18

June 13th or June 15th, 1984 dates to various businesses and19

they all are the same. The form basically repeats, putting to20

the attention of the person they're directed to or the entity21

they're directed to, the existence of certain patents and22

discussing the need for licensure and so forth.23

I think that that is sufficient foundation to24

support a finding that these are records made and maintained25


in the ordinary course of business by Lemelson and made at or1

about the time indicated on the letters. The one leap that2

was made, that they evidence notice, you all can argue to me. 3

It shows certainly that the letters were present in the4

business records, the files of Lemelson, or Licensing5

Management Corporation, on or about June of 1984. They're not6

from the recipients of them, with the exception of the one to7

General Manager, General Electric, which contains a responding8

letter of July 10, 1984.9

And as I understand it, that July 10, 1984 response10

from patent counsel, James Busse [phonetic], was also11

contained in the same file.12

THE WITNESS: Yes. The file's alphabetical by13

company and, if you look under G, you can see it with the --14

those two pages.15


MS. CURTIN: Actually, the original General Electric17

letter is in the file, Your Honor.18

THE COURT: Gotcha. All right.19

MS. CURTIN: It's kind of cool. It's that old kind20

of paper we don't get anymore.21

THE COURT: Yeah. All right. Well, I think that22

that is an adequate foundation and I am going to receive the23

three exhibits under the business records exception to the24

hearsay rule.25


MR. HENDLER: Your Honor, may I just say something?1

THE COURT: Sure.2

MR. HENDLER: Just for the record. I know you've3

made your ruling.4

I am advised -- Well, first off, the black and white5

copies that Mrs. Lemelson talked about, the stamp -- my6

understanding is the stamp, if you look in the bottom right-7

hand corner, --8

THE COURT: Yeah.9

MR. HENDLER: -- these color copies have red or some10

shade of red.11

THE COURT: Kind of a pink, yeah.12

MR. HENDLER: But it says -- We would submit, you13

know, obviously, that would be hearsay, but the fact is the14

documents that Mrs. Lemelson testified about didn't have that15

red outline of the stamp or didn't have the stamp and we16

submit, and I understand, although obviously I wasn't there at17

the time, but during our inspection of the documents for18

production from these storage facilities that the original19

documents were not available to us.20

MS. CURTIN: That is incorrect, Your Honor. The21

original documents were available. They mostly reviewed the22

documents from the Ford litigation because that is what they23

asked to look at.24

MR. HENDLER: Well, I would submit, Your Honor, that25


if these original documents have been available all this time,1

why is it that we just saw these on Saturday?2

MS. CURTIN: If I might, Your Honor.3

THE COURT: Go ahead.4

MS. CURTIN: In the Ford litigation all of the5

original documents were produced. The black and white copies6

that Mrs. Lemelson authenticated have an LM Bates number in7

the bottom right-hand corner. That number was placed on there8

by counsel for Ford during the Ford litigation. Those9

photocopies had to have been made from the originals because10

those are the only documents there were.11

I can speculate, Your Honor, that back in 1992 the12

red label probably didn't photocopy.13

THE COURT: Yeah.14

MS. CURTIN: When I practiced back then, it was kind15

of well known that red did not photocopy well, but, setting16

that aside, that's how you got the black and white copies with17

the LM numbers on them. They had to have been made from18

photocopies of the originals, which means that Ford and its19

counsel, who are sitting at counsel table, saw it.20

THE COURT: Oh, I understand your argument would be21

they received them.22

MS. CURTIN: The originals were also made available23

when they came out in July of 2000 for the document production24

in this case, which, by the way, was done -- one document25


production for this case and the litigation in Arizona. It1

seemed easier to do it that way.2

THE COURT: But the very file I just looked at would3

have been available for inspection.4

MS. CURTIN: It was available for inspection. We5

located it in a room that we know they had access to at the6

time. What they chose to look at and chose not to look at was7

completely within their discretion.8

THE COURT: All right. Well, what Mrs. Lemelson may9

have testified to, the actual copy, I wasn't fixated on as10

much as I was her testimony concerning the circumstances of11

preparation and the routine that, and I forget her first name,12

that Ms. Simon would follow in connection with preparation of13

correspondence. So that's really the value that I find with14

regard to her testimony, but, nonetheless, I think that's an15

adequate foundation under the business records exception to16

allow the admission of those three exhibits.17

So 1053A, 1054A and 2316 will be received and, you18

know, you all can argue to me what they, at the end of the19

day, what they show.20

(Defendant's Exhibit Nos. 1053A, 1054A and 2316 admitted)21

THE COURT: Let me give these back. Mr. Clerk, I'm22

not sure you've got -- 'cause two of them have the original23

stamps on them, so you may want to keep those all.24

THE CLERK: Thanks, Your Honor.25


THE COURT: Thanks.1

Go ahead.2

MS. CURTIN: Excuse me, Your Honor.3

BY MS. CURTIN:4

Q Did you find anything else of interest when you were5

searching the storerooms over the Christmas break?6

A There was a --7


There was a second file that I located, not in the9

storeroom itself, but in a box that was being returned to the10

storeroom, that was a file relating to certain additional11

documents that had been -- again, the authenticity of which12

was questioned and you've handed to me the file that I located13

and a photocopy of the Redwell folder, or drop-in folder, in14

which I located the manila sub-folder.15

THE COURT: That's Exhibit 2317 that you have?16

THE WITNESS: Yes. Exhibit 2317 is a black and17

white copy of the -- the first page of 2317 is a black and18

white copy of the expando or Redwell folder and then the19

remaining pages of 2317 is a copy of the little sub-folder20

that was in there with the entire contents of that sub-folder.21


THE WITNESS: And I've also been handed the original23

of the sub-folder.24



BY MS. CURTIN:1

Q On the first page of Exhibit 2317 there's a stamp that2

says Golenbach & Barrell [phonetic]. Do you know who3

Golenbach & Barrell are?4

A Golenbach & Barrell are or were a law firm that5

represented Mr. Lemelson during the 1980s, I think in New6

York. I don't know if the firm actually exists under that7

same name today.8

Q What was the -- Can you describe the box in which you9

found the file which is marked as 2317?10

A Yes. There was a box that on its side was labeled box11

number 9091, which matches the designation on the Redwell12

folder, and had a number of file folders and expandos in that13

that appeared to be Golenbach & Barrell files.14

Q Okay. In the file that's marked as Defendant's Exhibit15

2317, did you -- is there a letter from Sangamo Weston?16

A Yes, the -- about the fifth to last page is a letter from17

Sangamo Weston, Inc. on which the date July 28, 1980 appears.18

Q Is that letter the same as Defendant's Trial Exhibit19

1042?20

A 1042?21

Q Yes.22

A Yes.23

Q Do you know who signed the letter from Sangamo Weston?24

A Yes, I do, Dale Gaudier, who was, at the time, a patent25


counsel for Sangamo Weston.1

Q And how do you know that?2

A I located Mr. Gaudier, called him on the phone and asked3

him -- sent him a copy of the letter and asked him if it was4

his signature.5

MR. HENDLER: Objection. Objection, Your Honor.6

THE WITNESS: And he said yes.7

MR. HENDLER: It was hearsay.8

MS. CURTIN: Your Honor, if I might?9

THE COURT: Yes.10

MS. CURTIN: Under Rule 104(a) hearsay is admissible11

in order to lay foundation for a document.12

THE COURT: All right. You say Mr. Gaudier13

identified -- or sent an extra copy of the letter and he14

identified his signature?15

THE WITNESS: I sent him, attached to an e-mail, a16

PDF scan of the letter and asked him to -- talked to him on17

the phone and asked him if it was his signature and he said18

yes.19

THE COURT: All right, I'll overrule the objection.20

BY MS. CURTIN:21

Q Did Mr. Gaudier tell you anything else about the letter?22

A Yes. He said that it was Sangamo Weston letterhead and23

that they had a form in which they responded to initial patent24

inquiries that they used on some occasions.25


MR. HENDLER: Objection, Your Honor. I think we're1

now beyond --2

THE COURT: Yeah, sustained as to other conduct. 3

He's identified the letterhead and his signature. That's4

sufficient.5

MS. CURTIN: Okay.6

BY MS. CURTIN:7

Q The letter from Sangamo Weston is addressed to Kenneth8

Stempler. Do you know who Kenneth Stempler was?9

A Yes. Mr. Stempler is an attorney who worked for Mr.10

Lemelson between approximately 1977 and 1981, something like11

that, late seventies, early eighties.12

Q Okay. The Sangamo Weston letter states that it's13

responding to a letter of July 9th, 1980 from Mr. Stempler. 14

Did you find any other letters bearing that same date in the15

file that's been marked Defendant's Exhibit 2317?16

A Yes. I found a number of letters bearing the date July17

9, 1980 to other companies.18

Q Can you locate one of those letters in the packet,19

please?20

A Well, the very next page behind the Sangamo Weston letter21

is a letter to Tridea Electronics bearing that date, for22

example.23

Q Okay.24

A The next two pages are those and there's some before as25


well.1

Q Okay, looking at the letter to Tridea Electronics, do you2

know who wrote that letter?3

A Yes. Mr. Stempler wrote that.4

Q And how do you know that?5

A I again had a conversation with Mr. Stempler on the phone6

and sent him, in this case by fax, copies of the letter.7

MR. HENDLER: Your Honor, same objection.8

THE COURT: Yes. Overruled.9

Did Mr. Stempler identify his signature on the10

letter and letterhead?11

THE WITNESS: Yes, he did.12


BY MS. CURTIN:14

Q Did Mr. Stempler tell you what happened to his Lemelson15

files?16

MR. HENDLER: I'm sorry, I didn't hear the question.17

THE COURT: What happened to his Lemelson -- Did Mr.18

Stempler tell the witness what happened to his Lemelson file.19

MR. HENDLER: Well, I guess I would object as20

hearsay as well.21

MS. CURTIN: Well, Your Honor, we are trying to tie22

up the elements for the ancient documents exception under Rule23

9018 and in order to -- 901(b)8 and, in order to do that, the24

files have to have been in a place where one would expect to25


find them.1


MS. CURTIN: And that is the link that we are trying3

to establish.4

THE COURT: I'll let the witness testify as to what5

Mr. Stempler said about the location of the file.6

THE WITNESS: Mr. Stempler said that his law firm7

went through a number of name changes, but that the most8

likely place that would have inherited his law firm's files9

was the Golenbach & Barrell law firm.10

MS. CURTIN: Thank you.11

BY MS. CURTIN:12

Q Has Mr. Stempler represented Mr. Lemelson within the last13

20 years?14

A No, he has not.15

Q In Defendant's Exhibit 2317 is there a letter from16

Schlumberger?17

A Yes, that's -- Excuse me. Yes, that's the last page of18

the exhibit.19

Q Where did you find this letter?20

A This letter was also in the same manila folder that you21

handed me that has been copied as 2317 in the Golenbach &22

Barrell box.23

Q The letter from Schlumberger is addressed to Mr. Faber.24

Do you know who Sidney Faber was?25


A Sidney Faber was a lawyer who represented Mr. Lemelson in1

the seventies and I think maybe even as far back as the2

sixties.3

Q Has Mr. Faber represented Mr. Lemelson within the last 204

years? 5

A No, he has not.6

Q In the top right-hand section of the Schlumberger letter,7

there is a received stamp from Osterlink, Faber. Do you see8

that?9

A Yes, I do.10

Q Have you seen that before?11

A Yes. I've seen that on a number of letters that -- or12

correspondence or papers that I have seen relating to the13

Osterlink, Faber law firm in Mr. Lemelson's various files or14

patent -- patent or other files.15

Q Is the letter from Schlumberger the same as Defendant's16

Trial Exhibit 1032?17

A Yes. Defendant's Exhibit 1032 is a photocopy of that18

letter.19

Q Okay.20

A Or vice-versa.21

Q Okay. Looking at the Schlumberger letter, it references22

a patent, U.S. Patent Number 3,081,379. Is that one of Mr.23

Lemelson's patents?24

A Yes. That's the patent that issued on the 195625


application that has been mentioned in this lawsuit.1

Q Prior to January 14, 1975, the date that's listed on the2

Schlumberger letter, had any other patent in the chain of3

patents at issue in this litigation issued?4

A No.5

MS. CURTIN: Your Honor, we offer Defendant's Trial6

Exhibit 1032, 1042 and 2317 as falling within the ancient7

documents exception.8

THE COURT: All right, Mr. Hendler.9

MR. HENDLER: Well, we maintain our objection, Your10

Honor. I mean, the witness obviously has testified based on11

hearsay about the, you know, purported authenticity of these12

documents. He himself cannot, except for the hearsay, cannot13

testify about these documents, but, given Your Honor's14

ruling, --15

THE COURT: I think that would frequently be the16

case with regard to ancient documents. I mean, the rule cited17

as to authentication for ancient documents, 9018, "provided18

evidence for the document or date of compilation in any form19

is in such condition as to create no suspicion concerning its20

authenticity and was in a place where, if authentic, it would21

likely be and has been in existence 20 years or more at the22

time it is offered," would frequently, it seems to me, require23

reliance on hearsay, as well as the circumstantial evidence,24

which seems apparent here.25


I'm satisfied, given the testimony of Mr. Hoffman,1

that indeed the records identified, 1032, 1042 and 2317, both2

in terms of what the two individuals have said to identify3

their own signatures, Mr. Gaudier and Mr. Faber, but also the4

circumstances all support the finding that these are5

admissible as ancient documents.6

I will receive each of them then.7

(Defendant's Exhibit Nos. 1032, 1042 and 2317 admitted)8

MS. CURTIN: Thank you, Your Honor.9

BY MS. CURTIN:10

Q Mr. Hoffman, you have in front of you a black binder.11

MS. CURTIN: Your Honor, we're going to switch12

topics now.13


MS. CURTIN: And try to clarify the circumstances15

with regard to the testimony Mr. Steiner gave about dumping a16

large number of prior art references on the Patent Office and17

we hope to move through this fairly quickly.18


MS. CURTIN: Also, Dr. Horn had testified, with20

regard to those patents, about there being a large number of21

patent references listed on the front of the '078 patent, so22

we're just going to try to tie this up.23

THE COURT: Okay.24

//25


BY MS. CURTIN:1

Q In your binder, Mr. Hoffman, do you find Defendant's2


A Yes. The first tab is that number.4

Q What is it?5

A This is a letter that -- sent from Mr. Lisa to three6

attorneys, one of whom is Mr. Jenner, at Fish & Neave. These7

were the attorneys representing the big three auto makers and8

Motorola in what has been called the Ford case and related --9

the Ford litigation, I guess I should tell you, was a series10

of cases and that it was sent on November 11, 1992.11

Q What occasioned this letter to be sent?12

A The Ford litigation was brought the last day of August13

and first day of November -- excuse me, of September 1992 and14

interrogatories were served. In response to those15

interrogatories, the --16

MR. HENDLER: Objection, Your Honor, as to these17

documents -- as to this letter, as to the witness' testimony. 18

His name, first off, his name isn't anywhere on this, so I'm19

not sure of the foundation about this, but, beyond that, the20

letter's purely hearsay. It's written by litigation counsel21

for the purposes of creating a self-serving record. It is not22

a business record for that purpose. It's concerning an23

attempt to wash away, apparently, their duties to cite art to24

the Patent Office. And, again, it's written by litigation25


counsel. It is not a business record.1


MR. HENDLER: This is pure hearsay here.3

THE COURT: Ms. Curtin.4

MS. CURTIN: Your Honor, the allegation has been5

made that we dumped prior art on the Patent Office and this6

letter evidences an effort made in connection with that. It7

is -- I'm trying to remember the word and I'm not coming up8

with it, Your Honor. The letter is not offered for the truth9

of the matter. The letter is offered for the fact that the10

letter exists and was sent and says what it says. It doesn't11

matter whether what it says is true or not. What matters is12

that the letter exists and was sent, that the request was made13

and then, in turn, we will have Mr. Hoffman testify that no14

response was received.15

MR. HENDLER: That's --16

MS. CURTIN: It is --17

MR. HENDLER: Pardon me.18

MS. CURTIN: I can't remember the word, Your Honor. 19

It's something about an act.20

MR. HENDLER: Your Honor, it sounds like it's coming21

in for truth and, I mean, this is the sort of thing that now,22

any time litigation counsel writes a letter to adversaries,23

that can come in as a business record.24

THE COURT: Well, refresh my recollection. What's25


plaintiff's perspective concerning the argument Ms. Curtin1

makes that plaintiffs contend that Lemelson dumped prior art2

on the Patent Office? Is that --3

MS. CURTIN: Your Honor, could I -- I would make an4

offer. If they are --5

THE COURT: Well, let me just find out.6

Is that a position that plaintiff maintains?7

MR. HENDLER: Your Honor, I'll have to confirm 8

with --9

THE COURT: I don't recall, off the top of my head,10

Mr. Steiner's testimony in this regard, but --11

MR. HENDLER: I'll have to confirm with counsel,12

who's more familiar with that topic than I am. Just one13

second.14

MS. CURTIN: I was going to say, if they're willing15

to strike Mr. Steiner's testimony about dumping large numbers16

of prior art references on the Patent Office and Dr. Horn's17

testimony with regard to the large number of prior art18

references listed on the front of the '078 patent, we will be19

happy to forego this testimony.20

THE COURT: All right. I just don't recall Dr.21

Horn's testimony or Mr. Steiner's with regard to the '07822

patent in that regard, but --23

MR. JENNER: Well, Dr. Horn's testimony I can speak24

to, Your Honor. I mean, all Dr. Horn did was refer to the25


face of an issued patent for the purpose of establishing that1

there was a lot of art. That has nothing to do with any2

reason why the art did or did not get submitted either by the3

examiner or by Lemelson's counsel and there's really no need4

for it. Dr. Horn simply relied on the fact that there's a lot5

of prior art showing on the face of the patent.6

THE COURT: What was the thrust of Mr. Steiner's7

testimony in this regard?8

MR. FEY: I'd hate to have it just be a team tag9

match, Your Honor.10

THE COURT: That's all right.11

MR. FEY: But I examined Mr. Steiner, as Your Honor12

will recall, and the thrust of Steiner's testimony, taken13

overall, was that in gigantic file histories, like the one14

that Lemelson created over a 50-year period, the examiner15

didn't have the chance of being able to look at all the things16

that were brought to bear.17

THE COURT: Right.18

MR. FEY: And an aspect of that was that we looked19

at one patent that had 200 references cited and Steiner said20

the examiner didn't have a chance. There were so many21

references, he couldn't possibly have looked at all of them in22

the 17 hours that he had and that was it.23

MS. CURTIN: No, Your Honor, that was not it. Mr.24

Steiner also made comments to the fact that lots of times25


patent applicants attempt to overwhelm the Patent Office by1

submitting large numbers of prior art in which they conceal2

the relevant prior art and it is that implicit accusation to3

which this evidence is intended to respond.4

MR. FEY: What Steiner said was there was so much5

stuff the examiner didn't have a chance to deal with it. That6

was it.7


MS. CURTIN: Anyway, Your Honor, we can move on with9

this, but there is a --10

THE COURT: Well, hold on.11

MS. CURTIN: Yeah.12

THE COURT: Let me finish dealing with this13

particular -- dealing with this particular exhibit because I14

want to rule on the offer of it.15

I will, and I'm not sure the extent to which or what16

probative value it will have, but maybe it will become more17

clear in the closing argument/briefing portion, the post-trial18

briefing, I'm going to, at this point, receive 2307 and I will19

determine what weight to give to it in light of the arguments20

advanced as to the various testimonies of Dr. Horn and Mr.21

Steiner.22


THE COURT: It may become absolutely unnecessary to24

consider it, but, in the event that it is, it will be in the25


record.1

(Defendant's Exhibit No. 2307 admitted)2


THE WITNESS: Your Honor, my answer had not been4

completed when the colloquy occurred.5

THE COURT: I forgot the question that was pending6

before you when the objection was made, other than it was7

being offered. What was the question?8

THE WITNESS: Actually, I don't recall it being9

offered. I was simply asked what occasioned the letter and I10

had started that answer.11

THE COURT: Ah. Were you with the Lisa firm in12

1992, November 1992?13

THE WITNESS: As I said, Mr. Lisa and I had left14

Lisa & Lisa in August of 1992 and the two of us were15

practicing together. We were affiliated PCs --16


THE WITNESS: -- in November of 1992.18

THE COURT: You didn't sign the letter. Were you19

involved in the preparation of the letter or the attachment?20

THE WITNESS: I was involved in the preparation of21

the work that went into the letter. This particular letter22

Mr. Lisa wrote himself. One of the other letters in the23

binders, I actually did do part of it.24

THE COURT: All right. Well, in any case, I've25


received it, so it's in evidence.1

Go ahead, Ms. Curtin.2

BY MS. CURTIN:3

Q Mr. Hoffman, would you turn to --4

A Should I finish my answer first or no?5

Q That would be fine.6

A Okay.7

THE COURT: Well, I think, since it's admitted,8

there's really nothing else, unless you've got a question for9

the witness.10

MS. CURTIN: No. I think that's fine.11

THE COURT: All right. Let's go ahead and move on.12

BY MS. CURTIN:13

Q Let's go to Exhibit 2308. Did you have any involvement14

in the preparation of that document?15

A Yes, I did. The salient point -- part of the letter for16

this purpose is the third header entitled "Pending CIA17

Applications," which referred to computer image analysis.18

MR. HENDLER: Your Honor, same objections as before,19

both foundation and hearsay.20

THE COURT: All right. Ms. Curtin, does this go to21

the same issue as the previous exhibit?22

MS. CURTIN: Yes, Your Honor. It's the second23

letter that was sent to Ford and the other defendants asking24

them to narrow the scope of the prior art references.25


THE WITNESS: This is a letter I wrote a portion of,1

Your Honor.2

THE COURT: All right. I understand that.3

All right, same ruling. I will receive -- overrule4

the objection and receive --5

THE WITNESS: What was your question again?6

THE COURT: -- DTX 2308.7


BY MS. CURTIN:9

Q My question was did you have any involvement in drafting10

the letter?11

A Yes. The third header, entitled "Pending CIA12

Applications," I provided to Mr. Lisa a substantially complete13

initial draft of that section and after some, you know, with14

some editing, Mr. Lisa included it in his letter to the same15

litigant's counsel.16

Q Was any response to either of these letters received from17

the addressees?18

A No.19

Q Okay. Can you turn to Defendant's Trial Exhibit 1132A?20

MS. CURTIN: Your Honor, these are excerpts from21

patent prosecution histories that I believe are already in22

evidence.23

THE COURT: They're already in evidence?24

MS. CURTIN: The entire file wrappers are in25


evidence, Your Honor.1

THE COURT: It has two headings -- two markers. One2

says Plaintiff's Trial Exhibit 34, Defendant's Trial Exhibit3

1132A. Is Trial Exhibit 34 the full plaintiff's exhibit then?4

MS. CURTIN: I don't know, Your Honor. I don't know5

where that sticker came from. It is the --6

THE WITNESS: I could answer that, if you wish.7

THE COURT: Yes. Go ahead, if you know.8

THE WITNESS: Yes. 1132A is the so-called composite9

file histories that were pulled together from different10

sources and one of those sources was Plaintiff Trial Exhibit11

34, so this is from the composite version.12

THE COURT: All right. All right, so it's your13

representation though, Ms. Curtin, that 1132A is just that,14

it's culled from other patent histories that are in evidence?15

MS. CURTIN: No. 1132A itself is in evidence, Your16

Honor. What you have in front of you is an excerpt --17

THE COURT: Oh, I'm sorry.18

MS. CURTIN: -- from 1132A, which is the file19

wrapper.20

THE COURT: Oh, fine, fine. Okay.21

MS. CURTIN: I'm sorry if I wasn't clear.22


MR. HENDLER: Your Honor, just a quick point. If24

this is already in, why is trial counsel testifying about25


this?1

THE COURT: I'm not sure. No question's been put to2

him yet, but go ahead and put your question to the witness3

concerning 1132A.4

MS. CURTIN: Thank you.5

BY MS. CURTIN:6

Q Mr. Hoffman, did you have involvement, personal7

involvement, in communications with the Patent Office8

concerning the prior art that had been referenced in the Ford9

litigation?10

A Yes, I did.11

Q Okay. Is any of that communication that you had personal12

involvement in reflected in Defendant's Trial Exhibit 1132A?13

A Yes, it is.14

Q Could you very briefly outline what that communication15

was?16

A In --17

MR. HENDLER: Your Honor, the document speaks for18

itself. I mean, again, why is trial counsel -- what's the19

need of trial counsel to come in here and -- The document's20

in. They claim that they needed to have this man come up and21

lay a foundation. The document's in.22

MS. CURTIN: No, Your Honor. We actually, with23

regard to this particular topic, indicated that he had24

personal percipient knowledge and this was the only topic on25


which he was going to testify as a percipient witness.1

THE COURT: Oddly enough, I mean, it's a difficult2

area, but he is, in the context -- he is a percipient witness3

as to the events if indeed there is an argument or testimony4

on behalf of plaintiff that a dump of prior art was visited5

upon the Patent Office that put the patent examiner in the6

posture of it being impossible for that examiner to do even7

what that examiner said he did and more, if it was, in fact,8

the design or the intent of the applicant to simply provide9

this blizzard of prior art to hide something in there, to10

defeat whatever examination otherwise would have been expected11

to occur.12

It seems to me that Mr. Hoffman, given his13

participation, has percipient knowledge that he should be14

allowed to testify to. We've got the other issue of trial15

counsel as well, and I'm not trying to ignore that and that16

has always remained troubling, but it seems to me he is a17

percipient witness, so I will allow him to testify to his18

involvement in the submissions to the Patent Office in -- I19

guess it was 1993 or thereabouts.20

THE WITNESS: 1992 and --21

THE COURT: '92, '93.22

THE WITNESS: -- '93.23

BY MS. CURTIN:24

Q The question was, if you would, as briefly as possible,25


describe the communications you had with the Patent Office1

concerning the prior art references that had been submitted in2

the Ford litigation.3

THE WITNESS: Your Honor, we received some 8504

references, either for patents or articles, from Fish & Neave5

and the other law firms representing the other parties in6

response to interrogatories and in response to receiving --7

I'm sorry, 850 references with respect to the machine vision8

bar code patents that were being sued on. There was9

additional piles of references concerning two other patents10

that were in suit against Motorola, which was one of the11

parties in that litigation.12

The 850 references we then -- and when I say we, it13

was Mr. Lisa and Mr. -- me, Mr. Hoffman, and Dr. Peterson, who14

is our consultant and was our consultant at the time, since15

the time, went through those references and tried to reduce16

the quantity of references down to ones that seemed more17

pertinent to the pending applications than others. We18

provided to the Patent Office an entire list of the19

attachments to the interrogatory answers that listed the20

patent numbers and, as well, provided certain -- for 9021

specific references the particular -- a little paragraph of22

description of what each of the references were.23

Concurrently with doing that, we prepared and sent24

the two letters that have just recently been admitted to25


counsel saying, "Here's what we've provided to the Patent1

Office, here's a copy of the information disclosure statement2

and, if you have any comments on that and think that certain3

references are more important than others and would wish to be4

highlighted to the examiner, we would welcome your feedback5

and provide that to the examiner so he's not overwhelmed and6

if, on the other hand, you think we've added either too much7

or too little, in effect, then let us know and we'll adjust8

the grouping so that -- we don't want to provide too much or9

omit something that would be relevant."10

And we gave them a copy of the claims that were11

pending at the time of those pending applications to allow12

them to judge whether there was anything that was pertinent.13

We never received a response to those letters, so we14

did our best to narrow down the number to a manageable number15

that appeared to have at least some conceivable bearing and16

that came out to be a group of 90 out of the 850. And that's17

what we did.18

BY MS. CURTIN:19

Q After you didn't receive a response to the second letter,20

was any further communication had with the Patent Office? Did21

you send any materials received in connection with the22

litigation?23

A Okay. What was troubling me was the after not doing24

something.25


Anyway, yes, there were -- at some later time we1

received, in the course of the litigation, claim charts, which2

were --3

THE COURT: Now we're talking about the Ford4

litigation, so-called Ford litigation?5

THE WITNESS: Yes. Again, still the Ford6

litigation. There was a lawsuit by Lemelson against the big7

three. There was a lawsuit by Ford and Motorola against8

Lemelson. So in that group of litigations there was some9

claim charts that were prepared, I believe by the Fish & Neave10

firm, that were attempts to read certain prior art references11

on -- or certain claims on the prior art references, like you12

saw with the few that Dr. Horn ended up relying on.13

We received those in the course of the litigation14

for a variety of the parent patents that had issued and were15

in suit, parents to these applications. What we did was we16

made copies of those claim charts, and that was a stack of17

maybe an inch and a half thick or something, and we provided18

that to the Patent Office in these applications, in these19

continuations.20

In addition, we made a list for the Patent Office21

examiner of the references that had been used by Fish & Neave22

in those claim charts and we said, "These dozen or two23

references are a smaller subset that they" --24

MR. HENDLER: Your Honor, objection as to the25


continuing, you know, reference to what Fish & Neave has done1

and didn't do and that he thinks that we've done.2

THE WITNESS: They came from Fish & Neave. I'm3

sorry.4

THE COURT: All right. All right, Ms. Curtin.5

THE WITNESS: In any event, --6

THE COURT: No, hold on. Hold on a second.7

THE WITNESS: I'm sorry.8

THE COURT: Ms. Curtin, how do you respond?9

MS. CURTIN: Fish & Neave was representing Ford. 10

He's relating a historical fact. I don't understand the11

objection, quite frankly, Your Honor.12

THE COURT: Mr. Hendler.13

MR. HENDLER: He can testify as to what was14

received. There were multiple litigations going on and there15

were, as he should know, as the witness should know, and I16

apologize for saying that in the third person, but there were17

multiple counsel involved in those litigations, so he has no18

idea whether or not Fish & Neave was involved in that or not. 19

In fact, if we look at the letters, the letters themselves20

reference other counsel. He, I think, in his testimony on21

2307, referenced Mr. Jenner, but there's Robert Krupka.22

There's Tildon Barner [phonetic].23

MS. CURTIN: Your Honor, he's testified to the best24

of his recollection. He said I believe. That's the best of25


his recollection.1

MR. HENDLER: But that's speculation then. I mean,2

how does he know?3

THE WITNESS: I know because I got the letters from4

Fish & Neave. I mean, I got the claim charts from -- produced5

to us in the Fish & Neave part of the litigation.6

THE COURT: All right. Well, as to the claim charts7

that were produced, certainly you could -- he's testified as8

to the source of those or at least the ones he's talking9

about.10

THE WITNESS: Your Honor, the matters against11

Chrysler and GM, who are the other lawyers here, by the time12

the claim charts arrived had been stayed, so I know they came13

from Fish & Neave.14

THE COURT: All right. All right, overruled then. 15

I'll let the witness continue.16

THE WITNESS: Anyway, we presented not only the17

claim charts to the Patent Office, but also the list of18

references -- or prior art references or alleged prior art19

references that were used in the claim charts and we said20

that, in effect, to tell the examiner that these are the ones21

that they're actually using to apply against art, so this is a22

subset of the 90 that you might find particularly relevant23

because they were, at least, argued to be relevant to the24

parent applications.25


So we provided a supplemental information disclosure1

statement to disclose not only the charts, but that list of2

subset.3

BY MS. CURTIN:4

Q Are those communications, other than the inch and a half5

thick set of claim charts reflected in your binder, behind the6

tab marked DTX 1132A?7

A Yes. There are also some smaller excerpts in 1144A and8

1145A and, in effect, in those three exhibits together all of9

this would be reflected. I believe all of it is also in just10

the one exhibit, but --11

Q As reflected in DTX 1144A and 1145A, did you similarly12

notify the Patent Office with regard to the prior art13

references in the other patent applications that were pending14

at the time?15

A Yes.16

Q Okay, let's move on to the next topic.17

THE COURT: And 1144 and 1145A --18

MS. CURTIN: I believe those are in evidence, Your19

Honor.20

THE COURT: -- are previously in evidence?21

THE WITNESS: These are others of the composite22

exhibits that were --23

THE COURT: Right.24

THE WITNESS: -- introduced as a group and those25


are, again, excerpts.1


MS. CURTIN: If they're not, we would move them at3

this time, 'cause I don't think there's been any objection4

made.5

THE COURT: Let me ask the Clerk.6

Can you determine whether Defendant's 1144 and 11457

-- 1144A and 1145A --8

THE CLERK: They are not in evidence.9

THE WITNESS: Your Honor, this is the one where10

we've --11

THE COURT: They are not in evidence.12

MS. CURTIN: Your Honor, we --13

THE WITNESS: Your Honor, this is the one where we14

offered and it was to be admitted subject to Fish & Neave's15

comments on the --16

THE COURT: Ah, okay. All right. All right. All17

right.18

THE WITNESS: I don't believe we've gotten that19

response yet.20

THE COURT: That's fine.21

Okay, go ahead, Ms. Curtin.22

MS. CURTIN: We're going to shift gears again here,23

Your Honor.24

MR. HENDLER: Your Honor, just to cut to the chase,25


these are the next topic which -- next exhibits which I've1

just been handed are these various patent charts or lineage2

charts, if you will. I believe there may have been some3

discussion about this yesterday, but we'll object to any4

testimony and the insertion of and the inclusion of these5

documents into the record.6

These are documents -- As Your Honor may recall,7

before the holiday break we had multiple representations here8

from Ms. Curtin as to the scope of Mr. Hoffman's testimony. 9

The parties were ordered to go off and discuss what it was10

that Mr. Hoffman's testimony would include. There were11

representations made the following -- I believe it was the12

following day or shortly thereafter to the Court and what13

those representations included included providing summaries of14

some licensing activities, talking about the data dump issue,15

which Ms. Curtin just wrapped up, and the third topic has to16

do with the custodian of records relating to, I think, some of17

the documents we've already addressed.18

THE COURT: The 1980s letters, right.19

MR. HENDLER: These types of charts were never even20

hinted at and, getting beyond the fact that it's, you know,21

beyond the scope of what they represented he would be22

testifying about, this is just pure lawyer argument. What23

they've done is have trial counsel go off and do some work in24

connection with this litigation. This is not something that25


he was doing in prosecution and perhaps he's got percipient1

knowledge of, that's a true fact.2

THE COURT: Well, each one is on top of a particular3

patent. The patent is -- but you're talking about the top4

page, the tree or the --5

MR. HENDLER: Right.6

THE COURT: -- I think it's been referred to. Maybe7

I'm thinking of something else that we had testimony on.8

MR. HENDLER: Right.9

THE COURT: All right. And you're objecting to10

this --11

MR. HENDLER: And I'm objecting. I mean, there's a12

number of grounds. I mean, the individual patents are13

hearsay. The collection and the way they've put this together14

to have the Court draw some inferences from are improper. 15

It's pure lawyer argument here.16

THE COURT: All right, Ms. Curtin, what exactly are17

the batch of exhibits, starting with 1682, and what is their18

purpose? The underlying patents for each of them, are they19

already in evidence?20

MS. CURTIN: The underlying patents, Your Honor, are21

not yet in evidence. They were listed on the exhibit list. 22

As a matter of fact, these charts were listed on the exhibit23

list.24

THE COURT: Okay.25


MS. CURTIN: These are patents to either Symbol or1

assigned to Intermec, which is one of the stayed plaintiffs. 2

The charts on the top, Your Honor, are simply Rule 10063

summaries of information relating to those patents. Actually,4

what you have, Your Honor, is you have a complete copy of one5

patent and the cover sheet from the other related patents that6

are then all referenced together on the tree.7


MS. CURTIN: The purpose, Your Honor, is -- of Mr.9

Hoffman's testimony is simply to lay the foundation for these10

patent trees. We did try to introduce one of them during the11

testimony of Mr. Swartz and it was excluded in part on12

authenticity grounds. And I apologize if I omitted to mention13

that particular category when we were discussing Mr. Hoffman's14

testimony before. Frankly, I forgot about it.15

The purpose of the documents, Your Honor, are, with16

regard to prosecution laches, the question is what is17

reasonable, whether it was an unreasonable delay. It is, we18

submit, relevant what was done by the parties here in their19

own patent practice to demonstrate what is or is not20

reasonable or acceptable patent practice and we believe that 21

-- As a matter of fact, that very theory was recently adopted22

by Judge Huff in a lengthy opinion in Genprobe versus Visis23

[phonetic], which is an opinion of August 5th, 2002 out of the24

District Court for the Southern District of California.25


I have a copy here, if Your Honor would like it. I1

apologize. I did not bring a copy for opposing counsel. I'd2

be happy to give one to them, but one of the things that Judge3

Huff says with regard to prosecution laches is that activity4

by the other party in that litigation was, in fact, probative5

with regard to what was reasonable or not reasonable in terms6

of acceptable patent practice in judging whether the delay,7

the alleged delay, was reasonable. I think it's, personally,8

I think it's a logical proposition.9

THE COURT: All right. Look, that's part of the10

argument I'm sure that I will hear at the end of the day on11

the subject of prosecution laches, and I appreciate that, and12

I've also seen the case that just came out in December that13

one of the parties referenced, but with regard -- your14

objection, Mr. Hendler, is to Mr. Hoffman offering testimony15

concerning his involvement in the preparation of the16

summaries. I mean, obviously, he didn't prepare the patents.17

MS. CURTIN: Your Honor, we did ask them to18

stipulate to the admissibility of these summaries so that we19

could avoid Mr. Hoffman's testimony and they rejected that.20

THE COURT: All right. I'm assuming Mr. Hoffman21

participated in the preparation of them.22

MS. CURTIN: Yes, he did.23

THE COURT: Okay.24

MR. HENDLER: Well, Your Honor, let me address that.25


THE COURT: Yeah.1

MR. HENDLER: First off, again, as I mentioned2

earlier, we had all these various discussions before the break3

because it was based on our pending motion to exclude Mr.4

Hoffman's testimony.5

THE COURT: Let's start with the patents themselves. 6

I mean, what is your objection to the --7

MR. HENDLER: The patents are hearsay, Your Honor,8

and Mr. Hoffman himself cannot proffer any evidence as to9

exactly what happened during the prosecution that might have10

led to the applications being filed in the way they did. 11

MS. CURTIN: Your Honor, --12

MR. HENDLER: Just because this might have happened13

has no bearing on whether or not Mr. Lemelson committed14

prosecution laches.15

THE COURT: The patents were represented to me as16

being Symbol patents or patents assigned to Symbol.17

THE WITNESS: Or its co-plaintiff.18

THE COURT: Or who?19

THE WITNESS: Or its co-plaintiff, Intermec.20

THE COURT: Or co-plaintiff.21

Routinely, I mean, I've received dozens of patents22

of that genre without objection. The patents themselves I'm23

talking about.24

MR. HENDLER: Well, I mean, the other portion of the25


objection is the relevance aspect. What is the relevance of1

whether or not this was done as to whether or not Mr. Lemelson2

committed prosecution laches?3

THE COURT: Well, I think Ms. Curtin's argument just4

was that what's good for the goose is good for the gander, I5

guess, in the sense that, if there is delay or if there is6

conduct of the type reflected in the patents being offered or7

in connection with the patents being offered that is being8

assailed on the part of Defendant Lemelson, that there's9

relevance on the issue of prosecution laches. That's what I10

understood her to basically be saying.11

And that's, you know, again, that's all well and12

good and you all can argue to me about that. That really13

takes us to the issue of, assuming they're admissible as14

Symbol's patents or assigned to Symbol or a co-plaintiff and15

assuming that they are relevant for purposes of our discussion16

right now on the issue of prosecution laches, what then would17

be the utility of and, conversely, the objection to the18

summaries that are being offered?19

And, first of all, are the summaries even necessary20

to explain something that cannot otherwise be explained by21

counsel arguing to me what they show? In other words, do they22

not, in this context, become a type of argument?23

MS. CURTIN: Your Honor, --24

MR. HENDLER: That's, in part, the argument, Your25


Honor. I mean, that's in part the problem. We don't need1

trial counsel here to talk about what happened in other2

people's patents.3

THE COURT: Well, trial counsel can, if the patents4

are in evidence, they could do it standing down there as5

arguing.6

MR. HENDLER: Well, --7

THE COURT: Let me ask Ms. Curtin.8

Why couldn't that be handled in that fashion, Ms.9

Curtin?10

MS. CURTIN: The only reason why it can't be handled11

in that fashion, Your Honor, is because those summaries do, in12

fact, summarize the information in a useful way, which is the13

purpose of a Rule 1006 summary.14

THE COURT: Right.15

MS. CURTIN: If there's no objection to the16

authenticity of them, then I assert they go in as17

demonstrative evidence and Your Honor can give them the weight18

to which all of the other innumerable charts of various kinds19

have gone in. They are a Rule 1006 summary of information20

that's there. It is a graphic illustration of information. 21

They may be relied on by Mr. Witherspoon. We haven't decided22

that yet. They are no different than any of the innumerable23

illustrative charts --24

THE COURT: Well, if I allow the patents, obviously25


Mr. Witherspoon can testify as to whatever -- concerning the1

patents. He could even if they weren't received.2

MS. CURTIN: Your Honor, Mr. Silver could have3

testified without using his 1,500 charts as well.4

THE COURT: Sure.5

MS. CURTIN: Those all went into evidence.6

THE COURT: Yeah.7

MS. CURTIN: This is exactly the same. It is an8

illustrative chart to make the issue easier for Your Honor to9

understand.10

THE COURT: Okay. Well, I certainly welcome things11

that make it easier for me to understand. I'm a --12

MR. HENDLER: Your Honor, may I address that?13

THE COURT: Yeah. Go ahead.14

MR. HENDLER: We don't have a problem with getting15

the patent in per se. It's the charts and having to listen to16

trial counsel tell us all about it. Rule 1006 talks about17

when the contents of voluminous writings cannot be18

conveniently examined in court. Well, we're only talking19

about a couple of patents.20

THE COURT: Well, look, I'm not going to receive the21

cover sheets or the summary charts at this point. I'll22

reserve ruling on receiving those. I won't hear testimony23

from Mr. Hoffman about the content of them. I'll receive the24

underlying patents in each of the -- attached to each of the25


exhibits, 1682, 1685, 1686, 1687, --1

MS. CURTIN: The patents that were attached to 16882

and 1689A, Your Honor, have already been admitted.3

THE COURT: Okay.4

MR. HENDLER: I'm sorry, we couldn't hear that, Your5

Honor.6

MS. CURTIN: The patents that would normally have7

been attached as the relevant exhibits to 1688A and 1689A have8

otherwise been admitted already.9

THE COURT: And there's also Defendant's 2272, the10

patents -- the patent attached there.11

Anyway, I will receive those.12

(Defendant's Exhibit Nos. 1682, 1685-1687 and 2272 admitted)13

THE COURT: I'll reserve ruling on whether I will14

either receive into evidence the charts or, alternatively,15

because certainly certain types of aids and charts that are16

not received into evidence can be employed and you can employ17

them in your arguments to me, but I won't have Mr. Hoffman sit18

here and testify about that or, in essence, provide what I19

really perceive as being more argument of counsel. I'll let20

counsel argue that to me.21

Now Mr. Witherspoon or Dr. Witherspoon can certainly22

testify from the patents, if that's something that's within23

the province of his testimony, otherwise.24

MS. CURTIN: Your Honor, we were not going to ask25


Mr. Hoffman to testify at all to the content other than to1

explain how they were prepared, because Mr. Witherspoon --2

excuse me, was not involved in that.3

THE COURT: All right, then what I will do, so our4

record is complete, since I've already indicated I'm not going5

to actually receive them at this point, I'll let Mr. Hoffman6

testify as to how the top page, the charts, were, in fact,7

prepared, the summary charts.8

So go ahead and tell us, Mr. Hoffman, did you9

prepare them and, if so, how were they prepared or were they10

prepared at your direction?11

THE WITNESS: They were prepared by me and certain12

staff members and I checked the work on it. So basically we13

took the portions of the patents that talk about the history14

and, in some of these instances, that description in words is15

exceedingly complex and it helped to graph it out and so we16

created the charts on the top to -- in some instances by17

people under my direction and then I would check it and add to18

it and so forth.19

THE COURT: Designed to reflect the history of that20

particular patent.21

THE WITNESS: Actually, patents, because there22

obviously are a lot --23

THE COURT: Or patents.24

THE WITNESS: -- a lot on each page.25


THE COURT: Yeah. And, in a fashion, it would allow1

whoever's looking at them to follow from start to finish.2

THE WITNESS: Correct, or starts to finishes,3

depending on the tree.4

THE COURT: Okay. All right.5

THE WITNESS: In some cases they look more like6

bushes than trees.7

BY MS. CURTIN:8

Q Okay, Mr. Hoffman, can you point out, on one of the9

patents, where the actual history is that you used to create10

the graph?11

THE COURT: Just take 1682 as an illustration.12

THE WITNESS: Okay. Actually, 1682 -- Could I13

perhaps take the last one instead?14


THE WITNESS: I'm sorry, let me find the right --16

the easiest one to do this with. The one, 1687, marked17

Intermec-Norand has a patent -- well, several patents18

attached. If you look at -- The second page of the document19

is U.S. Patent 6,138,915 and there's a bunch of sheets of20

drawings numbered. If you go one page past that, there's a21

block of text in column 1 and that block of text or their22

counterparts in other patents was what was used to do this. 23

There are -- the face pages of other patents that were also in24

the tree being -- in other words, if you look at the25


corresponding information for the remainder of the patents on1

the front page.2

And that is also reproduced on -- by the Patent3

Office on the front cover of the patent itself in a section4

called Related U.S. Application Data. So those are the two5

portions of the patents from which the information is6

generated.7

MS. CURTIN: All right. Mr. Hoffman, you now have8

in front of you Defendant's Trial Exhibits 2196, 2197, 2198,9

and 2215. And I'm sure Mr. Hendler has an objection before I10

even ask you what they are.11

THE COURT: Well, let's --12

MR. HENDLER: I do, Your Honor.13

THE COURT: -- see what they are first, and then the14

objection would come when they're -- when there's either15

objectionable testimony or they're offered. But what are16

they?17

THE WITNESS: These are exhibits that were prepared18

under my direction and with my review that were electronic19

searches, if you will, that were extracted from the Patent20

Office's database -- actually, databases. There is a Patent21

Office database that is on line that has some basic22

information and the full text of each U.S. patent that's23

issued since -- well, 1976 and on.24

THE COURT: But they purport to be divisional filing25


histories of McDermott, Will & Emery, the firm Mr. Steiner is1

with, am I correct?2

MS. CURTIN: Yes, Your Honor.3

THE COURT: Yes.4

THE WITNESS: Right. What we did was we picked that5

firm and -- which is captured on one of the front pages of the6

patents, and then -- 7


THE WITNESS: -- looked in the other Patent Office9

database electronically, which has the history of each paper10

filed in that case --11

THE COURT: Okay.12

THE WITNESS: -- and sorted it into the reports in13

the subject areas that are described in the first paragraph at14

the top of each report.15

THE COURT: And am I correct, before I hear Mr.16

Hendler, these are not simply cases in which Mr. Steiner17

himself was counsel of record or --18

THE WITNESS: Correct. We do not -- there -- the19

McDermott, Will firm simply puts their firm name on, and we20

didn't limit it by date, period or by attorney particularly21

prosecuting. That wasn't the point.22

THE COURT: Okay. And Mr. Jenner had raised this23

previously, I believe it was Jenner maybe even yesterday,24

but --25


MR. JENNER: Yes, sir. I'd like to renew it as1

well.2

THE COURT: Yeah. It -- what is the relevance, even3

if it were otherwise admissible, of this particular group of4

four exhibits of the divisional filing histories of the law5

firm that Mr. Steiner's with?6

MS. CURTIN: There are two responses to that7

question, Your Honor. The first most direct one with regard8

to choosing McDermott, Will & Emery as opposed to Graham &9

James or Terrington & Sutcliff is simply that Mr. Steiner10

testified using the word "we". "We" advised clients to file11

claims parallel, divisional claims in parallel rather than12

seriatim and choosing McDermott, Will & Emery was in part a13

response to that testimony that implied that it was a practice14

of his firm that divisionals were to be pursued seriatim -- I15

mean in parallel, rather than seriatim.16

The second part of that, Your Honor, is, as Mr.17

Steiner testified, that is a reputable patent prosecution18

firm, and again we're dealing with the question of what is19

reasonable conduct, what is an unreasonable delay.20

We understand that plaintiffs are making the21

accusation that these claims should have been -- the22

divisionals should have been filed in parallel, rather than23

seriatim, that that contributed to the delay, and the fact24

that this same behavior is engaged in by other firms we25


believe is probative on that point.1

MR. JENNER: May I respond, Your Honor?2

THE COURT: Well, yeah, but before you do, certainly3

my view as to the Symbol patents, for example, that we were4

just dealing with and what happened with regard to them is5

kind of one situation. But here we're talking about wholesale6

activity on a host of patents by a law firm, and I'm assuming7

these -- the clients or the assignees of the various patents8

or the -- whoever is making the patent applications are not9

parties to this lawsuit. That just seems to me to be so far10

afield that I don't see how it could possibly be relevant.11

MS. CURTIN: Well --12

THE COURT: Mr. Jenner, go ahead.13

MR. JENNER: A few things, Your Honor. First of14

all, Mr. Steiner did not, in my recollection, testify15

consistently with how Counsel recalls it. I thought Mr.16

Steiner testified as to his practices. He specifically said,17

I can't speak for the other people in my firm, I don't know18

what their practices are. He also said some -- when asked the19

general question of what can you do, he said, sometimes you20

file right away, sometimes you wait, my practice is to file21

right away.22

These are not his, if somebody else decided to wait23

so what? From what I can see there's not one thing here24

that's more than five, six, seven years long. We're talking25


about delays of 39 years. What does this have to do with1

anything? These are patents issued to other parties and, Your2

Honor, this again, I wish to repeat my -- I'd like to find a3

word other than "outrage" that I used yesterday, but why is4

Counsel sitting up here testifying about or being the conduit5

for things like this when if it was even marginally relevant,6

which it's not, they could have put this in the expert report7

of somebody like Mr. Witherspoon, which they didn't. Maybe8

this a way to deal with the fact that they didn't put it in9

the expert report, but they are now using Counsel as a conduit10

to get something in that's totally irrelevant, has something11

to do with somebody else, it's got nothing to do with Mr.12

Steiner's testimony for the reasons that I said. This is just13

something that shouldn't happen, particularly when Your Honor14

was not given notice of this when you were told what he was15

going to testify about.16

THE COURT: All right. Well, I'm satisfied that17

it's simply not relevant. I'm not going to receive 2196,18

2197, 2198 or 2215, the divisional filing histories of the law19

firm McDermott, Will & Emery. I just don't find that it has20

any relevance. So the objection will be sustained as to those21

four exhibits.22

All right. Why don't we take -- did you have much23

more with Mr. Hoffman?24

MS. CURTIN: We have one more document sort of in25


this category, Your Honor, and then the next category is1

licensing.2

THE COURT: Okay.3

MS. CURTIN: And hopefully that will go fairly4

quickly.5

THE COURT: Okay.6

MS. CURTIN: We are trying to move along here. I7

apologize for that.8

THE COURT: The other -- the next document is the9

same -- is McDermott, Will & Emery type of --10

MS. CURTIN: No, Your Honor, it's just a --11

THE COURT: Exemplary patents with long pendencies?12

MS. CURTIN: -- patent -- it's a prosecution laches-13

related exhibit.14

MR. JENNER: To assist Your Honor in scheduling,15

there will be something we'll have to say about this, too. So16

if makes sense to take the break now or --17

THE COURT: Yeah. Let's go ahead -- we'll go ahead18

and take a 10-minute recess. We'll be in recess until 10:3019

and then reconvene on the next exhibit.20

(Court recessed at 10:20 a.m., until 10:35 a.m.)21

THE COURT: Have a seat everybody.22

All right. You may proceed, Ms. Curtin.23

BY MS. CURTIN:24

Q Mr. Hoffman, you have in front of you what's been marked25


as Defendant's Trial Exhibits 2217 and 2217A; correct?1

A Yes, I do.2

Q Can you tell us what they are.3

MR. HENDLER: Your Honor, I guess here we go again. 4

This is --5

THE COURT: Let me get a record as to what they are6

first and then --7



THE WITNESS: This is a --10

BY MS. CURTIN:11

Q Which this?12

A Okay. Defendant's Trial Exhibit 2217 is a summary list13

of patents that had come up either from a search that was done14

last year or in the course of the trial or other documents in15

which patents were mentioned or introduced that had pendencies16

exceeding certain cutoff periods. Exhibits --17

THE COURT: Well, they run from 11 to 35 years in18

terms of years pending; am I correct?19

THE WITNESS: Yeah. The search was done for patents20

that were over 20 years, the computer search, and the21

remaining ones were patents that came up and -- well, the22

remaining ones and some of the ones in the first section,23

longer than 20 years, were done -- came up from the other24

sources.25


The other sources, Your Honor, were, for one thing,1

the trees that you saw or ones like it that were introduced,2

patents that were used in connection with Symbol witnesses,3

certain --4

BY MS. CURTIN:5

Q Did any of them come from the briefing?6

A -- certain cases that were cited in the prosecution7

laches trial briefs had mention of certain patents, so the8

patents in those. Ones that were in the briefs either in this9

case or on a -- on the interlocutory appeal there had been10

certain patents that had been mentioned. And all that -- all11

those examples were collected together by me and people under12

my direction with the ones that had been located in the13

pretrial search that was -- I mean the pre -- before the14

pretrial procedures were completed. And so from all of those15

trial exhibits this summary was compiled, and Exhibit --16

that's 2217. And 2217A is the front page and column 1, in17

other words, two pages for each of the patents on the list.18

THE COURT: All right. All right. And you're19

seeking to offer, then, 2217 to 2217A?20

MS. CURTIN: Actually, Your Honor, we were only21

seeking to offer 2217 and avoid having to offer 2217A by22

giving Your Honor a summary.23

THE COURT: Oh, I see. Okay. Okay. Fine.24

Mr. Hendler.25


MR. HENDLER: Well, this problem -- this is 70 times1

-- 7500 times worse, the problem that we just visited with the2

McDermott, Will and Emery summary, so to speak, that Your3

Honor did not accept. We have here a collection of work4

product by trial counsel. I submit that the only reason that5

they are having trial counsel put them on is because their6

experts didn't include this in their reports. It's -- again,7

the fact of the matter is it's just not relevant to anything8

here.9

The fact that there might be a list of some patents10

that trial counsel selected to include as exemplary on this --11

on this list, and considering the fact that there are millions12

of patents here, I don't understand the probativeness of this13

-- of this offer here. But again, it goes -- it goes to the14

fact that it's for the same purpose, what they're trying to do15

-- that they tried to do with the McDermott, Will Emery16

summaries. It's --17

THE COURT: Well, I think the McDermott, Will &18

Emery had a -- had a different focus, as well, with respect to19

Mr. Steiner perhaps, but --20

MR. HENDLER: Well, but then this has -- if that was21

remotely relevant to Mr. Steiner as they argued -- and22

obviously we didn't believe so and Your Honor didn't accept23

them -- this has even less relevance. I mean, the number of24

law firms here that -- I couldn't even count them.25


THE COURT: Ms. Curtin.1

MS. CURTIN: Your Honor, Mr. Jenner stood up just2

before the break and argued to you that the problem with the3

McDermott, Will & Emery lists were that some of them were4

extremely short duration, maybe even, you know, three to five5

years, what did that have to do with the thirty-nine years at6

issue in this case. That's exactly -- that's exactly the7

argument that this exhibit is directed to. The patent8

prosecution -- patent prosecution laches defense -- I9

apologize, Your Honor, I stumbled over that one -- is -- by10

plaintiffs is directed to the length of time it took Mr.11

Lemelson to prosecute these applications.12

THE COURT: Yeah. I don't want to spend an13

inordinate amount of time on this now. I'm going to reserve14

ruling on 2217 and I'm going to let you include it in your15

post-trial briefs, the -- addressing this issue as to the16

admissibility of 2217 and the underlying 2217A as to its17

relevance.18

I certainly know that on the issue of prosecution19

laches considerable focus will be had, as it has in the past,20

on the pendency, the period of time or the interval of21

pendency and conduct of parties or absence of conduct of22

parties in those intervening years.23

I'm not sure, as I sit here right now, that the24

relevancy of any one of these individually or collectively,25


other than they say what they say, patent applications pending1

a number of years, just what the relevance is. But I'll let2

the parties argue that and I'm not going to keep the witness3

up on the stand on this. There's really nothing more he could4

add to it. He's talked about what he put together, and you5

all can include it in your post-trial briefing. 6

So that ruling on the admissibility of those two7

exhibits, 2217 and 2217A, Mr. Clerk, will be reserved pending8

post-trial briefing, then.9

MS. CURTIN: I'll just note for the record that we10

have not actually offered 2217A, Your Honor.11

THE COURT: Well, all right. 2217, then. I'm -- I12

misspoke. You're right.13

MS. CURTIN: We'll now shift to our last topic, Your14

Honor, licensing. And we hope maybe this one can go a bit15

quicker.16


BY MS. CURTIN:18

Q Mr. Hoffman, do you have in front of you Defendant's19


A Yes, I do.21

Q What is it?22

A This is a -- excuse me, this is a list of companies that23

had signed licenses under the Lemelson patent portfolio,24

including the patents-in-suit here, through the end of 2002. 25


It is a document that is maintained on a regular basis by one1

of my employees.2

Q Does that list relate to those boxes over there?3

A Yes. The five boxes that are sitting on counsel table4

are filled with licenses -- copies -- with a single copy of5

each of the licenses. The licenses average maybe fifteen6

pages and there's somewhere between nine hundred and a7

thousand in there, and so there's -- and those are all -- one8

copy of each is in those -- makes up those five boxes.9

Q How many total licensees are listed on Defendant's Trial10

Exhibit 1018?11

A I'm sorry, did you say how many?12

Q How many licensees are listed?13

A There is 967.14

MS. CURTIN: Your Honor, we offer Defendant's Trial15

Exhibit 1018.16

THE COURT: Any objection, Mr. Hendler?17

MR. HENDLER: No, Your Honor.18

THE COURT: All right. That'll be received.19

(Defendant's Trial Exhibit 1018 admitted)20

BY MS. CURTIN:21

Q Are there any confidentiality provisions in the licenses22

as -- to your knowledge?23

A Yes, either all or very close to all have confidentiality24

provisions.25


Q Why?1

A There are -- there is confidential information of the2

licensees of -- I believe, in two categories. One is3

licensees typically don't want to release how much they paid4

on an individual basis. There are a few that have, but not5

very many.6

Second, the licensee fees are calculated using7

confidential business data concerning subcategories of the8

company's sales or usage of equipment and so forth and that is9

often attached to the license or referred to the license, and10

therefore a confidentiality provision is put in.11

Q Could you turn to Defendant's Trial Exhibit 2309.12

A Yes, I have that.13

Q What is that?14

A This is a summary of each of the licenses -- licensees15

with the date, generally the effective date; the amount that16

each has paid; and whether or not they were in a lawsuit17

before they settled, brought by Lemelson; what type of18

industry grouping they're in; and the last column is a19

cumulative total for the entire licensing program from License20

1 through the end or through whatever period you want to look.21

Q Excluding the columns Industry Group, Lawsuit, and22

Cumulative Total, is this a summary of information that was23

obtained from the licenses themselves?24

A Yes.25


Q What was the source of the Lawsuit category?1

A The complaints or lists taken from the complaints of the2

various lawsuits themselves.3

Q Okay. And the Cumulative Total is exactly what it says,4

isn't it?5

A Yes, that's just a summary of -- done by -- from the6

Total Fee column, just cumulating it as it goes.7

Q Can you tell us what is -- what the number is that's in8

the Total Fee column?9

A The cumulative total from licenses signed to date is10

1.316 billion dollars, in other words, $1,316,000,000 and some11

change. That represents money that has been collected, or in12

a -- for a very small portion, money that is unconditionally13

due but has not yet been collected.14

Q Okay. What is the source of the categorizations in the15

Industry Group column?16

A In the licensing files -- in other words, there's a file17

-- one or more files, I should say, for each of the licensed18

companies, and one of the things that is typically done is to19

print out information about the company either from the20

database sources like Hoovers or 10-K reports or annual21

reports and the like. Those are kept in one section of the22

licensing -- of the licensee file, along with the various23

correspondence to the company and so forth. And the24

designations under Industry Group are intended to denote the25


principal business of the company taken from that information.1


Trial Exhibit 2309, but we would ask, Your Honor, because the3

fee payments are considered to be proprietary information of4

third parties, that the exhibit be filed under seal.5

THE COURT: All right. Any objection, first of all,6

to 2309?7

MR. HENDLER: Well, the -- for the most part no,8

except for the column Industry Group. Industry Group, it's9

not just simply a matter of looking at a document and it's10

well established that this is the group that it comes from. 11

It still requires some subjective thought from trial counsel12

and I'll -- and I'll suggest, for example, as one example,13

NEC, for whatever reason that trial counsel decided to put it14

as an electronic, they make some sort of distinction between15

that and semiconductor, NEC makes semiconductors or is16

involved in that area. So I don't really understand, you17

know, where this is all coming from but for trial counsel's18

attempt to arrange these or group these in some way for you to19

draw an inference, it's just pure argument, purely argument. 20

But we don't have -- I mean, aside from that column, it is21

what it is.22

THE COURT: All right. Ms. Curtin, what about the23

Industry Grouping category?24

MS. CURTIN: Your Honor, that -- the Industry25


Grouping is -- is intended to provide Your Honor with1

information regarding these companies, to relate them directly2

to the testimony that was provided by Mr. Swartz and Mr.3

Silver regarding the industries to which their products are4

directed. And --5

THE COURT: Well, that -- the one example, NEC,6

electronic versus semiconductor, what -- I suppose we could7

look at each one of these and --8

THE WITNESS: May I answer how that was done, Your9

Honor?10

THE COURT: If you don't -- yeah. Go ahead, you11

were involved in that, how was it?12

THE WITNESS: The listing is intended to -- is --13

provides the -- we used the general -- the category of the14

most prominent of the company's business. It is certainly15

true that NEC -- in fact, many of the largest semiconductor16

companies in the world who are -- who are nearly all licensed17

are -- have that category where they sell electronics products18

and semiconductors, and since we -- they may be some of the19

largest semiconductor companies in the world and yet they sell20

more electronics than they semiconductors, meaning like21

screens and computers and so forth. So rather than having22

something complex which had them categorized across industry,23

we simply endeavored to put them in the category in which they24

were most -- in which the bulk of their business was.25


THE COURT: All right. Well, I'm sure the parties1

could disagree about some of the descriptions. Perhaps there2

are others that they really wouldn't have any disagreement3

about.4

MR. HENDLER: Your Honor, may I further address5

this?6

THE COURT: Yeah.7

MR. HENDLER: Yeah. The underlying information from8

which the Industry Group selections came from was, number one,9

hearsay. And, number two, we just heard the witness tell us10

that they -- that, you know, some of these companies have -- 11

you know, are in various businesses and whatnot. Well, they12

made a selection as to which ones to show you. I don't really13

know what inference right now that they want to have you --14

have you gain from that, but the fact of the matter is it's15

not just a straight raw data sort of thing. Which is why16

we're not objecting to the name, to the date, to the fee.17

THE COURT: Right. And Ms. Curtin, what is the18

utility of -- from defendant's perspective of ascribing19

Goodyear to "auto supplier" which, you know, I certainly would20

assume to be true, or Caterpillar or Boeing being "other" and21

something else being like Lucas -- or Quick Logic being22

semiconductor? Why do I even need that?23

MR. HENDLER: Your Honor, I know that was -- I know24

that was directed to Ms. Curtin, and I'm going to propose25


something that might cut this short. We would -- we wouldn't1

have an objection to this document if we got rid of that2

column.3

THE COURT: No, I understand that. I understand4

that.5

MR. HENDLER: If that's not sufficient, you know --6

THE COURT: What do we need the column for, in other7

words?8

MS. CURTIN: Your Honor, it's my understanding from9

reading Dr. Carlton's report that one of his arguments with10

regard to the relevance of our licensing program is that the11

licenses do not reflect payments for the patents-in-suit, that12

they're not directly related to the patents-in-suit. It's13

what in the context of secondary indica of commercial success14

would be called nexus.15

I realize that issue is not here; but, to the extent16

we're relying on these for supporting that it's a pioneering17

patent, again you need the same connection between the18

licenses and the patents. We have heard testimony from Mr.19

Swartz and Mr. Silver regarding the use of their products by20

specific industries and customers in those industries. The21

purpose of this allocation, if you will, categorization, is to22

draw that connection that the inference that these licensees23

in these groups would be interested in licensing these24

specific patents because those are in fact the patents related25


to the equipment that they use.1

THE COURT: All right. Look, recognizing that the2

Industry Group column is simply the subjective description by3

defendant Lemelson, who's tendering this, I'll go ahead and4

receive under seal 2309 as it's framed, and the other -- the5

dates and the other objective data such as amounts and so6

forth are not really at issue. And if it becomes an issue,7

I'll let the parties argue as to any weight to be given to8

that subjective grouping that's been made.9


BY MS. CURTIN:11

Q Mr. Hoffman, there is a variation between the number of12

licensees as shown on Defendant's Trial Exhibit 2309 and the13

number shown in 1018. Can you explain that?14

A Yes, I can. 2309 shows -- has 930 entries whereas the15

other one had 967.16

THE COURT: There's 37 variance there, so --17

THE WITNESS: Right. There are a number of licenses18

in which a group of companies settled as a group in -- but a19

common fee was paid and they're in common businesses even20

though they're not necessarily owned by a common parent.21


THE WITNESS: And so that -- we didn't -- in the23

list that's 1018 we did list separately licensees when they24

were specifically mentioned if there were several in the same25


license; whereas, in 2309, because there's one common fee1

paid, we tended to keep it on the same line.2


BY MS. CURTIN:4

Q You have in front of you Defendant's Trial Exhibits 2310,5

2311, 2313, 2314, and 2315, correct?6

MR. HENDLER: I'm sorry, can I have those numbers7

again, counsel?8

MS. CURTIN: 2310, 2311, 2313, 2314, and 2315.9

THE WITNESS: 10, 11, 13, and 14?10

BY MS. CURTIN:11

Q And 15.12

A All right. 10 -- not 14, just 15?13

Q Yeah. Let's set aside 14 for the moment.14

A Okay.15

Q 2310, 2311, 2313, and 2315.16

A Okay. Yes, I have those four documents now pulled apart.17

Q Okay. What is the source of the information in those18

four documents?19

A These are -- the original document, Defendant's Trial20

Exhibit 2309, is formatted as an Excel spreadsheet and these21

are basically sorts on the Excel spreadsheets with a cover22

page that translates the totaling information.23

THE COURT: Breaks down each of the other columns in24

2309 by Industry Grouping or by Lawsuit, by Amount, and by25


Date, then?1

THE WITNESS: Correct. In other words the backup is2

a sort of the spreadsheet and then the front page of each3

document, 2310, 11, 13, and 15 are a summary of the resorted4

spreadsheet. And in these the confidential columns of Total5

Fee by Licensee and Cumulative Total have been omitted, and in6

place of them are just the group total for the category in7

question.8

THE COURT: Okay. And I'm anticipating there'll be9

objection to the one that breaks down by Industry Grouping. 10

Also an issue of whether we really need the extra paper. I11

mean it's somewhat redundant, but it also focuses, to the12

extent we need to focus, on these other subgroups, I suppose. 13

Why do we -- for purposes of this case why do we need that14

broken down in that fashion?15

MS. CURTIN: Your Honor, Mr. Hoffman was only here16

to testify to authenticity. But the reason for each of these17

subgroups is they are directed to the nexus argument. And,18

again, those are -- those are arguments that we will make with19

regard to each category that -- for instance, with regard to20

the litigations there were specific patents-in-suit in each of21

those litigations. If you take a -- even a package portfolio22

license arising out of litigation in which specific patents23

are at issue, I think it's a fair inference that you were24

interested in getting a license on those specific patents.25


THE COURT: All right. Well, is there objection to1

any of the four or all four of the exhibits just testified to?2

MR. HENDLER: As Your Honor predicted, there are. 3

To the extent that 2309 is raw data -- and, you know, we4

obviously submit and you have our objection about the Industry5

Group issue and there's some question about a lawsuit, but6

we'll get beyond that, these four are now purely argument. 7

They've taken the raw data, they're presenting them in a way,8

and they're doing it through trial counsel to argue a point to9

you. Well, it's pure argument. It's pure argument.10

THE COURT: Yeah, I think it is. You've got the11

underlying --12

MS. CURTIN: Your Honor, if I might.13

THE COURT: You've got the underlying document in14

the form of 2309, and I'll certainly let you make your15

argument as to what it -- you know, what it shows or what it16

doesn't show. But I don't want to --17

MR. HENDLER: Your Honor, one other --18

MS. CURTIN: Your Honor, if I -- if I could, please.19

THE COURT: Yeah. Go ahead, Ms. Curtin.20

MS. CURTIN: I would like to finish laying the21

foundation, the authenticity with --22

THE COURT: Oh, I don't have a question as to the23

authenticity. There's -- 24

MS. CURTIN: If I could finish, Your Honor, please.25


-- with Mr. Hoffman, have him explain some of the1

information that's on these sheets very briefly, we expect2

that we may -- the purpose of most of these, Your Honor, is to3

use in the cross-examination of Mr. -- of Dr. Carlton.4

MR. HENDLER: Well, then -- 5

MS. CURTIN: And we would like the information in6

the record as -- so that there's no question about the source.7

THE COURT: Okay. I want to -- I want to save some8

time. I want to save some time. I don't question the9

authenticity. I think the witness has already testified as to10

how they were developed. If I -- I'll revisit the issue. If11

I determine these could be appropriately used on cross-12

examination of another witness, then I'll revisit that. But13

at this stage I just don't see -- I think they're redundant of14

what we already have, and I do think they're argument, at15

least at this stage. I may change my view of that. But we16

don't need any other foundation. They're authentic. I don't17

-- I don't question they are.18

MS. CURTIN: I was simply going to ask him if he19

could tell us a few pieces of information that relate to the20

categorizations -- 21

MR. HENDLER: Your Honor, we would object to that,22

as well.23

MS. CURTIN: -- under Industry Groups.24

THE COURT: I just don't think it's necessary. I25


mean, I don't have any question concerning the categories. 1

They're authentic. If I thought they were other than argument2

at this point, I'd receive them, frankly, because they simply3

are breakdowns of what's already in evidence. But I just4

don't think we need it in this format twice. All right.5

MS. CURTIN: I have one more -- one more piece, Your6

Honor.7

BY MS. CURTIN:8

Q Mr. Hoffman, would you please turn to Defendant's Trial9

Exhibit 1019A.10

A Yes.11

Q What is that?12

A This is a copy of the settlement agreement with Lemelson13

-- between Lemelson and the Ford Motor Company with the14

attached option agreements that were exhibits to that15

settlement agreement.16

Q Do those option agreements set out in their terms the17

basis for fee calculations under those option agreements?18

A Yes.19

Q Could you point the Court to those provisions, please. 20

Pick -- I think they're the same, so if you pick the auto21

supplier agreement, that would be satisfactory.22

A The first 14 pages of the exhibit is -- forms the23

settlement agreement with Ford itself. Then there's a24

Schedule A, which is a two-page document, and a Schedule B and25

0094

C, which are short documents. And then there's, after that,1

two schedules that -- one of which was called the PDG Option2

Agreement, and the other one called the Auto Supplier Option3

Agreement. So you have to turn to Schedule E to get to the4

Auto Supplier Option Agreement, which is the last 11 pages of5

the document.6

Within that Auto Supplier Option Agreement there are7

certain rates identified. I need to find the page. I'm8

sorry. Okay. On page 7 the --9

Q Is the -- is the method of calculation set forth there a10

method that is standardly used by the Lemelson Foundation11

Partnership in calculating its license fees? Not the rate,12

but the method.13

A Okay. I'm sorry. Could you say that again.14

Q Is the method of calculating the license fee set out in15

that provision one that is commonly used by the Lemelson16

Foundation Partnership in calculating the fee?17

A Yes, with the -- you excluded for your question the18

rates. Yes.19

Q Correct.20

A The method of calculation is commonly used --21

Q All right.22

A -- of this form.23


Trial Exhibit 1019A and ask again that that be accepted under25

0095

seal because of the confidentiality provision.1

THE COURT: All right. Any objection to 1019A?2


THE COURT: All right. That will be received under4

seal.5

(Defendant's Exhibit No. 1019A admitted)6

MS. CURTIN: Nothing further, Your Honor.7

THE COURT: All right. Thank you.8

MR. HENDLER: May I have two minutes, Your Honor,9

before we proceed with cross? Just two minutes.10

THE COURT: Sure. Do you need a break?11

MR. HENDLER: Yes. Just two minutes. Thank you.12

THE COURT: All right. Let me make sure, counsel --13

I had two other documents that were passed up to me, 2312 and14

2314. Those were not the subject of examination. Just wanted15

to make sure. But I'll give this back to the clerk, so --16

All right. Let's take, then, just a short -- let's17

try and keep it just to five minutes. It's hard to do it in18

two, 'cause people can't leave and get back. But a five-19

minute break.20

How long do you anticipate, roughly? I'm just21

trying to gauge -- I've got a meeting at noon with colleagues22

down the hall, and if I'm going to have to push into the noon23

hour or bring you all back, I just want to gauge. Will you24

be -- 25

HOFFMAN - CROSS0096

MR. HENDLER: That's the sort of thing I'm trying1

to, you know, figure out in the next two minutes, Your Honor.2

THE COURT: Okay.3

(Court recessed at 11:05 a.m., until 11:19 a.m.)4

THE COURT: -- proceed.5

MR. HENDLER: Your Honor, I think I owe you an6

answer. I think we're going to try to get this done before7

the lunch so everybody --8

THE COURT: All right. Well, if not, we'll come9

back after. I've just got a meeting that I've got to make10

down the hall.11

CROSS-EXAMINATION12

BY MR. HENDLER:13

Q Good morning, Mr. Hoffman. How are you?14

A Good morning.15

Q We -- in addition to this litigation, you're currently16

trial counsel for Lemelson in at least 10 other pending17

litigations?18

A I think the number's exactly 10, isn't it, but it's --19

most of them are stayed. All but one are stayed.20

Q Okay. But there are -- they're still pending, despite21

the fact that they're stayed; right?22

A Yes. And I don't know if trial counsel has been23

determined yet. I'm counsel in those.24

Q Okay. And those are patent litigations?25

HOFFMAN - CROSS0097

A One of them is a contract dispute, but the others are1

patent litigations.2

Q Okay.3

THE COURT: Are they stayed -- does the stay of4

those cases have anything to do with the pendency of the trial5

of this case?6

THE WITNESS: Yeah.7

THE COURT: Okay.8

THE WITNESS: They're stayed and pending --9

THE COURT: Okay.10

THE WITNESS: -- this case.11

THE COURT: So there's a nexus.12

BY MR. HENDLER:13

Q And currently there are several hundred defendants14

remaining in those actions?15

A Yeah, somewhere of about 270.16

Q Now, over the last two years or so, about 70 -- 7017

percent of your time has been spent on Lemelson matters; isn't18

that right?19

A In calendar years 2001 and 2002 that's -- you asked me in20

the deposition if I could estimate that, and that was the21

estimate I gave you. But I don't know how close that is. I22

haven't looked at records. It's somewhere on that order of23

magnitude, but could be more, could be less.24

Q Okay. Now, I think you also mentioned earlier in your25

HOFFMAN - CROSS0098

direct you've been working on Lemelson patent matters --1

excuse me, Lemelson matters since about 1991; is that right?2

A Yes, since the beginning of '91.3

Q And you're being compensated for your time here; isn't4

that right?5

A Yes, I'm being compensated by my client.6

Q And your client's Lemelson Foundation, the defendant?7

A The Lemelson Foundation Partnership, yes, which is the8

defendant.9

Q Okay. And in addition to being compensated here, you're10

also being -- you also have a financial stake in the outcome11

of this litigation, don't you?12

A Not directly, no.13

Q Well, indirectly; right?14

MS. CURTIN: Objection, Your Honor. This is really15

personal and confidential information. I think Mr. -- I think16

Mr. Hoffman's bias in favor of the Lemelson Foundation17

Partnership we'll stipulate to. It's obvious. It's the same18

situation as with, say, Mr. Swartz or Mr. Silver. We didn't19

ask them what their salary was, we didn't ask them what their20

stock options were. It was obvious that they were interested21

in the outcome of the litigation, and it was not necessary. I22

don't believe that this is necessary, either.23

THE COURT: All right. Well, no. Several parties24

have had a financial interest.25

HOFFMAN - CROSS0099

MR. HENDLER: I don't intend to ask him how much1

he's making.2

THE COURT: Right.3

MR. HENDLER: All I'm setting up is that he's being4

compensated and that he has a financial stake in the outcome5

of this case.6

THE COURT: All right. Go ahead. I'll let you do7

that. I think you've done that, but go ahead if you --8

THE WITNESS: Well, to answer your question, I think9

it would be in my financial interest if we won, rather than if10

we lost, yes.11

BY MR. HENDLER:12

Q Now, isn't it true that it's not possible to attribute13

the license fees in the Lemelson portfolio licenses to14

individual patents?15

A Not the way you stated the question. We didn't calculate16

-- we didn't do that attribution. But I think it's possible17

to attribute it.18

Q Okay. Can we get Plaintiff's Exhibit 50, please.19

MS. CURTIN: Your Honor, I'd like to just20

interpolate an objection to this line of questions. We very21

carefully did not ask Mr. Hoffman any questions interpreting22

the license fees or how they were calculated because of the23

issue of his being trial counsel and these being essentially24

arguments.25

HOFFMAN - CROSS00100


MS. CURTIN: If they choose to go into this, that's2

fine. But I would like to note for the record that they are3

the ones that are raising this issue with this witness.4

MR. HENDLER: Your Honor --5

THE COURT: All right. Well, there's been -- the6

issue hasn't really yet been raised, but go ahead. The7

witness has Exhibit 50, Defendant's Response to Plaintiff's8

Third Set of Interrogatories.9

MR. HENDLER: Correct.10

BY MR. HENDLER:11

Q If we can turn to page 13, please. And I believe it's12

highlighted, the response to Interrogatory Number 7. Doesn't13

it say that, "The license fees were not separately calculated14

by individual patent and therefore it is not possible to15

precisely attribute proceeds to any individual patent"? Does16

it say that?17

A Yes. That's exactly what I said before.18

THE COURT: Well, so we have it in context, it19

refers back to the response to Interrogatory 6 --20

THE WITNESS: 7, Your Honor.21

MR. HENDLER: 7, Your Honor.22

THE COURT: Or 7. But, as I understand it, your23

testimony is not that it is impossible to go to an individual24

instance of, I don't know, Advanced Digital Information25


Corporation and make a determination as to the patent at issue1

with regard -- or that resulted in that particular licensing2

arrangement. That could be accomplished; am I correct?3

THE WITNESS: Yes. But there was other parts of my4

-- the reason why I quibbled with the way he had originally5

phrased the question.6


THE WITNESS: That is that -- I'm trying to8

constrain my -- restrain my testimony and not just make9

argument. But it -- I think it would be possible to introduce10

evidence concerning the reasons why companies were interested11

in taking licenses -- 12

THE COURT: Sure. Right.13

THE WITNESS: -- and to attribute those to14

particular patents or lines of patents. What this sentence is15

saying and what my --16

THE COURT: But nothing that's been done thus far17

attempted to do that?18

THE WITNESS: Well, we --19

THE COURT: These -- these breakdowns, I should say.20

THE WITNESS: No, the -- well, okay. The point of21

some of these breakdowns may be used to create such22

inferences, but we have not -- it's not just a matter of which23

patents is in -- is in suit, Your Honor. The -- the point is24

that in nearly all cases the companies took packaged licenses25


that they wanted freedom from suit on any Lemelson patent.1


THE WITNESS: And so the question is why were they3

interested in signing a package license, was it these patents4

or some other patents. And there was not in the license fee5

any sort of calculation. But you saw the Ford agreement --6

THE COURT: Yeah.7

THE WITNESS: -- where it was calculated based on8

certain activities.9

THE COURT: But hence the response to Interrogatory10

7, the license fees were not separately calculated by11

individual patent.12

THE WITNESS: Correct.13

THE COURT: All right. All right.14

MR. HENDLER: And I would submit, Your Honor, it15

says, "and therefore it is not possible to precisely attribute16

proceeds to any individual patent."17

THE WITNESS: To precisely do that, that's correct.18

THE COURT: Okay. Okay. All right.19

BY MR. HENDLER:20

Q Now I'd like to address one of the licenses that is21

listed in I guess it's 2309.22

MR. HENDLER: Is this one that you've taken under23

advisement, Your Honor, or is this one that's in?24

THE COURT: The --25


THE WITNESS: It's been received. That's that1

master list.2

THE COURT: Hold on. I'll tell you. Let me find3

2309.4

MR. HENDLER: It's Defendant's Trial Exhibit 2309. 5

It's in. I'm told now it's in.6

THE WITNESS: It's in under confidentiality.7

THE COURT: Somebody hold it up so I can see it. 8

Yeah, that's in. Sure. Sure.9

MR. HENDLER: It's the chart. Okay. Thank you.10

BY MR. HENDLER:11

Q Now, I'd like to --12

THE COURT: That's the one where there was only --13

the only objection to it, as I recall, was the Industry14

Grouping. Yeah.15

BY MR. HENDLER:16

Q And I'd like to look at an example.17

MR. JENNER: Your Honor, out of an abundance of18

caution I believe Counsel is going to go into some of the data19

in the agreement. Since, as I think Mr. Hoffman has already20

indicated and it's my understanding, virtually all, if not21

all, of these agreements have confidentiality provisions and22

would be under seal, I understand that there are some people23

who have been present in the court to follow the trial but24

would not otherwise be entitled to have access to this, and I25


call it to the Court's attention as to whether or not for1

purposes of this line of examination --2

THE COURT: Well, you all know who they are. You3

know, I frankly haven't a clue, except those who are counsel4

that participated, who the other folks are in the courtroom. 5

You could shed light on that.6

MS. CURTIN: One of the -- one of the possibilities7

that I had noted in my notes for exactly this eventuality8

would be that instead of referring to the name of the licensee9

we could refer to it by the line number on the chart, which is10

in exhibit under seal.11

THE COURT: Yeah.12

MS. CURTIN: Those of us who need to know would know13

what we were talking about -- 14

THE COURT: That's fine.15

MS. CURTIN: But it wouldn't be a matter of public16

record.17

THE COURT: Number 7, for example.18

MR. HENDLER: I believe that'll work. And if19

there's something -- if I have to fine tune this, I'll do it.20

THE COURT: Okay.21

MR. HENDLER: If not, we'll address it then.22

THE COURT: Okay. The only -- you know, I didn't23

know whether we had reporters. I know we sure don't have24

local reporters. They -- they beat a path out of the building25


when they walk in and see what's in here. But --1

MR. HENDLER: You'll just have to bear with me a2

second while I try to find the number for -- 3

THE WITNESS: One of the people -- one of the4

people, Your Honor, is my wife, so --5

THE COURT: Well, that's -- and she is not a6

reporter, I trust, so that's --7

THE WITNESS: She's what?8

THE COURT: Not a reporter, I trust.9

THE WITNESS: No, she's -- she's not.10

BY MR. HENDLER:11

Q Okay. So Number 59.12

A Yes.13

Q Isn't it true that that -- that the --14

THE COURT: She might want to ask you some15

questions, since you're under oath, though, Mr. Hoffman.16

BY MR. HENDLER:17

Q Isn't it true that that agreement for the licensee18

identified in Row 59 of -- of Defendant's Trial Exhibit 2309,19

that agreement came about as a settlement between that20

licensee and Jerome Lemelson as a result of a patent21

litigation?22

A No, that -- there was a patent litigation on other23

patents other than the ones in suit against this company. But24

the settlement in that case was driven by the company's desire25


to get -- not only settle that lawsuit, but get a license1

under the patents in this suit.2

Q Isn't it true that -- and this is where we might have a3

little sticky point here, but isn't it true that that4

agreement for Number 59 refers to the settlement, but doesn't5

refer to any of the patents-in-suit here?6

A Well, I would have to look at it, but I believe that the7

agreement settles the lawsuit and provides a license under all8

Lemelson patents like usual.9

Q But it doesn't specifically identify the patents-in-suit10

here, does it?11

A If you tell me that's true, I'll trust you on it, because12

I haven't looked at it recently.13

Q Well, I guess -- I guess we need to get that agreement14

out.15

A If you're willing to make that representation, I'd be16

happy to accept it. I mean, I believe -- if you've looked at17

it.18

MR. HENDLER: All right. Well, to shortcut this19

maybe what we'll do is we'll have that agreement offered into20

evidence. And I guess under seal.21

THE COURT: All right. I'll receive it. Do you22

have a -- do you have the --23

MR. HENDLER: Yeah. 3628. Excuse me, Plaintiff's24

3628.25


THE COURT: 3228?1

MR. HENDLER: 3628, Your Honor.2

THE COURT: Oh. 3628. I'll receive 3628, then.3

(Plaintiff's Exhibit No. 3628 admitted)4

MS. CURTIN: Your Honor, just to clarify, we have no5

objection to their talking about the names of licensees as6

long as we're not doing it in connection with mentioning the7

dollar amount.8


MS. CURTIN: That's -- that's the proprietary10

information that's --11

THE COURT: I see. Okay.12

MR. HENDLER: Okay. Thank you.13

THE COURT: All right. That's simpler.14

MS. CURTIN: That might make it a little bit easier15

for you.16

THE COURT: Yeah. Apple Computers --17

BY MR. HENDLER:18

Q All right. So Apple Computers is Number 59.19

Now, isn't it true that the only reason, though, that20

Apple Computers sought a license which included perhaps other21

patents was to foreclose any possibility of future litigation?22

A In other words, that we were threatening to sue them on23

these patents and they didn't want that to happen, yes.24

Q Well, that's not my question. But you are aware, though,25


that the negotiations that centered -- that related to that1

settlement was for patents not in suit here?2

A No. I'm aware to the contrary.3

Q Can we get --4

THE COURT: Well, the exhibit -- you're talking5

about the suit before Judge McKibben, I trust --6

THE WITNESS: Right.7

THE COURT: -- that's referenced in paragraph 2 on8

the first page. It describes the patents that were at issue9

in that case.10

THE WITNESS: Right. That case was a suit on other11

patents --12

THE COURT: Okay.13

THE WITNESS: -- not in suit here.14

THE COURT: Okay.15

BY MR. HENDLER:16

Q Thank you.17

A My understanding is that Apple was interested in settling18

that and resolving the demand letters that we had sent them on19

these patents.20

THE COURT: Well, they wanted to buy peace all the21

way around, obviously.22

THE WITNESS: Yeah. And that they were -- what23

principally drove the settlement, to my understanding, was the24

current patents here and not what was happening in the25


litigation there. But I'm sure they had a mixed motivation on1

that.2

MR. HENDLER: Can I have 3629, please.3

BY MR. HENDLER:4

Q Now, Plaintiff's Exhibit 3629, it's a December 16, 1994,5

letter from Michael Warneky [phonetic] -- I don't know if I'm6

pronouncing it correctly -- to Ralph Statheim; right?7

A You pronounced Warneky correctly. And it's Ralph8

Statheim.9

Q Statheim. Okay. And both of those gentlemen were at the10

time of this letter counsel for Lemelson; right? Correct?11

A Yes.12

Q Okay. If you can look at the first paragraph of the13

letter, doesn't it say that, "During the entirety of the14

negotiations we were talking about resolving the computer15

patents and not the whole package"? Do you see that?16

A In regard to the negotiations before --17

Q For Apple.18

A No. The -- that was the -- it's referring to certain19

negotiations that occurred leading to Apple's offer that's20

stated in the line above.21

Q So if you look further up in the letter doesn't it --22

doesn't it say that, "During the course of the Apple23

negotiations"? Do you see that?24

A Yes.25


Q Okay. And this -- and this statement is in fact there,1

that, "During the entirety of the negotiations we were talking2

about resolving the computer patents and not the whole3

package." Do you see that?4

A I see the sentence.5

Q Okay. So that's there. And if we can go down in the6

next paragraph, the paragraph that bridges the two, doesn't it7

also say that, "We have no way of --"8

A I don't understand. What do you mean by bridges? You9

mean --10

Q The paragraph --11

A The paragraph that begins -- that refers to the more12

recent negotiations?13

Q The -- no. What I'm talking about is the paragraph that14

bridges the pages 1 and 2 of the letter.15

A Yes. That's the one --16

Q Do you have that? Do you see that? Okay.17

A Yes.18

Q And do you see where I -- where it's been highlighted? 19

"We have no way of getting into Apple's mind to determine why20

they settled or how much they attributed the settlement to the21

computer patents, but it is my opinion that that was a22

significant factor because there was a chance of the case23

going to trial and they were concerned about potential24

liability. It is likely that the only reason Apple sought a25


license going beyond the two patents at issue in the1

litigation was to foreclose any possibility, regardless of how2

slim, of future litigation with Lemelson. It is not unusual3

for a defendant to seek such a type of assurance in a4

settlement" --5

MS. CURTIN: Your Honor, objection. I don't think6

we need to read this entire letter into the record. There's7

actually no objection to this letter on their exhibit list. 8

We did not object to this letter.9


MS. CURTIN: If they want to put the letter in11

evidence, that's fine.12

THE COURT: Well, I'll receive the letter.13


THE COURT: Go ahead. What's your question? It15

says --16

BY MR. HENDLER:17

Q It does say that; right?18

MS. CURTIN: Your Honor, I object to his asking this19

witness questions about a letter that this witness has no20

personal knowledge of.21

THE COURT: Well, look. It's -- it's not necessary. 22

The witness doesn't need to acknowledge it says what it says. 23

It says what it says. It's in evidence. So what's your24

question about the letter?25


MR. HENDLER: Well, Your Honor, if it's in evidence,1

we can move forward.2


BY MR. HENDLER:4

Q Now, isn't it true that in addition to these computer5

patents that were at issue in Apple that other Lemelson patent6

rights not in suit here could account for the full value of7

the -- of the portfolio licenses?8

A No.9

Q Can we get out Plaintiff's 3630, please.10

Now, Plaintiff's 3630 is a December 8, 1992, letter from11

Mr. Hosier to Toshiba; right?12

A Yes.13

Q And in that letter, if you look at the bottom, I think14

it's the last sentence of the first page, didn't Mr. Hosier15

state that, "In our view the Lemelson FMS patent rights are16

alone worth more than the price for which Mr. Lemelson is17

prepared to grant Toshiba a license under his entire patent18

portfolio"?19

MS. CURTIN: Again, Your Honor, I object to asking20

this witness questions about a document that he did not draft.21

MR. HENDLER: Your Honor, the --22

THE COURT: Well, no. Overruled. I'll -- I mean, I23

didn't want a document read wholesale, but that limited24

portion preliminary to a question to the witness, it says25


that. Go ahead. What's your question of this witness?1

BY MR. HENDLER:2

Q FMS patent rights, that refers to flexible manufacturing3

system; right? FMS refers to flexible manufacturing system;4

right?5

A There are -- there are no issued patents that are pending6

on -- or that remain in force on FMS patent rights at the time7

of this letter or now. But, yes, FMS refers to flexible8

manufacturing.9

Q And those patent rights are not in this suit; right?10

A They're not patents, so -- they're, technically speaking,11

not patents. They are patent rights. They're not in suit,12

because you can't sue on an application that hasn't yet13

issued.14

Q Okay. And so obviously they're not in suit here.15

A Obviously.16

Q Now, isn't it true that what was paid by any of these17

particular licensees under a Lemelson portfolio license was18

far less than what the Partnership told companies it would19

cost to litigate?20

A I'm sorry. State your question again.21

Q Sure. Isn't it true that what was paid by a company22

under a Lemelson portfolio license --23

A That's the part I'm having trouble with. A company? Any24

company?25


Q Yes.1

A All the companies?2

Q A company.3

A There may have been certain companies that paid less than4

it would have cost them to litigate. There may -- there are5

certainly companies that did not -- that paid far more than it6

would have cost them to litigate, and there are certainly7

company groups that shared the cost of litigations like your8

clients have in this case.9

Q Well, didn't the Partnership -- didn't the Partnership10

tell prospective licensees that it would cost far more than11

$20 million to settle this -- to litigate these matters?12

A Well, for the collection of companies as a whole to13

litigate these matters, yes, statements of that sort were14

taken. I don't think those statements were made in the15

context of one company would have to bear that by themselves.16

Q Well, in fact -- well, in fact didn't the Lemelson17

Partnership represent that other litigants spent even more, as18

much as $30 million, one litigant in particular?19

A Well, I don't know what you mean by "represent." We20

estimated that one particular litigant may have spent money of21

that nature because they chose not to band together with other22

litigants and bring a separate suit.23

Q And the Partnership was representing that Ford, for24

example, had paid more than $30 million in litigation fees to25


litigate the patents at issue?1

A You keep saying "represented." We obviously weren't2

pertinent [sic] to your firm's bills. What we did was we3

estimated that -- what we thought the costs of litigation in4

the Ford case between -- I assume split with Ford and Motorola5

because they were co-plaintiffs.6

Q And so you told prospective licensees, though --7

A That that --8

Q -- your estimate of $30 million or more was what Ford9

paid in its litigation; right?10

A Yes. What we said was that Ford had paid a large sum of11

money to litigate these patents and nevertheless taken a12

license, or, depending what time period you're talking about,13

the sentences. I don't remember the 30 million figure. But14

if you tell me that's what's in the letters, that's fine.15

Q Well, let's get --16

A I thought it was twenty, but I may be wrong. It may be17

thirty. Whatever.18

Q All right. Let's get Plaintiff's 3673, please.19

THE COURT: So the record's clear, I will receive20

3630, as well. And now 3673. All right.21


BY MR. HENDLER:23

Q And if you look at page 2, the last sentence of the -- on24

the top of the page, I believe it's been highlighted. It25


says, "We estimate that the lone remaining litigant, Ford, has1

spent perhaps 30 million or more to date in its unsuccessful2

attack." Do you see that?3

A Yes, I do.4

Q Okay. Does that refresh your recollection that it was5

30 million or more?6

A Well, it refreshes my recollection that that was the7

estimate, yes.8

Q Okay. Now, prospective licensees, weren't they also told9

that a quick settlement would be far less costly for other10

reasons beyond the litigation costs?11

A Well, we certainly told people that -- or companies that12

quick settlements would be far less costly than -- than if we13

-- I'm sorry. I don't understand the connection with14

litigation costs. We told companies --15

Q Let me see if I can clarify it.16

A Let me answer. What we told companies was that a quick17

settlement would be far less costly than litigating and18

proceeding to the risk of an infringement judgment. That was19

the whole point.20

Q Well, for example, let me ask you this. In 1992, for21

example, prospective licensees were told that they -- that 22

they'd better take licenses before President Clinton took23

office because otherwise license fees would have to go up by24

as much as 35 percent to offset taxes; isn't that right?25


MS. CURTIN: Objection. No foundation that he has1

any knowledge with regard to what happened in 1992.2

THE COURT: Well, I don't -- I don't know. The3

witness can tell us whether he knows. So overruled.4

If you -- if you know, you can answer.5

THE WITNESS: Well, I remember reading some letters6

that talked about the possibility of tax rises during the7

Clinton administration and the fact that it might behoove8

companies to settle now, rather than later -- or before the9

end of the year, rather than after the end of the year, let's10

put it that way, to get their licenses signed. I mean, sure,11

I remember seeing that.12

BY MR. HENDLER:13

Q Okay. And that was --14

A I think Mr. Hosier wrote something like that.15

Q And that was in the 1992 time period; right?16

A Well, President Clinton took office in January of '93. 17

So, yeah, it would be towards -- I would imagine those letters18

would be fall of '92.19

Q And looking at 2309, a lot of companies took licenses20

right at the -- right at the end of the year; isn't that21

right?22

A I don't know what you mean by a lot, but I'd say, yes, a23

lot of them closed before the end of the year.24

Q And many of those --25


A Maybe it worked.1

Q And many of those companies were foreign companies; isn't2

that right?3

A Yes, many of them were.4

Q In fact, nine of the highest-paying licensees are5

Japanese companies; isn't that right?6

A Get to the right paper, I'll tell you the answer.7

Q And, if you'd like, I can try to speed this up and8

identify in no particular order the top nine. Sony, Toyota9

Motor, Honda, Hitachi, Sharp, Fujitsu, Matsushita, NEC, and10

Toshiba.11

A Did you say top nine?12

Q Did I say top nine?13

A I'm sorry?14

Q Yeah. Yes, top nine.15

A Who is Number 10, by the way?16

Q That's not my question. Top nine.17

A Okay. Anyway, you know, if you -- some of those --18

Q Is that yes or no?19

A Well, it's not quite that easy. Some of these were done20

in groups, and the Japanese auto makers, for example,21

cumulatively were done as an overall settlement, and they22

split up the costs among themselves. The same with another23

group, which was the patent defense group, that were -- that24

were all, I believe, U.S. companies or -- well, maybe some25


British. But -- so if you take -- if you rank them only by1

individual licensee payments, as opposed to group payments,2

then, you know, I trust you've done the work and figured that3

out. If you rank --4

Q And so -- and you have no reason to doubt what I just5

said, that the top nine highest are the Japanese companies;6

right?7

A Top nine highest-priced by individual companies.8

Q Correct. Is that right?9

A I would have no reason to dispute if you represent to me10

that it's true.11

Q All right. Thank you. And those nine licenses were12

signed in the early 1990s; is that right?13

A I'm sorry. You gotta tell me the names again.14

Q Sure. Sony --15

A Uh-huh.16

Q -- Toyota, Honda, Hitachi, Sharp, Fujitsu, Matsushita,17

NEC, and Toshiba.18

A They were signed in late '92 or early '93, yes.19

Q Okay. And isn't it true that in that time period the 20

Japanese were afraid of U.S. juries because a number of cases,21

such as the Minolta-Honeywell and Sega, in which Japanese22

companies ended up paying millions of dollars; isn't that23

right?24

A I'm not familiar with the mindset of Japanese companies25


that I -- I haven't represented any of those companies.1

Q But you did hear that, though?2

A I -- well, I was involved in litigation -- active3

litigation against -- or against several of those companies in4

the '80s, and they seemed to be quite content to litigate5

quite actively. But other than that, I can't quite -- I'm not6

really competent to testify about the mindset of Japanese7

companies in early '90s.8

Q Well, isn't it true, though, that the Partnership tried9

to take advantage of that very fact, that Japanese companies10

were believed to be afraid of U.S. juries, by suggesting that11

there was an anti-Japanese climate in the U.S.?12

MS. CURTIN: Object to the form, Your Honor, isn't13

it true that there was a fact about a belief --14

MR. HENDLER: Isn't it true that the Partnership did15

this.16

THE COURT: Well, look. Counsel, you really are17

preaching to the choir. You could pick a different subject,18

if you want to argue, really. Parties that are engaged in any19

kind of negotiation or settlement, I'm not surprised that they20

would try to raise the risk level or the perceived risk level21

for one another in their efforts to reach some type of22

resolution. This witness may be privy to -- because he23

participated in some of this, or he may not but may have read24

about it. I don't really see where we're going with this. 25


What's --1

MR. HENDLER: Well, we're going with this because2

what they're -- what we heard before from Ms. Curtin was all3

this discussion about nexus. Well, we submit that nexus is4

not -- none of this is relevant here, the licensing and the5

nexus issue, all that is not relevant here. But to the extent6

that they're going to start talking about licensing, and that7

has obviously come in through the witness, and to the extent8

that they're going to try to tie the fees, which it's their9

burden of proof to do, to the patents-in-suit, our response to10

that is there are other reasons why people have taken11

licenses.12

THE COURT: Look, I have no doubt there are complex13

reasons and varied reasons that parties have for settling14

either a suit or avoiding a suit by entering into a licensing15

agreement, and we've got 970 of them that have done so here,16

and you'd probably have to look into the minds of each of the17

970 to know -- to know why, just as you'd have to look into18

the minds of Lemelson to know why they reached a particular19

kind of agreement or a particular rate of agreement in each20

particular case.21

I'm -- I don't -- you know, I think you've got that22

point established, short of bringing in every one of them or23

several of them to pin down what they wanted. And I didn't24

really understand Ms. Curtin -- you know, if you're saying25


that defendants are going to stand up here and say, Judge,1

look, 970 of them and they found God, they realized that our2

patents were so -- our position was so solid that they didn't3

stand a chance under any scenario or any set of circumstances,4

I wouldn't give much weight to such an argument, either. 5

Obviously there are going to be a variety of factors that come6

into play. So I don't want to go through all of these and7

start talking about whether, you know, taxes were going to8

rise under Clinton or patents were -- pardons were going to9

become expensive or anything else, you know.10

Why don't we do this. I've got that meeting at11

noon. Let's go ahead and take our noon --12

MR. HENDLER: Your Honor, I don't mean to cut you13

off, but a few more minutes and we can probably be done.14

THE COURT: Well, but I've got people that are going15

to be waiting for me.16

MR. HENDLER: That's fine.17

THE COURT: I apologize, but I just can't -- can't18

do that to my colleagues planning a district conference.19

So we'll be in recess until 1:30. And I take it20

somebody has communicated with somebody on behalf of Mr. Lisa21

to let him know he didn't have to round out to get down here.22

MR. HOSIER: It looks like tomorrow morning would be23

a better bet, Your Honor, if that's okay.24

THE COURT: Okay. Okay. And any word yet on25


whether it would be Witherspoon, versus Grindon?1

MR. HOSIER: Yes. I think, unless he has a relapse,2

we're going to go with Grindon in the morning.3

THE COURT: Okay.4

MR. HOSIER: And I -- if there's any suggestion of a5

change from that, I will let them know.6

THE COURT: All right. All right. I'm sure you'll7

all test the food for him tonight to make sure he doesn't get8

anything bad. All right. We'll see everybody at 1:30.9

(Court recessed at 11:54 a.m., until 1:31 p.m.)10

THE COURT: -- questions, Mr. Hendler.11

MR. HENDLER: Thank you.12

CROSS-EXAMINATION (Continued)13

BY MR. HENDLER:14

Q Mr. Hoffman, isn't it true that during the pendency of15

this litigation another Lemelson patent issued from the common16

specification?17

A Yes, it did.18

Q And let's just get that one out. It's Plaintiff's 3633,19

please. And this is a copy of Lemelson's U.S. Patent Number20

6,169,840; is that right?21

A Yes, it is.22

Q And this is the one that issued fairly recently from the23

common spec?24

MS. CURTIN: Your Honor, I'm going to object to this25


line of questions as being way beyond the scope of direct.1

THE COURT: Well, I'm not sure yet whether it is.2

MR. HENDLER: It'll get there, Your Honor.3

THE COURT: It's talking about a new patent,4

obviously, issued January 2nd, 2001. There's an asterisk to5

that, so I don't know if that affects it even further, but --6

MR. HENDLER: Your Honor, we're going to -- we'll7

get there. It'll -- it'll -- we'll tie it up.8


MR. HENDLER: And, Your Honor, I understand that you10

reserved ruling on the admission of Defendant's Exhibit 2217. 11

This is this chart entitled "Exemplary Patents With Long12

Pendencies."13

THE COURT: Yes.14

MR. HENDLER: Is that right?15

THE COURT: Yes, that's right.16

MR. HENDLER: Okay. I have a few questions I'd like17

to direct towards this. We have obviously made our objections18

on the record, and this is solely conditioned on, you know, if19

at some point you decide to admit this document.20

THE COURT: All right. Go ahead.21

BY MR. HENDLER:22

Q Okay. Now, in preparing Defendant's Trial Exhibit 221723

you intentionally left off Lemelson's patents, didn't you?24

A The purpose of 2217 was to provide patents other than by25


Mr. Lemelson. So I didn't leave them off. I didn't put them1

on in the first place.2

Q All right. So you intentionally didn't put them on?3

A Difference between putting -- not putting them on and4

intentionally not putting them on? I didn't put them on,5

that's correct.6

THE COURT: Didn't leave them off by mistake?7

THE WITNESS: No, it wasn't by accident, that's8

right.9

BY MR. HENDLER:10

Q Okay. And let me also get a copy of what was previously11

-- I believe it's in evidence, obviously admitted, Plaintiff's12

Trial Exhibit 37. I believe this is admitted. This is one of13

the -- this is the '078 patent, one of the patents-in-suit.14

A Yes.15

Q Okay. And I'd also like to show you Plaintiff's Exhibit16

3671. Now, Plaintiff's Exhibit 3671 is identical to17

Defendant's Trial Exhibit 2217, except that, if you'll note,18

in red on the top there the two Lemelson patents which we just19

showed you, '078 and '840 patents have been added. Isn't it20

-- isn't it right that these two Lemelson patents go right on21

top of this list?22

A I'm not sure what you're asking. You're asking whether23

the --24

Q Well, this list is arranged in terms of years pending. 25

00126

It goes down; right?1

A Yeah. Well --2

Q And -- and the two Lemelson patents there that are in red3

go right up on top of that list given their -- right?4

A Well, except you have them listed as first filed in '56,5

and it was actually the '54 parent. So the way I would have6

done it would have been two years -- two years more than what7

you indicated here.8

Q Okay. So -- so you believe, then, that years pending for9

Item A there should be 47 years, and the years pending for10

Item B there should be 40. That's what you're saying; right?11

A Well, the way I did the chart was to look at the12

earliest-listed patent in the file -- in the chain of related13

U.S. application data, compare that to the issue date, and so14

those are -- those are 40 and 47, respectively. That's15

correct.16

MR. HENDLER: I have no further questions, Your17

Honor.18

Just to save some time, I want to offer some19

exhibits into -- I want to offer some exhibits. Let me give20

you the list.21

And I think, Bill, you have the copies.22

They would be -- and these are all plaintiff's trial23

exhibits, 2760; 3650, which would be under seal -- and I'm24

doing this out of numerical order, unfortunately -- 3642,25

00127

3643, 2762, 3635, 2719, 3636, there's a conditional offer on1

3671 subject to your ruling on Defendant's Trial Exhibit 2217,2

Your Honor.3

THE COURT: All right. As to the --4

MR. HENDLER: And just to be clear, that 3650 needs5

to be under seal, because it is an agreement.6

THE COURT: Right. And do you have all those,7

David, that haven't already been provided? Thanks.8

Ms. Curtin, what's defendant's position as to each9

of those exhibits?10

MS. CURTIN: My position is, Your Honor, that --11

don't know exactly how to respond to this, Your Honor.12

It seems to me inappropriate to use the fact that13

Mr. Hoffman's on the stand to dump into the record a number of14

exhibits that they did not put in during their case in chief. 15

For example, we had asked following testimony of Mr. Silver to16

have stipulated into the record some of the material that we17

had planned to use in his cross, was in fact in his cross-18

examination binder, but not referred to. And that request was19

denied. And I think that here, too, it is not appropriate to20

dump into the record, just as an excuse that Mr. Hoffman is on21

the stand, documents that in fact he did not testify to, they22

haven't asked him any questions about, and in fact are not23

relevant to his testimony.24


HOFFMAN - REDIRECT00128

MR. JENNER: I think I would like to respond to part1

of that, Your Honor, since this all goes back to the motion. 2

Your Honor well knows we didn't think that Mr. Hoffman should3

testify in the first place. All that's behind us. But he was4

proffered as the person, the only person available to come5

onto the stand and give testimony about their licensing6

program, and that's what Mr. Hendler has asked him about, and7

that's what these letters relate to.8

Secondly, as far as offering them, there have been9

many exhibits offered by our adversaries in connection with or10

not in connection with a witness's testimony because they were11

admissible and because they wanted to have them in the record. 12

And this is no different from that.13

MS. CURTIN: Your Honor, I think it's appropriate to14

offer documents that are otherwise admissible during your case15

in chief. This is not their case in chief. This is cross-16

examination of our witness. With all due respect, if they17

come back and offer them in rebuttal, we might have a18

different position then. But this is not the point in time to19

consider these.20

THE COURT: All right. Well, I'm going to go ahead21

and receive them. I think, while you may be technically22

correct, Ms. Curtin, that -- you're certainly correct it's not23

plaintiff's case in chief and it's not their rebuttal case. 24

These are -- appear to me, as I scan through them, to be --25


even though they're not documents testified to by this1

witness, they certainly touch upon the area concerning the2

license agreements that have been the subject of his3

testimony. So I'll receive those.4

(Plaintiff's Exhibit Nos. 2719, 2760, 2762, 3635,5

3636, 3642, 3643, 3650, and 3671 admitted)6

MR. HENDLER: One other thing. One document that we7

did show the witness earlier, there might be some confusion as8

to whether or not --9

THE COURT: There was one just to refresh his10

recollection on something.11

MR. HENDLER: 3673. We'd like to get that -- we'd12

like to offer that, as well.13

THE COURT: All right. I'll receive that, as well.14


MR. HENDLER: Thank you, Your Honor.16

THE COURT: All right. Ms. Curtin, any redirect,17

then, of --18

MS. CURTIN: I have just --19

THE COURT: -- Mr. Hoffman?20

MS. CURTIN: -- a few questions, Your Honor.21

REDIRECT EXAMINATION22

BY MS. CURTIN:23

Q Mr. Hoffman, can you find in the stack in front of you24

Exhibit 3628, which is the Apple Computer Lemelson license,25


please.1


Q Earlier you were asked some questions whether there was3

any evidence in the license itself that the patents-in-suit4

were at issue in the settlement negotiations and the5

settlement agreement. Do you remember those questions?6

A Yes, I do.7

Q I'd ask you to turn to paragraph 3F, which is the --8

MS. CURTIN: I'm sorry, Your Honor. The pages9

aren't numbered.10

THE WITNESS: I think they were cut off by the11

"Highly Confidential" stamp, unfortunately.12

MS. CURTIN: I believe it's the eighth page in.13

THE COURT: Starts with, "Licensee has purchased"?14

MS. CURTIN: Yes.15

THE WITNESS: Yes.16

BY MS. CURTIN:17

Q Is there any reference in that paragraph that would lead18

you to believe that the machine vision patents were at issue19

in the negotiations?20

MR. HENDLER: Objection, Your Honor, as to the21

construction of the agreement. I mean, again, it's -- there's22

no foundation that this witness is in a position to start23

interpreting this portion of it.24

MS. CURTIN: Your Honor --25


THE COURT: No. Overruled. He was asked questions1

on cross concerning his understanding of the agreement. I'll2

let him answer.3

THE WITNESS: Yes, it appears that the license did4

in fact contain some reference to machine vision apparatus,5

the use of which would allegedly infringe the claims of the6

patents-in-suit here, and that that was -- that reflects the7

discussions concerning that subject in the Apple negotiations.8

BY MS. CURTIN:9

Q Considering the 967 licensees that are listed on10

Defendant's Trial Exhibit 1018, other than Apple Computer, was11

there any other licensee that was sued only on patents other12

than the patents-in-suit?13

A You're asking of those. Many on there were not sued at14

all -- 15

Q Correct.16

A -- in this phase of the -- to provoke the licenses. But17

those that were sued, Apple was the only one that was sued in18

a litigation in the '90s that did not include the machine19

vision and auto ID patents.20

Q So if you were to look at the Lawsuits column on the21

master list, which is Defendant's Trial Exhibit 2309, other22

than the Apple Computer suit, each of the suits listed there23

would have included patents-in-suits or patents in the chain24

of the patents-in-suit?25


A Yes. And I wanted to note that Apple was sued together1

with another defendant, Kodak, but Kodak was later sued on the2

-- on the machine vision patents, as well. So that's why --3

but the Apple -- the suit against Apple and Kodak was the only4

one that did not include the machine vision and auto ID5

patents-in-suit.6

Q Could you find Exhibit -- Plaintiff's Trial Exhibit 3629,7

which is the letter from [Keck, Mahan & Kate. It's the letter8

from Michael Warneky to Ralph Statheim.9


Q Mr. Hendler asked you some questions about the -- about11

this letter. Were there two phases to the negotiation that12

led to the Apple license?13

A Yes. And that's reflected on this document. The most14

clear place is in a portion not highlighted at the beginning15

of the second paragraph. Mr. Warneky, who was handling the16

portions of the Apple case relating to the other patents, the17

unrelated ones, was involved in some negotiations with Apple18

concerning settling just that -- what he called here computer19

patents. I don't adopt that nomenclature, but anyway that --20

it was not the whole package. And that's what the first21

paragraph talks about.22

Q And that first paragraph references an offer from Apple23

of how much?24

A It references of an offer from Apple of $1 million.25


Then there was a -- that did not produce an agreement,1

and then there was a more recent -- what's referred to in the2

letter as more recent negotiations was a second phase at which3

Apple and Lemelson discussed a package license that would4

include not only the patents in the Apple suit, but all5

patents and particularly the ones in this case.6

Q And that resulted in a license agreement?7

A That one did result in a license agreement.8

Q And that license agreement amount can be found on line 599

of Exhibit 2309; correct?10

A Yes. Exhibit 2309 is the master -- Defendant's Trial11

Exhibit 2309 is the master list of licensees. And on the12

second page there is a figure reference, which I won't say for13

the benefit of confidentiality, that reflects the total amount14

paid for the package price.15

Q And that portion of Mr. Warneky's letter where he says,16

"During the entirety of the negotiations we were talking about17

resolving the computer patents and not the whole package," was18

that the portion that led to the actual settlement?19

A No. That --20

MR. HENDLER: Objection. Foundation.21

THE COURT: Well, I'm not sure. Were you involved22

in that negotiation?23

THE WITNESS: I didn't participate in the meetings,24

but I know what was -- I know that the subject matter of those25


meetings that Mr. Warneky was participating in was only the --1

was only the --2

THE COURT: Well, if you didn't participate in them,3

that would have only been through what Mr. Warneky or somebody4

else told you, then, wouldn't it?5

MS. CURTIN: Actually, Your Honor, if I might be6

heard for a moment. He was asked to interpret this letter,7

and that's what I'm asking him to do, is to finish the8

interpretation of this letter. He was asked by opposing9

counsel to interpret this letter, and the answer to that10

question is also in this letter.11

MR. HENDLER: Your Honor, I did not -- I did not ask12

the witness to interpret the letter. I cross-examined him on13

this letter. I asked him some questions. I asked him if14

these statements were in here.15

THE COURT: Well, if the letter itself contains the16

answer to the question, then I'll let the witness point to it. 17

I mean, that --18

THE WITNESS: The part highlighted by Mr. Hendler in19

the first paragraph answers the question, that during the20

entirety of that first phase of the negotiations we were21

talking about resolving the computer patents and not the whole22

package. I have no reason to believe that's untrue. It23

comports with my understanding.24


00135

MS. CURTIN: Okay. I have nothing further, Your1

Honor.2

THE COURT: All right. Thank you.3

Any recross, then, Mr. Hendler, of --4


THE COURT: All right. Thanks, Mr. Hoffman. You6

can step down, then.7

MR. HOFFMAN: Thank you.8

THE COURT: All right, counsel. And -- well, of9

course, Mr. Hosier's not here, but I guess we understand10

tomorrow morning everybody knows who we're starting with11

and --12

MR. JENNER: Not precisely, Your Honor. We13

understand that there's a likelihood it is Mr. Grindon if Mr.14

Lisa is okay. If it's not, it's Mr. Witherspoon.15

THE COURT: Somebody's going to call you and let you16

know?17

MR. JENNER: Yeah. And in that regard we'd like to18

get the 24-hour notice of exhibits on Mr. Witherspoon as a19

precaution.20

MS. CURTIN: If it hasn't been sent to you already,21

we'll insure that it gets sent promptly.22

MR. JENNER: Great.23

MS. CURTIN: We believe that's appropriate, Your24

Honor.25

00136

THE COURT: Great. Okay. Well, I hope Mr. Lisa's1

feeling better. And we'll see everybody tomorrow morning at2

8:30, then.3

MR. HENDLER: Thank you, Your Honor.4


(Court recessed at 1:54 p.m., until the following day,6

Thursday, January 9, 2003, at 8:30 a.m.)7

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00137

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

DEFENDANT'S WITNESSES: PAGE

JAMES LOUIS HOFFMAN, ESQ.Direct Examination by Ms. Curtin 16Cross-Examination by Mr. Hendler 96Redirect Examination by Ms. Curtin 129

* * *

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

2719 1292760 1292762 1293628 License Agreement - Apple Computers (Under Seal) 1073629 Letter - December 16, 1994, Re Apple License 1113630 Letter - December 8, 1992 - Mr. Hosier to Toshiba 1153635 1293636 1293642 1293643 1293650 1293671 1293673 129

* * *

DEFENDANT'S EXHIBIT NO.

1018 List of Licensees81

1019A Ford Settlement Agreement95

1032 Documents from old Lemelson files 401042 Documents from old Lemelson files 401053A Business correspondence from Lemelson files 311054A Business correspondence from Lemelson files 311682 Underlying patent only 671685-87 Underlying patents only 672272 Underlying patent only 672307 11/11/92 letter, Lisa to Jenner 462308 Letter referring to prior art references 482309 Summary of Licensees 88

00138

2316 Business correspondence from Lemelson files 312317 Documents from old Lemelson files 40

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