United States District Court District of Nevada SYMBOL...

1

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 13, 2003 . . . . . . . . . . . . . . . 9:07 a.m.And related cases and parties

COURT TRIAL - DAY 24

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

2

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.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

STEVEN G. LISA, ESQ.55 West Monroe, Suite 3300Chicago, Illinois 60603

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

WITHERSPOON - DIRECT 3

PROCEEDINGS BEGIN AT 9:07 A.M.1

THE COURT: Good morning, everybody. Have a seat,2

please.3

All right, we're reconvened in trial. Mr.4

Witherspoon is back on the witness stand and we'll continue5

with further direct examination.6

MR. HOSIER: Good morning, Your Honor.7

THE COURT: Good morning, Mr. Hosier. Go ahead.8

MR. HOSIER: I'm not sure whether I offered Mr.9

Witherspoon's resume, Defendant's Exhibit 2274, but, if not, I10

offer it now.11

THE COURT: I don't recall. I'll receive his CV12

certainly. We'd gone through portions of it, but that will be13

received.14

So Exhibit 2274, Ms. Clerk, will be received into15

evidence then.16

(Defendant's Exhibit No. 2274 admitted)17

JOHN WITHERSPOON, DEFENDANT'S WITNESS, RESUMES THE STAND18

DIRECT EXAMINATION (Continued)19

BY MR. HOSIER:20

Q When we ended on Friday, His Honor had asked you some21

questions about some of the statistics in the Patent Office. 22

Have you anything to add to that?23

A Well, just briefly. With respect to appeals, I noticed24

that in one year, 1993, fiscal year 1993, when there were25


approximately 2,000 examiners in the Patent Office, there were1

approximately 4,000 or 4,500 appeals. So, on an average, that2

would translate into a little more than two appeals per3

examiner for that year and I have no reason to believe that4

during that general time period there would be a wide5

variation from that.6

Q Now we had talked about the differing things that you had7

done during the course of your career. Can you tell us from8

what perspectives have you participated in or evaluated patent9

prosecution during the course of your career?10

A Well, while working in the Washington office, the11

corporate perspective, private practice, as a member of the12

Board of Appeals, not as a desk examiner, I should point out. 13

Excuse me, my career in the Patent Office was, the seven and a14

half years, was as a member of the Board of Appeals reviewing15

the correctness or incorrectness of examiners, but I was not16

an examiner per se.17

THE COURT: All right.18

THE WITNESS: And, by the way, if I could add, the19

term Examiner in Chief I find sometimes is misleading and I'd20

like to make sure that is not misleading. It does not mean21

the chief examiner. The appointments to the Board of Appeals22

in those days were to fill a position, a statutory position,23

which was called Examiner in Chief. It was a statutory term24

that goes way back in our history, but there were many25


Examiners in Chief, about 15 when I was on the Board.1

BY MR. HOSIER:2

Q Now is it fair to say that, aside from being an actual3

desk examiner reviewing patent applications for patentability4

in the first instance, that you had, during your 42 year5

career, participated in and witnessed and been involved in6

patent prosecution from virtually every other perspective?7

A I think --8

MR. HERMAN: Your Honor, I object. Maybe I didn't9

hear the question or the answer, but I thought the witness10

said he was not a desk examiner and I thought this question11

suggested that he was.12

THE COURT: He did, so obviously that's a13

perspective he wouldn't have.14

MR. HOSIER: Well, that's --15

THE COURT: I think -- Why don't we just leave it16

with he's got the perspective that he's testified to.17

MR. HOSIER: Well, that's --18

THE COURT: And I'm not sure we could account for19

everything he hasn't had experience with.20

MR. HOSIER: Well, I just said is it fair to say21

that aside from being an actual desk examiner.22

MR. HERMAN: Then I apologize.23

BY MR. HOSIER:24

Q You have, during your 42 year career, participated in and25


witnessed patent prosecution from virtually every other1

perspective?2

A I think that's a fair statement.3

Q Did you have any involvement with or knowledge of the4

Lemelson applications for the patents-in-suit or any other5

Lemelson patents while employed at the Patent Office?6

A No, not to my knowledge. I mean, I reviewed many, many7

applications. It's conceivable, but I think, as best I can8

say, is I have no recollection of having worked on a Lemelson9

application.10

Q Have you had any professional or personal contact with11

Mr. Lemelson, his family or the subject matter of the Lemelson12

patents-in-suit apart from your involvement in this case as an13

expert witness?14

A No.15

Q Have you previously testified before any United States16

District Court as an expert in matters of Patent Office17

practice and procedure?18

A Yes, I have.19

Q On how many occasions?20

A Well, to varying degrees, on the order of 70 times.21

Q Have you testified previously in this court?22

A Yes, I have, twice, working with Mr. Morton Galane.23

MR. HOSIER: Your Honor, we offer Mr. Witherspoon as24

an expert, qualified by education, skill and experience in25


matters of Patent Office practice and procedure.1

THE COURT: All right. Any voir dire of the witness2

on that?3

MR. HERMAN: No, Your Honor. We don't object.4

THE COURT: All right. I certainly find that the5

witness is qualified, based upon his specialized training and6

knowledge, to offer opinions in those areas, so I'll allow him7

to do so.8

Go ahead.9

BY MR. HOSIER:10

Q Have you undertaken a review of any materials in11

connection with your preparations for giving testimony in this12

case?13

A Yes.14

Q And what did you review?15

A Well, the file histories. I've gone through the file16

histories several times. I have also reviewed the expert17

witness reports of Mr. Steiner and Professor Adelman. I18

reviewed their deposition testimony and their trial testimony. 19

I also reviewed portions of the deposition testimony of Mr.20

Markva and the two examiners.21

Q Two examiners, meaning Messrs. Britton and Peng?22

A Right.23

Q And did you review the Markva testimony in the24

Mitsubishi, Ford and this case?25


A Yes.1

Q Now when you said the Adelman expert report, he had two2

expert reports, one on prosecution laches and one filed back3

in December on other matters.4

A That's my understanding. I reviewed only the one dealing5

with prosecution laches.6

Q And that was the scope of your assignment in this case?7

A That's correct.8

Q And did you go through complete file histories or just9

excerpts?10

A I reviewed the entire file histories.11

Q When did you make your reviews of the complete file12

histories of the Lemelson patents?13

A This past summer was my first excursion through the file14

histories. That was on a kind of preliminary or overview15

basis. Prior to my expert report, which I believe was October16

18th or thereabouts, I had gone through the file histories17

thoroughly in September or early October and I reviewed them18

again in preparation for my deposition, which was taken two or19

three weeks ago.20

Q Will any of your testimony address the technologies of21

the patents-in-suit?22

A No.23

Q And why is that?24

A Well, because I do not consider myself qualified to be25


discussing the technology of this case here in this courtroom.1

Q Will any of your testimony address the merits of any2

actions of the Patent Office or the merits of the responses of3

Mr. Lemelson or his counsel in prosecution of the applications4

leading to the patents-in-suit?5

A No.6

Q And, again, why not?7

A Because that would require an understanding of the8

technology, which I don't have, but which other witnesses, of9

course, have. So my assignment and my study have been limited10

to the question of what happened during the prosecutions from11

the standpoint of accepted Patent and Trademark Office12

procedures with respect to examining patent applications.13

Q And did you understand --14

A Irrespective of the merits of the rejection and15

irrespective of the responses to the rejections.16

Q Now did you understand Mr. Steiner to testify in words or17

substance that, because of the length and complexity of the18

Lemelson applications, the volume of prior art references of19

record and the time constraints imposed on examiners to20

complete examinations of applications in an average of 1921

hours per application, that no examiner could have conceivably22

possibly done a competent job in examining the Lemelson23

applications leading to the patents-in-suit?24

A It's my understanding that that is essentially his view.25


Q First, to your understanding, are examiners confronted1

with time constraints in performing their statutory duties?2

A Yes, they are.3

Q Go ahead.4

A As I explained earlier in the case, they are and that, to5

me, is no different than production expectancies and6

production goals or whatever for essentially all professionals7

whom I'm aware.8

Q And what is your understanding regarding the time9

constraints imposed on examiners in examining applications?10

A Well, management does, in the interest of getting the11

work done in the Patent Office, set forth some time12

expectancies or production expectancies for examiners13

throughout the Patent Office. The actual expectancy varies14

from art unit to art unit, depending upon the complexities. 15

These are average figures, I understand, and do not mean that16

for any given case, for every case, that that particular17

number is to be achieved. That is to say that, if it's 15 or18

20 in a given art unit, it's not my understanding that each19

examiner is expected to put in just that number of hours on20

that case and that's sort of a drop dead type event for which21

examiners cannot continue to do what the examiner believes to22

be a competent job.23

In other words, for any given examiner, it's my24

understanding that an average number is given and some -- that25


there's no problem with an examiner, in some applications,1

devoting more than that particular number of hours on a given2

case.3

Q Now the fact that the Lemelson applications, some 20 in4

number leading to 18 patents, had a common specification,5

would that, in your opinion, lead to any simplification in6

examination?7

A If I'm not mistaken, there were not 20 patents issuing8

from the common --9

Q 20 applications and 18 total patents and 16 --10

A 18, yes.11

Well, sure, if you have a common specification, that12

speeds things up. It takes less time to review 1513

applications, let's say, having a common specification than 1514

applications having different specifications.15

Q In your opinion is there anything in the file histories16

of the Lemelson applications that suggest to you that the17

examiners did not, in fact, do their job in performing their18

statutory duties of examining the Lemelson applications?19

A No.20

Q And what, if anything, does the record, as you've21

examined it, suggest to you?22

A Well, I find, in reviewing the files, that their -- that23

the examiners, by which I mean Examiner Britton and Peng and24

Majaik [phonetic], were aware of their responsibilities to25


examine for things that examiners are expected to examine for,1

particularly with respect to prior art, double patenting and2

Section 112 issues.3

There are such -- If you look collectively at the4

prosecutions, you see numerous prior art rejections, numerous5

112 rejections and numerous double patenting rejections and6

those are the rejections that examiners make more often than7

others. They are sort of the bread and butter rejections that8

arise from an examiner's work day in and day out.9

Q Is there anything in those files that suggested to you10

that the examiners were seeking to shirk their duties or take11

shortcuts or avoid their responsibilities?12

A No, not at all. As a matter of fact, as has already been13

pointed out, Examiner Britton stuck to his guns to the point14

of requiring or at least causing Mr. Lemelson to take an15

appeal to the Board of Appeals on two occasions.16

Q Did you read the depositions of Examiners Peng and17

Britton?18

A Yes.19

Q In your opinion, is there anything in the testimony of20

either examiner that suggests they were in some way shirking21

their examining responsibilities or did a shoddy job of22

examination?23

A No.24

Q Now Mr. Steiner indicated that he personally knew the25


members of the Board of Appeals that decided the 1976 appeal1

in the Lemelson application and said, in words or substance,2

that they were capable people. Were you on the Board during3

the same time period of the '76 appeal being decided?4

A I was, but you say the same, not the same time Mr.5

Steiner --6

Q No, no, the same as -- Were you on the Board when the7

1976 Lemelson appeal was decided?8

A Correct, I was.9

Q Did you personally know the same individuals that Mr.10

Steiner referred to in his testimony as the members of the11

Board that decided the Lemelson 1976 appeal?12

A I did.13

Q And what, if any, opinion do you have respecting the14

abilities of those individuals?15

A In my view, those particular Examiners in Chief were16

quite good. I would say that that particular panel was17

especially good.18

Q Do you have an opinion as to whether or not the19

applications leading to the patents-in-suit were prosecuted in20

conformity with accepted and reasonable practices?21

A I do, uh-huh.22

Q What is your opinion?23

A That they were.24

Q And can you explain the basis for that opinion as to how25


they -- why they were prosecuted in accordance with accepted1

and reasonable practices in the patent community?2

A Well, the basis is that -- is my knowledge and experience3

and, I might say, working in the field prosecuting patent4

applications during much of the very time period that we're5

talking about here. I entered the field in 1960, August. The6

'54 and '56 applications, of course, had been filed, but the7

'63 application which came along was during my work time8

period in prosecuting cases and all the way up into the9

eighties.10

And I certainly acquired, through the efforts, I think,11

of some very good mentors, -- I think the mentors I had were12

quite good, both in corporate work and in private practice,13

and, of course, seeing cases that had been prosecuted that14

came through the Court of Customs and Patent Appeals. The15

vast majority of the work of the Court of Customs and Patent16

Appeals during the '64/'66 time frame that I was there were17

ex-parte appeals from this Board of Appeals that we've just18

been talking about.19

So, based on all that, I think I had a pretty good20

understanding of what constituted accepted practices by21

attorneys in prosecuting patent applications.22

Q And did you --23

A And these prosecutions, in my opinion, were consistent24

with that, with those accepted practices.25


Q Is there, in your opinion, any evidence in the Lemelson1

file histories leading to the patents-in-suit, or in any of2

the other materials you considered in your preparations for3

this -- giving testimony in this case, that in any way4

suggests to you that Mr. Lemelson or his counsel were somehow5

gaming or manipulating the system, albeit within the rules and6

statute, for purposes of keeping his patent disclosures secret7

from the public for a prolonged time?8

A No, not at all.9

Q And what is the basis for that conclusion?10

A Well, the '54 application became publicly available at11

least by 1964. The '56 application became available in '63,12

as I recall.13

Q And that's with issuance of the '379 patent, is that14

right?15

A I don't have these numbers totally fixed in my mind, but16

I believe that's correct, the issue date of the '5617

application.18

And the '63 application became available in 1978, I19

believe.20

Q And what, if any, material was added to the '7221

application that was not in either the '54 or '56, in general22

terms?23

A Well, there was new disclosure which is in the nature, at24

least in very large part, to citations and discussions of25


prior art.1

Q And volume, in terms of length, was that small or large2

relative to the size of the '54 and '56 subject matters, these3

additions in '63?4

A The additions in '63? You mean '72? I'm not sure I'm5

following you.6

Q With filing of the '63 applications.7

A Excuse me?8

Q The additions that were made in the filing of the '639

application -- excuse me, in the '72 application. I'm sorry. 10

I'm the one in error here.11

In quantity, relative to the size of the specification,12

were they significant, large, small?13

A Well, I've seen a patent which was marked up, sort of14

color coded, one of the patents here in suit, I believe, or at15

least one -- what I understand to have a common specification16

with those in suit, identifying material that was added in '7217

and my review of that indicates that, of approximately 7018

columns, perhaps no more than two columns or the equivalent of19

two columns constitutes disclosure that was put in in 1972.20

Q How is the issuance of United States patents made known21

to the public?22

A Well, they're made known to the public primarily through23

the publication of a document known as the Official Gazette.24

Q And are they made known as well through the issuance of25


the patents themselves?1

A Sure. If you happen to know about it, you can get a copy2

of the patent for the asking without the Official Gazette.3

Q I direct your attention to Defendant's Exhibit 2273.4

MR. HOSIER: And, Your Honor, we've handed you not5

only 2273, but an original of an Official Gazette --6

THE COURT: Right.7

MR. HOSIER: -- for that time period just to give8

the Court a feel for what it is.9

THE COURT: All right, thanks.10

BY MR. HOSIER:11

Q And I direct your attention, Mr. Witherspoon, now to 227312

and could you tell us what that is?13

A 2273 are a few pages from the Official Gazette of14

February 13, 1968.15

Q How often is the Official Gazette published?16

A Each week, Tuesday of each week.17

Q And can you just describe, in general, what it discloses?18

A The basic -- The most voluminous thing that it discloses19

is a brief write-up of each patent that issued that day. The20

second page of this exhibit illustrates that. I should say21

that these particular disclosures -- this particular22

information is broken into three categories, inventions23

dealing with general subject matter or mechanical subject24

matter as shown on the first page and the second page shows25


chemical subject matter and the next page electrical subject1

matter. And in each of those sections, and we're only looking2

here in this exhibit with a very few pages from each of those,3

the --4

Q So someone examining the OG could go to a section if5

they're interested in chemical, mechanical or electrical and6

look only at patents in those categories?7

A That's right.8

Q What information is provided for each patent, in a very9

brief way?10

A Well, such things as the number of the patent, the title11

and the inventors, the assignee and any ancestry that might12

appear -- might apply to that particular patent and a claim of13

the patent.14

Now that's current practice. There was a time when the15

abstract of the disclosure was published. In this particular16

year it appears that sometimes the abstract was published and17

sometimes the claim was published.18

Then the Official Gazette also carries a list of19

patentees for patents that were issued that particular week20

and also the classification of those patents.21

Q And what does it mean by classification?22

A Well, the U.S. patents are given a classification, by23

which I mean they're given a -- put into a particular class24

and subclass or subclasses according to the technology25


involved. A particular class/subclass would be directed to1

technology of a particular pretty narrow scope of subject2

matter.3

Q Is that to facilitate the searches we've talked about4

earlier?5

A Yes.6

Q And roughly how many patents on average were issued per7

week in the 1960s or annually?8

A Well, again, just speaking from memory, my recollection9

is that in the sixties there were seventy-five to 80,00010

patents issued per year, so whatever that translates out to.11

Q Perhaps 1,500 a week?12

A 1,200, 1,500 I suppose.13

Q How long has the Patent Office had such a publication as14

the OG?15

A I don't know, but it was certainly in existence when I16

entered the field in 1960 and I understand that it had been17

around long before then.18

Q Is the OG used and relied upon by members of the patent19

profession and their clients for any purpose?20

A Yes, very much so, to track -- well, general information21

as to what patents issued and also perhaps to track the22

direction that technologies are moving.23

Q Is there, in your opinion, any evidence in the Lemelson24

file histories leading to the patents-in-suit, or in any of25


the other materials that you have considered in preparing to1

give your testimony in this case, that in any way suggests to2

you that Mr. Lemelson or his counsel, although prosecuting his3

applications in conformity with Patent Office regulations and4

applicable statutes, engaged in some form of intentional or5

deliberate delay in prosecuting his applications?6

A No. I found no evidence of that.7

Q Did you --8

A I did --9

Q Excuse me.10

A I did find evidence to support the contrary however.11

Q By the contrary meaning what?12

A To advance prosecution -- not only advance prosecution,13

but advance it perhaps -- oh, I'm thinking, for example, of14

letters sent to the Patent Office asking, "When am I gonna get15

an office action, will you please take up my case," petitions16

to expedite prosecution because of his age later on.17

There was an attempt to get into an interference, which18

Mr. Lemelson filed a paper, or papers really, to achieve, and19

a lot of time passed, he hadn't heard, so he tried to get that20

moving along.21

Q Did you identify anything from the Lemelson file22

histories in any way suggesting to you that Mr. Lemelson or23

his counsel were somehow gaming or manipulating the system to24

intentionally or deliberately delay issuance of his patent25


claims?1

A No.2

Q Do you have any opinion as to whether or not the practice3

is followed and prosecuting the Lemelson applications in suit4

conform to what, in your experience, would be considered5

accepted patent practice in the profession for the prosecution6

of applications?7

A In my opinion, they were prosecuted in accordance with8

accepted practices.9

Q And what is the basis for your opinion?10

A Again, my understandings reached upon -- reached as a11

result of my work experience, training, education and12

knowledge of patent prosecution.13

Q Is there anything whatever in the file histories of the14

patents-in-suit, from filing of the 1954 and 1956 parent15

applications through issuance of the last patent in 1994, that16

shows or suggests to you that Mr. Lemelson or his attorneys17

were not consistently seeking to advance prosecution of the18

applications?19

A I found no evidence that Mr. Lemelson or his attorneys20

were in any way trying to postpone the proceedings. On the21

contrary, they were seeking to advance prosecution at all22

times.23

Q Can you, in a summary fashion, just indicate to what, if24

anything, you attribute the long period of time from filing of25


the first Lemelson application to issuance of the last1

Lemelson patent in suit?2

A Well, there were several things. First of all, it's3

apparent to me that the patent application itself was lengthy4

and, certainly to me, directed to complex technologies and the5

Patent Office issued a number of restriction requirements. 6

The Patent Office issued various rejections, including an7

undue multiplicity rejection, which became the subject of an8

appeal and there was a second appeal.9

The pendency times for those two appeals was noteworthy,10

a number of months or years. There were -- Mr. Lemelson, of11

course, responded to these restriction requirements in the way12

that he was entitled to, namely to elect one group and13

prosecute that without filing applications on the other14

elected groups and have a series of applications being handled15

in parallel. He was entitled to prosecute -- respond to those16

restriction requirements in sequence, which he did.17

So the complexities, the number of restriction18

requirements, the appeals and the filing of the applications19

in response to the restriction requirements in sequence all20

tended to consume a considerable number of years.21

Q I direct your attention to Defendant's Exhibit 1797 in22

the book before you, what is that, and, in particular, to the23

pie chart in that exhibit?24

THE COURT: That number again?25


MR. HOSIER: 1797.1

THE COURT: Thank you.2

(Pause in the proceedings)3

THE WITNESS: This exhibit sets out the relative4

portion of the total time in prosecuting the cases that was5

consumed by the Patent Office getting its work done and the6

portion of time for Mr. Lemelson to be filing responses.7

Q And directing your attention to the third page of the8

exhibit, the pie chart, what does that show?9

A It shows that, of the total time, about one-third was10

consumed by Mr. Lemelson in responding to office actions and11

about two-thirds was consumed by the Patent Office responding12

to Mr. Lemelson's applications or responses filed by Mr.13

Lemelson.14

Q In other words, one-third was Mr. Lemelson acting in15

response to the Patent Office and two-thirds of the time was16

him awaiting the Patent Office to act?17

A That's correct.18

THE COURT: Is that, in your experience, typical of19

the type of proportionality you would expect to see with20

regard to patent -- not the length of time perhaps it took,21

given the complexity, but two-thirds Patent Office time, one-22

third applicant time, if you know?23

THE WITNESS: At that particular time period it was24

probably fairly typical, taking into account cases in which25


there were appeals. Now there was a backlog of appeals, cases1

on appeal, so I would say, yes, for this general type of2

situation, technology somewhat complex, restriction3

requirements, appeals.4

In the sixties, and going into the seventies, were5

times in which the Patent Office was -- well, let me say,6

throughout my career the Patent Office has been focusing on7

its backlogs and that was especially true in the sixties. So-8

called compact prosecution came in in the mid-sixties, in9

which applicants were given three months rather than six10

months, the full statutory period, to respond.11

BY MR. HOSIER:12

Q And, in that regard, during the time the Lemelson13

applications were pending before the Patent Office, what time14

was -- 15

A Excuse me, could I just add one other thing? Sorry to16

interrupt you.17

Q Oh, certainly. I'm sorry.18

A During the mid-sixties --19

Q Of all the people, to cut off a witness.20

A I just wanted to say in the mid-sixties two things were21

done, compact prosecution, by which applicants were expected22

to respond in three months rather than six months, came to be23

and also second office action finals came to be.24

Previously, there had been more than two or three25


exchanges before you got a final action, the consequence of1

that being that there was then, I think the statistics would2

show, more refilings because you got to the end of the road in3

any given application quicker, so applicants tended to file4

more continuation applications in order to continue the5

prosecution, because there are many cases in which not all the6

issues get resolved in just two back-and-forth exchanges, but7

compact prosecution brought into the picture final rejections8

right up front. Second office actions normally were final.9

I'm sorry.10

Q Now, in the context of compact prosecution, where the11

time for response for an applicant is three months, must the12

applicant always respond within the three-month period?13

A No, because the statute allows for six and so the office14

allowed an applicant to request an extension of time, one15

month or two months or three months. 16

Q And was a showing required to get that extension?17

A Well, in those days, yes, especially say a second or a18

third request. There had to be a considerable showing.19

Q Based on your experience, were requests for extensions20

commonly made by applicants under compact prosecution?21

A Yes, they were.22

Q Did Mr. Lemelson take advantage of the right to obtain23

such time extensions?24

A He did, but sparingly I would say, especially when you25


look at the total prosecutions that are involved. I would say1

he, in fact, asked for extensions of time on a quite sparing -2

- quite sparingly.3

Q Would it be fair to say that, in the vast majority of the4

cases, Mr. Lemelson acted within the time allotted by the5

Patent Office in the first instance?6

A Yes, he did.7

Q In your opinion, could Mr. Lemelson have done anything to8

cause his patents to issue more quickly?9

A Well, sure. I suppose that could be said of any patent. 10

In theory, one could work up a response within a matter of11

days upon receipt and turn it around. He could have12

acquiesced in these rejections, especially in cases where some13

claims were allowed and others were not. He could have said,14

well, gee, you know, I don't think I'll contest and continue15

to get allowance of claims that were rejected.16

So, like in any case, things could have been done17

earlier, but they were not required to be done earlier.18

Q And why weren't they required to be done any quicker?19

A Well, as I said, the Congress has set forth the time20

periods for responding and the Patent Office has promulgated21

regulations pursuant to those time periods. Congress says you22

can respond in six months. The Patent Office said we're gonna23

shorten it to three months, but you can extend, if you wish,24

up to six months.25


So the answer really to your question I think lies in the1

statutory scheme and the regulations of the Patent Office2

implementing those statutes.3

Q Were you present in the courtroom during the testimony of4

Professor Adelman?5

A Yes, I was.6

Q Did you hear Professor Adelman say, in words or7

substance, that Mr. Lemelson could have presented all of the8

claims ultimately issued in the patents-in-suit at the time9

his applications were originally filed?10

A Yes.11

Q Do you agree with his opinion?12

A Yes.13

Q And --14

A I mean in theory. Again, if you're wise enough, I15

suppose, such as negotiating a contract with back-and-forth16

exchanges, if you're astute and wise enough, two parties could17

have written that perfect contract or that contract at least18

that they ended up agreeing on in the first draft. So, in19

that sense, I agree with him, but in the real world I think20

that's pretty unrealistic to expect.21


A Because the patent examining and prosecution process23

involves a give and take. You go to the Patent Office -- We24

have these things known as claims, which are legal definitions25


of the subject matter sought to be patented, and, if patented,1

as to which the definition of the subject matter that the2

right to exclude attaches to and we have a peripheral claim3

system, by which I mean the words of the claim collectively,4

in effect, define a word -- make up a word fence. Claims are5

sometimes analogized to a fence that surrounds a piece of6

property.7

Now where should that fence be? It's not easy to answer8

that question. Sometimes you go to the Patent Office with9

claims which are allowed right off. Now that may seem fine,10

but sometimes we question people who get such an allowance. 11

And it doesn't happen very often. You wonder maybe I didn't12

build that fence quite large enough, maybe I've not protected13

the invention in the scope that I should have, but, in any14

event, those are rare. Typically claims are amended. They're15

added to and subtracted from, canceled and this involves a16

back-and-forth exchange between the examiner and the attorney,17

with the examiner coming up with prior art, which the18

inventors may not know about, and, in a large application of19

complex technology -- well, what I said pertains to rather20

simple inventions. You may have complex technology having a21

lot of aspects to them, but the whole process becomes much22

more difficult.23

And so there is this back and forth with inventors, on24

the one hand, trying to get as broad protection as they can25


and examiners saying, from time to time, here's some prior art1

that needs to be taken into account and underlying all of2

this, of course, is the disclosure. The claims always must be3

in an application for which there's an adequate underlying4

disclosure, sometimes commercial reality, sometimes changes in5

the law come along and these dictate different claims.6

Q Can it be said in theory that in every single patent ever7

issued the claims could have been put in in the form issued as8

of the date the application was filed?9

A It could be said in theory that that could happen.10

Q And is that because you're not entitled to a claim unless11

it is supported by the disclosure and therefore, by12

definition, a claim must be?13

A Well, the drafting and the prosecuting of claims, at14

least from my standpoint, and I think it's true of pretty much15

all patent prosecutors, they're trying to do about three16

things. They're juggling three balls. The claim has to be17

supported. The claim needs to be free of the prior art. 18

These tend to be limitations, but, at the same time, a claim19

should protect the inventor's invention as well as possible. 20

What you don't get within one of those claims you may21

have a problem with because you have to rely on the doctrine22

of equivalence and that's subject to prosecution history23

estoppels and so on. So the name of the game really is to get24

coverage, what the inventor is entitled to, but end up with25


claims that are valid, that is to say free of 112 problems and1

free of prior art problems and this takes time and effort, a2

lot of back and forths, sometimes lots of different3

applications are being filed and, as in this situation, where4

there are numerous requirements to restrict the applications,5

because it was said by the examiner to be claiming a plurality6

of inventions, that just adds to the complications because if7

you elect, let's say, a group out of five groups, elect a8

group to prosecute, the claims that are added in that9

application or applications, if it leads to continuations,10

must be in compliance with what's sometimes called the rule of11

consonants, by which we mean that the claims must be to12

subject matter that's consistent with the original requirement13

to restrict.14

The requirement to restrict says, well, certain claims15

are directed to this and other claims are directed to16

something else and you elect one. Then you must keep your17

claims limited to that general subject matter and not cross18

over and now start claiming, while you're prosecuting group19

one claims, add claims that are more over in group two than in20

group one. So that's an additional factor that has to be21

taken into account during prosecution.22

Q Did you understand Professor Adelman to say, in words or23

substance, that Mr. Lemelson and his counsel should have filed24

divisional applications on all of the restricted groups25


immediately after receipt of the restriction requirement1

instead of filing sequential divisional applications, as he2

did?3

A Well, I don't recall that specific testimony, but, if he4

did, I certainly disagree with it wholeheartedly.5

Q And what is the basis for your opinion disagreeing with6

him?7

A Because the accepted practice allows for an inventor to8

make a choice, to elect one group and prosecute those claims9

while holding the other claims in abeyance. It does not10

require that a separate application be filed for each of the11

groups early on.12

Q In your opinion, what, if any, obligation does the13

applicant have with respect to the timing on the filing of a14

divisional application if the applicant wishes to retain the15

benefit of the filing date of the original application?16

A The only requirement is to file the divisional17

application prior to the patenting, abandoning or termination18

of proceedings in the first application, that is to say19

establish co-pendency.20

Q And what's the basis for that opinion?21

A Well, the basis is the statute, Section 120, or, in the22

case of divisions, 121, which refers back to 120, in which23

Congress has set forth that an applicant may get the benefit24

of an earlier application filed in the United States so long25


as certain conditions are met, about four, one of which is1

that there be co-pendency.2

Q And co-pendency means what?3

A It means that the second application be filed before the4

first application has either been abandoned or patented or in5

which the proceedings have terminated and I believe that means6

on the very day. If a patent were to issue today, if I get7

another case filed, today would be fine, but not tomorrow.8

Q All right. As a practical matter, how long could it be9

from the entry of a restriction requirement until an applicant10

files a divisional or continuing application?11

A It could be a considerable period of time. It all12

depends on how long the first case has been pending. It could13

be short. It could be long.14

Q Is there any limit to the number of continuation or15

division applications that may be filed in the chain, and16

still retain the benefit of the filing date of the original17

application, for the last application in the chain?18

A There is no limit.19

Q Given the latitude you've indicated to be available to20

applicants for the filing of division and continuing21

applications, what considerations, if any, do patent22

practitioners, in your opinion, look to or rely upon to23

determine when divisional or continuing applications are24

filed?25


A Well, this would -- they would very, but, generally1

speaking, there would be considerations of expense in2

prosecuting a second application, the prior art that had been3

generated during the prosecution of the first case, the nature4

of the issues that have been raised during prosecution of the5

first case, that is to say are they issues that tend to be6

unique to that case or are they likely to have applicability7

to other cases, in which event it would be significant to play8

out that first rejection and see what happens to it, new art,9

commercial events, all these things. Financial considerations10

I believe I mentioned.11

Q Do you understand Professor Adelman to have testified12

that Mr. Lemelson and his counsel should have filed all of the13

patent claims he wanted or eventually obtained with his14

original applications or within some short time thereafter?15

A That's my understanding.16

Q In all your years of practice, have you ever heard of17

such a rule or requirement or standard that supports Professor18

Adelman's position?19

A No. Certainly, while I was prosecuting cases, that was20

not a subject that was called to my attention.21

Q Would you expect to know of such a rule or requirement or22

standard if such, in fact, existed?23

A I certainly believe I would.24

Q Is the standard that Professor Adelman suggests for the25


filing of new, revised or amended claims consistent or1

inconsistent with accepted patent practice?2

A In my opinion, it's quite inconsistent with accepted3

practice.4

Q Do you have an opinion as to when, under accepted patent5

prosecution practice, it is proper for an applicant to present6

new, revised or amended claims during the course of the7

prosecution of original, continuing or divisional8

applications?9

A It's very common to do those things, amend, add and10

subtract claims during prosecution.11

Q And what is the basis for your opinion that such is12

appropriate and common?13

A Well, again, my knowledge and experience and learning and14

training I have acquired over the years.15

Q What considerations --16

A And I would say the equally important, if not more so,17

the review of file histories in which those things are very,18

very common.19

Q What considerations, if any, govern when new, amended or20

revised claims are presented in an application?21

A Well, the legal considerations of support, prior art and22

then there are practical considerations of expense. And, for23

some time now, we've had a fee structure which takes into24

account numbers of claims. To some people that's important,25


most people.1

Q In your opinion, is it even practical or possible to2

present all claims in the form ultimately to be issued in a3

patent on filing of the application or within some preset time4

thereafter?5

A Well, I think, in the overwhelming majority of cases,6

that would be very -- certainly very, very difficult, if not7

unrealistic. There are cases in which the examiner allows it 8

in the first action, so obviously those people have put the9

claims in right up front, but, as I've also indicated,10

sometimes attorneys wonder if they get that, if they've done11

their job of representing their client.12


A Because of this peripheral claim system. If you have a14

claim that is not rejected, it leads one to wonder if maybe he15

has under-claimed, he should have built the fence broader.16

Q What requirement, if any, must be met by claims17

regardless of when they are presented during prosecution of18

original and continuing applications?19

A Would you repeat that, please?20

Q Yes.21

What requirement, if any, must be met by claims22

regardless of when they are presented in an application?23

A You mean to be allowable?24

Q Yes.25


A Well, they have to meet these requirements of being free1

of the prior art, supported by the patent application, that is2

to say satisfy the requirements of the first paragraph of 112. 3

They have to satisfy the requirements of the second paragraph4

of 112 for definiteness. They cannot be subject to double5

patenting rejections.6

And there may be other considerations and special cases.7

Q When you say supported by the application, could you tell8

us what you mean by that expression?9

A That's a shorthand term that, to me, means compliance10

with the requirements of the first paragraph of 35 USC 112. 11

Q Could you convert that to English?12

A You have to disclose to workers in the art what it is13

that you're claiming. You can't put in a claim to a bicycle14

in a disclosure to a fertilizer. I mean, there has to be a15

correlation between the subject matter that's disclosed in16

what we sometimes call the specification, the teaching part of17

the patent, if you will.18

The patent basically has two parts, the teaching part and19

protection part. The teaching part is the written description20

of what the invention is and how it's made and used. That's21

addressed to people skilled in the art to explain to them what22

the invention is and how it's to be used and how it can be23

made. And the claims are the protection part. They're legal24

instruments that set out the metes and bounds of the subject25


matter, the property right.1

And you can't have a broad coverage with a very limited2

teaching part. The teaching part has to be commensurate in3

scope with the protection part, the claims.4

Q What, if anything, additional, besides your education,5

skill and experience and practice for 42 years, do you rely6

upon in supporting or confirming your opinions that, under7

accepted patent practice, divisional and continuing8

applications may be filed at an applicant's discretion within9

the time limits set by Section 120 of the statute and that10

new, revised or amended claims may be presented at any time11

during prosecution of such applications?12

A Well, I believe my testimony is entirely consistent with13

the writings of a number of people in treatises and so forth.14

Q I direct your attention to Defendant's Exhibit 2204 in15

the book in front of you. What is that?16

A This exhibit is made up of a number of pages taken from a17

treatise called "Patent Law Fundamentals" by Peter Rosenberg,18

the 1989 revision.19

Q Do you recognize that text as authoritative?20

A I do.21

Q And, first of all, --22

A Mr. Rosenberg, as you can see, was a primary examiner. I23

knew him quite well before he died a few years ago.24

Q Have you seen the text previously?25


A I have, yes. I have a set in my office. This is a1

multi-volume set. It started out with one volume 15 years ago2

and has grown to, I think, three volumes now, as I recall.3

Q Would you point out and read to the record -- read into4

the record what portions, if any, you believe support or5

confirm the opinions you have given the Court with respect to6

these issues?7

A Well, the first appears at the bottom of page 15-37.8

"A continuation enables an applicant to keep alive an9

earlier filing date by establishing a right to further10

examination by the primary examiner of the same subject matter11

in the form of a new application. A new set of claims may be12

introduced into the continuation. There is no requirement,13

under 35 USC Section 120, that the invention claimed in a14

continuation application must correspond to what was regarded15

as the invention in the parent or earlier application."16

Q Is that consistent with and confirm your opinions?17

A Yes, it does.18

Q Anything else?19

A The top of page 15-41. It's stated that, "It will be20

noted that it is not unusual practice to file a continuation21

based on an application in which there are allowable claims."22

And skipping that next sentence and going to the next, "A23

continuation application enables an applicant to enter aliunde24

claim inventions disclosed but not previously claimed to25


develop objective evidence of an obviousness or to replace1

claims rejected for obviousness with narrower claims that can2

be approved."3

Q I direct your attention to Defendant's Trial Exhibit4

2205, which is the next tab in your book. Do you see that?5

A Yes, I do.6

Q What is it?7

A These are a few pages taken from Professor Cayton's8

multi-volume treatise entitled "Patent Practice."9

Q Who is Professor Cayton?10

A Professor Cayton is a very, very well known legal11

educator with respect to patent law and had --12

Q And for how long --13

A Well, --14

Q Excuse me.15

A And has been since, I think, about 1965. I remember him16

coming to Washington and joining the faculty at George17

Washington University School of Law and became a tenured18

professor and took a program that consisted of a limited19

number of courses in patent law and over the years developed a20

quite substantial program in patent law.21

He himself wrote extensively and his principal writing22

was this multi-volume treatise called "Patent Practice," which23

covers Patent Office practice and procedure from A to Z, and24

at the same time, or while at least he was at George25


Washington, which lasted about 20 years, he developed a series1

of courses for attorneys and an organization called Patent2

Resources Group and is still very active today.3

Professor Cayton retired from teaching in 1992, but his4

Patent Resources Group continues on offering a wide range of5

courses, new courses coming along all the time, to a certain6

extent, based upon decisions of the Federal Circuit and how to7

deal with them.8

So, to me, he's been the leading educator in patent law9

and patent practice for over 35 years.10

Q Is his treatise, "Patent Practice," of which we have11

excerpts in Defendant's Trial Exhibit 2205, recognized as12

authoritative in the field?13

A Yes.14

Q For whom is that text written, to your understanding?15

A Well, both law students, I used Volume I in my course for16

a few years, and also for practicing attorneys and people,17

particularly people who are interested in taking the18

examination to become registered to practice before the Patent19

and Trademark Office.20

Q Can you point out to us what, if anything, in this21

treatise you rely upon as consistent with the opinions you've22

given the Court?23

A Well, there's a section beginning at 14-52 regarding24

divisional applications. The first subsection is when to file25


it.1

THE COURT: Let's not have the portions read. Just2

reference to the sections is sufficient.3

MR. HOSIER: Could I then have -- if we could have4

them admitted, then --5

THE COURT: Well, I will receive --6

MR. HOSIER: The excerpts.7

THE COURT: -- the excerpts that the witness relied8

on, 2205, and the previous one, 2204.9

(Defendant's Exhibit Nos. 2204 and 2205 admitted)10

MR. HOSIER: All right.11

BY MR. HOSIER:12

Q And could you then point to, without reading them, just13

briefly identify the portions further in this treatise that14

you rely upon, sir?15

A At 14-53, the paragraph beginning with the word16

"Occasionally" I think is significant, as well as the next17

paragraph beginning with "In most cases," at least about half18

of that paragraph, and then the following paragraph over on19

14-54 beginning with "As a practical matter."20

Q I direct your attention now to Defendant's Trial Exhibit21

2209. What is that?22

A Well, this is a printout of some material online from23

Chapter 6 entitled "Prosecution," written by Steven A. Becker. 24

It appears in the "Patent Applications Handbook."25


Q Who is Mr. Becker to your understanding?1

A Mr. Becker is an attorney in Washington with the firm of2

McDermitt, Will and Emery and he heads up the patent3

prosecution group in that firm.4

Q Would you point out what portion of this work you rely5

upon?6

A The third paragraph.7

Q Beginning "In the past"?8

A Yes.9

MR. HOSIER: I offer 2209.10

THE COURT: I'll receive 2209 as well.11


BY MR. HOSIER:13

Q Direct your attention now to 2321, sir. What is that?14

A These are pages that are -- of material that appears in a15

little book called "Patent Law and Practice" by Herbert F.16

Schwartz.17

Q Who is Mr. Schwartz?18

A Mr. Schwartz is a partner with the New York firm of Fish19

& Neave.20

Q And does he also hold another position?21

A He's an adjunct professor at the University of22

Pennsylvania School of Law.23

Q And where did you personally locate this text?24

A Well, I have a copy in my office, as well as some prior25


editions, but this particular -- these particular pages came1

from the volume that appears right over here in the library. 2

If you go through the doors at --3

Q The library of this court?4

A Correct, just around the corner.5

THE COURT: Right, published by the Federal Judicial6

Center.7

MR. HOSIER: Yes. And could I --8

THE COURT: So we have it as well.9

BY MR. HOSIER:10

Q Would you direct our attention to what portions of this11

text on which you rely as supportive or confirming of your12

opinions?13

A Well, at page 22, near the bottom of the page, he has a14

section entitled "Replies to a Final Action" and he explains15

what the different kinds of -- what the options are, what the16

different kinds of replies are.17

Over at page 23, the paragraph beginning "After a final18

rejection," and he mentions there about three options, the19

first being appeal, which he then proceeds to discuss under20

Subsection A, B, "Cancellation of Claims" over on page 24 and,21

C, "Continuing Applications." And he explains under22

"Continuing Applications," down about six or seven lines, that23

there are three types of continuing applications,24

continuations, continuations in part and divisionals. That's25


a sentence there about the middle of that paragraph.1

And then two paragraphs below that he explains what a2

continuation is and over on page 25, the last few sentences of3

that section, beginning at a sentence about eight lines up4

from the bottom, beginning with, "A continuation also might be5

filed if only some claims were finally rejected in the6

parent," and concludes by saying, "Another reason for a7

continuation is that the applicant may have thought of a new8

way to claim the invention after allowance of final rejection9

when the claims may no longer be added directly to the10

parent."11

And then I also find on the next page some disclosure12

discussion that's significant under "Divisional Application"13

and the reason I think that's significant is that this is one14

of the kinds of continuing applications that can be filed as15

one of the options for responding to a final action, which is,16

to me, in effect saying you don't have to file a divisional up17

quite early in the prosecution where the restriction18

requirement is made.19

Q And is that also consistent with your historical practice20

and awareness of the patent -- what the patent community does?21

A Yes, it is.22

Q Do you recognize attached Defendant's Trial Exhibit 232123

as authoritative in the field of patent law?24

A Yes, I do. I should note, this was first published by25


the Bureau of National Affairs, but it was deemed by the1

Federal Judicial Center to be sufficiently significant that it2

was published by the Federal Judicial Center and, in fact, it3

has been cited by the Supreme Court of the United States.4

Q Apart from the length of time from filing of the first5

Lemelson application in December 1954 to issuance of the last6

Lemelson patent in September 1994, do you find anything7

unusual or out of the ordinary in terms of how the prosecution8

of the Lemelson applications leading to the patents-in-suit9

was conducted?10

A No, I don't.11

Q In your opinion, are patent application pendencies that12

extend over one or more decades and the issuance of many13

patents from the same application disclosure unprecedented to14

your experience?15

A No. I know of no case that consumed these many years,16

but I know of many, many cases that consumed many, many years.17

Q What, if anything, do you rely upon as a basis for that18

opinion?19

A My own experience and knowledge that's been acquired in20

reviewing file histories, in litigation and elsewhere and, in21

addition, a compilation that has been put together and appears22

as Exhibit 2217.23

Q Well, I direct your attention now to that exhibit. What24

is that, 2217?25


THE COURT: So the record's clear, on 22 -- I'm1

sorry, 2321, the FJC publication, I'll receive that portion2

relied upon by the witness as well.3


MR. HOSIER: Thank you, Your Honor.5

THE COURT: All right. Now the next one was -- I'm6

sorry, the number was?7

MR. HOSIER: 2217.8

THE COURT: 2217, all right.9

BY MR. HOSIER:10

Q What is that, sir?11

A Well, this is a compilation of various patents, some 309,12

showing the titles and issue dates and pendency periods, the13

number of applications that were involved.14

Q And do you understand that that was discussed during the15

trial testimony of Mr. Hoffman?16

A Yes, I do.17

MR. HOSIER: Your Honor, I offer Defendant's Exhibit18

2217.19

THE COURT: Is there any objection to 2217?20

MR. HERMAN: I understand it was objected to before,21

Your Honor, but I have to confess I don't know why.22

THE COURT: Well, I think Mr. Hoffman merely23

testified to the preparation of it. I don't recall that he24

testified to the -- otherwise to the use of it. It was25


indicated that this witness wouldn't be relying on it so much.1

MR. HOSIER: Yes. And, Your Honor, I think they've2

created a version that is the same document except has the3

Lemelson patents added to it and I have no difficulty4

accepting their version if it's -- if, as I understand it,5

it's the same document as 2217 but with the Lemelson patents6

added.7

THE COURT: Where it added the number of years in8

the column and so forth?9

MR. HOSIER: Correct.10

THE COURT: I don't --11

MR. HOSIER: Assuming it's accurate, I don't have12

any problem with that.13

THE COURT: Well, let me just find out.14

Is there any independent objection to this15

particular compilation?16

MR. HERMAN: Not that I know of, Your Honor.17

THE COURT: I'll --18

MR. HERMAN: Could I just have a minute just for --19

THE COURT: Sure.20


MR. HOSIER: I'm informed that the only objection at22

the time Mr. Hoffman testified was relevance. I think now the23

relevance, if that was, at any time, legitimately in dispute,24

is resolved at this point in time.25


THE COURT: All right. Well, I remember the other1

exhibit that plaintiffs proffered on it, but go ahead. Any2

objection to this?3

MR. HERMAN: Your Honor, I have no objection to this4

providing our version, 3671, comes in as well.5

THE COURT: I'll receive them both.6

MR. HERMAN: Thank you.7

THE COURT: I'll receive them both.8


(Plaintiff's Exhibit No. 3671 admitted)10

THE COURT: That's Plaintiff's 3671, Ms. Clerk, and11

Plaintiff's [sic] 2217.12

THE CLERK: Okay, thank you.13

THE COURT: All right, go ahead.14

MR. HOSIER: I think we may have noted some15

inaccuracies in 3671, so if we could just take a little time16

to consider it, but I think basically we don't have a problem.17

THE COURT: Right. Well, obviously, if you've got18

an error that you can note in it, prospectively you can19

correct those, but largely they focused on the number of years20

pending, as I recall, in both cases and that was really the21

thrust of what was presented. There was some information22

concerning litigation and other factors that the parties cited23

in the margins.24

MR. HOSIER: Right. I think it's self explanatory,25


but if Your Honor would like a little bit of --1

THE COURT: No.2

MR. HOSIER: Okay.3

THE COURT: Well, let me just ask the witness.4

What use did you make of 2217, if any, in arriving5

at the opinion you just expressed about the Lemelson6

applications being longer, as I understand it, and others7

you're aware of not being inordinately long?8

THE WITNESS: Your Honor, it confirms my view that9

long pendency times are not unique to the Lemelson situation. 10

I had been aware of certain situations before and this11

confirms that those not only exist, but that there are many12

others.13


BY MR. HOSIER:15

Q All right, under the patent laws as they existed during16

the time the Lemelson applications for patent in suit were17

pending, would any member of the public have any way of18

knowing whether or when an applicant amended, added or19

canceled a claim?20

A Not during that time period because, by statute,21

proceedings in the Patent Office are conducted in confidence22

absent a waiver or some other special circumstance.23

Q Some other witnesses have testified about the basics of24

patent practice and identified the components of a patent25


application and you have, just a moment ago, as well, sir,1

but, keeping in mind we wish to avoid any repetition, can you2

very briefly -- You know, in fact, I think we've covered that3

adequately. Let's just jump from there.4

Is there any difference in the knowledge and skills5

required for drafting of patent claims versus that required6

for the drafting of patent specifications and drawings?7

A Yes, they're quite different.8

Q And could you explain?9

A Well, as I mentioned, the specification -- we frequently10

speak of the specification or the written description part of11

the patent as a disclosure of the technology. It's a teaching12

document and it teaches people who are workers in the art. It13

need not contain a lot of basic information that people14

skilled in the art would understand. A chemist would15

understand what the formula for methyl alcohol is and what a16

carbon atom is. It doesn't have to go into all that.17

The knowledge of a person of ordinary skill in the art is18

presumed to be, in effect, written into the document without19

being spelled out explicitly, but with that background20

knowledge the patent application is supposed to teach that21

person what it is that's new. So that write-up, in large22

part, is something that technical people could do. I say in23

large part because there are many, many cases construing the24

requirements of the first paragraph of 112 and so those25


decisions have to be kept in mind, but the actual text itself1

could be written, and often is written, by technical people.2

The claims, on the other hand, are legal instruments,3

also subject to many, many court decisions and require a great4

deal of skill in art and drafting. It has been characterized5

by one Justice of the Supreme Court as perhaps the most6

difficult legal instrument to draft. And my own view is7

that's entirely correct because you're taking an idea, if you8

will, figuring out what embodiments, physical embodiments,9

constitute or represent the idea and now converting those10

physical embodiments, if you will, into words in the form of a11

claim which need to be drafted in such a way as to, as best as12

one can with the knowledge at the time of the prior art,13

protect the invention as well as the law permits. 14

So a claim really does two things. It defines the15

invention, but its other purpose, perhaps the most important16

purpose, is to set out the scope of the protection that is17

accorded the owner of the patent.18

Q Beyond the specialized skill, is there any special19

knowledge required for drafting of patent claims that is not20

required for the drafting of the patent specification and21

drawing?22

A Yes. You need to understand these concepts that I just23

mentioned as to what a claim is. 24

Q And I'm now speaking of knowledge. Is there any25


information that you need to most capably draft a patent1

claim, such as knowledge of the prior art, that you don't need2

for the specification?3

A The claim, let's say the ideal claim, which is, I4

suppose, rarely, if ever, achieved, is one that is broad5

enough to provide the scope of protection that the inventor is6

entitled to, but not so broad as to encroach upon the prior7

art, that is to say encroach upon that which is old or8

encroach upon that which would have been obvious from what was9

old. So you have to be drafting -- encircling the subject10

matter, this verbal fence, if you will, as to carve out and11

surround the subject matter which is directed to new and non-12

obvious subject matter, and also adequately described in the13

specification, with the teaching of how to make and use, but14

broad enough to provide fair protection.15

So it's kind of a gerrymandering-type thing, to weave16

around the prior art, but stay consistent with the disclosure17

of the teaching part.18

Q What, if any, effect might the citation of unknown,19

previously unknown, prior art have on patent prosecution?20

A It could have --21

MR. HERMAN: Objection, Your Honor. That sounds22

awfully hypothetical to me.23

THE COURT: Restate the question.24

MR. HOSIER: What, if any, effect might the citation25


of new prior art have on patent prosecution.1

THE COURT: Well, overruled. The witness can2

respond to such a hypothetical, if he can.3

THE WITNESS: It has a lot of effect because, every4

time new prior art comes up, you now have a different body of5

knowledge or information to take into account in achieving6

these objectives that I just mentioned. If I could just maybe7

kind of illustrate.8

Suppose the invention was the combination of9

elements, let's say, A plus B plus C plus D. There might be10

prior art generated which would cause you to perhaps add11

another element, E, thereby narrowing the claim to a subset of12

A, B, C, D. On the other hand, it might be prior art that13

would warrant narrowing the scope of element D, maybe A, B, C14

and D have all been defined in rather broad terms and some15

prior art comes along which would suggest that a claim -- that16

that claim is too close to the art, but it could be backed17

off, removed further from the art, if element D were defined18

in narrower terms.19

Now it may also be that the art, once you see that20

new art, say, well, maybe A could be broadened, narrow the21

definition of component or element D, but maybe we can broaden22

A also. It might also warrant additional claims, perhaps, of23

a -- not involving A, B, C and D, maybe just A and B in24

combination with X. I know this is pretty abstract, but it's25


illustrative of claims being made up of a number of elements,1

the definition of which and the number of which often will be2

varied as the drafter of the claims, the person prosecuting3

the application, acquires more information as to what the4

prior art is and some applicants have a better handle on just5

what the prior art is at the time of filing than other6

applicants.7

There's no requirement to do a search, so, in that8

situation, perhaps the drafter knows considerably less about9

the prior art when they first go to the Patent Office than if10

someone had done a prior art search, but, in either case,11

since a search never can be complete, prior art consists of a12

vast sea of documents, prior patents and publications, it is13

very, very common that the examiner's search, which an14

examiner is required to undertake, will generate prior art15

which will cause some shifting and additions in the claims, a16

shifting of the claims that are in the case and the addition17

of additional claims, other claims.18

BY MR. HOSIER:19

Q Are you familiar with what is known as the Process Patent20

Act?21

A Yes.22

Q What is that?23

A In general.24

Q What is the Process Patent Act?25


A The Process Patent Act permits -- well, let's say it1

enlarges the list of activities which constitute the2

infringement of a United States patent.3

Q When was it enacted?4

A I think 1988. What it adds to the list of infringing5

activity is the importation into the United States of an6

infringing product or product made by a process abroad, that7

is to say a United States patent defining a process of making8

a product after the Process Patent Act can't be infringed by9

the importation, the act of importing a product into the10

United States, made by a process abroad so long as that11

process carries out the steps of the process claim.12

Normally, part of the process would have to be carried13

out in the United States to infringe that patent.14

Q In your opinion, would such things as new legislation,15

such as the Process Patent Act, court decisions, the prior art16

you've described, be among the factors that could reasonably17

cause an applicant to amend or present new claims during18

patent prosecution?19

A Yes, it certainly could be a consideration in what claims20

you want to press for.21

Could I go back to my last answer?22

Q Certainly.23

A I want to just make clear that I did not misspeak. I24

said prior to the 1988 Patent Act the process would have to be25


carried out in the United States to infringe the process1

patent and I -- that's what I intended to say. I believe I2

said that. I did not intend to leave the impression that3

there was no remedy, prior to the 1988 Patent Act, for someone4

who is carrying out the process abroad to make a product and5

then be imported. That remedy, however, was not obtainable in6

the United States District Courts. It had to be obtained by7

going to the International Trade Commission under a provision8

dealing with the Unfair Trade Practices and seek an exclusion9

order of the product. But the Process Patent Act now permits10

that importation to be an act of infringement.11

Q Let me direct your attention to Defendant's Trial Exhibit12

1180 in your text. What is that?13

A 1180 is a diagram showing the relationships between the14

various Lemelson applications, and it starts at the top with15

two applications, the leftmost being the '54 application and16

the rightmost the '56 application and then below that the '6317

application and coming on down, '72 and so on.18

Q How many applications in total, to your understanding,19

were there in the Lemelson prosecution --20

A Well --21

Q -- leading to the patents-in-suit?22

A Twenty.23

Q And how many patents issued?24

A I think 18; two cases, one abandoned, did not issue as25


patents. That's the '54 application and the '63 application.1

Q Just for focusing here, do you have an understanding as2

to which patents -- how many patents are in suit?3

A Well, of the -- 18 patents it's my understanding 16 are4

in suit.5

Q And could you identify or able to identify which two are6

not on this chart?7

A I think, if my understanding's correct, that it's the8

'379 and the '086. '379 being the -- shown in the upper9

right-hand part and the '086 -- I mean the -- yeah, the '08610

is down about two-thirds of the way down the chart.11

Q Now if there's a bracket and then the words Examiner12

Britton, what does that denote, if anything?13

A It denotes those applications in which Examiner Britton14

was involved, either having principal involvement or partial15

involvement up at the top there I believe he was first getting16

involved in that -- I'm going to call it the '63 application. 17

I believe there was another attorney -- or another examiner or18

two involved there, but then there came a time when Examiner19

Britton was the principal examiner in a number of20

applications, and then around 1986 or so Examiner Peng became21

involved. Both Britton and Peng were involved, I believe, in22

the '86 application that led to the '073 patent. And then23

Examiner Peng was the principal examiner in many of these here24

at the bottom, the nine shown.25


Q Does the bracket with Examiner Peng denote what on this1

chart?2

A That he was the principal examiner in these nine3

applications shown at the bottom of the page, the righthand4

column of three, and the next column of three, and then the5

third column of three, all of them except the leftmost column6

of three.7

Q And then there's an Examiner Majaik [phonetic] and a8

bracket above three applications there. What does that9

denote?10

A That that examiner handled those three applications.11

Q Just for clarity of the record could you indicate what is12

denoted inside each of these boxes, not individually, just by13

way of example with one?14

A Basically the same information is in each of the boxes. 15

The serial number of the application and its filing date, the16

designation of the patent that issued, and the issue date of17

that patent. What I just said applies to all these except the18

two that I mentioned earlier, two applications that I19

mentioned earlier that became abandoned.20

Q Now we have coloring in somewhat of a purple and a green21

on these charts. What, if anything, does that denote?22

A The coloring indicates expiration dates basically. That23

is to say the two boxes that are in purple identify patents24

that expire on the same day, and in this instance it's the 1725


years from October 3, 1978; the expiration date is '730. This1

'012 patent expires the same time. Now the green boxes2

likewise indicate patents that expire on the same day. And in3

this instance it's the expiration date of the '918 patent.4

Q And how did it come to pass that the patents at the5

bottom of the page, the block of 12, that seven of them expire6

on the same date as the '918 patent up above that's green7

block, and one of them expires on the same date as the purple8

denoted box, '730?9

A The green -- the box that's shown in green, as I said,10

all expire -- the patents in those boxes all expire on the11

same day and they came to expire on the same day or have come12

to expire on the same day because the patents were the subject13

of a terminal disclaimer in which the terminal portion of the14

patent was disclaimed. 15

And in this instance it's the terminal -- it's the16

portion of each of these patents that otherwise would extend17

beyond the expiration date of the '918 patent. That portion18

of those patents in each instance was disclaimed so that they19

all expire, the '918, and the terminal disclaimers were filed20

to overcome a rejection based on obviousness type double21

patenting. And what I mean by that is that the examiner22

decided that at least some claims in those applications were23

defining -- or some claims were defining subject matter that24

is very closely related to the subject matter being claimed. 25


And I say claimed, because the focus here is the relationship1

between claims. 2

But the examiner decided that some claims in these3

applications define subject matter that's quite closely4

related to the subject matter being claimed in the '918 patent5

and that to allow -- and so entered what's called a double6

patenting rejection of the obviousness type; there are two7

basic types. One of the obviousness type can be overcome by8

the filing of a terminal disclaimer. 9

The underlying rationale for the rejection is to avoid --10

or is to -- it basically says this. A patent life should be11

17 years, fixed by Congress. You're seeking another patent12

with claims for 17 years, but those 17-year periods will not13

expire at the same time. And I believe, so the examiner says,14

that you should not get claims in this second application for15

17 years because the subject matter being claimed is too close16

to the subject matter being claimed in the patent you already17

have. You're not claiming exactly the same thing, but you're18

claiming something that's so close to it, that is not what we19

patent people talk about, it's not patently distinct from the20

other claims, it's just too close. So I reject these claims21

in this application under the case law development known as22

obviousness type double patenting. 23

The cases also say that a doubt patenting rejection of24

that type can be overcome if you don't extend the life of your25


second patent, and the way not to extend the life of the1

second patent is to file a paper disclaiming the portion of2

the life of that second patent that would extend beyond the3

life of the underlying patent. It's a very common practice,4

common rejections, and this is a common way for overcoming5

them. 6

It's not the only way to overcome them. Just like other7

rejections, an inventor can contest that. Say, no, I believe8

the claims I'm now seeking are patentably distinct, they are9

not so close that I should have to give up a terminal portion,10

I'm entitled to a full 17 years. And those issues can be11

appealed to the Board of Appeals and on to the Federal12

Circuit. But one way to avoid all that is to simply file a13

terminal disclaimer, and say, okay, I will give up some of the14

years of this patent that I'm trying to get.15

THE COURT: Mr. Hosier, this is very helpful but16

we've already heard testimony about what terminal -- and17

really that's something you all can argue. Do you have18

further substantive examination?19

MR. HOSIER: Yes.20

THE COURT: About how much longer?21

MR. HOSIER: Well, I was -- we have -- it might be22

as much as an hour, might be 40 minutes, 35, 40 minutes if I23

can get it down to that.24

THE COURT: All right. Let's take a 15-minute25


recess and then we'll reconvene to complete the direct1

examination. But avoid -- it's really not necessary to go2

back into areas that have been -- really are not contested3

what a terminal disclosure is. We've had testimony, but,4

moreover, you all can present argument to me on that.5

MR. HOSIER: I understand.6

THE COURT: I want to find out what the opinions are7

of this witness and -- but to simply take his time and ours to8

tell us what the law is or what some of these procedures are9

that we, number one, already know or alternatively you all10

can --11

MR. HOSIER: Right.12

THE COURT: -- provide to me in your argument, is13

really just unnecessary and consuming too much time and14

preventing us from wrapping it up, you know, by the end of15

next week. Which I still want to try and do but that's up to16

you all.17

MR. HOSIER: Right.18

THE COURT: All right. Thank you.19

(Court recessed at 10:15 a.m. until 10:38 a.m.)20

THE COURT: Have a seat everybody.21

All right. Go ahead, Mr. Hosier.22

MR. HOSIER: Thank you, Your Honor.23

BY MR. HOSIER: 24

Q Mr. Witherspoon, referring to Defendant's Trial Exhibit25


1180, as you can see the applications run sequentially down to1

the 12 at the bottom and then they tend to splay out. Can you2

very briefly explain or account for why there is a number of3

issued patents at the base of the tree?4

A Yes. To a great extent this arose because of rejections5

by the examiner of the obvious -- on double patenting of the6

obviousness type which resulted in terminal disclaimers being7

filed. And since -- when a patent issues all the claims in8

that patent must expire on the same day. If some claims in an9

application are subject to a double patenting rejection and10

others are not and some become terminally disclaimed, others11

are not, then that application must be fractured into two12

applications.13

Q And then does that then account for the bulk of the14

number of patents that ultimately issued?15

A That accounts for many of these, yes.16


1180A, what is that?18

A This is -- contains basically the same information as the19

other, except the boxes have been combined so that all the --20

all the green, the patents in the green boxes have been21

collected into a single box and shown at -- on a time line to22

expire the same as the '918. And the same for the purple, the23

'012 box has been pulled up to '730 because they expire on the24

day.25


Q And then there's the word "term" in those purple and1

green boxes; what does that mean?2

A That number indicates the life or the term of the patent. 3

It's 17 years less the amount of term that has been4

disclaimed.5

Q And so the net term, for example, for the terminally6

disclaimed patent, the '012 patent in purple, is 3.9 years7

instead of 17 years?8

A Yes.9

Q And so on? All right. Let's now refer to Defendant's10

Exhibit 2216. What's that?11

A This shows the patents in which the bar graph designates12

the term, that is to say the length of the bar reflects the13

term of the patent and the expiration date is shown and the14

issue date are shown. So we just looked at the '730 and the15

'012 as expiring on the same day the purple boxes and so the16

leftmost portion of those bars are the same. And the same for17

the ones in the green boxes down here, the eight patents that18

expire the same time the '918 patent expires.19

MR. HOSIER: Your Honor, I offer Defendant's20

Exhibits 1180, 1180A, 2216, and 1797.21

THE COURT: Any objection to those exhibits?22

MR. HERMAN: No, Your Honor.23

THE COURT: All right. Those will be received.24

(Defendant's Exhibit Nos. 1180, 1180A, 2216, 1797 admitted)25


MR. HOSIER: Your Honor, perhaps I can seek the1

guidance of the Court on this. We had created -- have created2

a summary book which is of all of the file histories, the '543

application, right on down that entire 20-application chain --4

THE COURT: Right.5

MR. HOSIER: -- in which we have each of the6

substantive items that occurred for the most part. We've7

eliminated all of the formal papers, filing fees, things8

regarding issue papers and fees, formalities on drawings, and9

we've, in many instances, with responses from Mr. Lemelson, if10

they're 30 pages long, maybe only have four pages and so on. 11

And we've extracted it into this book to basically walk the12

Court through the prosecution. That'll take, you know, maybe13

40 minutes or so. If it would be helpful to the Court we're14

certainly prepared to do it and try and do it on a very rapid15

basis. It gives an oversight of the view of each of these16

applications and what occurred sequentially from application17

to application which really accounts for how this time passed.18

THE COURT: All right. With regard to the exhibit19

itself or the summary itself then, it certainly doesn't20

purport to be the complete file history.21

MR. HOSIER: No, it does not.22

THE COURT: And we've received pieces of file23

history, I think, at different times throughout the trial,24

different segments.25


MR. HOSIER: And we have the complete file history1

of record as well, I believe, is admitted as an exhibit.2

MS. CURTIN: Your Honor, we're still waiting for3

whether or not they have any questions about the composites,4

but basically they're all either in or on their way in.5

THE COURT: Okay. Okay. And you would propose then6

to use this as excerpts from that file history to go through7

with this witness and do what again, step by step?8

MR. HOSIER: Just basically give the Court kind of a9

ride through on horseback through the file history to see the10

progress of the applications and how things occurred as they11

did.12

THE COURT: I think you all -- you know, if it's in13

the -- if it's in evidence already you all could argue that to14

me in your briefing, couldn't you?15

MR. HOSIER: Well, we certainly can. The only thing16

is Your Honor hasn't been exposed to the actual steps of the17

process and I -- and I agree, we certainly can argue it, but18

if it --19

THE COURT: Well, parts of it I have, I think, from20

different witnesses, but --21

MR. HOSIER: If it would be helpful to see why it22

takes so long and what Mr. Lemelson did along the way to do23

things, I can do it fairly quickly or we can -- just at Your24

Honor's discretion on that.25


THE COURT: Let me ask counsel for plaintiffs, your1

position on that proposal?2

MR. HERMAN: Well, Your Honor, I start with the3

proposition that I've never seen the summary before, and so4

for me now to go through this and try to figure out what's5

missing that matters is not something I can do in the next 156

or 20 minutes. But beyond that it seems to me that the file7

wrapper is the file wrapper. It is what was before the Patent8

Office, not some selected version of it, and to the extent one9

wants to argue about what happened I believe it speaks for10

itself.11

THE COURT: Well, I think -- you know, I'm not12

inclined -- I'm disinclined to try to go through step by step13

as you propose, even in summary form. I think we'll have the14

file history in evidence. The parties no doubt will disagree15

as to a variety of maybe reasons for delay or reasonableness16

of delay that occurred and the like and I'm sure you're going17

to be arguing that back and forth to me to a considerable18

extent. But, yeah, I don't think I'm going to allow such a --19

such a review, nor do I want to receive just a separate --20

MR. HOSIER: No, I understand that.21

THE COURT: -- selected summary, so let's dispense22

with that then.23

MR. HOSIER: And with that we have no further24

questions.25

WITHERSPOON - CROSS 68

THE COURT: All right. Thank you. Then we can1

start -- and let me give this back to you, Anita, if I2

could.3

THE CLERK: Thanks.4

THE COURT: We can start with cross-examination5

then.6

Go ahead.7

CROSS-EXAMINATION8

BY MR. HERMAN: 9

Q Mr. Witherspoon, you testified that in your review of the10

prosecution history, Mr. Lemelson had written to the Patent11

Office requesting that an interference be provoked. Do you12

remember that testimony?13

A Yes, I do.14

Q And that occurred in the late 1960s?15

A I think that's right, it was in an application filed in16

'63, so, as I recall, that application took a long time for17

the office even to act on it, so it would have moved this to18

the late '60s, yes.19

Q Right. And it's true, isn't it, that after the 197220

Board of Appeals decision neither Mr. Lemelson nor his counsel21

ever asked for an interference again with the Reed patent, did22

they?23

A You mean repeat the process of requesting the24

interference?25


Q Okay. In the late 1960s Mr. Lemelson requested that an1

interference be provoked and it was a request with respect to2

what we've called the Reed -- the Reed claims or the Reed3

patent?4

A Correct.5

Q After the --6

MR. HOSIER: Your Honor -- excuse me, sir. Your7

Honor, this is beyond the scope of his expert report. There8

were two expert reports of Mr. Adelman; as you recall in the9

examination I indicated that his assignment was to deal with10

the second report, which was prosecution latches. I made the11

decision on the first report of Mr. -- or Mr. Adelman not to12

even have an expert witness for it and we've confined our13

expert witness report to the subject matter of prosecution14

latches. What we're going into now is the subject matter of15

Mr. Adelman's first report and beyond the scope of this16

witness's expert report.17

THE COURT: All right. 18

MR. HERMAN: Well, Your Honor, I hadn't intended to19

go that far. I understood the witness to be testifying that20

Mr. Lemelson tried to expedite proceedings and he gave two21

examples; one was a request for interference, which he made in22

1968, and I'm going to prove that after 1972 he never23

requested it again. That's not expediting --24

THE COURT: All right. I'll let you pursue that for25


that purpose. Go ahead.1

BY MR. HERMAN: 2

Q Back to where we were, Mr. Witherspoon. You agree with3

me that in the late 1960s Mr. Lemelson did write to the Patent4

Office in connection with his request for an interference with5

the Reed patent?6

A Yes.7

Q And you also agree with me, I take it, that after the8

1972 Board of Appeals decision, neither he nor his counsel9

ever wrote to the Patent Office asking for such an10

interference?11

A I don't recall any such paper.12

Q Now you also testified that Mr. Lemelson requested13

expedited consideration of his prosecution; do you remember14

that?15

A The -- by reasons of -- to make it special?16

Q Yes.17

A Under the provisions of the Patent Office that an18

application can be requested to be examined special, taken out19

of order for certain conditions, one of which is age.20

Q Right. And age is the operative factor. He did that in21

1991, didn't he?22

A I don't recall the date, but --23

Q Well, let me show you --24

A -- wouldn't be surprised if it was in that time frame at25


least.1

Q Let me show you Plaintiff's Exhibit 28B or to be more2

accurate, let me have somebody show you Plaintiff's Exhibit3

28B. Thank you. Do you recognize Plaintiff's Exhibit 28B as4

a request for expedited treatment, petition to make special?5

A Yes.6

Q And this is 1991?7

A Correct.8

Q Now you testified about terminal disclaimers and you did9

so in connection with Defendant's Trial Exhibit 2216; do you10

remember that?11

A Well --12

Q It should be in your book.13

A Yes, that's the bar graph?14

Q Yes, the bar graph.15

A Correct. Not sure I talked about terminal disclaimers in16

connection with that bar graph, but that bar graph grew out of17

some testimony regarding another exhibit --18

Q Fair enough.19

A -- in which I did discuss terminal --20

Q Fair enough. Now. Defendant's Exhibit --21

A Would you give me that -- excuse me, would you give me22

that number again?23

Q 2216. 24

A Thank you.25


Q You with me?1

A Yes.2

Q And Defendant's Exhibit 2216 shows that at least one3

patent which contains the common specification filed in 19724

will not expire until 2011; isn't that correct? That's the5

'641 patent.6

A That's correct.7

Q This exhibit also shows that nine of the 18 patents-in-8

suit were not subject to a terminal disclaimer; isn't that so?9

A Nine of the 18?10

Q If I did my math right I think it's nine of 18 were not11

subject to terminal disclaimer.12

A I'm afraid -- I'd appreciate it if I could get a little13

help, I don't -- I can't --14

Q All right.15

A -- do the math on the fly very well.16

Q All rightie.17

A But which ones -- I --18

Q Looking at Exhibit 2216, can you tell which of the19

patents are subject to a terminal disclaimer and which are20

not?21

A Yes, the ones that are subject to a terminal disclaimer22

are those in which the bar is less than 17 years in length.23

Q Right, and that's nine, nine patents by my count. Maybe24

I didn't --25


A Well, I haven't, you know, taken the numbers and1

subtracted them, just eye balling the length of the bars and I2

get eight.3

Q Ah, you're even better than I am. So only eight of the4

patents-in-suit is subject to a terminal disclaimer?5

A Now we're talking about those that are subject to a6

terminal disclaimer.7

Q Right. There are eight patents that are subject to a8

terminal disclaimer according to this graph; is that right?9

THE COURT: Well, I may be misunderstanding, Mr.10

Herman, what you're driving at. If I look back at 1180A I see11

with regard to those that were denominated terminally12

disclaimed patents in green, I get eight of those and then --13

MR. HERMAN: Yes.14

THE COURT: -- in the purple two additional, so.15

MR. HERMAN: Well, I think the purple --16

THE COURT: Which are on the graph, as well.17

MR. HERMAN: Well, there was one additional -- Your18

Honor, for the purple, the first purple I believe is the19

patent that has its full term and the second purple is the20

patent that was disclaimed over.21

BY MR. HERMAN: 22

Q Is that right, Mr. Witherspoon?23

A Correct.24



BY MR. HERMAN: 1

Q So we have some --2

THE COURT: You're right, there you go. So that --3

they link back to those, so. All right.4

MR. HERMAN: So we have eight altogether.5

THE COURT: Eight altogether then. Got it.6

BY MR. HERMAN: 7

Q And five of the patents-in-suit will expire after all of8

the terminally disclaimed patents will expire? Actually four.9

THE COURT: The '073, the '190, the '421, and the10

'641.11

MR. HERMAN: Right. Right.12

BY MR. HERMAN: 13

Q Four of the patents-in-suit will expire after the14

terminally disclaimed patents; correct?15

A Well, let's see. You know, what are in suit are16

something that you people are a little more knowledgeable17

about than I. I did testify that it's my understanding that18

'379 and '086 are not in suit, and so your question now is of19

those that are in suit, which ones have a full term?20

Q Yes.21

A Well, I hate to ask you a question, but would you be kind22

enough to give me the patents that are in suit and I can tell23

you if that's subject to a terminal disclaimer or not?24

Q It doesn't matter, I just want to make the point, Mr.25


Witherspoon --1

A Sorry.2

Q -- that on this chart there are four patents which issued3

to Mr. Lemelson based on the 1972 common specification which4

expired after the terminally disclaimed patents; isn't that5

right? The '073, the '190, the '421, and the '641 all expire6

after the terminally disclaimed patents?7

A I believe that's correct. Yes, that's correct.8

Q Now you also testified about Exhibit 2217, do you9

remember that? This is the length of pendency chart?10

A Yes.11

Q And this length of pendency was calculated by looking at12

the date the patent application was filed and the date the13

patent issued; correct?14

A Yes.15

Q And you cannot tell if the patent -- from this chart you16

can't tell if the patent was subject to an interference17

proceeding, can you?18

A Not from this chart.19

Q You can't tell from this chart when the issued claims20

were actually first filed in the application, can you?21

A This chart says nothing about what occurred during22

prosecution.23

Q Right. And you can't tell whether there were any24

intervening rights that took place between the time the patent25


was first applied for and the time it issued, can you? Not1

from this chart?2

A Correct.3

Q Now looking at the first entry on DTX 2117, patent issued4

in 2001; is that correct?5

A Yes.6

Q Okay. And then if you go to page 18, entry '288, that7

was a patent that was applied for -- rather issued in 1914;8

correct?9

A Yes.10

Q Now are aware of how many patents the Patent Office11

issued from 1914 through 2001?12

A No.13

Q Well, if I tell you it's on the order of 5.2 million will14

you agree with me?15

A Well, I --16

Q Let me show you --17

A -- I'm prepared to accept that if that's your18

representation. I --19

Q Well, let me show you Plaintiff's Exhibit 3685.20

THE COURT: He said 5.2 million -- 21

MR. HERMAN: Patents.22

THE COURT: -- patents issued by the Patent Office?23

MR. HERMAN: Between 1914 and 2001.24

THE COURT: '14 and 2001, okay.25


MR. HERMAN: Assuming we did our math right, Your1

Honor, and we're going to do that.2

BY MR. HERMAN: 3

Q And if you look at the year 1914 gives patent number4

1,083,267, do you see that?5

A Yes.6

Q And then if you go to the year 2002 you'll see 6,334,2207

do you see that?8

A Yes, for 2002.9

Q Right. Which I believe to be the first patent to issue10

in 2002, which means that the last patent to issue in 200111

would be one less than that under our calculation. Do you12

agree with that?13

A Yes.14

Q And so if my math is correct, from 1914 through the end15

of 2001 we have approximately 5.2 million patents, just taking16

the patent numbers. Will you accept my math?17

A Yes.18

Q Now turning back to DTX 2217, that lists 309 patents for19

the period of time 1914 through 2001; correct? And if you20

just look at the end of the chart, it's 309 patents.21

A Yes.22

Q So you have 309 patents, range of pendencies is from 1123

years from the date of filing to the date of issuance through24

35 years; correct?25


A Well, it's my understanding that this chart does not1

contain all such patents --2

Q I didn't ask that.3

A -- that have a certain pendency time.4

Q This is the chart which Mr. Hoffman testified about and5

what you testified about and contains --6

THE COURT: -- contain that number versus --7

BY MR. HERMAN: 8

Q -- 309 entries. And again, if my math is correct, that9

means, taking this chart, one out of 17,000 patents had a10

pendency of greater than 11 years. Just taking his chart.11

MR. HOSIER: Objection. Objection, Your Honor, I12

mean, the math, it's obvious it's misleading, it's captioned13

exemplary, there's an indication already in Mr. Hoffman's14

testimony --15

THE COURT: Well, yeah, sustained. Look, sustained. 16

I mean, Mr. Herman obviously you're -- I don't quibble with17

your math. If we compared the number of exemplary patents18

with long pendencies reflected in 2217 it would be -- amount19

to one in 17,000 of the total number of patents issued during20

that time frame you've articulated, it looks like, and that's21

fine. I didn't understand the exemplary patents with long22

pendencies to be all inclusive, but even if it were, and I'm23

not sure you all could -- how easily you could come up with24

that. Maybe you could do it easily with the stroke of a --25


you know -- makes me long for the simplicity of the 18th1

century when I see these numbers. But with a computer you2

probably could come up with that, but --3

MR. HOSIER: Well, Your Honor, I just want to point4

out that in fact you can't because you can't computer search5

before 1976, so what we just had were from people's memories6

and some other sources. A few examples that are historic.7

THE COURT: Okay. All right. Well, okay. We --8

obviously you can do some computer search prior to that in9

terms of the gross numbers, because that's what's contained in10

36 -- Exhibit 3685, but that's fine. I mean --11

MR. HERMAN: Let me -- let me move on, Your Honor.12

THE COURT: Go ahead.13

MR. HERMAN: I would like to go back to the chart,14

however.15

THE COURT: Which one?16

MR. HERMAN: 2217.17

BY MR. HERMAN: 18

Q And the method of calculating pendency. And using the19

partnership's method of calculating pendency all of the20

Lemelson patents ensued have pendencies greater than 11 years,21

don't they? And again if you have trouble with that, I'll22

show you an exhibit. Plaintiff's Trial --23

THE COURT: Well, let the witness answer first of24

all, if he knows.25


THE WITNESS: May I see it?1

BY MR. HERMAN: 2

Q Sure. Yes. 3698A. And this is a chart which we've3

prepared, Mr. Witherspoon, in which we've taken -- chart which4

we examined Mr. Adelman about and you were here, so I think5

you heard that examination, in which the last column was timed6

from earliest support to first filing, and now we've added a7

column to the right, time from earliest support to issuance. 8

Earliest support being either the 1954 application or the 19569

application. And so if you take those as -- the pendency as10

the partnership is calculating it, that will give you a11

pendency time from the first application date to the time the12

patent issued. And if you look at those, all of those are13

greater than 11 years, aren't they?14

A I'm not sure I understand this document, it's titled,15

"Dates for Asserted Claims" of this particular patent, '626. 16

What -- let me see --17

MR. HERMAN: Could I just take a minute, Your Honor,18

I'm --19

THE COURT: Sure.20

(Off-record colloquy)21

THE WITNESS: You've got the '66 patent, there's --22

MR. HERMAN: I -- there's actually a series of 'em. 23

I thought that they were all one number, Your Honor, and it24

turns out it's actually A through N.25


THE COURT: All right. I don't think the witness --1

MR. HERMAN: Which will cover all of the patents. 2

Let's start with that. It's actually 3698A through 3598N.3

THE COURT: Well, I think the witness only has A,4

but --5

MR. HERMAN: Right. That's -- I hadn't realized6

that, Your Honor, I thought that the whole package was A.7

THE COURT: But you can -- you can certainly -- I8

mean you can have the witness go through these. I don't know9

if he's seem them before or not or you can just pose to him10

hypothetically that they're -- I think these were received but11

assuming that's the case it might speed it up to just --12

MR. HERMAN: Okay. 13

THE COURT: -- rather than have him try and14

calculate them as he sits there.15

BY MR. HERMAN: 16

Q If we've done the calculations right, Mr. Witherspoon --17

MR. HOSIER: I'm a little lost, Your Honor, as to18

what's --19

THE COURT: Well, let Mr. Herman ask a question. 20

The witness --21

MR. HOSIER: Well, I'm -- okay, I had an objection22

to the exhibit. I mean they have a date that's argumentative,23

date first filed, 1980; use that as a premise, the premise is24

not accepted by our witnesses and nor are documents and it's25


totally inconsistent, in our view, with the record. It's a --1

it's a copy supposedly of the claim verbatim, so if a comma2

gets changed they attributed a late date to it. So they3

create an argumentative exhibit that is not factual, put it in4

front of a witness that's never seen it or doesn't testify5

about claim, date first filed, doesn't know the basis for it6

because Dr. Hunt's going to testify as to when they're first7

filed, and he hasn't testified yet. And then ask him to8

confirm that things are true on the misleading exhibit, which9

doesn't seem to me to be a productive process.10

MR. HERMAN: Your Honor, perhaps Mr. Hosier wasn't11

listening to my explanation.12


MR. HERMAN: What I tried to explain, so what we14

have taken is the claims support alleged by the partnership. 15

1956, we don't accept that as a -- as the -- as the date, but16

that's the 1956 application. We then look up to the top where17

it says issued, 1982. I'm not asking this witness a thing on18

this chart when these claims first came in. I'm simply asking19

him to look at the calculation made by subtracting 82 from 56,20

which is the same methodology that the partnership used to put21

together 2217. 22


MR. HERMAN: That's where I am.24

THE COURT: And so how, Mr. Hosier, is that arguably25


misleading at this point if he is accepting -- if Mr. Herman's1

stated in his question the assumption used the 1956 date, used2

the plaintiff's proposed date?3

MR. HOSIER: Well, two points. One, it contains the4

misleading information date first filed and if this exhibit5

goes into evidence --6

THE COURT: But that's not what he's asking the7

witness about.8

MR. HOSIER: All right. Second -- so that I would9

have an objection if he offers it. But secondly, that's just10

obvious from the face of it and we'll -- this witness doesn't11

know the facts about date present, support dates --12

THE COURT: On the second part of the objection,13

again, Mr. Herman --14

MR. HOSIER: I'll stipulate to --15

THE COURT: Well, you can ask the witness to assume16

that it was 24 years from earliest filings -- I'm sorry, from17

earliest support to first filing and so forth. But you want18

to go through each of these. What is the purpose --19

MR. HERMAN: No, no, no. All I wanted to do was to20

get to -- and I'll just cut right through it, Your Honor --21

THE COURT: Okay. Go ahead.22

MR. HERMAN: -- Exhibit 3671A.23

THE COURT: 367 -- all right.24

MR. HERMAN: And what we've done, Your Honor, is25


taken the chart that the witness testified about, 2217 --1

THE COURT: Right. I forget who testified to this,2

we've had testimony on this exhibit.3

MR. HERMAN: -- and we have added to it the '8404

patent, which I understand was added during Mr. Hoffman's5

testimony, and that's Exhibit 3671, which Your Honor accepted6

this morning. And we are now going to offer 3671A which shows7

the effect on the partnership's exhibit were the Lemelson8

patents-in-suit and the '840 patent added where they belong in9

the time sequence. In other words, what you would --10

THE COURT: So 3671A is different than 3671 that was11

testified to previous.12

MR. HERMAN: Right. 3671 is the exhibit that was13

dealt with Mr. Hoffman --14

THE COURT: Right.15

MR. HERMAN: -- and which, as I understand it the16

top two, A and B, were added because those were Lemelson17

patents showing that Lemelson tops the list.18

THE COURT: Correct. Okay.19

MR. HERMAN: And I want to add today 3671A in which20

it isn't just two Lemelson patents which top the list, it's A21

through M which top the list.22

THE COURT: Well, but how would this witness --23

well --24

MR. HERMAN: Because he's testified, Your Honor,25


about pendencies based on the time from the year filed to the1

year issued and drawn some conclusions. And --2

THE COURT: Okay. Okay. Let me ask, Mr. Hosier,3

maybe we could save some time; 3671 has already been received,4

do you have any objection to this augmentation of it in the5

form of 3671A which includes Lemelson patents?6

MR. HOSIER: Not in principle, except it's7

incomplete because it doesn't include all of the Lemelson8

applications in the group, and I think there might be some9

errors in the number of applications here, but subject to10

checking the document and the completeness objection, no.11

THE COURT: Okay. All right. Well, subject to that12

I'll receive 3671A then. Okay.13

(Defendant's Exhibit No. 3671A admitted)14

BY MR. HERMAN: 15

Q Then let me ask --16

MR. HOSIER: Well, if we could, Your Honor, I'd17

prefer maybe if we didn't receive it and just held it --18

THE COURT: Well, I'll receive it subject to19

striking any portion that's inaccurate --20

MR. HOSIER: Okay. Thank you.21

THE COURT: -- or augmented it, but -- okay.22

BY MR. HERMAN: 23

Q Let me just ask one more question about pendencies. Are24

you aware, Mr. Witherspoon, that not including the patents-in-25


suit, Mr. Lemelson has at least 34 patents that have1

pendencies longer than 20 years as the partnership calculates2

pendencies?3

A No, but it would not affect -- accepting that would not4

affect any testimony I gave on direct.5

Q Now you testified about the various restriction6

requirements made in the prosecution and patents-in-suit, and7

I think you will agree with me that one can file a divisional8

application to the non-elected claims promptly after the9

restriction requirement is issued?10

A One can, yes.11

Q One can. In other words, there's no minimum time that12

has to elapse from receiving the restriction requirement to13

filing a divisional application?14

A Correct.15

Q And when you were prosecuting patents, there were16

situations in which you filed divisional applications promptly17

and situations in which you did not; correct?18

A Well, you say promptly.19

Q I mean shortly after receiving the restriction20

requirement?21

A I suspect that's the case, yes.22

Q And --23

A I can't recall any specifically, but I would be very24

surprised if that were not the case.25


Q And in making the determination of when to file the1

divisional application it was probably a matter of what the2

client wanted; isn't that right?3

A In my practice that was usually the situation, certainly4

consulted with the client.5

Q And one big area of consideration in terms of when to6

file a divisional application would have been the commercial7

considerations, that is what's going on in the marketplace,8

correct?9

A Again, I don't have a specific recollection of what the10

thought processes are or were, if I ever knew, of the client,11

but that would very likely be a factor, among others.12

Q Now there was a four-way restriction requirement in the13

1956 application, correct?14

A I believe that's correct.15

Q And none of the asserted claims were in the 195616

application, were they?17

A I'm --18

MR. HOSIER: Objection. It just goes beyond the19

scope of this witness, this testimony. He doesn't know which20

claims are even asserted, nor anything about the details. We21

made it very clear in his direct examination that he's not22

testifying about the merits of the patent.23

THE COURT: Well, I think you're right but is that 24

-- is that correct 25


THE WITNESS: Yes, it --1

THE COURT: -- that you did not study what was2

contained -- which claims were contained in the '56 --3

THE WITNESS: Correct.4

THE COURT: All right. All right. I'll sustain the5

objection then.6

BY MR. HERMAN: 7

Q Now, after a restriction requirement and once the8

applicant elects a group of claims to prosecute, the applicant9

can add claims which are consonant with the elected group;10

correct?11

A Yes.12

Q And after the restriction requirement in the 195613

application, Mr. Lemelson elected to prosecute claims in the14

television inspection system, didn't he?15

A Again, I don't know. I did not review the file histories16

from the standpoint of what the subject matter of various17

claims is or was.18

Q Well, accept my statement for a minute that that's what19

Mr. Lemelson did.20

A Okay. Would you be kind enough to repeat it?21

Q Sure. There was a restriction requirement in 1956, Mr.22

Lemelson elected to prosecute claims in the television23

inspection system. Are you with me?24

A Okay.25


Q And you agree that as part of prosecuting claims in an1

elected group one can also put in what you've called consonant2

claims, yes?3

A Correct.4

Q And if you assume for a moment, and it is an assumption,5

that the claims asserted in this lawsuit are consonant or6

would have been consonant with the Group I claims in the 19567

application, the restriction requirement would not have8

prevented them from being presented and prosecuted in that9

application, would it?10

A Claims can be added that are consonant with the elected11

claims. Whether they should have been added is another12

matter, but we -- that's --13

Q But they could have been?14

A -- something that -- sure. All these claims could have15

been that are consonant, if any. That's another issue. If I16

accept your premise that they are consonant, yes, they could. 17

Emphasis on could as opposed to should.18

Q Understand the difference.19

A Could have been presented.20

Q And prosecuted as part of the elected group if they were21

consonant?22

A Correct.23

Q Now, you also testified about the multiplicity rejection24

in the 1963 application. Do you remember that?25


A Yes, I mentioned it.1

Q You did. And in fact, Mr. Lemelson filed additional2

claims in that application after that rejection, didn't he?3

A Let me be sure I understand. The undue multiplicity4

rejection was made --5

Q Yes.6

A -- it was challenged by Mr. Lemelson. The examiner as7

part of the rejection said you must select ten claims. and8

your question is -- and he did that as I recall.9

Q Yes.10

A And your question is did he --11

Q But then he subsequently --12

A -- during prosecution of that particular application,13

which went to the board --14

Q Yes.15

A -- that before it went to the board other claims were16

added?17

Q Yes.18

A I don't recall but that may well be the fact.19

Q Now you testified about Defendant's Trial Exhibit 1797;20

do you remember that? It's the colored bar codes and the bar21

graphs and pie charts?22

A Yes.23

Q Now none of these charts identify the applications in24

which the asserted claims first appear, do they?25


A Mr. Herman, when you use in your questioning the1

expression when "claims first appeared" --2

Q Yes, sir.3

A -- I am not in a position to comment on that, and so any4

question that needs that information is a predicate I cannot5

answer.6

THE COURT: But the graphs that are presented don't7

purport to enumerate claims, the appearance of particular8

claims at all, do they?9

THE WITNESS: That's correct.10

THE COURT: Yeah.11

BY MR. HERMAN: 12

Q So they don't show how long Mr. Lemelson actually took in13

terms of prosecuting any particular claim or claims?14

A Correct.15

Q And --16

A Well, claims if you include all the claims in the17

application. I mean this is -- this is on an application as18

an entity basis.19

Q And this exhibit doesn't even show the period of time it20

took from say 1956 until each of these applications was21

actually filed, does it?22

A This chart does not show filing dates.23

Q You also testified that in your opinion Mr. Lemelson24

followed customary practices during prosecution of the25


patents-in-suit; remember that?1

A Accepted practices.2

Q Accepted practice. Do you agree that prosecution has the3

effect of narrowing coverage?4

A I would say that it's my belief that that's often the5

case and that frequently is the case.6

Q I'll take that.7

A And if you're -- if you're referring to my prior8

testimony I'd be glad to explain it.9

Q I am, but I'll take that answer and I'll move to the next10

question which you're probably expecting. Have you ever11

experienced a prosecution that is exhaustive and lengthy,12

which has the effect of giving you broader coverage than you13

started out with?14

A At that particular time and that particular case, under15

those particular circumstances, I did say something to that16

effect and I believe, incidentally, I believe that I used the17

words "I believe."18

Q Well --19

A Shall I explain the circumstances of that case?20

Q Well, not yet, I'll let Mr. Hosier do it, but I want to21

make sure there's no question about what it is you actually22

said and so I will ask to have put before you the transcript23

from Soft Spikes which is a deposition transcript you gave on24

April 19th, 1999. 25


THE COURT: Well, in the interest of time just show1

him yours, it'd be quicker.2

MR. HERMAN: Well, I could just read it, Your Honor,3

and he can --4

THE COURT: Go ahead, just read it. That's fine.5

MR. HERMAN: Okay. 6

BY MR. HERMAN: 7

Q The question is when you say "broad claims --8

MR. HOSIER: Your Honor, I'd object. I -- he's not9

impeaching the witness at this point or -- and he doesn't seem10

to be refreshing recollection, so I'm not sure what's11

happening here.12

THE COURT: Well, no, I'll let him -- I'll let him13

read it. Go ahead. Go ahead and -- go ahead and read it,14

let's see if --15

BY MR. HERMAN: 16

Q If you'll turn to page 223, line 8, when you say, "broad17

claims."18

A I have it. 19

Q You with me?20

A Yes.21

Q The question is: 22

"When you say broad claims, what do you mean by that in 23

this context?" 24

There was an objection and then you speak: 25


"It is narrow, it's a relative term, the more lengthly1

and exhaustive the examination is, in my view you're less2

likely to get coverage as broad as you would have gotten3

from say a first action allowance. Prosecution has the4

effect of narrowing the coverage. It's axiomatic. I've5

never experienced a prosecution, I don't believe, that's6

exhaustive and lengthly which has the effect of giving7

you broader coverage than you started out with."8

And you were asked that question, and you gave that9

answer?10

A That's correct in that case.11

Q Now, do you understand that under the partnership's12

interpretation of the claims which are asserted here, they're13

broader than the claims in the 1972 application? Do you have14

that understanding one way or the other?15

MR. HOSIER: Same objection, he's already --16

THE COURT: Well, I'll -- no, I'll let the witness17

answer if he has any such understanding.18

MR. HOSIER: Okay.19

THE WITNESS: I don't.20


BY MR. HERMAN: 22

Q Now, you have testified that during the prosecution of23

his patents Mr. Lemelson amended his claims?24

A I'm sorry, I missed a word.25


Q During the prosecution of his patents I believe you1

testified that Mr. Lemelson amended his claims, correct?2

A Amended?3

Q Amended.4

A Oh, yes.5

Q Yes. And if you amend an existing claim it would change6

the scope of the claim, correct?7

A Typically. I can envision amendments that do not, but8

typically --9

Q Typically they do?10

A Correct.11

Q And in fact you've compared amended claims to moving the12

fence or boundaries that surrounds a piece of land, haven't13

you?14

A That is an analogy that I have sometimes used by way of15

an elementary explanation of claims.16

THE COURT: Which is always appreciated.17

BY MR. HERMAN: 18

Q And do you agree that in all instances the final wording19

of the asserted claims evolved from earlier claims with20

somewhat different wording, with changes made in response to21

prior art and to improve the coverage of the claims as22

compared to previous wording?23

A I'm not sure I followed the question, I'm sorry.24

Q Do you agree that in all instances involving the claims25


asserted here, the final wording of those claims evolved from1

earlier claims with different wording, with changes made in2

response to prior art references, and to improve the coverage3

of the claims as compared to previous wording?4

A I cannot agree or disagree.5

Q You don't know one way or the other?6

A Correct.7


Q Now you testified that you -- that you had reviewed,9

examined or [sic] Britton's testimony. Do you remember that10

deposition testimony? 11

A I reviewed portions of that, yes. 12

Q Bear with me for just a minute, I need some water.13



BY MR. HERMAN: 16

Q Do you know -- do you remember that Examiner Britton17

testified that he had never allowed a claim which ultimately18

was contained in a patent that issued to Mr. Lemelson at a19

time that he knew the claim had been copied from another20

patent but no interference as to that claim had been resolved? 21

Do you remember that testimony?22

A I'm sorry, could you --23

Q Let me read it again.24

A Please.25


Q Examiner Britton testified --1

A I'm sorry, could you speak just a little louder --2

Q Do you remember --3

A -- a little louder, please.4

Q Sure. Or I can lean into this thing. 5

A Thank you.6

Q Do you remember Mr. Britton testifying that he had never7

allowed a claim which ultimately was contained in a patent8

that issued to Mr. Lemelson at a time that he knew the claim9

had been copied from another patent but that no interference10

as to that claim had been resolved. Do you remember that11

testimony?12

A No, I don't. 13

Q Do you --14

A I think I understand the question, but I'm not even sure. 15

Q Do you remember him saying that?16

A I'm not sure what the "that" is except I --17

Q What I just read.18

A Yes. And --19

Q Do you remember him saying that?20

A Do I remember him saying that he --21

Q That he had never allowed a claim to issue to Mr.22

Lemelson?23

A Okay. That had been copied from --24

Q That had been copied from another patent --25


A Okay.1

Q -- as to which no interference as to that claim had been2

resolved? To his knowledge he had never done that. Do you3

remember that testimony?4

A I don't remember that testimony but go ahead.5

Q Now do you remember Mr. Britton's testimony that he6

didn't recall reviewing the parent files of the '9187

application because they probably weren't available? Do you8

remember that testimony by Mr. Britton?9

A I don't recall the testimony, I recall the designation in10

the official file to the effect, if I recall correctly, that11

he had reviewed "parent files, plural" --12

Q Yes.13

A -- in the file wrapper, or the notation that was on the14

file wrapper, for the '918 patent.15

Q But you don't recall his testimony in that regard? 16

Now you testified about productivity requirements in Mr.17

Steiner's testimony; do you remember that?18

A I'm sorry, I keep asking you to repeat, I apologize.19

Q It's getting late. Sure.20

A But you spoke a little too fast for me, I'm sorry.21

Q In your direct examination --22

A Yes.23

Q -- you testified that you had read Mr. Steiner's expert24

report and that you were aware of his testimony concerning the25


time constraints put on examiners?1

A Yes, I heard -- I recall general testimony and some --2

and the number 19 hours --3

Q Yes. 4

Q -- was mentioned by Mr. Steiner as well.5

Q And you do agree that the Patent Office does have6

expectations with respect to productivity?7

A I agree.8

Q And you will also agree, I assume, that generally9

speaking examiners have a heavy workload and a limited time to10

devote to each patent application?11

A The time for examining each application is not unlimited.12

Q And you are also aware, aren't you, that the Board of13

Appeals has said that on many occasions too numerous to count14

the prior art needed to make out a solid rejection is a15

reference already of record in the file of the case, but which16

has been considered but not applied by the examiner?17

A You say the Board of Appeals --18

Q Yes.19

A -- and the board doesn't speak as an entity. I assume20

you mean a person or a panel of three --21

Q I'll take a panel of three.22

A -- or all 50-some members?23

Q Some members have said that, and in fact they said it in24

an issued opinion, didn't they?25


A I've never read that, I have seen, I believe, in this1

case some reference to that in a document that I may have2

read.3

Q Are you familiar with the Portollo case?4

A Portollo?5

Q Portollo.6

A I am.7

Q And in that --8

A Not every last detail but --9

Q -- in that case the Federal Circuit held that it was a10

presumption that the patent examiner had actually considered11

all of the cited references. Is that a fair summary of the12

holding?13

A I believe so.14

Q And is it also fair to say that Congress overruled that15

case?16

A That's correct.17

Q And do you agree that examiners who come to work in the18

Patent Office are not typically skilled in the art, that is19

the technical field to which they're assigned?20

A They are not persons of ordinary skill in the art within21

the meaning of, say, Section 103.22

Q And will you agree that examiners frequently have little23

or no working experience in the industry?24

MR. HOSIER: Objection, I think the witness hadn't25


completed his answer when he asked the next question.1

THE COURT: I'm not sure. Had you completed your2

response concerning the status of patent examiners? You've3

indicated they're not persons skilled in the art as the term4

is commonly defined, but was there some qualification?5

THE WITNESS: Yes. The -- and it's not me by the6

way. My view on the subject I gleaned from the American Hoist7

and Derrick versus SOA [phonetic] case in which Judge Rich had8

quite a lengthy explanation of the 282 presumption of validity9

is all about, and in the course of discussing that he made the10

statement that patent examiners normally are not persons of11

ordinary skill in the art but they are, through their work in12

the Patent Office, skilled in the art of reviewing references13

and applying them to claims.14

BY MR. HERMAN: 15

Q Will you agree with me the examiners frequently have16

little or no working experience in industry?17

A That's correct.18

Q Will you agree with me that the resources available to19

examiners are limited?20

A The resources available to examiners are not unlimited.21

Q They don't have access to experts or other workers in the22

field with which to verify the accuracy and completeness of23

statements made in the patent application?24

A With which to verify. Now that needs a little25


amplification if I may. Examiners are charged with the1

responsibility of reading patent applications and coming to an2

understanding of them and evaluate whether they are in3

compliance with the first paragraph of 112, and they do this4

frequently -- they do this all the time, expected to do it all5

the time, and often find the specification is not in6

compliance. And it should be pointed out in doing so7

examiners are not expected to accept everything that's in the8

application at face value just because it's said. They are9

entitled to evaluate and are expected to evaluate those10

statements and if they can provide good reasons or evidence as11

to why they may not be accurate, examiners are expected to so12

indicate.13

Q But the examiners do not have the benefit of technical14

experts?15

A That's correct.16

Q Or other workers in the field to assist them in carrying17

out those functions; is that fair?18

A That's fair.19

Q In fact, the work of examiners is essentially that of20

reviewing paper; isn't that fair?21

A That's correct. It's becoming less so, but it's still22

basically correct today, I believe. When you look at the23

Patent Office as a whole some art units are -- at least some24

examiners search almost exclusively online.25


Q So it's either paper or a computer screen.1

A I'm sorry, is there a question?2

Q It's either -- they're either reviewing paper or they're3

reviewing a computer screen?4

A I think that's a fair statement.5

THE COURT: Well, in terms of resources available to6

a patent examiner, let's take it back to the period of time7

you were working with the Board of Appeals or with the Patent8

Office, what would an examiner do if they encountered an9

application that they simply did not understand technically? 10

What resource could they look to? Would they have to go back11

to the applicant to have them put it into language that they12

could understand, as I might do here, or do they have others13

that they can consult with that would --14

THE WITNESS: Well, I think the first thing -- the15

first thing an examiner would do is to talk to other examiners16

for some assistance, including their superior and perhaps17

other examiners that they had come to recognize as being18

especially good in some -- depend -- this would depend to some19

extent on what it is that the examiner handling the20

application is seeking information about. But I -- an21

examiner would first consult with other examiners. Now, if22

after -- and perhaps some literature, do some reading perhaps.23

But if all those internal efforts were not24

sufficient, then, yes, an examiner, I should think, would25


simply let the applicant or maybe call the attorney or perhaps1

issue an office action along those very lines and, in effect,2

put the burden on the applicant to explain the situation. 3

But in my view an examiner would not just simply4

say, well, since I can't understand this fully I'm just going5

to pass it on -- pass on and not raise an issue.6

THE COURT: Or reject it without raising an issue?7

THE WITNESS: Correct.8

THE COURT: All right. All right. 9

THE WITNESS: Sometimes objections are raised, and I10

distinguish an objection from a rejection in that it's a --11

it's more of a formal matter or -- and is reviewed by12

petition. But in this type of situation I should think an13

examiner would reject for noncompliance with the first14

paragraph of 112 'cause it's not teaching what 112, first15

paragraph, requires.16

BY MR. HERMAN: 17

Q And if the examiner did call up the patent attorney or18

send out a rejection and ask for an explanation he would19

expect and rely on the inventor and his attorney to be20

truthful and act in good faith and candor, wouldn't he?21

A Yes.22

Q And you will also agree with me, I hope, that it's23

virtually unheard of that an examiner would learn on his own24

of devices that are in public use or out there having been25


sold or on sale?1

A It's a -- did you say unheard of?2

Q Virtually unheard of.3

A Well, I think that's fair, with a little explanation. 4

The prior art that's available to examiners is, for the most5

part, prior patents, both United States and foreign, and6

literature and not articles of commerce and public uses and7

that sort of thing. However, some examiners particularly in8

the mechanical arts and perhaps elsewhere tend to collect9

literature about articles in commerce and get into their hands10

basically, at least potentially, two items of prior art, prior11

art of two different categories, a printed publication and12

possibly the article -- the object itself by virtue of say the13

article, the trade brochure, may be containing some14

information as to when the article itself was on sale or in15

public use, and constitute a piece of prior art that does not16

comply with Section 102(b) or the claims don't comply with17

102(b).18

Q Well, you testified at Sealed Air Corp. versus19

International --20

A International Packing Systems, I did. 21

Q Correct?22

A Yes.23

Q And do you remember saying the following, "But as far as24

devices that are in public use" --25


MR. HOSIER: Objection, Your Honor. I mean, "do you1

remember saying the following" doesn't seem to me -- 2

THE COURT: Well, it would be -- 3

MR. HOSIER: -- to be either refreshing recollection4

or impeaching.5

THE COURT: Well, it would be hearsay. I don't --6

ask the witness a question. He hasn't indicated affinity of7

recollection or -- unless you're impeaching him with something8

that he said that's just directly contradictory to what he9

just said.10

MR. HERMAN: Well, I think it's -- I think the11

elaboration in the answer is not what he testified to at -- in12

this case.13

THE COURT: All right. So it's your position this14

is impeaching.15

MR. HERMAN: Correct.16

THE COURT: Okay. Go ahead, I'll let you -- let you17

read it.18

BY MR. HERMAN: 19

Q Did you say the following, "But as far as devices that20

are in public use or out there, either having been sold or on21

sale, the kind of prior art set forth in 102(b) of Title 35,22

it is virtually unheard of that an examiner would learn of23

that on his or her own."24

MR. HOSIER: Could he just have the testimony, then,25


put in front of him if it's purporting to be --1

MR. HERMAN: Sure, I'll give him the whole --2

THE COURT: Yeah, of course. Go ahead.3


MR. HOSIER: Can you identify the page, Mr. Herman?5

MR. HERMAN: Yes, it's 779.6

BY MR. HERMAN: 7

Q Question begins on 778, I believe. And, Mr. Witherspoon,8

if you'd like a clean copy without my marks I'm happy to give9

it to you.10

A No these marks are quite satisfactory. But if you -- you11

may have it back if you'd like. Thank you.12

THE COURT: All right. Go ahead, then, the witness13

is --14

MR. HERMAN: I just asked if he'd -- 15

THE COURT: Gave that testimony?16

MR. HERMAN: -- if he'd given that testimony and he17

wanted to read it?18

THE WITNESS: The answer begins at line 11 on 77819

and --20

MR. HERMAN: Yes.21

THE WITNESS: -- it ends at 779, line 16, and I'm22

not sure I have had an opportunity to read the whole thing, if23

you don't mind, Your Honor?24

THE COURT: Go ahead. No, go ahead.25



THE COURT: All right. Was that an accurate reading2

of your testimony or was there more to that --3

THE WITNESS: Well, it's an accurate reading of a4

sentence taken as part of a discussion that constitutes about5

a page and a third.6


THE WITNESS: And --8

MR. HERMAN: I'm happy to read the entire answer if9

you would like me to do that.10

THE COURT: I don't know, is there further11

explanation that you would have, then, on that response?12

THE WITNESS: Well, I find it totally consistent13

with what I was -- either did say or intended to say a minute14

ago, and that is that this is a general discussion of prior15

art, what makes up prior art in the Patent Office, and I first16

point out it's patents both foreign and domestic and17

literature. And I point out that some examiners like to sort18

or fill the -- Mr. Prable [phonetic] talked about the shoes or19

the drawers where these documents are kept. Some examiners20

tend to sort of, on their own, collect literature.21

But as far as devices, by which I believe it would22

be fair to say I'm talking about physical devices, that are in23

public use or out there, either having been sold or on sale,24

the kind of prior art set forth in 102B, it is virtually25


unheard of that an examiner would learn of that on his or her1

own.2

And these devices which qualify as prior art under3

the law may never be written up in the form of a printed4

publication and wind its way into the Patent Office. It's an5

area where there's a real likelihood of there having been in6

existence some prior art which was not taken into account by7

the Patent Office but which in litigation such as this, inter8

partes proceedings, where everybody is out doing a lot of9

discovery, that's the kind of prior art that often comes into10

these kinds of proceedings but which didn't get before the11

Patent Office.12

But I had also said earlier basically prior United13

States patents, some foreign patent literature -- documents,14

some literature. I guess what I added today that is not in15

here but which is not inconsistent but which is perhaps even a16

fuller explanation that's in here, is that some of these17

documents that some examiners tend to collect are trade18

brochures and are indicative perhaps of some devices or19

products in public use or on sale.20

But I still agree that the devices themselves --21

patent examiners don't have a lot of articles and machinery22

around their office.23

BY MR. HERMAN:24

Q You also said in this answer even the art that's in the25


Patent Office sometimes is misfiled and missed.1

A That's correct.2

Q You testified about some articles in terms of confirming3

your view with respect to patent practices.4

A These treatises, yes.5

Q I'm sorry. Treatises.6

A Yes.7

Q And one of those was Irving Cayton's treatise?8

A Correct.9

Q And you recognize that Irving Cayton was one of Mr.10

Lemelson's lawyers, at least once upon a time? Are you aware11

of that? Yes, no?12

MR. HOSIER: I the -- I don't think there's a good-13

faith basis for the question, because I think they should know14

that that's not true, at least to my --15

THE COURT: I don't know. I don't think the witness16

has said -- 17

You don't know whether Mr. Cayton was a lawyer for18

Lemelson or not, as I understand it.19

THE WITNESS: That's correct. I did not.20

THE COURT: All right. All right. Well, whether he21

was or wasn't, the witness isn't aware of it, so --22

MR. HERMAN: Okay. I didn't make this up out of23

whole cloth, Your Honor.24

//25


BY MR. HERMAN:1

Q The treatises that you've talked about and the practices2

that you've talked about, your position is that those were3

common and accepted practices in the 1960s, '70s, '80s?4

A I think I -- my testimony has been that what I found from5

reviewing the file histories, about this much paper, a lot of6

events that occurred were accepted -- were in accordance with7

accepted Patent Office practices and procedures at the time 8

and I believe basically still to this day, and that these9

documents confirm my own testimony.10

Q Correct. And you also testified that prior art searches11

are never complete; correct?12

A That's correct. In theory you never finish the prior art13

search because of its enormous scope.14

Q So you'll never finish a prior art search?15

A In theory.16

Q In theory.17

A I mean, you do finish it, because you do have, quote,18

"limitations."19

Q And will you agree with me that the Federal Circuit was20

aware of the customary and acceptable practices in patent21

practice at the time that they decided the prosecution laches22

decision in this case?23

MR. HOSIER: Objection. Your Honor, this was a24

motion to dismiss.25

WITHERSPOON - REDIRECT 112

THE COURT: Sustained. No, hold on. Sustained as1

to what the -- I don't -- maybe somebody in this room knows2

exactly everything the Federal Circuit is aware of, but --3

MR. HOSIER: I do. No, I -- just being facetious,4

Your Honor.5

THE COURT: I'll sustain the objection.6

MR. HERMAN: I have no further questions, Your7

Honor.8


Any redirect examination?10

MR. HOSIER: Very brief, Your Honor.11


REDIRECT EXAMINATION13

BY MR. HOSIER:14

Q Now, directing your attention to Exhibit 2217, that's the15

listing of the patents with long prosecution histories, is it16

your understanding, sir, that computer searching of the kind17

that was done here cannot be done for the period preceding18

1976 in the Patent Office records?19

A No, it's my understanding it could not be done before a20

date. I don't know what the date is.21

Q And did you understand that that list was to be exemplary22

and not in any sense exhaustive?23

A Yes.24

Q Do you understand that some of the items before 1976 were25


just extracted from various sources, such as recollection of1

cases and so on?2

A That's my understanding.3

Q And let me direct your attention now to the testimony4

that you gave in the case that Mr. Herman had put before you,5

Plaintiff's Trial Exhibit 3703, the Composite Golf Products v.6

Soft Spikes. And you had asked an opportunity to explain at7

that time. Could you explain specifically your testimony8

there and indicate whether in your view it is consistent or9

inconsistent with the testimony you're giving here.10

A Well, that case involved, as I recall, a patent11

application. There were patents, but my testimony focused on12

a patent application that was still pending on a very simple13

mechanical device, namely, a spike for a golf shoe.14

Q You mean literally the spike that goes on the bottom of a15

golf shoe?16

A Yes.17

Q Okay. Continue.18

A And the application contained 138 claims for an extended19

period of time without one claim having been allowed. I think20

some 26 claims eventually -- an appeal was taken on I believe21

some 26 claims, and the appeal had yet to be decided favorably22

to the applicant.23

And the essence of my testimony was basically whether24

under those circumstances it would have been reasonable for a25


representative of the assignee of that application to1

represent to the industry that they were going to get broad2

coverage, and in fact my opinion used as a basis merely the3

prosecution events. I didn't feel I needed to even study the4

prior art and make a comparison against the claim, that under5

the circumstances as they stood at that time, 138 claims,6

examiner kept saying, no, no, no, no with respect to each and7

every one of those claims on a simple mechanical device, it8

seemed to me unreasonable as the history of the prosecution9

stood then to represent to the industry that broad coverage10

was going to be obtained.11

And it was in the context of that explanation and what12

was meant by broad versus narrow and so on that I did say that13

I believe prosecutions narrow, rather than enlarge. May have14

been a bit of overstatement, but it was made in the context of15

that statement. In fact I do not -- today would not make that16

same statement, because there are instances, as we all know,17

in which claims sometimes are enlarged during prosecution by18

the elimination of an element, and sometimes other claims are19

brought in which are not necessarily in that line of claims,20

with a broad claim, a narrower claim and so on and so forth,21

but different subject matter altogether, which one's entitled22

to do if they have adequate support. So that was the context23

in which that statement was made.24

Q Do you view that testimony in that case under those25


circumstances to be in any respect inconsistent with your1

testimony in this case regarding the circumstances here?2

A No.3

Q Mr. Herman asked you if Mr. [Briton had reviewed the4

parent files, and I believe you referred to the file history5

of the patents, but were not asked any further about that. Do6

you recall on your direct examination questions --7

MR. HERMAN: I object -- I object, Your Honor. I8

didn't ask a thing about what Briton did. I asked what he9

testified.10

MR. HOSIER: Okay.11

THE COURT: And that is my recollection.12

MR. HOSIER: Let me put it differently, then.13


BY MR. HOSIER:15

Q Do you recall that Mr. Herman was representing to you16

about what Mr. Briton supposedly testified, namely, that he17

didn't review parent applications?18

MR. HERMAN: Your Honor, I object to the19

characterization of all that. I asked what I asked.20

THE COURT: Well, you did. You quoted from21

testimony of Mr. Briton.22

You recall that, I take it.23

MR. HOSIER: I'm not sure that he quoted from the24

testimony. I think he just represented that.25


THE COURT: Well, could be the represented testimony1

from Mr. Briton.2

BY MR. HOSIER:3


1133A, specifically, an excerpt, page 228 from that file which5

I'll hand you now. And it's Tab 86 in the book that was6

previously put before you.7

MR. HOSIER: That's for His Honor.8

THE COURT: Thanks.9

BY MR. HOSIER:10

Q And I'll just indicate to you, sir, that that's an11

excerpt from the application leading to the '918 patent that12

Examiner Briton was the examiner on. And directing your13

attention to page 228, what, if anything, does the official14

record of that application indicate to you?15

MR. HERMAN: Can you tell me what the exhibit number16

is again?17

THE COURT: Yeah. It's -- I'll tell you what. It's18

1133A. But let me say, I thought maybe it would be very, very19

brief, but I've got people sitting on a conference call,20

literally.21

MR. HOSIER: I'm literally done with this question.22

THE COURT: This is your only --23

MR. HOSIER: This is it.24

THE COURT: Okay. It's 1133A, Mr. Herman. It's25

WITHERSPOON - RECROSS 117

page 228 at the top. And --1

MR. HOSIER: I'll give it to him.2

THE COURT: -- the witness is asked what that3

indicates to him regarding Mr. Briton's search.4

What does that tell you about Mr. Briton's search5

and specifically with regard to parent files, if anything?6

THE WITNESS: This tells me that -- this tells me7

that there is a notation by Mr. Briton that he had searched8

the quote, "parent files, plural," close quote.9

MR. HOSIER: No further questions.10


Mr. Herman, anything?12

MR. HERMAN: I have two questions, Your Honor.13


MR. HERMAN: First, Your Honor, it's more for my15

sanity than anybody else's. What I have in my hand,16

Plaintiff's Trial Exhibit 3690, which is a petition for a writ17

of certiorari to the Supreme Court in the case of Jerome H.18

Lemelson versus Mattel, and it lists as counsel Irving Cayton,19

Gerald D. Hosier, and others. So I didn't make it up out of20

whole cloth.21

THE COURT: No, no. That's fine. I didn't think22

that you did. I mean, I --23

MR. HERMAN: With respect to Golf Spikes --24

THE COURT: It's just that the witness has said he25

WITHERSPOON - RECROSS 118

wasn't aware of that.1

MR. HERMAN: Yes, but I was -- basically I was2

accused of having said something without a reason for saying3

it.4

THE COURT: No, no.5

RECROSS EXAMINATION6

BY MR. HERMAN:7

Q I'd like to go back to Golf Spikes again, Mr.8

Witherspoon. As of April 19th, 1999, is it true that you had9

never experienced a prosecution that's exhaustive and lengthy10

which had the effect of giving broader coverage than you11

started out with?12

A Didn't I use the words "I believe" somewhere?13

Q You said, "I believe." Did you believe in 1999 that you14

had never seen an exhaustive and lengthy prosecution that had15

the effect of giving broader coverage than you had started out16

with?17

A The testimony I gave at that time I gave in good faith18

and believed it to be true at that time.19

MR. HERMAN: Thank you.20

THE COURT: All right. Thank you. Thank you very21

much, then.22

MR. HOSIER: No further questions.23

THE COURT: All right. Well, then we'll be in24

recess until 1:30, and we'll reconvene with I assume Dr. Hunt25

119

at that point. Great.1

MR. HOSIER: Right. And if it's even possible to be2

1:15 or something of that sort --3

THE COURT: No. I've got -- as I say, I've got a4

lineup of people out my door, but I have a conference call5

right now, and I've got others on that call I've got to join. 6

So we'll have to make it 1:30.7

(Court recessed at 12:07 p.m., until 1:45 p.m.)8

THE COURT: All right. Have a seat, everybody.9

All right. Mr. Hosier, you can call your next10

witness.11

MR. HOSIER: Mr. Lisa will handle Dr. Hunt, Your12

Honor.13

THE COURT: Oh. All right.14

MR. HOSIER: And just want to note that obviously15

Dr. Hunt is our last witness, and rebuttal, as we anticipate16

then, would be about midday Wednesday, if -- the way we're17

looking at the schedule. And therefore it would be really18

helpful for us then to have these proffers, any kind of19

rebuttal testimony that they contemplate. Certainly they20

could give them at this point in time for every witness except21

Dr. Hunt. And I would think, since they've seen his report22

and deposed him, they have a fair idea of who else they might23

be -- they might be intending to call. And as we understood24

the Court to instruct, we weren't going to have a rehash of25

120

positions.1

THE COURT: That's absolutely correct. I don't2

expect a lengthy rebuttal or surrebuttal case, period. Give3

me -- can you give any idea, Mr. Jenner or Mr. Cherny? 4

Obviously Dr. Hunt is one that you may seek to rebut in some5

respect. We'll have to await that. But what about the others6

that we've heard? Is there any rebuttal that you've already7

decided you must present?8

MR. CHERNY: The answer to that is no. In the first9

instance, I just want to make sure the Court understands my10

sitting here in no way means that I'm dealing with Dr. Hunt. 11

Mr. Jenner has taken the middle seat.12

THE COURT: That's fine.13

MR. CHERNY: So don't make any assumptions.14

Second of all, as is I think pretty apparent, Dr.15

Hunt is a very substantial part of their case --16

THE COURT: Sure.17

MR. CHERNY: -- and it may very well be that, for18

example, we wouldn't rebut something that was in Dr. Grindon's19

case and that was the only thing out there. We suspect that20

much of their case is going to be a combination of Dr. Hunt's21

testimony in conjunction with Dr. Williamson's testimony and22

Dr. Briton's testimony. So after we see Dr. Hunt's testimony,23

we will be in a much better position to know. I mean, Dr.24

Hunt is a -- as far as I could tell, a large part of their25

121

case, and so it's really not in a position for us to determine1

how we're going to rebut it and who we're going to call to2

rebut it.3

THE COURT: All right. Well, here's what we're4

going to do. We'll finish -- we have to start right now and5

get him finished. We've got to resolve any pending6

evidentiary issues in the case in chief in terms of exhibits7

that are pending. When we get that --8

Sorry about that. I'm hard to hear.9

When we get that taken care of, you know, then we'll10

address rebuttal. So I am not optimistic that'll be on11

Wednesday, because we won't have addressed the exhibits that12

are at issue by then. Until we have a chance to do that, I'm13

not going to hear the rebuttal anyway. So, you know, we'll --14

MR. HOSIER: It just gives us no notice.15

THE COURT: I know. But I don't think it's going to16

be so wide ranging, except insofar as Dr. Hunt. There's not a17

-- you know, I'm not going to have somebody get up and, you18

know, Mr. Steiner come back and say, yeah, God, they -- you19

know, they don't look at these things, they just -- I mean,20

we're not going to repeat that. We're just not. So --21

MR. HOSIER: No, I understand. And I think that if22

we could just have some notice to the extent that they think23

anyone will appear and testify other than Dr. Hunt -- 24

THE COURT: Well, we will, 'cause I probably won't25

122

-- yeah, we probably won't --1

MR. HOSIER: -- or in opposition.2

THE COURT: Okay. Well, I'm not going to try -- as3

I understood the response, they don't have someone -- up until4

they hear Hunt, they don't have somebody else specifically. 5

If we stopped the case now, they don't have somebody else they6

would call.7

MR. CHERNY: Again, I'm not saying that we wouldn't8

rebut somebody. Really so much of it is going to Hunt. We9

have to see the whole thing in common, okay. I'm not saying10

that we wouldn't rebut something that Dr. Grindon said or Dr.11

Williamson.12

THE COURT: We'll see how it goes. We might wait13

till Monday to do it. I don't know. Let's just play it by14

ear. We might just make the parties wait till Monday.15

All right. Let's get started with --16

MR. HOSIER: I guess the last thing, I would presume17

that they're not calling Dr. Carlton or Mr. May, who would be18

true rebuttal witnesses, because they haven't previously taken19

the stand. I mean, they ought to know that for sure now. And20

I would -- and I'm holding Mr. Niro. I've got a schedule for21

maybe having him potentially come back.22

THE COURT: Okay. What about -- what about Carlton23

or May? Are they -- are they going to be called as rebuttal24

witnesses?25

123

MR. JENNER: Again, Your Honor, we haven't made a1

final decision on that. We want to see -- we want to see what 2

the whole context of their case is.3


MR. JENNER: My guess is by the time their direct5

goes in we'll have a much better idea. But this is -- as far6

as we can see, this is the linchpin of their case.7

THE COURT: All right. Look, you all have spent a8

lot of time in this case, you've invested tremendous9

resources, so nothing talismanic about knowing today versus10

tomorrow versus the next day on that. I'll give the parties11

plenty of time. You know, as I've said, I've got lots of12

cases to try, and God knows I've got them lined up right on13

down the rest of the year, starting with a three-week criminal14

case right after you guys leave. And so we'll find time. 15

It's a court trial. We don't have a jury hanging. I know16

it's important to all of you, but it's not going to be17

resolved overnight anyway. So we'll -- we'll give everybody18

plenty of time to prepare, whether it's for rebuttal or19

surrebuttal, so that you're not caught short or anybody is at20

a disadvantage.21

Okay. If Dr. Hunt could come on up. I'm not22

certain who Dr. Hunt is. Ah. Great. Sir, if you'd please23

come on up and be sworn by the clerk.24

BOBBY RAY HUNT, DEFENDANT'S WITNESS, SWORN25

HUNT - DIRECT 124

THE CLERK: Please be seated. State your full name,1

and spell your last name for the record.2

THE WITNESS: My full name is Bobby Ray Hunt,3

spelled H-U-N-T.4

THE COURT: Thank you.5

Go ahead, Mr. Lisa.6

MR. LISA: Your Honor, we've -- we'll probably use a7

few show-and-tell-type things, not very many. We're afraid, I8

don't know why, but if we shut off this system or the9

monitors, it might not resync. So if this bothers you, you10

can just turn off the monitor and I'll let you know when I11

need it, but --12

THE COURT: That's fine. Oh. And I already have.13

MR. LISA: Okay.14

THE COURT: Yeah.15

MR. LISA: Thanks.16

DIRECT EXAMINATION17

BY MR. LISA:18

Q Dr. Hunt, would you please identify your residence, where19

you live.20

A Yes. I live at 8 Malagon Ridge in Queenstown, New21

Zealand.22

Q Before turning to your qualifications as an expert to23

testify, could you give a brief overview for the Court of the24

subjects that you intend to address.25

HUNT - DIRECT 125

A Yes. There are four principal subjects, the matter of1

claims support, the matter of infringement, the matter of2

prior art and validity, and things related to intervening3

rights for prosecution laches.4

Q Could you please briefly describe your educational5

background.6

A I received a Bachelors degree in 1964. I had a double7

major with aeronautical engineering and electrical8

engineering. That was from Wichita State University, Wichita,9

Kansas.10

I received a Masters degree in electrical engineering11

from Oklahoma State University, Stillwater, Oklahoma.12

And then I received a Ph.D. in 1967 in systems13

engineering and electrical engineering from the University of14

Arizona.15

Q Will you please brief outline your employment history. 16

And we'll go back and address each of them individually, but17

just step through your employment history, identifying who you18

worked for and what time periods.19

A Yes. From 1967 through 1968 I was employed at the Sandia20

National Laboratory. From 1968 through 1975 I was employed at21

the Los Alamos National Laboratory. From 1975 through 2001 I22

was a member of the faculty of the University of Arizona. And23

in that period of time from 1975 through 2001 I was also a24

consultant, as well as various levels of employee status, with25

HUNT - DIRECT 126

a corporation known as Science Applications International1

Corporation, or SAIC.2

Q Let's go back and talk about what you did at Los Alamos. 3

Could you provide first an overview of what your job was4

there.5

A Yes. In 1968 I joined the technical staff of Los Alamos. 6

I was a member of the Statistics and Data Analysis Group7

within the Computer Science and Computer Services Department8

at Los Alamos.9

During that period I was principally tasked initially to10

begin the development of applications for let's say taking11

images from certain kinds of nuclear tests and nuclear12

components events. Those images were then reduced by various13

methods of image analysis for the purposes of tracking the14

behavior of these components and/or the devices during those15

tests.16

Q Could you describe in more detail what your involvement17

was in the image analysis operations.18

A Certainly. I had three principal functions. The first19

one was to develop an image scanning system, a flying spot20

scanner system. I managed the procurement for that.21

The second was to initially perform and then later on be22

a leader as a deputy group manager of theoretical research in23

the area of image analysis.24

And then the third area was to actually supervise and25

HUNT - DIRECT 127

make applications of those in various aspects of the testing1

program, the nuclear weapons testing program of the United2

States.3

Q With respect to this flying spot scanner that you4

participated in the development of, could you go back now and5

in more detail describe what that project entailed.6

A Yes. We wanted to be able to do precision scanning of a7

number of different types of X-ray images. We did not have8

commercially available to us a scanner that would be able to9

perform to the specifications that we felt we had to meet, so10

we developed -- I developed a specification for a new flying11

spot scanner, and then I managed the procurement that12

purchased that scanner and delivered it to the laboratory.13

Q Could you describe that flying spot scanner.14

A Yes. It was a so-called large-format flying spot15

scanner, which meant that basically an object or an image to16

be scanned was placed in front of a stationary beam on a17

platform, and then that platform moved the object or the image18

in front of that stationary beam.19

Q What kind of detector was used?20

A A photoelectric detector.21

Q Did the system actually work?22

A It worked very well.23

Q Could you describe what type of image signals were24

generated with that system.25

HUNT - DIRECT 128

A That system generated image signals that I think would1

usually be characterized as low bandwidth. They were no more2

than something like 10 kilohertz maximum total output of the3

signal at any time.4

Q Was that a high-precision device, or a low-precision5

device?6

A It was a very high-precision device, and the requirement7

for high precision related to the things that we had to study8

in the nuclear event testing, as well as to the fact that we9

wanted to be able to make very precise measurements on the10

images and objects we were examining.11

Q While at Los Alamos did you -- or were you involved with12

the research and development of practical systems for13

inspecting nuclear weapon parts?14

A I was, yes.15

Q And could you describe some of those projects, sir.16

A There's a limit to what I can describe, as I'm sure you17

appreciate, since they do relate to the nuclear weapons18

program of the United States. But in general the problems we19

looked at were something like the following.20

To make sure that a nuclear device performs as required21

it's necessary to make a very precise measurement of certain22

shapes, of certain sizes, and certain relationships of those23

to each other.24

Q What type of imaging devices did you use in those25

HUNT - DIRECT 129

projects?1

A Again, the flying spot scanner that I mentioned earlier2

was our primary device. For some short period of time we3

actually also rented some time on a cathode-ray tube flying4

spot scanner which was stationed at the Jet Propulsion5

Laboratory, and we just simply sent some unclassified image6

data out to them, since that had to be done in an unclassified7

environment.8

Q Did you have any involvement in X-ray imaging or scanning9

at Los Alamos?10

A That was my principal function, was X-ray imaging. The11

reason for that is that a nuclear weapon and most of the12

components of nuclear weapons are made of the densest13

materials known to mankind, materials such as uranium and14

plutonium. And in order to see some of the internal15

structures, as well as to make some precision measurements, we16

used X-ray systems.17

Q As a result of your work at Los Alamos did you obtain an18

understanding of the history of X-ray scanners?19

A Yes, I did.20

Q Turning to your employment at the University of Arizona,21

could you please describe what your positions have been during22

your tenure at the University of Arizona.23

A Yes. I went there in 1975 initially as associate24

professor within the College of Engineering. Within three25

HUNT - DIRECT 130

years I was promoted to full professor, and I was given three1

separate faculty appointments, professor of electrical and2

computer engineering within the College of Engineering,3

professor of optical sciences within the Optical Sciences4

Center, and professor of applied mathematics, which was in the5

Department of Mathematics.6

Q With respect to your position in the electrical and7

computer engineering department, what did you do there?8

A I was primarily, number one, teaching courses in image9

processing and in related topics, such as image analysis,10

which at that time was a part of the course in image11

processing; and, number two, I was supervising and conducting12

research in the same area with graduate students.13

Q What did you do as a professor of optical sciences?14

A Very much the same thing. In that case, however, a lot15

of the research that I did there may have had more of an16

optical component to it with respect to the source of the17

imaging or the types of analysis used.18

Q What do you mean by "optical component"?19

A Well, I mean things like, for example, the development of20

optical systems using mirrors, lenses, reflectors, various21

kinds of light sources and so on.22

Q Do you have particular expertise in optics, sir?23

A Well, I was a professor at the Optical Sciences Center,24

and I think that's one of the three best centers of its kind25

HUNT - DIRECT 131

in the world. And I guess I'll let that speak for itself.1

Q While a professor of applied mathematics what did you do?2

A My interest in applied mathematics and my work there3

really related to the fact that certain kinds of problems in4

imagery and imaging had extremely difficult mathematical5

solutions. You can formulate the equations easily, but the6

solutions are very difficult. But I was interested in the7

practical applied solution of those problems, and that's why8

applied mathematics in that regard was of interest to me.9

Q Do you draw a distinction between theoretical and applied10

sciences?11

A I certainly do, yes.12

Q Could you describe that difference, please.13

A I think of theoretical sciences or theoretical research14

as fundamental to the investigation of basic questions. I15

consider applied research or applied sciences to actually16

making things work in the real world.17

Q Would you say that your experience is limited to the18

theoretical research and sciences?19

A Absolutely not.20

Q And could you explain that, please.21

A Because both in the work I did at Los Alamos, as well as22

the consulting that I took up after I became a faculty member23

at the University of Arizona, I have done nothing but applied24

and practical work.25

HUNT - DIRECT 132

Q Do you hold any other positions at the University of1

Arizona besides the three that you identified?2

A For about three years I was also a professor of3

physiology in the Department of Medicine.4

Q And what did you do there?5

A The Department of Physiology at that point was interested6

in trying to understand whether some of the concepts in image7

analysis and image processing -- machine vision, if you wish8

-- they were interested in understanding if some of those9

concepts would be useful in developing the physiology program,10

specifically, how does the eye work and can we make11

mathematical models of it that would be useful and important12

to teach medical students.13

Q What is your current status at or relationship to the14

University of Arizona?15

A I retired from the university last year in June, June16

2001, and I am now Professor Emeritus at the university.17

Q Have you published any articles or books in the field of18

image analysis or machine vision?19

A My publication list has about 170 items in it, books,20

papers, conference, all refereed. I have never broken down21

into just the topics of image analysis, but I guess it's quite22

some substantial fraction of that.23

Q Are you still professionally active, even though retired24

from the University of Arizona?25

HUNT - DIRECT 133

A I am.1

Q Could you describe what your current professional2

activities are.3

A Yes. I have one principal activity which is a part-time4

activity, and that is to serve as the Chief Scientific Officer5

of the Maui High Performance Computing Center. I am also an6

adjunct professor at the University of Canterbury in7

Canterbury, New Zealand. And I still retain active consulting8

activities, as well.9

Q What is the Maui High Performance Computing Center?10

A That is a facility located on the Island of Maui. It is11

a very large complex of computers. In fact, I think it's12

somewhere between the tenth or twentieth largest facility in13

the world. That facility is devoted to taking image data from14

the telescopes that are also on Maui -- Maui is the home of15

large Air Force telescopes. These telescopes are collecting16

data of -- image data, I should say, of all the objects that17

are in orbit around the Earth. The Computer Center analyzes18

those images for the purposes of determining intelligence19

about them, and that intelligence data, military intelligence20

data, is then forwarded to the U.S. Air Force Space Command in21

Colorado Springs.22

Q Are you allowed to say what type of objects you're23

looking at?24

A Very limited. I can say some things.25

HUNT - DIRECT 134

Q Could you give us an idea.1

A Well, an important problem is to determine the pose of a2

satellite. And "pose" is a technical term which says what's3

the orientation and position of an object in space. That's an4

important thing to know about for certain intelligence5

problems.6

Q What do you specifically do as the Chief Scientific7

Officer of that group?8

A I advise and consult directly as staff to the director of9

that center.10

Q How many Chief Scientific Officers are there?11

A Just one at that facility.12

Q That's you?13

A That's me.14

Q Are there any other consulting activities you've had over15

the years that you'd like to highlight to the Court?16

A Well, I -- the first large-scale scientific consulting17

activity I had came in 1978 -- excuse me, 1977 through 1978,18

and that was when I was asked by the U.S. Congress, the House19

of Representatives of the U.S. Congress, to be a member of a20

special investigative group which reinvestigated by means of21

image analysis the assassination of President Kennedy.22

Q How was image analysis used in that project?23

A A very important question for that committee when they24

reinvestigated the assassination was to determine as25

HUNT - DIRECT 135

scientifically as possible the origin of the bullet that1

killed the President. The way that we did that was to use the2

basic sources known to us, photography. In particular,3

there's one very famous film made by Abraham Zupruda4

[phonetic], which I suspect everyone in this courtroom has5

seen at one time or another.6

We took sequences of frames from that film and used a7

technique called 3-D photogramatry to basically build a model8

of the President's head inside of Dealy Plaza. Then we took9

the X-ray autopsy images, and those were made at the autopsy10

of the President at Bethesda Hospital. From those we were11

able to determine the entry wound in the back of the head, the12

exit wound from the front of head, and from now the position13

of the President's head in Dealy Plaza we can trace a14

trajectory on exit through the entry and then, knowing the15

type of rifle and the grain weight of the bullet, be able to16

determine the parabolic -- excuse me, the parabolic arc over17

which that bullet traveled. That bullet went back to the18

Sixth Floor window of the Texas Schoolbook Depository, where19

they found Lee Harvey Oswald's rifle and his palm print.20

Q What was your specific role in that project?21

A I was part of the research team, directed part of the22

research, conducted part of it, and I wrote the report that23

was submitted to Congress, and I testified to Congress24

concerning that.25

HUNT - DIRECT 136

Q Are there any -- is there -- I understand you had some1

involvement with the Hubbel space telescope, as well,2

A That's correct.3

Q Would you explain that, please.4

A Yes. I think the Hubbel was launched about March of5

1990, and it wasn't but a couple of weeks later that they6

realized that the fabrication of the telescope had achieved a7

fatal flaw. The mirror basically, you could say, was out of8

focus because of an incorrect fabrication.9

I was called by NASA in July of 1990, and I ended up10

being chairman of a committee that advised NASA on how to do11

image processing of those telescope images for the three years12

before they were able to repair the telescope.13

Q And specifically what was your involvement?14

A My involvement was to direct another committee of15

scientists who were involved in this area, and, as well, I16

interfaced with a group that was called the Calibration17

Committee. In order to actually know how to correct those18

images there had to be a calibration of the optics of the19

telescope in order to determine the exact distortions so that20

they could be removed by computer processing.21

And so we worked with the calibration experts. And I22

might say that calibration in that regard is not much23

different than calibrations such as we've heard testified to24

in this court previously.25

HUNT - DIRECT 137

Q Was the project successful?1

A It was quite successful. The Hubbel telescope performs2

splendidly nowadays, and for the three years before they fixed3

it they used our recommendations to remove some of the4

distortions from the data by computer processing.5

Q And finally, can you give us an idea -- I'm sorry. Your6

CV indicates that you've provided services to the U.S. Patent7

and Trademark Office; is that right?8

A That's correct.9

Q Could you describe what you've done with the Patent10

Office.11

A Yes. I was contacted initially -- and I'm trying to12

remember when. It might have been three, four years ago in13

the summer. The U.S. Patent Office has a special training14

branch called the Patent Academy. It is the purpose of the15

Patent Academy to essentially provide training to examiners16

who've been on staff for a number of years and need an update17

in technology. And it's also the function of the academy to18

provide training for new examiners which have just been19

brought into service. I was contacted by them and gave some20

lectures before them concerning various aspects of imagery21

technology.22

Q And finally let's address your consulting with the SAIC. 23

Could you give us an idea of what you do with them.24

A Yes. I have been involved as a consultant or some25

HUNT - DIRECT 138

various levels of employee status since 1976. Most of the1

work that's been done there has been classified, and it2

relates to systems that are involved for, say, machine vision3

in service of military intelligence.4

I would note for your interest, Your Honor, that earlier5

you asked something about machine vision as being able to find6

a tank in the Iraqi desert.7

THE COURT: Right.8

THE WITNESS: I can't tell you specifics about that,9

but I can tell you that that is an ongoing interest of the10

U.S. Government, that and many similar problems which I've11

worked on.12

BY MR. LISA:13

Q If you had to characterize the breadth and uniqueness of14

your experience, although it's difficult to toot your own15

horn, could you explain for the Court your -- what you believe16

to be your qualifications to testify on the issues here in17

court in this case.18

A I guess I would say that I have been very fortunate in19

obtaining a great amount of background in both the theoretical20

research that are important to these issues, and I have had an21

equal measure of theoretical -- excuse me, practical22

application of those issues to the various real-world23

activities I've been engaged in.24

Q Have you served as an expert before in patent cases?25

HUNT - DIRECT 139

A Yes, I have.1

Q And how many times?2

A I think it's a total of seven times.3

Q And have you actually testified in court?4

A Yes, I have.5

Q How many times?6

A Let's see. I testified before Judge Weiner, Brownlee,7

and Reale, once in Ohio, I don't remember the name of the8

judge there, plus a couple of Markman hearings, maybe six,9

seven times.10

MR. LISA: Your Honor, with that background we11

certainly offer Dr. Hunt as an expert qualified to assist you12

in deciding the issues in this case.13

THE COURT: All right. Any questions, Mr. Jenner,14

on voir dire at this point?15

MR. JENNER: No, Your Honor. I think -- at this16

point I think probably would just --17

THE COURT: Just reserve it for cross?18

MR. JENNER: -- raise an objection on the subject19

matter of bar code technology and leave it to cross.20

THE COURT: All right. Is the witness going to be21

offering opinions on -- regarding bar code technology22

specifically?23

MR. LISA: He's going to be offering opinions on24

infringement of the bar code -- of the patents by Symbol's bar25

HUNT - DIRECT 140

coding operations and systems, and in fact you'll hear in1

testimony that he has picked up and worked with Mr. Putnam. 2

Mr. Putnam described a lot of that to Your Honor, and Dr. Hunt3

has independently reviewed all the same materials that --4

THE COURT: All right. Well, go ahead and move5

forward, and I'll let Mr. Jenner assert a specific objection6

at some point at which the witness offers an opinion in an7

area that he thinks is beyond the scope of his expertise. 8

We'll deal with it that way.9

MR. LISA: I will, Your Honor, with that in mind,10

lay some foundation at that point as to what the witness has11

done in that review.12

THE COURT: Fine. Fine.13

BY MR. LISA:14

Q Dr. Hunt, as a result of your work in this case did you15

obtain a understanding of what claims were asserted and what16

claim construction is to be applied in this case?17

A I did.18

Q And could you explain the Court -- to the Court what you19

did to obtain that understanding.20

A Yes. As testified earlier in this court, the claim21

construction was performed by Dr. Brian Williamson. I22

participated in that construction in terms of looking at what23

Dr. Williamson did with his claim construction. I queried Dr.24

Williamson on what were his principles of claim construction25

HUNT - DIRECT 141

and how he applied them. When he had completed his1

construction, I reviewed it myself and satisfied myself that I2

understood the sources and the principles and the motivations3

for the claim construction that Dr. Williamson offered to the4

Court.5

Q Did you, as a result of your review, actually obtain an6

understanding of Dr. Williamson's claim construction?7

A I believe that I did, yes.8

Q Did you independently confirm that you agree with his9

claim construction?10

A I do.11

Q I've placed in front of you Defendant's Exhibit 184. Can12

you identify what that is, please.13

A 184 is captioned at the top as the "Lemelson Supplemental14

Claim Construction." And just very briefly, glancing through15

it, it indicates for each of the patents and claims that are16

in suit that it indicates the construction that is arrived at17

by using the definitions that were produced by Dr. Williamson18

in his claim construction process.19

Q I've also placed in front of you Defendant's Trial20

Exhibit 185. I'm sorry -- 21

THE COURT: Yes, it was 185.22

BY MR. LISA:23

Q Now I've placed in front of you Exhibits 185 and 185A. 24

I'd ask you to look at 185, if you can.25

HUNT - DIRECT 142

MR. LISA: And, Your Honor, these were previously1

referenced with Dr. Williamson.2

THE COURT: Right.3

MR. LISA: And I don't have multiple copies of that. 4

It's the anthology of claim terms.5

MR. JENNER: 185A? Might we just see it for a6

moment?7

MR. LISA: Sure.8

MR. JENNER: Thanks.9


BY MR. LISA:11

Q Have you seen that before?12

A Which one, sir?13

Q 185A.14

A Yes, I have seen this before.15

Q All right. And can you explain when you've seen that and16

what you've done with it.17

A This is -- I guess I would characterize it as the final18

product -- or one of the final products of the claim19

construction process which Dr. Williamson carried out, and20

this in particular is labeled "Markman Key Word Definition21

List." And it indicates -- for each word on the list it22

indicates the construction that Dr. Williamson came up with,23

as well as a number of citations of sources and uses of that24

that might be found in the Lemelson patents.25

HUNT - DIRECT 143

Q All right. And did you independently review that1

document, as well?2

A I did. I independently reviewed this.3

Q And did you review any of the sources referenced in4

there?5

A Yes, I did. The sources in some cases were a standard6

thing like a college dictionary. In others they were special7

materials which had been collected in the law offices where8

this project was conducted.9

Q And in fact did you participate in finalizing any of the10

claim terms?11

A Yes, I did.12

Q So if you had concerns, did you raise them and address13

them with Dr. Williamson?14

A Yes. Dr. Williamson and I had meetings where -- and15

sometimes those meetings were face to face, literally in the16

law offices of -- where this product was carried out, and17

sometimes they were by exchanges of -- oops -- and sometimes18

they were by exchanges of messages and e-mail and such, I19

believe.20

Q And did you reach agreement on the claim construction?21

A We did.22

Q As a result of your work in this case did you come to23

form an understanding of what a person having ordinary skill24

in the arts related to the claims is?25

HUNT - DIRECT 144

A Yes. I -- in fact I developed such an understanding.1

Q And could you explain to the Court how you came to reach2

that understanding.3

A I reached it primarily by looking at I think what the4

patents teach and the way they teach it and how I therefore5

have to view that individual taught to -- or individuals6

taught to by the patents. And then, of course, I had Dr.7

Williamson's viewpoint on that, and I found them to be in8

consonance.9

Q Would you explain to the Court what your understanding is10

that you've applied for the person of ordinary skill in the11

art in reaching the opinions for which you'll testify.12

A Certainly. First of all, there are numerous references13

in the patents to things that relate to manufacturing and14

production processes. It's clear that Mr. Lemelson is15

bringing information to that sort of an individual.16

There are also numerous references in the patents to17

things that had to do with computers, computing, and analysis18

of data by same, and it seems to me that a person of skill has19

to be also falling in that third category.20

And then finally, there are a number of disclosures that21

relate to what has been referred to as scanning or scanning22

systems or image data acquisition, whatever sort of label you23

wish to use for it, and that understanding I think has to also24

be part of the person of skill.25

HUNT - DIRECT 145

Q And do you have an opinion as to whether those arts are1

in fact distinct as of the time period, say, of the mid-1950s?2

A I do.3

Q And what is your opinion?4

A It's my opinion they are. They were.5

Q And in your opinion would it be ordinary or not ordinary6

to find a person in the mid-1950s having skills in all three7

of those arts?8

A I think it might be unusual to find a person having all9

three of skills together. I wouldn't rule it out, but I think10

it would be unusual.11

Q Now, I believe you said that one of the issues that you12

were asked to address was claim support; is that right?13

A That's correct.14

Q All right. And in connection with that project did you15

undertake to review the various patent applications that were16

filed by Mr. Lemelson in the mid-1950s?17

A I did.18

MR. LISA: And, Your Honor, let me perhaps try and19

help explain what we're going to do here.20


MR. LISA: A number of those applications and22

specifications we've seen and had before the Court here23

already, so it's not our goal here to go review much of the24

detail in those disclosures except to the extent it was not25

HUNT - DIRECT 146

presented to Your Honor. So if it appears to be a bit1

disjointed in some areas, it's because we're going to try not2

to repeat some of the subject matter that's already been3

presented to you.4


BY MR. LISA:6

Q Did you reach an understanding of what was described in7

the various applications that were filed by Mr. Lemelson in8

the mid-1950s?9

A I think that I did, yes.10

Q And are you able to provide to the Court an overview of11

what you consider to be important in the descriptions of the12

applications that were filed in the mid-1950s?13

A I think I can, yes.14

Q All right. Have you prepared a summary for the Court on15

that?16

A Yes, there's been a summary prepared.17

MR. LISA: All right. I'd ask for Defendant's Trial18

Exhibit 2410, please.19

BY MR. LISA:20

Q Dr. Hunt, could you please explain what Defendant's Trial21

Exhibit 2410 is.22

A This is a presentation that I made up, and it is a23

presentation which summarizes certain key disclosures in the24

Lemelson patents in the context that you just mentioned.25

HUNT - DIRECT 147

Q Turning to the first -- second page of 2410 under the1

heading, "Serial Number 477,467, 12/24/54, Content," could you2

explain what you've identified here.3

A Yes. This is the application which is sometimes referred4

to as Serial '467. The title of it is Automation Devices, and5

describes various manufacturing systems and methods which are6

using machine vision.7

The important thing about that is that it was referenced8

in to a later application which I've identified here, 626,211,9

and I've summarized some of the content in terms of the number10

of pages, the figures, number of claims.11

And two things which I think are noteworthy, also, the12

next-to-last bullet on that page indicates that there were13

nine different references to an earlier application, that14

application which was Serial 449,874, which also related to15

manufacturing systems, flexible manufacturing systems.16

And then the other important disclosure I note is the17

last bullet on this page, which is that identification of18

separate figures as well as the related text which talk about19

automatic scanning and the use of automatic scanning to20

identify workpieces and automatic control.21

Q Now, did the December 1954 application --22

MR. LISA: And, Your Honor, for the record, since23

there is another application filed in July 1954, we'll refer24

to those two by their month that they're filed.25

HUNT - DIRECT 148

BY MR. LISA:1

Q Is the December 1954 one of the originating applications2

in the machine vision line of patents for Mr. Lemelson?3

A Yes, that's correct. I have a summary chart which4

probably should have put up in the front here, but there's a5

summary chart on all that which -- toward the back of this,6

which I think makes that more graphic.7

MR. LISA: All right. If you will, please turn to8

the second-to-last slide, Your Honor, in Exhibit 2410.9

THE WITNESS: And I'm referring in that case Mr. --10

THE COURT: So-called Big Picture slide?11

MR. LISA: That's right.12

THE WITNESS: Yes, that's correct, Your Honor.13

BY MR. LISA:14

Q Did you prepare this, Dr. Hunt?15

A I prepared this, yes.16

Q Could you explain what you did, what's reflected here.17

A What's reflected here is an integrated view of a number18

of different activities which Mr. Lemelson was engaged in over19

about a period of two and one half years. At the very bottom20

of the chart, in the center, Serial Number 267,377, filed in21

'63, that represents the last application, I think, in what we22

now called the common specification.23

Going into that box are two arrows which emanate from two24

more complicated sets of boxes. On the right side of the Big25

HUNT - DIRECT 149

Picture slide we see a series of applications, and they relate1

primarily to the development -- imagery storage systems and2

image retrieval systems. All of those feed one way or another3

into a machine vision application which occurred in December4

2nd of 1956, which is the other portion of what's often5

referred to as the common specification.6

Then on the left side and above of that Big Picture slide7

are other serial number identifications which can be found8

through the references that are in the applications. And the9

upper left, I note that there are discussions of automated10

production warehousing, that's Serial Number 449,874, and11

automatic production tools and vision, that's 477,467, which12

we just talked about a moment ago, and those were both brought13

together in reference -- direct incorporation into another14

application, which was Automated Storage and Identification.15

And as I'm going to talk through all the meaning of these16

things in detail, let me just say now that this represents a17

summary of a number of different thoughts in machine vision,18

not just in terms of analyzing say a particular image, but the19

purposes for it in an integrated environment of production,20

warehousing, frame storage and retrieval, and so on.21

Q Could you explain what the dotted arrows mean.22

A Certainly. A dotted arrow means that there was a23

reference from one to another. So if I look at the dotted24

arrow at the upper left, for example, which goes from '874 to25

HUNT - DIRECT 150

'467, the arrow emanates from the box labeled '874 and1

terminates in the box labeled '467. That means that '467 had2

a reference to it, a number of references to it in '874.3

Q And the solid arrow means what?4

A A solid arrow means that it actually descended into the5

application as indicated.6

Q Now, just for clarification, if you look at the bottom7

right-hand side of the Big Picture chart, you have Serial8

Number 668,348.9

A Yes.10

Q And at the very bottom is the -- what we call the common11

specification, 267,377?12

A Say that again.13

Q The very bottom center --14

A Oh. Yes.15

Q -- 267,377.16

A Yes, I see that.17

Q Is there an arrow that's actually missing there?18

A Yes. Because I know that bottom -- last application19

actually references some of these things back up the chain,20

and unfortunately the arrow was left out.21

MR. LISA: Your Honor, you may recall that we've22

seen in the first column of the common specification the23

reference back to Serial Number 688,348, which is a typo and24

is in fact 668,348, and that's not indicated in this chart25

HUNT - DIRECT 151

that Dr. Hunt prepared.1


BY MR. LISA:3

Q Now, with that, let's turn back, if we can, if you will,4

Dr. Hunt, to the second -- the third page, which is Serial5

Number 477,467, Figures 1 and 4. And, if you can, please6

highlight for the Court the important points you'd like to7

make.8

A What we see here is basically a tool carrier, and it is a9

dolly or a carriage, you could say, and it's moving on a10

track, a wheeled track. There is mounted on that, at the11

bottom end of it, a rotary platform with a machine tool MT. 12

That platform has on it a container, and it notes that the13

container may serve a variety of functions, it may house an14

inspection apparatus, it may contain a camera for inspection15

operations.16

So in the sense of an overall picture, this device rides17

on an overhead track, there is an arm descending from it,18

there is a machine tool, and then there is an inspection19

system which is able to look at the operations being carried20

out by the machine tool.21

Q Are there any computers shown in Figures 1 and 4?22

A Yes, they are. And in fact it's referred to as computer23

CO, which is shown affixed directly to the upper portion of24

that arm in both its views, sort of two different side views25

HUNT - DIRECT 152

here.1

Q And how does the column or dolly ride on the track?2

A I'm not certain what your question is here.3

Q Well, how does it move on the track?4

A Oh. Well, it's powered on the track, and there are5

wheels which hang on the track. You can actually see in fact6

the wheels are described as 24, and the computer is actually7

available, as it notes in the disclosure. "Computer means are8

provided to direct motion of the carriage on the trackway."9

Q Turning, if you would, to the next page, Figure 17, would10

you again just briefly highlight for the Court the critical11

facts you'd like to make concerning this figure.12

A Certainly. There are -- probably it's important to note13

here that there are two different kinds of motion which may be14

carried out by the device shown here. There's a Gantry crane15

which moves on tracks in the floor, and then there's a16

conveyor. The Gantry crane is able to move, and the conveyor17

is able to move, and thus any object which is in place on the18

conveyor is subject to two different kinds of motions which19

can be carried out by this device.20

Other things to be noted, of course, are the various21

computers which are shown here, as well as things which22

constitute scanners and the applications of those scanners as23

Mr. Lemelson describes.24

Q Now, referring to the second box that you've put full of25

HUNT - DIRECT 153

text --1

MR. LISA: And, Your Honor, for the record,2

obviously pages numbers are cited here to support the3

disclosures, and those are page references to the composite4

file history that we've placed in front of you.5

THE COURT: Exhibit 1932A?6

MR. LISA: Correct.7


MR. LISA: And we'll avoid going to that unless we9

have to for some reason.10

BY MR. LISA:11

Q Could you explain what you've set forth there.12

A Yes. There are several different ways of doing13

identification and referencing this work. "Referencing" means14

to bring it into a position or bring it into a region, if you15

wish, where you're going to be doing work. And that's done so16

that you can have automatic operations to be carried out, and17

the computer, of course, is here available for control to18

achieve such a thing.19

Q Over on the right, in the box showing the drawing of20

Figure 17 there are marks 108, 108', and 108''. Do you see21

those?22

A Yes, I see those.23

Q Have you set forth an explanation of what they're there24

for?25

HUNT - DIRECT 154

A Yes. That would be the third box down on the left,1

because it explicitly identifies 108, 108', and 108''. 2

They're small reflectors. You can either put them on the3

mount, and the mount WJ, I think, is -- could be thought of as4

a jig or a mounting for the work, or they can be put on the5

work itself. And it's clear from the language which is quoted6

here from the application that these are intended to be used7

to identify and identified with respect to the Gantry cane --8

excuse me, the Gantry crane or provide light source and9

adjacent photocell that relates to the machine tool MT.10

Q Are there additional photocells besides those shown on11

the arm or machine tool?12

A Yes. You'll note there is a photocell which has its path13

aimed horizontally. That's the item number 106. And there is14

another photocell which is identified as item number 111,15

which has its path aimed vertically.16

Q And that one is on the top on the overhead Gantry?17

A That's correct. Number 111 is on the Gantry, the top18

bar, and the -- another one, 106, is on the bottom lower19

portion of the Gantry, which rides on the rails.20

Q Does it -- with respect to the positioning of the21

workpiece jig WJ --22

A Uh-huh.23

Q -- relative to the Gantry crane, do the photocells allow24

for any variation in position laterally on the conveyor?25

HUNT - DIRECT 155

A Well, certainly. By "laterally" I assume you mean the1

dimension across the direction of motion of the conveyor.2

Q Correct.3

A And the answer is yes.4

Q And how so?5

A Well, because we're projecting a beam across there, and6

so as long as that item WJ is anywhere across that, the beam7

being perpendicular to the direction of travel means it8

interrupts it in a uniform way and there's no position9

sensitivity of that sort.10

Q Does the overhead Gantry crane move along the lateral11

position or dimension of the conveyor?12

A Well, it moves along the dimension of the conveyor. It13

does not move lateral to it.14

Q Looking at the bar 103 on top?15

A Oh, yes. That bar. I'm sorry. I mistook your question. 16

Yes, that also has a -- if you'll note that there are two bars17

on the top and that upper position effectively can translate18

back and forth across those two bars for lateral motion. But19

that's not the Gantry crane itself. That's a component of the20

crane. I think I misunderstood your question.21

Q Thank you. The fourth box with the reference to22

photocell 112 mounted on the arm, would you describe what you23

set forth there and why.24

A I think the important thing that's set forth there is25

HUNT - DIRECT 156

what I tried to highlight with a couple of bold-face items. 1

And explicitly, again, this is a quote from the application2

where it indicates that there are reflectors or black spots3

and you position them on the surface of the work such that4

when they are scanned by a scanner, which is item 112, which5

we've not discussed yet, such that when that scanner is able6

to see them, it actually uses them to identify the work that7

is to be operated on by the machine tool MT.8

Q And is -- to the right there's a final box on this9

figure. Could you describe what you've set forth there and10

why.11

A Well, that final box on the lower right tells you12

something about the overall operation. And what's important13

there I think is a word which is more or less in the center of14

that box, the description "seeking phase." It's clear, I15

think, when you read this disclosure that what's going on is16

that this item may come into some space of these various17

sensors, and then there is the ability for the photoelectric18

devices either on the horizontal or vertical planes, as well19

as the device which is on the end of the arm number 112 to go20

through a seeking operation using the reflectors to guide the21

seeking operation after which more precision operations can be22

initiated.23

MR. LISA: Your Honor, we've a short animation of a24

few minutes that actually shows the various operations that25

HUNT - DIRECT 157

Dr. Hunt has just explained.1

THE COURT: All right. What's that exhibit number?2

MR. LISA: It is 2425A.3

THE COURT: 2425A.4

MR. LISA: If we just turn on our desktop monitors,5

we can run that image.6

THE COURT: It should appear to your right there,7

Doctor.8

BY MR. LISA:9

Q I've got it on right now, Dr. Hunt, if you have it.10

A I have it. Yes, I see it.11

Q Could you just briefly point out the -- it may be12

obvious, but could you point out the various reflectors and13

photocells and light beams that are shown.14

A Do I have a cursor control on this anywhere?15

Q I'm not sure.16

A Or, if not, I'll just try to indicate it verbally.17

MR. LISA: I don't know. Your Honor, if he touches18

the screen, will that actually --19

THE COURT: I believe it does. Give it a try, but I20

think it -- yep, there we go.21

THE WITNESS: Okay. I've managed to populate three22

cursors on the screen, unfortunately, but --23

THE COURT: I think just hit it. It may --24

THE WITNESS: At any rate, I will indicate right25

HUNT - DIRECT 158

across there that is the horizontal path of one of the1

photocells I just described. Here is a vertical path2

descending from this bar which we see overhead. And then with3

respect to the questions of the reflectors that you asked, Mr.4

Lisa, back here we have reflectors on the work -- on the work5

jig itself, WJ. They don't say "jig," they say "mount,"6

excuse me. And then back in here we have reflectors on the7

workpiece itself.8

MR. LISA: Since we haven't used this yet, Your9

Honor, is there a way to clear that screen now? Can you10

just --11

THE COURT: My recollection is you just tap the --12

isn't there -- there's a --13

MR. LISA: Press the corner?14

THE COURT: The button that's --15

MR. LISA: There we go.16

THE WITNESS: It works. Isn't it wonderful.17

BY MR. LISA:18

Q Continuing on, could you explain what's happening now.19

THE COURT: They don't let me touch it, so I don't20

have any idea.21

THE WITNESS: Yes. We just saw that make a motion,22

and during that motion the workpiece came forward until the23

point where we see now the photoelectric cell has made contact24

with the reflector.25

HUNT - DIRECT 159

BY MR. LISA:1

Q Were both the workpiece and the conveyor moving?2

A Yes, they are both in motion, I believe is what we saw at3

that point.4

Q At this point has one photocell actually intercepted one5

of the reflectors?6

A It looks like it to me from this angle, but it's --7

sometimes when you have three-dimensional geometry it'd be8

difficult to say with precision. But it would appear to be.9

And now we see them both moving forward.10

Now we've started the seeking action that I was11

describing, and you see the beam being projected off of the12

head of item number 112.13

Q Now, for just a second let's ask a few questions about14

the positioning of the workpiece relative to the photocell on15

the bottom left. Does it matter where between the columns of16

the Gantry crane the workpiece would be positioned?17

A No, it would make no difference because of the reasons I18

gave earlier.19

Q And with respect to the position along the conveyor,20

given the manner in which the interception takes place, would21

it matter where the workpiece started out relative to the22

Gantry crane?23

A No, it wouldn't make any difference.24

Now you see the seeking phase going on.25

HUNT - DIRECT 160

Q What is it that is controlling these operations at this1

point?2

A Well, there is a computer, of course, which is described3

in part of the -- or in the application, and that computer is4

more or less starting the initiation of the scanning. It's5

carrying out a path. And every time it intercepts certain of6

these reflectors, it's gathering information about where it's7

looking for the place that it begins its precision actions.8

And now you can see it's beginning to descend to drill a9

hole as a result of the seeking process having been terminated10

upon finding the information it's looking for.11

And we see a repeat of that.12

Q Dr. Hunt, based on your review of the 1954 specification13

do you believe this animation to be a fair and reasonable14

description of what occurs in the operations of Figure 17 of15

the '54 application?16

A I do.17

Q If you would, please turn the page to Serial Number18

477,467, Figures 83 to 85. And if you would, please, describe19

what you set forth there and why.20

A Well, this I think first of all the first box indicates21

that we're showing automatic control for a conveying device22

and that there is an element of feedback in it. That's all23

conveyed within the language of the first box that's on that24

page.25

HUNT - DIRECT 161

Moving on to the second box, what's interesting is that1

it indicates that this is operation of the conveying apparatus2

and it combines three separate phases, a first phase, which is3

command operated, and that just simply means that a computer4

is going to do it in a predetermined way. There's a second5

phase in which case there is actually work identification, and6

that means that it's using the information it gathers through7

scanners to identify the work. And then following that is a8

third phase, which you actually control the apparatus or, in9

the case he indicates here, the tool that you're operating10

with.11

Q Does the specification describe the manner in which the12

surface identification phase may be accomplished?13

A Very clearly, because -- and I'll actually read this into14

the record here, "The surface identification phase may be15

accomplished by photoelectric scanning as shown in Figure 17." 16

So the apparatus that's developed here is, of course, meant to17

be part of the Figure 17 descriptions.18

Q All right. Now, the apparatus you're referring to is the19

apparatus on the right?20

A Yes.21

Q And could you --22

A Figure 83 on the right.23

Q Could you describe in Figures 83 through 85, at least24

generally, the major components that are shown in the 195425

HUNT - DIRECT 162

application.1

A Certainly. Probably the most important thing to start2

with in Figure 83 is the box CO, the command device. It could3

be a computer, for example. And that has command of a number4

of different motors, and those are shown in three different5

axes as X, Y, and Z. And those, of course, would give you6

three-axis control, for example. And it indicates that these7

are able to operate things like the various arms and so on8

that were described in Figure 17.9

Then there's also disclosed in Figure 84 a photoelectric10

cell and control and a light source for that, which is again11

very directly understandable from our reading of Figure 17.12

And then finally in Figure 85 there's an indication of13

the information that'd be obtained from all of these by virtue14

of reading these kinds of commands and operations from a15

magnetic tape, which is indicated at the very lower left of16

that figure.17

Q Well, in fact let's address that for a second. Were you18

in the courtroom when Dr. Grindon was asked whether or not the19

1954 application described only punched tape?20

A I was in the courtroom that day.21

Q All right. In fact does the 1954 application describe22

computer control using only punched tape?23

A It does not.24

Q Does it use magnetic tape?25

HUNT - DIRECT 163

A Yes, it does. And that's very easy to see from this1

direct quote in the bottom box, the first line of the bottom2

box. I'll read it for the record. "In Figure 85 a punched or3

magnetic tape 492," and then the quote goes on to tell you the4

generation of signals for control from that.5

Q Would you turn the next page to the heading relating to6

Figure 99. And here please identify what you've set forth and7

highlight briefly for the Court the important points you'd8

like to make.9

A Certainly. To begin with the top box on the left, it's10

-- again the direct language states it's a "scanning11

inspection device," and it's intended to be used with respect12

to work in process.13

And then the second box indicates -- the second box14

indicates that there are dimensions which it's interested for15

measurement. And those actual dimensions for measurement are16

indicated in the upper right portion of Figure 99. They're17

given various names like D1, D2 and so on.18

And then there's a description of using a photoelectric19

cell which is going to be moved past this piece in order to20

actually make those measurements by the interrupting of the21

beam of the photoelectric cell.22

Q In your opinion would the controlled movement of the23

scanning device through the series of dimensions shown on the24

Figure 99 workpiece constitute a scanning operation?25

HUNT - DIRECT 164

A It is a scanning operation, yes.1

Q And in fact it's actually labeled scanning device PH. If2

you look in the middle of the figure, that's my indication for3

calling it a scanning device as way of answering your4

question.5

Q Refer to the bottom left -- 6

A Yes.7

Q -- box. You have a quote set forth there.8

A Right.9

Q Does that refer to it as a scanning device, as well?10

A That's correct. And in fact if you read the language, it11

essentially says that we're going to be moving the scanning12

device past the object and that scanning device can be working13

two ways; it can interrupt a beam, as I indicated, but what's14

more important, note that it uses the term "reflectivity," the15

word "reflectivity in the very last sentence of that. It's16

clear for me in the description that's going on here that what17

can also be considered here is the use of the photocell to18

simply gather data on the reflectivity object as it is scanned19

past that object.20

Q Does Mr. Lemelson provide a description of such a21

photocell in his 1954 application?22

A Yes. There are numerous references to photocells.23

Q I'd ask you to turn the page to the description -- the24

heading "Sophistication of 1954 Scanner Disclosures, Figures25

HUNT - DIRECT 165

99 to 102."1

A Yes, I've turned the page there.2

Q Would you please highlight for the Court what you've set3

forth there and why.4

A Let's note the major first bullet there. And the direct5

quote is from the application. I will note a typographic area6

which -- a typographic error which was made by Lemelson in7

this case. It's typographic only, because a person of skill8

reading this will recognize the error.9

At any rate, he talks about PH, that's the photocell, and10

LS. You could replace them by a single scanning head, or you11

could use other co-acting aligned inspection devices.12

And what's also important to note here, he says you could13

use other forms of radiation, for example, X-rays or atomic14

radiation. And when I read that, that was of great interest15

to me because of my background in X-ray scanning systems.16

Q Could you describe -- point out to the Court the details17

that Mr. Lemelson provides for the photoelectric sensor or18

other -- photoelectric scanning or other sensor device that's19

shown in Figures 100 to 102 and what operations they perform.20

A Yes. I would draw attention to first of all Figure 100. 21

If you think of the photocell as being like a -- oh, sort of a22

cylinder or can, Figure 100 is looking right directly into the23

face of that can. And there is a cover plate disclosed, and24

that cover plate is disclosed, for example, as being a series25

HUNT - DIRECT 166

of crosses, for example, two lines together to make a cross. 1

Oh. And that's Figure 100.2

Or in Figure 102 there's a couple of lines together --3

brought together to make an angle. And Mr. Lemelson teaches4

of using this as a way of doing very interesting things in the5

way of let's say scanning an object to determine features and6

characteristics.7

Q What types of features and characteristics can be8

detected with these types of sensors or scanners?9

A Well, if you combine his teachings of that cover plate10

with his teachings of a scanning head being a single device,11

then you could use this to -- for example, anything which was12

on that cover plate could be perfectly detected by the13

operation which is sometimes referred to as correlation.14

Q In your opinion does Mr. Lemelson's 1954 application15

describe several different types of scanning devices?16

A Yes, very definitely. And I've highlighted those in17

terms of scanning by photoelectric cell with a beam that's18

interrupted, scanning from reflectivity, and now scanning with19

sensors which have very special characteristics for feature20

detections.21

MR. LISA: Your Honor, we have a very short22

animation of Figure 99. You may recall that a version of it23

was provided back last summer in the prepositioning summary24

judgment motions.25

HUNT - DIRECT 167

BY MR. LISA:1

Q Dr. Hunt, if you could, just explain, obviously briefly2

as we go along here, what's occurring.3

A Okay. You'll see a source of light. The source of light4

is emanating from the left. It breaks -- the beam is broken5

by the object. The scanner goes back, moves up again, and6

goes back to the right. And this is a scanning process which7

allows you to make the measurements which were described in8

the passages that I just indicated in the application.9

Q With respect to the device shown -- the animation that's10

being shown, does it matter where between the light source and11

photocell the workpiece would be positioned?12

A It makes no difference at all, as long as you use the13

proper type of light source and beam.14

Q With respect to the animation shown --15

MR. LISA: And, Your Honor, I'll have the exhibit16

number for you in a moment for this animation.17

BY MR. LISA:18

Q Does it matter where along the travel of the arm the19

workpiece is -- parallel to the arm the workpiece is20

positioned?21

A No. It can be moved back and forth in a parallel22

distance there.23

Q So in particular as well with respect to the heights of24

these cutouts, does it matter how high the workpiece is within25

HUNT - DIRECT 168

the cutouts? In other words, does it have to be right in the1

center of the cutouts, or can it be located anywhere within2

the cutout regions to get an accurate result?3

A As long as you have enough travel of the light source4

back and forth and up and down, it does not matter.5

Q So it is fair to say that there's freedom of positioning6

in the X, Y, and Z directions for the workpiece?7

A Yes, there are.8

MR. LISA: Your Honor, that's Exhibit 2425B. And we9

request that both of those animations, 2425A and 2425B, be10

moved into evidence.11

THE COURT: Any objection, Mr. Jenner, to the two12

animations?13

MR. JENNER: I guess we'd like to preserve, Your14

Honor, a relevance objection, since I think Your Honor knows15

our position regarding the 1954 application. Otherwise, no16

objection to their use as illustrative of the testimony.17

MR. LISA: Your Honor, I don't see how he can18

reserve a -- I mean, we're at the final days of the trial. 19

Can we --20

THE COURT: Yeah. I'll receive the two exhibits. 21

I'll receive the two exhibits.22

(Defendant's Exhibit Nos. 2425A and 2425B admitted)23

BY MR. LISA:24

Q Turning to the final -- I'm sorry, to the next page of25

HUNT - DIRECT 169

your summary exhibit, 2410, have you reached a opinion as to1

the understanding that a person having ordinary skill in the2

art in scanning would reach regarding the scope of disclosures3

taught by Mr. Lemelson with respect to the various scanning4

operations?5

A I have reached such an opinion.6

Q And can you state what that opinion is and the basis for7

it.8

A The opinion that's reached is summarized in this chart9

within five bullets, and the basis for it is my own experience10

in optical systems and related types of problems in scanning.11

Q Would you please briefly highlight for the Court the five12

points you believe to be important with respect to the various13

scanning operations described in the 1954 application.14

A Certainly. Let's begin with that first bullet. It's15

clear that there are multiple different radiation sources that16

are available to us from reading those disclosures in the17

patents, because we see light beams, photoelectric, we see18

also a statement of X-rays or atomic radiation. That by19

itself takes in virtually every mechanism of energy projection20

that I'm aware of.21

Q Does it also disclose cameras, inspection cameras?22

A That's correct, as well.23

Q Please continue.24

A The next understanding I think it's important to25

HUNT - DIRECT 170

understand -- yeah, an understanding you should understand.1

The next understanding I would take up is the following,2

that you use a columnated beam for that light source LS. This3

is a thing that a person of skill in scanning systems4

understands that a person of skill in some other art may not5

understand, and it's also essential why Dr. Williamson's claim6

construction including that skill is important to7

understanding the teachings of these patents.8

If you use a columnated light beam, you avoid beam9

profile variations such as we heard asserted by Dr. Horn in10

some of his testimony. I was not present, but by reading the11

testimony and examining the exhibits, I believe that Dr. Horn12

indicated that you would have problems in positioning because13

you'd be seeing images of the light filament varying up and14

down the position as you moved this piece that we saw in15

Figure 99. A columnated beam does not have that behavior. It16

is virtually uniform along its length. And that would not be17

a problem of the sort that has been asserted.18

Q Is it your opinion -- I'm sorry. Strike that.19

Dr. Hunt, do you have an opinion as to whether a person20

of ordinary skill in the art in the mid-1950s would know to21

use a columnated light source?22

A He absolutely would. Columnated light sources were very23

common, going way back into the early days of the Twentieth24

Century.25

HUNT - DIRECT 171

Q All right. And are you prepared to -- I'm sorry. Do you1

have specific testimony that you're going to provide later on2

that issue?3

A Yes, I am. I've got a couple of items to present on4

that.5

Q Please continue.6

A The third point that I would draw attention to here is7

reflective scanning is disclosed. And particularly here --8

and I actually made a point about this earlier -- there's a9

single scanning head offered as a possibility. That basically10

means that you can put the light source and the photocell or11

the detector in the same box.12

Now, that's easy to do, because, again, a person of13

understanding in scanning systems knows that that's a simple14

optical arrangement to do that. And then, because of that, I15

then point to the language of reflectivity, which is seen on16

page 100 of the application at line 18. An individual who17

understands scanning system knows exactly what is being18

indicated there.19

Q The fourth bullet item, could you explain what you set20

forth there.21

A The fourth item, about the cover plate openings. 22

Basically that's a variety of edge and shape detection. We've23

heard a lot, I'm sure, in testimony in this court about24

inflections. Well, without going back to define again what an25

HUNT - DIRECT 172

inflection is and just accepting it as something we've begun1

to understand, I want to indicate that a very strong2

inflection in your photocell signal output will occur when an3

object edge aligns with a cover plate opening that has an edge4

in it at the same position and orientation. So we have a5

wonderful little edge detector being disclosed by Mr. Lemelson6

in this case.7

Furthermore, if you have an object shape, like the cross,8

which aligns in its optical path with something like a cross9

on an object, that again will cause a strong inflection to10

occur. In other words, this is equivalent to a type of edge11

and shape detection very much as was testified to by Dr. Horn12

earlier about the importance of using area collection systems. 13

Well, there are area collection systems here. They constitute14

the area of the open part of the photocells shown in Figure15

100 and Figure 102.16

Q And the final entry that you've got on this page of your17

Exhibit 2410.18

A Certainly. Someone might assert that there might be a19

problem in moving in the dimension along this beam by virtue20

of perhaps some depth-of-focus issue. Well, a good optical21

design, which is what you would do in putting together a22

photoelectric -- photoelectric cell scanning system can give23

you a good working range of depth of focus. People know how24

to do these things, and they've known how to do it for a25

HUNT - DIRECT 173

number of years.1

Q As a result of your review of the 1954 application do you2

have an opinion as to whether Mr. Lemelson describes only3

using high-bandwidth television as the inspection systems in4

the 1954 application?5

A I have an opinion.6


A It's not true. There is no restriction to just high-8

bandwidth television.9

Q In fact, in your opinion what would the bandwidth be in a10

general sense of the various photoelectric scanning devices11

described in the 1954 application?12

A I would say the best way to characterize them in a13

colloquial fashion would be audio bandwidth, maybe a few14

kilohertz.15

Q If the Court construes the claims to be limited to only16

high-bandwidth television will it exclude all the embodiments17

described in the 1954 application?18

A I see no other way around it. It would be exclusive.19

Q You made reference to the fact that the December 195420

application had referred to earlier co-pending applications,21

including Serial Number 449,874. And just briefly, without22

addressing in detail, could you describe what you set forth in23

the next three pages of your slide.24

A Yes. In the next three pages what I've done is summarize25

HUNT - DIRECT 174

by actually cutting out of the actual application itself those1

nine different references to that co-pending application. And2

those nine different references, in each case I've put into3

bold face type the place in that quotation wherein the4

reference to 449,874 is found to occur.5

Q And, again, are you prepared to provide the Court a very6

brief overview of what's described in Serial Number 449,874?7

A Yes, I am.8

Q And could you turn three pages ahead then to the slide9

entitled "Serial Number 449,874 Contents," and, if you can,10

highlight for the Court what you believe to be important about11

the contents of that application?12

A Certainly. As indicated here, the title of that13

application was Automatic Production Warehousing System. And14

basically what it was as originally filed was a description of15

automated manufacturing and warehousing, and I've16

characterized some of the content in terms of the number of17

pages, the figures, the claims and so on, but what I really18

want to point attention to is six different figures, 1, 7, 8,19

18, 19 and 27, because these figures show various ways of20

taking carriers, work holding carriers, tools, inspection21

stations, warehouse storage bays, and so on. They are all22

automatically identified by reflective markings that are23

scanned with a light beam and a photoelectric detector.24

Q If you turn the page, can you highlight some of those25

HUNT - DIRECT 175

disclosures and some of the text for the Court?1

A Yes. On the very next page, which indicates in the2

caption at the top of the page, Figures 7 and 8, and Figures 73

and 8 are both shown on the right side of the page, and then4

on the left side of the page, we show some of the language5

that has been excised from the application.6

And, for example, the second box down indicates "Work7

station identification and selection," and it actually8

indicates an illustration of doing that by a photoelectric9

cell and a light source, and in Figure 7 it notes that a small10

reflector can be placed on the flange of the eye beam, reflect11

from the beam, and thus be used to identify the machine12

stations.13

And it also indicates that Figure 8 is a variety or a14

variation of Figure 7, in which case you placed or secured the15

photocell in one column which is being moved past another,16

again, reflective mark being shown as indicated.17

Q Turning to Figures 18 and 19 on the next page, would you18

do the same thing and briefly describe for the Court what you19

believe to be important there?20

A Yes. Again, this is a work holding conveyor, and I think21

what that means is it's like you could think of it as a big22

box and some kind of work in process is moving through a23

factory, and what's interesting is that Figure 18 and 19, as24

indicated by the quotations, show a photoelectric cell being25

HUNT - DIRECT 176

used in the purposes of identification. And, again, it's done1

by use of reflecting marks.2

And I would call attention to the box, the large box at3

the lower half of the left side which indicates that station4

selection is on the basis of reflective strips which are5

scanned by a photoelectric cell.6

Q Based on your review of the December 1954 application and7

this July 1954 application, did you form an opinion as to8

whether or not Mr. Lemelson possessed, during this time9

period, the concept of automatically identifying work pieces,10

work stations and tools using photoelectric scanning?11

A I did. 12

Q What is your opinion?13

A I think it's very clear that he was not thinking of these14

things in isolation. He was looking at them within this15

integrated view.16

Q If you would, please turn now -- let me ask -- I'm sorry,17

let's back up. The December 1954 application, did Mr.18

Lemelson record on the magnetic tape any video signals?19

A I'm aware of nothing that he was recording in the '5420

application.21

Q What type of information was generated and evaluated, for22

example, if you can give some examples, in the 195423

application as a result of the scanning operations?24

A Well, he was able to make measurements, and he had on a25

HUNT - DIRECT 177

magnetic tape reference data to which he was going to compare1

these measurements to, and he actually shows the computer2

mechanism to extract that information, make the comparison,3

then he also, I believe, on that tape has what could be4

considered as the tolerance information to tell you if that5

measurement related to its standard was correct or acceptable.6

Q So, was information stored on the magnetic tape?7

A I think that information I just described was stored on8

the tape, yes.9

Q But the image data or scanning data was not?10

A There was no image data that was stored on the tape in11

that 1954 disclosure.12

Q If you can, let's turn back down to the big picture chart13

that you identified for a minute?14

A All right. That would --15

THE COURT: Before you leave what you were doing,16

this was passed up to me, Defendant's Trial Exhibit 1124,17

which appears to be --18

MR. LISA: The July 19 --19

THE COURT: -- '874 -- This was passed up but not20

referenced. What --21

MR. LISA: If there was a need to do it, we were22

going to refer to it, Your Honor, I believe it's already been23

moved --24

THE COURT: I see. Okay. 25

HUNT - DIRECT 178

MR. LISA: -- into evidence.1


MR. LISA: I don't know if it's going to be referred3

to by opposing counsel or not, but --4

THE COURT: Okay. Okay. Just wanted to make sure. 5

Unlike 1932.6

MR. LISA: I'm just trying to shortcut some of this7

not to have to do --8

THE COURT: Go ahead. No, that's fine. 9

MR. LISA: All right. 10

THE COURT: I just didn't know whether there was 11

any --12


THE COURT: -- need to reference it.14

MR. LISA: If you can -- I mean, if it's not in15

evidence, we'd certainly request that the exhibit be moved16

into evidence.17

THE COURT: Well, it's part of the file wrapper --18

MR. LISA: It's --19

THE COURT: -- part of the prosecution history, I'm20

sorry.21

MR. LISA: It's been cited, and I believe, and22

presented in the big binders that have been sitting over on23

the floor several days ago with Dr. Williamson's --24

THE COURT: Right, but the parties --25

HUNT - DIRECT 179

MR. LISA: -- testimony.1

THE COURT: -- I think, we talked about this this2

morning, are in the process of making sure that they're3

complete sets, and then those -- the prosecution history would4

be received.5

MR. JENNER: Your Honor, I must note I don't believe6

that the '874 application is part of the prosecution history7

of the patents-in-suit.8

THE COURT: I see. All right. 9

MR. JENNER: It's part of a -- it relates to10

predecessor applications and we're listening to all this big11

picture, but the fact of the matter is the July application is12

not part of the prosecution history of the patents-in-suit as13

I understand it.14

MR. LISA: Well, Your Honor, I guess the lawyers can15

argue about that, but Your Honor saw three pages with nine16

different incorporations by reference to that application. So17

Mr. Jenner may --18

THE COURT: Well, I don't think Mr. Jenner said it19

wasn't referenced, I didn't --20

MR. JENNER: I agree it's referred to in the21

December 1954 application, that doesn't make it part of the22

prosecution history of the patents-in-suit.23

THE COURT: I see.24

MR. LISA: Sure makes it incorporated by reference,25

HUNT - DIRECT 180

but we can -- this is a legal argument.1

MR. JENNER: Well, now we're down to --2

THE COURT: All right. All right. 3

MR. JENNER: -- incorporations by reference. Now4

that we've got that out of the way, it's not part of the5

prosecution history --6

THE COURT: Okay. All right. 7

MR. JENNER: -- and I object to it.8

THE COURT: All right. Well, I'll let you all argue9

about that later then. I don't want to take the witness's10

time on that.11

We're at the big picture?12

MR. LISA: Maybe I can make a suggestion on that13

issue, Your Honor. To the extent Mr. Jenner believes it to be14

irrelevant, it's certainly a public record, and he can argue15

the relevance, but I don't --16

THE COURT: I don't think he said it was irrelevant,17

he just said it wasn't part of the prosecution history, as I18

understand it.19

MR. JENNER: Frankly, Your Honor, we do think it's20

irrelevant, but the argument was in response to the offer as21

part of the prosecution history, which is now, I think,22

conceded that it's not.23

THE COURT: All right. I'll let you argue about the24

relevance of it later, but go ahead.25

HUNT - DIRECT 181

BY MR. LISA: 1

Q If you turn back to the big picture chart that you have2

in Exhibit 2410?3

A Yes, I have that.4

Q All right. In between you identify Serial Number 626,2115

filed 12/2/56 as one of the original machine vision6

applications, correct?7

A That's correct. Yes.8

Q Okay. There are two other applications, Serial Number9

544,991 and 515,417 that you identified?10

A Yes.11

Q And you've given some characterization of what those12

applications relate to. Do you see that?13

A I see that.14

Q All right. Could you explain what you found in those15

applications that is relevant to the later filed 626,21116

machine vision application?17

A Yes. Those two applications were basically Mr.18

Lemelson's thinking and inventing on the topic of storing what19

you could call television signals or television images. In20

one case the one on the right, he was, I think, primarily21

concerned with storing a single frame, and in the one on the22

left, 991, he was concerned with being able to store and23

retrieve multiple frames or sequences of frames.24

Q And again, the December 1954 application did not store25

HUNT - DIRECT 182

any image data, correct?1

A That is correct. 2

Q And then in between the filing of the December 19543

application and the December 1956, the two original machine4

vision applications, these two other applications relating to5

image storage were filed by Mr. Lemelson?6


Q Have you prepared short summaries of those two8

applications for the Court?9

A I have, and we'll have to flip back again.10

Q All right. 11

MR. LISA: And Your Honor, I'll ask that we move12

ahead from the slide on 626,211, we'll come back to that in a13

moment, and there's a following slide that addresses both the14

515,417 and 544,991.15

THE COURT: I have it.16

BY MR. LISA: 17

Q Could you identify briefly for the Court, Dr. Hunt, what18

you're referring to there as being important in the disclosure19

of those two patents?20

A To me the importance of the disclosure there is what I've21

summarized as the second bullet. There are a number of22

descriptions in those two patents or those two applications,23

excuse me, which relate to image storage and retrieval. There24

is a description of recording on tape, disk and magnetic drum,25

HUNT - DIRECT 183

magnetic tape, magnetic disk, magnetic drum, I should say.1

There is also discussion of electronic storage tubes. 2

Those storage tubes are described in terms of a temporary3

image recording and by virtue of stopping and starting, so to4

speak, a rate conversion process as well.5

And then, finally, the last item that I would summarize6

out of this would be the knowledge of image frame storage and7

retrieval. He emphasizes and develops ideas for storing a8

single frame and retrieving it or storing multiple frames and9

retrieving them.10

Q Did either of these applications relate to image analysis11

or the actual machine vision type operations with the image?12

A There is no reference in those applications at all to13

that topic.14

Q If you will now turn back one page to the 626,211?15

A Yes.16

Q And the content of that application.17

MR. LISA: Your Honor, we've talked about that in18

length, so we'll just highlight a few points and move on from19

there.20

THE WITNESS: Yes. This is the Automatic21

Measurement Apparatus which that was the name of the22

application, and now we know that that was the primary source23

for what we call the common specification. And probably, very24

rapidly to move on, the bottom bullet is what I would point to25

HUNT - DIRECT 184

here because this incorporates -- this application1

incorporates by reference these early filed -- earlier filed2

applications which direct you to video storage, and here we3

now have the 551 -- excuse me -- the 515,417 and the 544,991. 4

And it's very clear that Mr. Lemelson was offering some of the5

ideas in those video storage and retrieval systems for part of6

his concepts in machine vision.7

BY MR. LISA: 8

Q Did -- just to clarify, did application Serial Numbers9

515,417 and 544,991 describe single frame storage?10

A Yes.11

Q And based on your review of the common specification,12

what type of storage, or what type of -- I'm sorry, strike13

that.14

Based on your review of the common specification, does15

Mr. Lemelson describe single frame storage?16

A Yes. he does.17

Q And do these two applications describe appropriate18

methods for storing single frame image data?19

A In my opinion, they do.20

Q Referring back to the big picture one more time.21

A Yes.22

Q Over on the left, you have Serial Number 577,415?23

A Correct. 24

Q Do you see that?25

HUNT - DIRECT 185

A I see that. Yes.1

Q And that has a relationship to the original December 19542

application? Is that right?3


Q Do you have a summary of what was described in Serial5

Number 577,415?6

A Yes. I think we have to back up two slides in front of7

the big picture page, and that is actually the head of two8

pages back, 577,415. And as indicated by the second bullet9

there, that the content of it is basically flexible10

manufacturing and automatic identification. 11

And the actual content of the descriptions to be found in12

that patent relate to automated storage and retrieval of13

objects and that is carried out by fixing identifiers to14

objects with optical markings that will have some code to15

describe the object identity, and then optically scanning16

those identifiers with photoelectric cells.17

Q I'm actually going to hand up to you, Dr. Hunt,18

Defendant's Exhibit 1102. 19

MR. LISA: Did the Court have a copy of that? This20

has already been entered, Your Honor, as an exhibit.21

MR. JENNER: You just gave us the patent, is that22

what you're talking about?23

BY MR. LISA: 24

Q Let me see if I can highlight an error that I just noted25

HUNT - DIRECT 186

here, Dr. Hunt. You say on the slide 577,415 that it issued1

at patent number 3,051,777; do you see that?2

A Yes.3

Q All right. In fact, I'd like you to turn to the first4

column of Defendant's Exhibit 1102?5

A Okay. I've done that.6

Q And you'll see that in the text underneath column 1 the7

Serial Number 577,415 is identified?8

A Correct. And yet I see also this has a patent number9

3,049,247.10

Q Well, I think you've got the wrong patent number down11

there, is that right?12

A Yes. Somewhere I apparently, from some document13

scattered on my desk, I picked up the wrong number. My14

apologies to the Court and to you, Mr. Lisa.15

Q All right. 16

MR. LISA: We'll go ahead and fix that -- fix that17

and replace it tomorrow morning, Your Honor.18


BY MR. LISA: 20

Q Is Exhibit 1102, Defendant's Exhibit 1102, in fact the21

patent that issued out of this third application, 577,415?22

A Yes. And you can determine that by actually checking the23

serial number which is indicated on column 1 as you just did24

in directing me to the error.25

HUNT - DIRECT 187

Q All right. Are there some points you wish to highlight1

about what's described in this patent?2

A Well, in fact, those are the items which I just ran3

through at the point of when you obviously detected the error4

and took off back there to find the source of the correct5

information --6

Q Right.7

A -- namely automated storage and retrieval, affixing8

identifiers to objects, and then optically scanning those9

identifiers.10

Q And if you refer to Figure 7 of Defendant's Exhibit 1102,11

could you just briefly describe for the Court where those12

features are shown?13

A I'm having trouble finding Figure 7 but --14

Q Third page of Exhibit 1102?15

A Oh, yes, I find it here now. On the third page, the16

bottom of the third sheet of the disclosure indicates Figure17

7, and basically what we see there is a conveyor belt. There18

is a box or a tool holder, something like that, moving along19

the conveyor belt. There is an identifier plate, I guess you20

could call it, or an identifier card of some kind affixed to21

the side of it, and we clearly see there some markings on that22

plate, and then finally we see a scanner, SC, which is23

observing those markings.24

Q Is it fair to describe that as a fixed photoelectric25

HUNT - DIRECT 188

cell?1

A It appears to be a fixed photoelectric cell. Certainly.2

Q And how is the scanning action carried out?3

A The scanning is carried out by the movement of this4

object on the conveyor belt as it passes this scanning5

station, the photoelectric cell.6

Q Dr. Hunt, as a result of your review of the various7

applications filed by Mr. Lemelson in the mid-1950s, did you8

form an opinion as to whether Mr. Lemelson had in mind and had9

concretely determined that you could conduct scanning10

operations by fixing a photoelectric cell and moving an object11

by it?12

A I think it's indisputable and here's a very fine13

illustration of it.14

Q And do you know whether the common specification15

describes photoelectric scanning by fixing a photocell and16

moving an object by it?17

A Yes, it does. In fact, I have a distinct recall of a18

statement that you may use a scanning process which moves the19

object or the photocell, one or the other.20

Q If the Court construes the claims to be limited to high21

bandwidth television as scanning, would it exclude the22

embodiments that conduct scanning operations by moving an23

object past a fixed photomultiplier tube or fixed photocell?24

A It would obviously exclude that embodiment.25

HUNT - DIRECT 189

Q Now, as a result of your review of these various1

applications that were filed in the mid-1950s, did you reach2

an understanding of the breadth or importance of the3

inventions that Mr. Lemelson made in the common specification?4

A I did.5

Q And did you prepare a summary for the Court of those6

opinions?7

A I did, and that is the very last page to this8

presentation, which is the page after the page labeled "The9

Big Picture."10

Q Could you please describe for the Court your opinion and11

the basis for it?12

A Yes. The last page is captioned "Pioneering nature of13

Lemelson machine vision inventions." I believe that these14

inventions are pioneering for three primary reasons, and I've15

set them forth here.16

First of all, I think they're pioneering because there is17

a very strong consistence of concept in which he has brought18

together different things, and the different things he's19

brought together which we've seen illustrated by the big20

picture and the individual items in the big picture, he's21

brought together manufacturing, production and warehousing,22

he's brought together computing and control, and he's brought23

together image scanning, storing, processing and analysis. 24

That's the first component of my reasons for believing they're25

HUNT - DIRECT 190

pioneering.1

Q Let me stop you there for just a moment. How do those2

various concepts relate to Dr. Williamson's definition of a3

person having ordinary skill in the art?4

A Well, literally, if you look at what Dr. Williamson set5

forth as the three arts, the skill required in three different6

arts taught by the patents, they map one to one on these7

individual items which we've seen by looking at the individual8

applications that have been given in the big picture and the9

supporting documentation.10

Q Now Mr. Lemelson was working in each of those areas?11

A That is correct. 12

Q Please continue.13

A The second reason I believe we have pioneering inventions14

is the next major bullet here, because I see computer image15

analysis in all of these which has been integrated into a16

unified framework, and that framework combines elements of17

identification, of measurement, of inspection and of18

placement.19

The third reason, to follow on, is that, and this is20

perhaps in some way relates back to the consistence of concept21

that started out in the first of my reasons, I find a great22

breadth of disclosures about computer image analysis. You23

have multiple scanning methods, we've talked about some of24

them, you have multiple recording and storage methods, and25

HUNT - DIRECT 191

we've talked about some of those, and you have, finally,1

multiple analysis methods, and there's been a lot of2

discussion prior to my testimony today about those multiple3

analysis methods.4

Those things brought together, that consistency of5

vision, the breadth of disclosure and the number of topics6

spanned, I believe, makes them pioneering.7

Q Let's move on and talk a little bit about flying spot8

scanners.9

A All right. 10

Q You had mentioned in your description of your background11

and qualifications that you had some work with flying spot12

scanners and had some an understanding of some of the history13

of flying spot scanners, is that right?14

A Yes, that's correct.15

Q Are you -- can you provide for the Court a summary or16

description of how some of the early flying spot scanners17

actually operated?18

A Yes, I can, and I have a couple of presentation items19

that relate to that.20

Q I'd ask that you take a look at Defendant's Trial Exhibit21

2407.22

MR. LISA: Your Honor, while we're at it, I would23

move into evidence, as a summary of Dr. Hunt's testimony,24

Defendant's Trial Exhibit 2410.25

HUNT - DIRECT 192

THE COURT: Any objection to 2410?1

MR. JENNER: I will maintain my objection, Your2

Honor, based on grounds of relevance, otherwise, no.3

THE COURT: All right. That objection will be4

overruled and I'll receive 2410.5


THE COURT: All right. The witness now has --7

MR. JENNER: Oh, also -- I'm sorry, Your Honor. 8

Also, subject to correction should error appear, and we 9

know --10

THE COURT: Absolutely.11

MR. JENNER: -- there's at least one acknowledged --12

THE COURT: Sure.13

MR. JENNER: -- correction to be made.14

THE COURT: Naturally.15

All right. 2407, the witness has that now.16

BY MR. LISA: 17

Q Yes. Could you explain, Dr. Hunt, what you have put18

together -- actually, let me back up.19

Could you first explain what 2407 is and what your role20

was with respect to it?21

A Certainly. This is a summary, about three pages, which22

indicates some of the historical roots of flying spot23

scanners, and I might indicate also that the historical roots24

were part of the experience that I gained in my years at Los25

HUNT - DIRECT 193

Alamos National Laboratory when I had to manage a1

specification for obtaining such a scanner, and that meant2

that I had to go out and study the topic area quite3

extensively.4

Q Did you prepare this exhibit?5

A I prepared this exhibit myself. Yes, sir.6

Q And did you gather the sources for it yourself?7

A Beg your pardon?8

Q Did you gather the sources for it yourself?9

A Yes, I did.10

Q All right. If you would, please, turn to the following11

several pages and highlight --12

MR. JENNER: Your Honor, before there's further13

testimony on this, I would ask if counsel can confirm that14

this is subject matter that's in the witness's expert report. 15

We don't have in mind that it is.16

MR. LISA: Your --17

THE COURT: I have no idea. Is it?18

MR. LISA: Your Honor, this witness -- this witness19

is testifying about support in the specification, and he's20

talking about infringements, and flying spot scanners are21

described in the specification, and the Symbol laser scanners22

have been called flying spot scanners, and I'm sure in about23

five minutes Your Honor will see the direct relevance of this24

testimony, and that's the exact purpose this witness has been25

HUNT - DIRECT 194

produced.1

THE COURT: Well, all but those portions that are in2

French. I don't think I'm going to --3

MR. JENNER: That may all be so as counsel says, but4

that still doesn't address the question of whether this is in5

the witness's expert report.6

THE COURT: Well, I take it from the response it's7

not.8

MR. JENNER: That's the way I took it.9

THE COURT: Right.10

MR. LISA: As to -- what do you mean by "it's not in11

the expert report"?12

MR. JENNER: We were asking if you could confirm13

that this is included within the witness's expert report.14

MR. LISA: This document?15

MR. JENNER: This subject matter, yes. The witness16

-- the subject matter of the Rosing [phonetic] patent, the17

material in French that follows on the next two pages, which I18

am wholly incompetent to translate. We just don't have in19

mind that this is part of the expert report.20

MR. LISA: The subject matter of the expert report21

clearly told the plaintiffs that this witness was going to22

talk about infringement, and talk about equivalence and talk23

about -- the witness was deposed at length on these issues and24

could have been asked these questions. They were produced and25

HUNT - DIRECT 195

provided to plaintiffs ahead of time as Your Honor has1

requested that we meet -- actually it was their request for2

the 24, 48 rule which we've met in this case with these3

documents, so, I think in fairness, the witness ought to be4

allowed to testify about it.5

MR. JENNER: I take that to be a no to my question,6

Your Honor --7

THE COURT: Right. 8

MR. JENNER: -- that this is not --9

MR. LISA: It's not a no.10

MR. JENNER: -- in the witness's expert report.11

THE COURT: Well --12

MR. LISA: It is not a no. This witness clearly13

stated he's going to testify about infringement and testify14

about support in the spec, and the term "flying spot scanners"15

is in the spec, there's been testimony from Dr. Hunt -- Horn16

as to what a flying spot scanner is, and Dr. Horn presented17

all sorts of stuff that we never saw in his expert report as18

to what flying spot scanners supposedly were or weren't. You19

saw a Nipkow [phonetic] disk, we saw a spinning article from20

the plaintiffs that popped up out of nowhere regarding certain21

types of shaft encoders. This is something that reasonably22

falls within the scope of these expert's testimony. 23

And I will note that paragraph 2 in Mr. -- there we24

go -- in Dr. Hunt's rebuttal expert report, he states on page25

HUNT - DIRECT 196

3 -- I'm sorry, page 4 that he talks about: "Likewise, many1

alternative embodiments disclosed in the specifications use2

video scanners other than high bandwidth television cameras,3

including, for example, flying spot scanners." 4

So, Dr. Hunt's got it in his expert report.5

MR. JENNER: Not this document, Your Honor. 6

Everything I hear tells me this was not disclosed.7

THE COURT: This -- this document obviously was not8

referred to. I'll let the witness testify about it subject to9

-- it hasn't been offered yet, but subject to any objection to10

it, but let's go ahead and move forward.11

MR. LISA: And I'm more than happy to --12

THE COURT: As I say, part of it's in -- part of it13

is in French, though, and it's not going to be of much use to14

any of us.15

MR. LISA: That very well may be, Your Honor, and16

I'm sure that the witness's testimony regarding operation of17

early flying spot scanners will be good enough for me, and I18

don't need the underlying documents moved into evidence and19

nor am I going to ask them to be moved into evidence.20

THE COURT: All right. All right. Well, go ahead21

and put the question to the witness then.22


BY MR. LISA: 24

Q Dr. Hunt, do you have an opinion as to how early flying25

HUNT - DIRECT 197

spot scanners operated?1

A Yes, I do.2

Q All right. Could you explain your understanding as to3

how early flying spot scanners operated?4

A Yes. There were two primary classes, those which had,5

for example, spinning disks, such as we've heard referred to6

previously in this Court, the Nipkow disk. There were also a7

whole class of flying spot scanners which used moving mirrors,8

and some of the very earliest flying spot scanner references9

that I first became aware of when I worked at Los Alamos10

National Laboratory were of the moving mirror variety.11

Q And do you have some examples of the moving mirror12

variety of flying spot scanners set forth in Exhibit 2407?13

A Yes, I do.14

Q Could you show them to the Court, please, and explain how15

they operate?16

A Yes. The first page after the title page is -- and it17

actually has to it a reference to a British patent, and some18

of the items which are available in that patent are showed in19

the box, the large box in the center of the page. But I want20

to draw attention particularly to the two drums which are seen21

in that.22

MR. JENNER: Your Honor, before the witness23

testifies, may I just maintain my objection without further24

objection --25

HUNT - DIRECT 198

THE COURT: Sure.1

MR. JENNER: -- to testimony regarding the2

documents?3

THE COURT: Absolutely. Go ahead.4

THE WITNESS: Okay. To go back, I would like to5

draw the Court's attention to the two drums which are seen in6

the portion of the right side of that illustration. You'll7

note those two drums rotate in two different axes. One drum8

is vertical and rotates about a vertical axis, the other drum9

is horizontal and rotates about a horizontal axis. Then you10

can note dotted lines which indicate the reflection of light11

off of the various surfaces of those drums.12

And now I think I should ask you to conceive of the13

following option. Suppose that I have light reflecting off14

one of the mirrors on that drum because each one of the little15

planer segments you see on the -- one of those drums is a16

mirror. And now as light reflects off of that mirror segment,17

a beam of light which is bouncing off of it is going to be18

moving in space.19

Combining two different rotations, a rotation in20

horizontal and a rotation in vertical, you can point a beam to21

any place in space and by the way you use the rotation of22

these drums synchronized to each other, you can make a regular23

raster scanning pattern, in which case a spot moves across24

some area in a back-and-forth, top-to-bottom action.25

HUNT - DIRECT 199

BY MR. LISA:1

Q If only one of the drums rotates, what type of scanning2

action takes place?3

A Well, let's take the case of the vertical drum which is4

indicated as number 2 in that frame. If that drum were5

rotating and the only one rotating, the result would be a beam6

of light that would be moving horizontally back and forth.7

Q And if the other drum was rotating and not the vertical8

one?9

A Then you would have a beam of light moving up and down.10

Q And the combined action of those two?11

A The combined action of those two means you scan a12

rectangular space back and forth, back and forth, top to13

bottom.14

Q And, in your opinion, were these types of scanners known15

to persons of ordinary skill in the art in the mid-1950s?16

A They certainly were.17

Q And what type of detectors were used by these types of18

photoelectric scanners?19

A The answer to that question is to look within the text20

which I've provided in the center of this panel, item 3. Item21

3 is identified as a photocell, a photoelectric detector, in22

other words.23

Q Now the second article that you've got referenced in24

French, why don't we just skip that one?25

HUNT - DIRECT 200

A Okay. 1

Q So that nobody --2

A I was going to try to translate it for you.3

Q Let me just ask you, are you fluent in French?4

A I'm not fluent, but I can read and speak the language.5

Q All right. 6

A It depends on your definition of fluency, I guess.7

Q And is this another mirror type of flying --8

MR. JENNER: Well, Your Honor, I respect the9

witness's skill in language and other credentials --10

THE COURT: No, no, let's move on to something --11

MR. JENNER: -- but not being a speaker of French --12

THE COURT: Let's move on to something besides 13

the --14


BY MR. LISA: 16

Q Looking at the figure in the next page?17

A Which page, the one past --18

Q The very next page past the first one in French.19

MR. JENNER: Same objection, Your Honor. This20

appears to me to be about as much in French as the first one21

was --22

MR. LISA: The figure is in English, Mr. --23

MR. JENNER: -- and I can't do this one either.24

MR. LISA: The figure is in English and the witness25

HUNT - DIRECT 201

can identify and explain the figure. This is common1

knowledge.2

MR. JENNER: But we can't -- we can't read the3

related material, Your Honor. This is a page that includes4

stuff in French, and I for one wish I'd --5

THE COURT: Yeah.6

MR. JENNER: -- taken French in school, but I7

didn't.8

THE COURT: No, it does. I'll sustain the objection9

to that. Let's move on.10

BY MR. LISA: 11

Q Dr. Hunt, were persons of ordinary skill in the art --12

I'm sorry, strike that.13

Do you have an opinion as to whether people of ordinary14

skill in the art in the mid-1950s knew to use columnated beams15

of light in flying spot scanners to scan either linear or16

raster patterns?17

A I am of opinion. Yes.18


A They were well aware of it.20

Q And what is the basis for your opinion?21

A My own personal experience, as well as disclosures such22

as these in the early references.23

Q And were flying -- were the types of scanners known as24

flying spot scanners, did they include columnated beams of25

HUNT - DIRECT 202

light that were scanned by mirrors?1

A Yes, they were.2

Q Based on your studies in this case, do you have some3

understanding as to what type of scanning action is performed4

by Symbol's laser scanners?5

A I do.6

Q What -- how is it conducted?7

A It is conducted by two different types of mirror actions,8

one, a dithering mirror, that is to say, a mirror which is9

tipping back and forth in some sense, it's actually a10

vibrating mylar membrane, but it's the same basic action, and11

the other kind of scanners which I've seen reference to and12

which I believe Mr. Putnam testified about, are rotary mirror13

drums, exactly the kind that we've been describing here.14

Q Were dithering mirrors and rotating mirrors well known15

forms of flying spot scanners in the mid-1950s?16

A Yes.17

Q And do you have an opinion as to whether the scanning18

action performed by the Symbol laser scanners using rotating19

and dithering mirrors is equivalent or identical to the20

scanning actions of those types of flying spot scanners you21

just described in the mid-1950s?22

MR. JENNER: I will object to this witness giving23

opinion testimony of this kind regarding bar code technology,24

particularly in the area of infringement. I don't think he's25

HUNT - DIRECT 203

qualified to do that.1

THE COURT: All right. Well, I will allow the2

witness to offer his opinion subject to a motion to strike his3

testimony after cross-examination, but at this point I'll4

receive it.5

MR. JENNER: Your Honor, there's also another issue,6

which I guess now gets surfaced. You may remember that there7

was a motion made and reserved early on before the case8

regarding whether or not the defendant should have the right9

to offer evidence on the doctrine of equivalence. And as I10

understand the question now being posed, it is predicated on11

whether or not something is equivalent. So I guess that issue12

is now raised front and center, and I guess we need a ruling13

on whether or not --14


MR. JENNER: -- that should be allowed.16

THE COURT: Is that, indeed, front and center?17

MR. LISA: I think it's great to have it front and18

center. Your Honor directed that the witness be produced for19

deposition, he was produced for an entire day, counsel elected20

to spend the whole day rehashing whether video is high21

bandwidth and whether prepositioning is required, and elected22

to ask only a few questions, if any, on equivalence. That's23

their choice, but the witness was made available for an entire24

day under your direction to testify on that issue, and they25

HUNT - DIRECT 204

elected not to cover it.1

MR. JENNER: Not on that issue, Your Honor, that's2

the whole point. He was made available to testify about his3

supplemental report on prosecution laches, and the Williamson4

material that he was taking over. There was a motion pending5

at the time that there not be entitled to be put on the6

doctrine of equivalence. Counsel's argument basically says7

every time that there is a defect in the disclosure that's8

been made, all you got to do is proffer the witness, and if --9

if the objection effectively is not waived by examining the10

witness, you've lost the motion.11

THE COURT: All right. Well, you haven't lost the12

motion. I will let the witness testify, again, subject to13

striking the testimony in that regard, and I will consider it14

on post-trial briefing. 15

Regarding the Exhibit 2407, I will allow its receipt16

at this point sans the two pages reference the --17

MR. JENNER: Your Honor, we need to ask what the18

last --19

THE COURT: -- the French --20

MR. JENNER: -- the last three pages of this, which21

are apparently references --22

THE COURT: Excerpts from the '029?23

MR. JENNER: Yeah. I'm not sure at this point what24

this has got to do with the witness's testimony on flying spot25

HUNT - DIRECT 205

scanners.1

THE COURT: I don't think he's gotten to that yet,2

I'm not sure, but --3

MR. LISA: I'm not sure what --4

MR. JENNER: So, we would ask Your Honor not to rule5

on admissibility as to this at this point.6


MR. LISA: I'm not -- I don't have that on my copy,8

so I don't know if those are pages --9

THE WITNESS: My copy has it. I think we have an10

error in forming documents and collating --11

THE COURT: I'll tell you what, we'll just let the12

witness's testimony come in and I'll sustain the objection at13

this point then to 2407. There are too many -- too many14

issues with it, so let's go ahead and move on. 15

I will let you get an answer to your last question,16

however. So, go ahead and restate your last question. 17

2407 will not be received then.18

MR. LISA: Your Honor, let me address one issue on19

equivalence. Obviously, one of the points that we had made20

when plaintiffs filed their motion is that the issue of21

equivalence was set forth clearly in Dr. Hunt's expert report.22

THE COURT: I understand you're at odds on this. 23

I'll allow you to examine the witness on it. I'd rather get24

his testimony in the record, and then I will parse out what25

HUNT - DIRECT 206

I'm going to consider, what I'm going to allow. You all will1

address it further in your post-trial briefing, and --2

BY MR. LISA: 3

Q With respect to your opinion, Dr. Hunt, that -- on4

equivalence that you just stated, can you describe the manner5

in which the equivalence takes place? In other words, how is6

it the scanning action is equivalent and why is the result the7

same?8

A I'm not sure I'd say equivalent, that I would say9

identical. You will recall the description I made of rotating10

drums? There are uses of such rotating drums in scanner11

equipment. You'll recall my concepts of dithering mirror. 12

There are such dithering mirrors, they are dithered by13

vibrating a membrane. I believe them to be identical.14

Q Is the difference between a laser and a columnated beam,15

does that result in any material difference in the operation16

of the system?17

A It does not, because to draw a difference there you'd18

have to be able to demonstrate that there is something so19

unique about a laser that could not be obtained by other forms20

of columnated light beams.21

Q Were columnated light beams known in the 1950s? 22

A Yes, they were.23

Q In that regard, did you undertake a study to review the24

state of the art of X-ray, radiation scanning and columnation25

HUNT - DIRECT 207

in the mid-1950s?1

A I did.2

Q And would you -- have you prepared a summary for the3

Court of your testimony or position on that issue?4

A I have.5

MR. JENNER: Your Honor, once again, I would ask6

counsel if he could enlighten us as to how this was disclosed7

in the expert reports? It may be, but we certainly don't have8

it in mind.9

MR. LISA: Your Honor, Dr. Williamson testified --10

I mean -- Dr. Williamson was -- strike that, I'll start over.11

This witness has taken over Dr. Williamson's role to12

discuss claim support. Plaintiffs have asserted that there13

are differences between the laser scanners and there were14

also, if you'll recall, testimony from Dr. Horn regarding15

claims that were amended to remove lasers and columnated beams16

were substituted for it, so the issue of support in the17

specification for columnated beams is an issue that we'd like18

to address and make sure Your Honor understands that those19

skilled in the art in the mid-1950s knew what columnated beams20

were and how to make them.21

MR. JENNER: Well, Your Honor, once again --22

MR. LISA: That's a support issue.23

MR. JENNER: -- I submit that I think I just heard a24

non-response. He's telling me that he's relying on material25

HUNT - DIRECT 208

transferred over from Dr. Williamson when the question that1

was just put was to a study done by this man, which I don't2

think has been disclosed to us. How are we supposed to cross-3

examine this expert witness on all these things that are4

coming up for the first time? I think counsel is5

acknowledging that the study done by Dr. Hunt has not been6

disclosed to us.7

MR. LISA: Your Honor?8

MR. JENNER: I don't know what it is.9


MR. LISA: Counsel is objecting to the fact that we11

had the courtesy of telegraphing to them in PowerPoints to12

make this examination efficient, the witness's testimony. I13

don't need to use a PowerPoint, I can ask this witness these14

questions and get the answers and we can all go back and read15

the record. But it seems to me that counsel ought to be happy16

that what they got was our telegraphing of exactly what this17

witness was going to say on the stand whereas -- instead of18

just having a witness sit up and espouse his opinions.19

Now this witness, it's been known to them since20

August that he was taking over for Dr. Williamson on claim21

support and it's in my view, you know, trying to make22

something out of nothing to take us having provided these23

types of PowerPoints to assist the examination as not24

providing the testimony. They had the opportunity to depose25

HUNT - DIRECT 209

him on these issues, now for two days.1

MR. JENNER: Well, now this is the same argument as2

we didn't ask him questions at a deposition on a motion to3

strike. We should have asked the questions and then the4

motion is gone. 5

I'm delighted to have received this pile of6

documents yesterday that kept me up all night, but the fact of7

the matter is if we didn't get the documents, I would be8

objecting to the testimony about a study we haven't seen for9

the same reason. It's not predicated on the document, it's10

predicated on nondisclosure. And the fact that it kept me up11

last night doesn't make a whole lot of difference or do me a12

whole lot of good either. I think it's objectionable. We13

haven't been given this information.14

THE COURT: All right. All right. Well, I'm going15

to overrule the objection, allow the witness to proceed with16

his testimony in this area as well. 17

Go ahead.18

BY MR. LISA: 19

Q Let's ask it this way, Dr. Hunt. Do you know whether Mr.20

Lemelson describes in the common specification the use of X-21

ray and other radiation scanning devices?22

A I do.23

Q All right. Does he, in fact, describe that in his24

specification?25

HUNT - DIRECT 210

A He does.1

Q And do you have an opinion as to whether X-ray and2

radiation scanning systems were known to people of ordinary3

skill in the art in the mid-1950s?4

A I have an opinion --5

Q And do you have an opinion --6

A -- and they were.7

Q Were they?8

A They were.9

Q All right. And if the Court construes the claims as10

limited to high bandwidth television, would that exclude these11

other forms of radiation scanning systems that are described12

in Mr. Lemelson's spec?13

A It would exclude them. There would be no other option.14

Q And have you provided charts to plaintiffs that show that15

the various -- that the -- that scanning and radiation16

scanning devices are supported in the specification?17

A I have.18

Q And have you included in those support charts, X-ray and19

other forms of radiation scanning systems?20

A I did. Yes.21

MR. LISA: Your Honor, I think I've just established22

that the witness has provided this information to plaintiffs.23

THE COURT: Well, go ahead, I'll let you proceed24

with your examination. I don't think there's a concession25

HUNT - DIRECT 211

that he has done so, but --1


BY MR. LISA: 3

Q Dr. Hunt, if you would, could you please describe your4

understanding of what an X-ray scanning system is?5

A Yes. An X-ray scanning system is a device which uses6

electromagnetic radiation in that portion of the7

electromagnetic spectrum which is usually described as being8

X-rays. And it is a scanning system which is able to derive9

information by projecting that X-ray energy in the form of a10

columnated beam through an object of interest.11

Q How do you columnate a X-ray beam?12

A It's pretty easy. I don't -- we had a simple13

presentation slide for that, I will describe it in simpler --14

Q Well, I think you're allowed to refer to it. If you15

would, refer to 2415 and to your third page as an example of16

how to --17

A Okay. I don't have it in front of me. I think it's18

being brought up now.19


A Okay. Before I proceed to talk about some simple X-ray21

scanners, Mr. Lisa, I think it's important that we understand22

the basis for those scanners which has to do with the first23

page after the title page of this paper presentation.24

Q All right. 25

HUNT - DIRECT 212

A And there I indicate some simple facts, that X-rays obey1

known laws of geometric optics. They are no different than2

light rays in that regard. And if individuals at various time3

are confused about the nature of X-rays and make statements4

that they can't be deflected in various ways, then they're5

overlooking the known facts about geometric optics with6

respect to X-rays.7

X-rays can be reflected from smooth surfaces. Now that's8

the basis of X-ray microscopes which have been created, and9

it's also the basis of the X-ray telescope which NASA has been10

flying for the past three years, called the Chandra X-ray11

Observatory.12

X-rays can also be columnated into narrow beams. It's a13

very simple geometry, as I'm going to show on a couple of14

slides, and, furthermore, other radiation sources have a lot15

of similar properties in geometrical optics. These facts were16

known to people who understood scanning systems.17

Q In the mid-1950s?18

A In the mid-'50s. Yes.19

Q All right. Could you turn the page to the next slide and20

tell me what you've got there?21

A Yes. That's an X-ray camera, a schematic of what you22

would call an X-ray camera. It's a very simple geometry, and23

in fact, it's based on the same geometry which often in simple24

-- all the elementary schools where they do science classes25

HUNT - DIRECT 213

and talk about photography, they'll take a box and put film in1

one end and poke a pinhole in the other. And you see a2

picture emerge on the film. Well, the reason it does that is3

exactly what I've tried to indicate here.4

On the left I have an object, that's the heavy black5

arrow, and there's X-ray source energy indicated, and there6

are rays, the little arrows indicate various beams of X-ray7

energy.8

Now this thing in the center is critical to the imaging9

process because for all those little beams that go out in10

different directions, we have an opaque plate such as lead,11

and that opaque plate has a very tiny aperture in it, a pin12

hole. Only the beams which are passing directly through that13

pin hole can emerge from the pin hole on the other side. And14

that results in the construction of an X-ray image. It's a15

very simple geometry and I've provided here a reference to one16

of the early disclosures of this, 1948. 17

And by the way, they were actually disclosing that it was18

already known prior to that time, and I could not back up to19

the reference beyond that.20

Q So X-ray cameras were known to those skilled in the art21

in the mid-1950s?22

A Yes, they were. And, in fact, by the time I was working23

at Los Alamos, such cameras were in operation and I've worked24

with them.25

HUNT - DIRECT 214

Q Turning to the next page, can you describe what you have1

there?2

A Yes. This is an example of the basic geometry that goes3

into making an X-ray telescope, another facet about X-ray4

optics which is important for understanding that they5

basically behave very much like the optics of visible light. 6

This shows how you take a couple of plates and you bend them7

in a certain curve and reflect X-ray energy off them into a8

focus in order to make an image. And that's the basis of the9

X-ray telescope that NASA is now flying, the Chandra X-ray10

Observatory. The same physics reference that I indicated here11

also applies.12

Q Now do you have an understanding as to whether Mr.13

Lemelson described in the common specification substituting an14

X-ray camera or scanner for the scanners shown?15

A Yes, I do.16

Q Does he describe that?17

A He makes such a description.18

Q Do you consider such a description to be a throw-away19

description that would convey nothing to people of ordinary20

skill in the art in the mid-1950s?21

A If an individual had skill in scanning systems, I believe22

he would not consider that a throw-away reference.23

Q Were the types of X-ray scanners or cameras that you just24

described well known to people of ordinary skill in the art in25

HUNT - DIRECT 215

the mid-1950s?1

A That's my opinion. Yes.2

Q And if the Court construes the claims to be limited to3

only high bandwidth television scanning, would it exclude the4

embodiment described by Mr. Lemelson that uses X-ray scanners?5

A It would exclude it.6

Q Thank you. Do you have an opinion as to whether persons7

of ordinary skill in the art in the mid-1950s had knowledge of8

how to columnate radiation?9

A Yes, I do have an opinion.10


A My opinion is expressed in the very simple graphic slide12

which is next in this presentation.13

Q All right. Could you describe what you have there?14

A Yes. It's called "Columnation of radiation." On the15

left side of the slide I have identified a radiation source. 16

It could be an X-ray source, it might be an isotope emitting17

neutrons or whatever. 18

At any rate, I've shown here what you can conceive19

of as a large block of lead, for example, with a very tiny20

tunnel going through that block of lead. And you look at all21

the various rays of radiation which are emanating from my22

source, only those which are parallel to the tunnel are not23

blocked by the lead and emerge from the other end of the24

tunnel as a columnated beam of radiation. It's a simple25

HUNT - DIRECT 216

geometry.1

And furthermore, you can use that to columnate any type2

of radiation. You can columnate light that way, you can3

columnate X-rays, neutrons, gamma rays, and so on, and that4

was well understood early in the twentieth century.5

Q You can skip the next slide, we've already talked about6

that in your testimony. You do have, though, on the last7

slide a heading "Further on columnation of lights."8

A Correct. 9

Q Could you --10

A If you wish to talk about columnating light, there have11

been a number of things that were known about columnating12

light well before the discovery of the laser.13

Q Could you describe what was known before the discovery of14

the laser?15

A Certainly. It's been emphasized, I think, in previous16

testimony that a laser was essential for certain things17

because they provide a coherent monochromatic beam. People18

have known how to make monochromatic light for a long time,19

and they've known how to make it approximately coherent for a20

long time, and you bring the two together and you can have a21

very finely columnated beam as a result. And that's what I've22

described here, the common optical sources and methods used23

for that.24

For example, you take a mercury arc light. And mercury25

HUNT - DIRECT 217

arcs are well know to us, we can see a mercury arc coming out1

of the top of the Luxor pyramid, I expect, down the Strip from2

us. I suspect it's a mercury arc 'cause they're usually large3

scale projection light sources. 4

You take a mercury arc light operating at medium5

pressure, you get a very monochromatic light source. You then6

observe that mercury arc through a very tiny aperture, a7

pinhole again, and what comes out is just a very small part of8

the overall arc radiation such that it's approximately9

coherent. You can now columnate this as well as you desire.10

Q Would a person of ordinary skill in the art in the mid-11

1950s know how to use a columnated light source, for example,12

in the Figure 99 embodiment of the 1954 -- December 195413

application?14

A Certainly would, and it would not have had to be a15

mercury arc source, I might indicate as well. If I chose to16

use a large incandescent filament, again I could observe that17

filament through a very small pinhole and have a nice point18

source for columnation.19

MR. LISA: Your Honor, we request that Exhibit 241520

be moved into evidence.21

THE COURT: All right. Subject to the earlier22

objections that were advanced by Mr. Jenner, and subsequently23

striking it if that becomes necessary in terms of striking the24

witness's testimony, I'll receive 2415.25

HUNT - DIRECT 218


BY MR. LISA: 2

Q Dr. Hunt, did you undertake at our request a study to3

review the various types of cameras and scanning devices that4

were described in the 1954 application and the 19 -- and the5

common specification?6

A Yes, I did.7

Q And I'm refer -- have you -- I'm sorry, strike that.8

I'm handing you Defendant's Trial Exhibit 2264. Have you9

seen that before?10

A Yes, I've seen that.11

Q And you can describe -- can you please describe -- are12

you familiar with the document?13

A Yes, I'm familiar with it.14

Q Could you describe what it is, please?15

A Yes. What this is is with respect to the sources16

indicated, the '029 patent and the serial 477,467, this is,17

with respect to individual types of scanners or scanning18

methods, a compilation of places in those two -- those two19

document sources where these citations can be found. And20

there are a total of -- to the second page, 29 such citations,21

and I don't have an exact count of how many individual column22

and row numbers in those sources have been cited, but it's23

probably 50 or 60, something like that.24

Q Did Mr. Lemelson use the term -- I noticed that one of25

HUNT - DIRECT 219

the terms you have on the top of the second page, 21, is1

"Photoelectric scanners"; do you see that?2

A Yes, I see that term.3

Q Is that referenced in both the 19 -- in the common4

specification and in the 1954 application?5

A Yes, it is, and you can tell that by the citations to6

column and line numbers in the '54 -- excuse me, in the '567

application as well as individual page and line numbers of the8

application Serial Number 477,467.9

Q Did you know or notice in your review of the other10

applications that you identified in the big picture whether or11

not the term "photoelectric scanning" appeared elsewhere in12

other applications?13

A I have no recollection of it occurring there --14

Q Okay. 15

A -- in other applications.16

Q Now if you go back and look at the July 1954 application17

of production warehousing, do you recall whether --18

A Oh, my error, Mr. Lisa.19

MR. JENNER: Objection. Leading.20

THE COURT: Sustained as to the last question, it21

was leading.22

BY MR. LISA: 23

Q Did you review the July 1954 application of Mr.24

Lemelson's?25

HUNT - DIRECT 220

A Yes, I did.1

Q What, if any, disclosure is described there regarding2

photoelectric scanning?3

A Well, as indicated in the other document as well as my4

testimony about pioneering patents, there was in that document5

disclosures of using reflective marks and photoelectric6

scanning of those reflective marks in order to make7

identification of objects.8

Q Is a photoelectric scanner using such a light source and9

detector a high bandwidth scanning system?10

A It is not.11

Q Do you recall that Dr. Horn testified that one of the12

things Mr. Lemelson described in his specification that wasn't13

available or wouldn't work was an X-ray scanner? Do you14

recall that?15

A I recall that. Yes.16

Q Do you have an opinion as to whether Dr. Horn was correct17

in concluding that X-ray scanners were not available and did18

not work in the period of the mid-1950s?19

A I have opinion.20


A I believe that such scanners were available to the person22

of skill in that period.23

Q And did you explain the basis for your opinion earlier?24

A I did not cover it earlier. I think you skipped a slide25

HUNT - DIRECT 221

on it earlier where I actually looked at how you could1

construct such an X-ray scanner.2

Q Well, let's return, then, to Exhibit 2415, and if I3

skipped that slide, why don't we go to it and make sure we get4

that testimony in the record?5

A The slide is captioned "Flying spot scanning with6

radiation," and what it shows, over on the left, there's a box7

with a hole in the box, that's a radiation source and a8

columnator, for example, an X-ray tube and then a columnating9

passage in that. 10

What emerges from that is a columnated beam of X-ray11

radiation. That columnated beam proceeds through to an12

object. It passes through the object, then on the other side13

of the object is a fluorescent crystal with a photoelectric14

cell. And what happens is is that the fluorescent crystal15

glows with light upon the impact of the X-ray radiation, and16

then a photoelectric cell actually picks up that visible light17

from the fluorescence process.18

Now we have a scanner constructed by two different19

scanning mechanisms. There are two cases, case 1 and case 2. 20

In case 1, you move the beam past a stationary object, which21

means you would have the source and the columnator on some22

kind of a crane or gantry, and simply move it back and forth23

in front of the object, left to right, top to bottom.24

The other option is you keep the beam stationary and move25

HUNT - DIRECT 222

the object. And that means the object is moved in some kind1

of a left-to-right, top-to-bottom fashion.2

Now what I think is significant is the type of motion3

which is described here is exactly as would be found in the4

Lemelson patents with respect to the line -- excuse me -- the5

column and line numbers that I've indicated at the bottom of6

this box in this slide.7

Q Now the first reference, DTX 164, that's the common8

specification?9

A That's correct. That's the so-called common or '02910

specification.11

Q And for the record, you cite to column 4, line 67, column12

5, line 2?13

A That's correct. 14

Q And the cite below, what is that to?15

A The cite below to that comes from the 1954 application,16

Serial Number 477,467. You still -- you also see the same17

mechanism with respect to Figure 99, which we just saw on that18

animation as well.19

Q So, again, then, Dr. Hunt, do you have an opinion as to20

whether a person of ordinary skill in the art in the mid-1950s21

would have known how to operate an X-ray scanning system in22

the context of Mr. Lemelson's inventions?23

A I have an opinion.24


HUNT - DIRECT 223

A It's clear that they would be able to do such.1

Q Thank you.2

THE COURT: All right, counsel, this would probably3

be a good time rather than shifting to a new subject right4

now, it's -- we're right up on 4:00 o'clock, so we'll break5

'til tomorrow morning at 8:30.6

What were the -- what were you going to go into7

next? What subject area were you going into next?8

MR. LISA: Going to go to claim support.9

THE COURT: Claim support? All right. And do you10

have another one of those charts that is not -- they've all11

been produced, I take it?12

MR. LISA: Yes, they have.13

THE COURT: Okay. All right. Then we'll see14

everybody tomorrow morning at 8:30 then.15

(Court recessed at 4:00 p.m. until Tuesday,16

January 14, 2003, at 8:30 a.m.)17

* * * * * * * * * *18

19

20

21

22

23

24

25

224

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

None

DEFENDANT'S WITNESSES:

John WitherspoonDirect examination (Continued) by Mr. Hosier 3Cross-Examination by Mr. Herman 68Redirect Examination by Mr. Hosier 112Recross Examination by Mr. Herman 118

BOBBY RAY HUNTDirect Examination by Mr. Lisa 124

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

3671 Compilation of patent information, including 48Lemelson patents

DEFENDANT'S EXHIBIT NO.

1180 641180A 641797 642204/2205 Excerpts from "Patent Practice" 412209 Excerpts from "Patent Applications Handbook" 422216 642217 Compilation of patent information 482274 Witherspoon CV 32321 Excerpts from publication from Federal 46

Judicial Center2410 1922415 2182425A Animation 1682425B Animation 168

226

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