`
`
`)
`
`)
`HOYT A. FLEMING,
`)
`
`)
`
`)
`v.
`
`)
`
`ESCORT INC. and BELTRONICS USA, INC. )
`
`)
`
`)
`)
`)
`
`
`
`
`
`Plaintiff,
`
`Defendants.
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF IDAHO
`
`
`
`
`
`Case No. 1:09-cv-00105-BLW
`
`
`ATTORNEYS EYES ONLY
`
`
`
`SUPPLEMENTAL REBUTTAL EXPERT REPORT OF
`CHRIS GREGORY BARTONE, Ph.D., P.E.
`
`
`
`
`
`
`
`
`
`
`
`Escort Ex. 2040, pg. 1
`
`

`

`I.
`
`
`
`INTRODUCTION
`
`1.
`
`I have been retained by Park, Vaughan, Fleming & Dowler LLP, counsel for
`
`plaintiff, Hoyt A. Fleming (hereinafter referred to as “plaintiff” or “Fleming”), to render
`
`opinions with respect to the following U.S. Patent Numbers and claims (collectively, the
`
`“patents-in-suit”):
`
`Patent
`
`RE39,038
`
`RE40,653
`
`
`
`2.
`
`Asserted Claims
`
`1, 3, 5-8, 11, 13, 18, 23, 25-28, 45-48
`
`22, 24, 26, 30-33, 38, 41-42, 45-46, 48-50
`
`Specifically, I was asked to respond to the invalidity and non-infringement
`
`arguments made in the expert report of John R. Grindon, D.Sc.
`
`3.
`
`This is the report of my response, which I am told I am required to prepare
`
`pursuant to Rule 26(a)(2) of the Federal Rules of Civil Procedure and the Court’s scheduling
`
`order.
`
`II.
`
`
`
`
`
`STATEMENT OF OPINIONS AND
`THE BASIS AND REASONS THEREFOR
`
`4.
`
`It is my opinion that Dr. Grindon has not shown any of the asserted claims in any
`
`of the patents-in-suit to be invalid or unenforceable for any reason.
`
`5.
`
`It is also my opinion that Dr. Grindon has not shown that any of the asserted
`
`claims in any of the patents-in-suit are not infringed by Escort’s Passport 9500i, Escort’s
`
`Passport 9500ix, Escort’s Passport iQ, and Beltronics’ GX65 (collectively the “accused
`
`products”).
`
`6.
`
`I expect to testify concerning the process I undertook in arriving at the opinions
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`2
`
`
`
`Escort Ex. 2040, pg. 2
`
`

`

`expressed herein.
`
`7.
`
`I understand
`
`that
`
`the first step
`
`in performing a validity/invalidity or
`
`infringement/non-infringement analysis is to determine the meaning of the asserted patent
`
`claims from the perspective of the person of ordinary skill in the art at the time of the
`
`invention without reference to any accused devices or methods.1
`
`8. My opening expert report explains the claim constructions that I have applied in
`
`my analysis. I hereby incorporate the entirety of my opening report.
`
`Presumption of Validity
`
`9.
`
`I understand that, under 35 U.S.C. §282, a patent is to be presumed valid. As
`
`such, I am informed that clear and convincing proof is required to invalidate a patent.
`
`Validity (Indefiniteness)
`
`10.
`
`I understand that, under 35 U.S.C. §112 ¶2, a patent specification must conclude
`
`with one or more claims particularly pointing out and distinctly claiming the subject matter
`
`that the applicant regards as his invention. Claims are indefinite if they do not reasonably
`
`apprise those skilled in the relevant art of the applicant’s intended scope of the invention when
`
`read in light of the specification. Claims that reasonably apprise those skilled in the art are,
`
`therefore, definite.
`
`Validity (Written Description and Enablement)
`
`11.
`
`I understand that the written description of a patent (or patent application as the
`
`case may be) under 35 U.S.C. §112 ¶1 must convey clearly to those skilled in the art, that, as
`
`1 I understand that during the prosecution of the patents in suit that the Patent Office has
`described a person of ordinary skill in the art as “a person with a degree in electrical
`engineering with several years of practical experience in the design and/or testing of radar
`detector systems.”
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`3
`
`
`
`Escort Ex. 2040, pg. 3
`
`

`

`of the filing date sought, the applicant was in possession of the invention claimed.
`
`
`
`12.
`
`I further understand that a claimed invention is not enabled under 35 U.S.C. §112
`
`¶1 if the patent specification does not teach those of ordinary skill in the art how to make and
`
`use the invention as broadly as it is claimed, without undue experimentation. I have been
`
`advised that the assessment of undue experimentation is based on the level of skill in the art as
`
`of the effective filing date of the application on which the patent-in-suit claims priority. Thus,
`
`a specification enables a claimed invention when it does in fact teach those of ordinary skill in
`
`the art how to make and use the invention as broadly as it is claimed, without undue
`
`experimentation.
`
`Validity (Anticipation)
`
`13.
`
`I understand that the first step in determining either validity or infringement is to
`
`properly construe the claims. I also understand that the claims must be construed the same
`
`way in determining validity/invalidity and infringement/non-infringement.
`
`14.
`
`It is my understanding that, for a finding of invalidity of a patent under 35 U.S.C.
`
`§102, i.e., anticipation, each and every element of a claim, as properly construed, must be
`
`found either explicitly or inherently in a single prior art reference. Under the principles of
`
`inherency, if the prior art necessarily functions in accordance with, or includes the claimed
`
`limitations, it anticipates. However, if the prior art could function without the claimed
`
`limitations, then the claimed limitations are not inherent.
`
`15.
`
`I understand that a patent claim is invalid under 35 U.S.C. §102 (a) if the claimed
`
`invention was known or used by others in the U.S., or was patented or published anywhere,
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`4
`
`
`
`Escort Ex. 2040, pg. 4
`
`

`

`before the applicant's invention. I further understand that a claim is invalid under 35 U.S.C.
`
`§102 (b) if the invention was patented or published anywhere, or was in public use, on sale, or
`
`offered for sale in this country, more than one year prior to the filing date of the patent
`
`application. A claim is invalid, as I understand, under 35 U.S.C. §102 (e), if an invention
`
`described by that claim was described in a U.S. patent granted on an application for a patent
`
`by another that was filed in the U.S. before the date of invention for such a claim.
`
`16.
`
`It is also my understanding that a claim is invalid under 35 U.S.C. §102 (g)(2) if,
`
`prior to the date of invention for the claim, the invention was made in the U.S. by another who
`
`had not abandoned, suppressed or concealed the invention.
`
`17.
`
`In this case, I understand that Dr. Grindon contends that Mr. Orr made certain of
`
`the claimed Fleming inventions in April-May 1996. I am informed that, from a legal
`
`standpoint, this means that Dr. Grindon believes that Mr. Orr conceived and reduced the
`
`subject matter of those claims to practice prior to Mr. Fleming. Indeed, while I note that Dr.
`
`Grindon says nothing about Mr. Orr’s conception, he argues that Mr. Orr “reduced to practice
`
`certain inventions in and about April and May 1996.” (Grindon Report, pg. 6.)
`
`18.
`
`In order to prove a “prior invention” in these circumstances, I am informed that
`
`defendants must prove by clear and convincing evidence that Mr. Orr conceived and reduced
`
`to practice the challenged patent claims in April or May 1996. Given that Dr. Grindon has
`
`said nothing about conception, I will assume that it is Dr. Grindon’s contention that
`
`conception also allegedly occurred in April or May 1996. If the Court allows Dr. Grindon (or
`
`anyone else) to testify otherwise, I reserve the right to consider and opine on that contention at
`
`that time.
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`5
`
`
`
`Escort Ex. 2040, pg. 5
`
`

`

`19.
`
`I am informed that conception in these circumstances requires: A showing, by
`
`clear and convincing evidence, that in April or May 1996 Mr. Orr had formed in his mind a
`
`definite and permanent idea of the complete and operative invention as set forth by each of the
`
`challenged patent claims, as they were to thereafter to be applied in practice. Moreover, Mr.
`
`Orr’s idea must have be so clearly defined in his mind that only ordinary skill would be
`
`necessary to reduce each of the challenged claims to practice, without undue experimentation.
`
`20.
`
`Implicit (if not explicit) in this is that every claim element, in the arrangement and
`
`combinations set forth, in each challenged patent claim must have been conceived in April or
`
`May 1996. Likewise, since the only witness Dr. Grindon has identified is the alleged prior
`
`inventor, Mr. Orr, his (Mr. Orr’s) testimony must be corroborated by independent evidence. I
`
`am informed that such independent evidence is testimony or documents from someone other
`
`than the inventor, his friends, or other interested persons. I am also informed that
`
`corroborating evidence must be contemporaneous with the alleged conception and exist in
`
`such detail that it would enable one skilled in the art to make the invention, i.e., the subject
`
`matter of each of the challenged claims.
`
`21.
`
`I am informed that an actual reduction to practice requires clear and convincing
`
`proof that: (1) the claimed device—i.e., a device including every claim element, in the
`
`arrangement and combinations set forth, of each challenged claim—was built (or the claimed
`
`process was preformed); (2) as built, the device was actually tested; (3) the testing
`
`demonstrated that the device operated for its intended purpose; and (4) the timing regarding
`
`when each of elements 1-3 took place. Since the only witness Dr. Grindon has identified is
`
`the alleged prior inventor, Mr. Orr, his (Mr. Orr’s) testimony regarding each of elements 1-4
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`6
`
`
`
`Escort Ex. 2040, pg. 6
`
`

`

`must be corroborated by independent evidence. I am informed that independent evidence is
`
`testimony or documents from someone other than the inventor, his friends, or other interested
`
`persons. I am also informed that corroborating evidence must be contemporaneous with the
`
`alleged actual reduction to practice.
`
`22.
`
`I am informed that an alleged prior inventor must also show by clear and
`
`convincing evidence that his alleged prior invention was not abandoned, suppressed, or
`
`concealed. I understand that a prior invention will be deemed suppressed or concealed within
`
`the meaning of 35 U.S.C. § 102(g) if, within a reasonable time after it is reduced to practice,
`
`no steps are taken to make the invention publicly known, which can include the filing of a
`
`patent application.
`
`23.
`
`I understand the Dr. Grindon has opined that certain claims in the patents-in-suit
`
`are invalid because they are anticipated by certain references. My rebuttal to those
`
`contentions are contained in Appendices to this report as follows:
`
`Appendix A – Orr’s Alleged Prior Invention
`
`Appendix B – Murakami (Japanese Patent Application Publication H9-27096)
`
`Appendix C – Martin (U.S. Patent 6,384,776)2
`
`Appendix D – Silverman (U.S. Patent 6,201,493)3
`
`Appendix E – Hoffberg (U.S. Patent 6,252,544)
`
`Appendix F – Ross (U.S. Patent 5,977,844)
`
`2 I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
`
` 3
`
` I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`7
`
`
`
`Escort Ex. 2040, pg. 7
`
`

`

`Appendix G – Rayner (U.S. Patent 6,449,540)4
`
`Invalidity (Obviousness)
`
`24. Although Dr. Grindon offers obviousness opinions that are conclusory statements,
`
`without any clear and precise explanation of a motivation to combine, and does not address,
`
`nor give any weight to, secondary considerations of non-obviousness, I set forth my
`
`understanding of non-obviousness here, in the event I am called upon to testify regarding
`
`obviousness.
`
`25.
`
`I understand that a claimed invention is unpatentable under 35 U.S.C. §103 if the
`
`differences between the invention and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which the subject matter pertains. Obviousness, as I understand it, is based on the
`
`scope and content of the prior art, the differences between the prior art and the claim, the level
`
`of ordinary skill in the art, and any objective evidence of non-obviousness, which is also
`
`referred to as "secondary considerations of non-obviousness."
`
`26. Objective evidence of non-obviousness may include, for example:
`
`(a) Long felt but unmet need in the prior art that was satisfied by the invention;
`
`(b) Failure of others to achieve the results of the invention;
`
`(c) Commercial success of the invention;
`
`(d) Copying of the invention by others in the field;
`
`(e) Whether the invention was contrary to the accepted wisdom of the prior art;
`
`
`4 I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`8
`
`
`
`Escort Ex. 2040, pg. 8
`
`

`

`(f) Expression of disbelief or skepticism by those skilled in the art upon learning of the
`
`invention;
`
`(g) Unexpected results;
`
`(h) Praise of the invention by others skilled in the art; and
`
`(i) Taking of licenses under the patent by others.
`
`27.
`
`I also understand that there must be a nexus between any such secondary indicia
`
`of non-obviousness and the invention. In forming my opinions as to non-obviousness, I have
`
`considered the above secondary indicia.
`
`28.
`
`I also understand that mere conclusory statements cannot sustain an obviousness
`
`opinion; instead, there must be some articulated reasoning with some rational underpinning to
`
`support the legal conclusion of obviousness. As I understand, it may be necessary to assess,
`
`among other things, the interrelated teachings of patents as well as the background knowledge
`
`of the ordinarily skilled person in order to determine an apparent reason to combine known
`
`elements as claimed. Further, I understand that it can be important to identify a reason that
`
`would have prompted a person of ordinary skill in the relevant field to combine the elements
`
`in the way the claimed new invention does.
`
`29.
`
`It is further my understanding that it is impermissible to simply engage in
`
`hindsight reconstruction of the claimed invention, using the applicant's invention as a template
`
`and selecting elements from the references to fill the gaps. I am informed that a fact finder
`
`should be aware, of course, of the distortion caused by hindsight bias and must be cautious of
`
`arguments reliant upon hindsight reasoning.
`
`30.
`
`I understand the Dr. Grindon has opined that certain claims in the patents-in-suit
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`9
`
`
`
`Escort Ex. 2040, pg. 9
`
`

`

`are invalid because they are obvious in view of certain combinations of references. My
`
`rebuttal to those contentions are contained in Appendices to this report as follows:
`
`Appendix H – Orr’s Alleged Prior Invention/Murakami/Hoffberg
`
`Appendix I – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Henderson
`
`Appendix J – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Lang5
`
`Appendix K – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Ross
`
`Appendix L – Orr’s Alleged Prior Invention/Hoffberg—Orr (U.S. Patent 5,668,554)
`
`Appendix M – Orr’s Alleged Prior Invention/Hoffberg—Orr (U.S. Patent 5,305,007)
`
`Appendix N – Orr’s Alleged Prior Invention/Hoffberg—Valentine (U.S. Patent
`
`5,146,226)
`
`Appendix O – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Rayner6
`
`Appendix P – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Orr (U.S. Patent
`
`5,668,554)
`
`Dr. Grindon’s Additional Opinions Relating
`Unenforceability
`
`
`to
`
`Invalidity
`
`and
`
`31. Paragraph 1139 in Dr. Grindon’s invalidity report makes statements to the effect
`
`that “[i]t is my opinion that there is substantial overlap between Claims 1-21 of the ‘798
`
`patent and the claims of the ‘038 patent, and the claims of the ‘653 patent. This includes
`
`Claims 22, 36, 37, 38, 49, 50 of the ‘653 patent. By way of example, the limitations of
`
`5 I understand that the Court struck the Lang reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on this combination at this time.
`
` 6
`
` I understand that the Court struck the Rayner reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on this combination at this time.
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`10
`
`
`
`Escort Ex. 2040, pg. 10
`
`

`

`Claims 1, 8-9, 12-13, and 18 of the ‘798 patent substantially overlap, including with Claim 22
`
`of the ‘653 patent.” I do not know what Dr. Grindon means by “overlap”, much less
`
`“substantial overlap”, and he does not explain himself. If Dr. Grindon is allowed to testify
`
`about this topic, then I reserve the right to listen to his testimony and respond accordingly.
`
`32. Paragraph 1140 in Dr. Grindon’s invalidity report makes statements to the effect
`
`that “it is my opinion that Orr’s Prior Invention, Mr. Orr’s declarations and the materials
`
`supporting those declarations, and the ‘881 application and its prosecution history, disclose
`
`material information that was not already before the USPTO through the prior art that was
`
`cited to the USPTO during prosecution of the ‘798 patent, the ‘038 patent, and the ‘653
`
`patent.” It is difficult to respond to this for many reasons. Dr. Grindon never identifies what
`
`it is about “Orr’s Prior Invention” that was not disclosed to the USPTO.
`
`33. Moreover, Dr. Grindon never explains why Mr. Orr’s declarations should have
`
`been disclosed when they obviously are not prior art (they are dated many years after the
`
`patents-in-suit were filed). Likewise, the ‘881 application is not prior art to the patents-in-suit
`
`since it was filed later. Dr. Grindon also fails to explain how or why any of these supposedly
`
`undisclosed materials are not cumulative to what was already before the USPTO during
`
`prosecution of the patents-in-suit. I am informed that information is only material if it is not
`
`cumulative. Thus, Dr. Grindon appears to have failed in his burden of demonstrating
`
`“materiality”. If Dr. Grindon is permitted to supplement his opinion, I reserve the right to
`
`comment on that supplement as well as explain why the purportedly undisclosed information
`
`is cumulative to what was disclosed to the USPTO.
`
`34. Paragraph 1154 in Dr. Grindon’s invalidity report argues that “[t]he ‘798 patent
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`11
`
`
`
`Escort Ex. 2040, pg. 11
`
`

`

`does not adequately enable or disclose how one of ordinary skill in the art would determine
`
`moving direction, or utilize moving direction for example for purposes of providing a display
`
`to the user, as required by claim 24 of the ‘653 patent. In addition, it is my opinion that the
`
`‘798 patent does not adequately enable or disclose how one of ordinary skill in the art would
`
`receive or store information received from a button, as required by claims 25-26, 30-33, 41-
`
`42, 45-46, and 48 of the ‘653 patent.” I disagree. I also note that the USTPO disagrees. Each
`
`time Fleming sought a reissue patent, he was required to point out to the USPTO exactly
`
`where in his patent specification each of the reissue claims was supported (for enablement and
`
`written description purposes). He did that, and the USPTO agreed that all of the reissue
`
`claims were supported. I incorporate that portion of the prosecution histories, and I concur
`
`with the USPTO for the same reasons.
`
`35. Paragraph 1159 in Dr. Grindon’s invalidity report argues that claim 18 in the ‘038
`
`patent is indefinite. As an initial matter, I note that this is an issue of claim construction that
`
`neither the defendants nor Dr. Grindon raised during the claim construction hearing for this
`
`case. Thus, I will testify about this issue unless the Court concludes that it has been waived.
`
`From a substantive standpoint, I do not follow Dr. Grindon’s logic. I find claim 18 to be quite
`
`clear and understandable, and I intend to testify to that effect. I also believe that this
`
`limitation would have been clear to one of ordinary skill in the art in the late 1990s.
`
`36. More specifically, in paragraph 1159 of his report, Dr. Grindon argues that the
`
`limitation “a global positioning system receiver coupled to the microprocessor and operable to
`
`provide the microprocessor with data that indicates the position of the radar detector” is
`
`indefinite because “the data indicating the position of the radar detector does not serve any
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`12
`
`
`
`Escort Ex. 2040, pg. 12
`
`

`

`purpose and is not utilized in any manner ‘for alerting an operator of a motor vehicle to an
`
`incoming police radar signal’”. This limitation makes perfect sense to me and it means just
`
`what it says. It means that the GPS receiver is coupled to the microprocessor in the radar
`
`detector and, as such, it provides the microprocessor with data that indicates where the radar
`
`detector is. Whether or not the remainder of the claim ever uses that information does not
`
`mean that I cannot understand what the claim limitation means. I also believe that this
`
`limitation would have been clear to one of ordinary skill in the art in the late 1990s.
`
`37. Paragraph 1161 in Dr. Grindon’s invalidity report argues that certain claims in the
`
`‘653 patent are indefinite because Dr. Grindon does not understand how data can be received
`
`from a button. I respectfully do not understand Dr. Grindon’s argument. In my opinion,
`
`providing data is precisely what a button on an electronic device does, and I intend to testify
`
`to that effect. See also my analysis below regarding claims 26, 30-33, 41-42, 45-46, and 48 in
`
`the ‘653 patent.
`
`38. Paragraph 1162 in Dr. Grindon’s invalidity report argues that claim 48 in the ‘653
`
`patent is indefinite because Dr. Grindon cannot decipher the claim phrase “performing an act
`
`that is unrelated to storing a position in the non-volatile memory based upon second data
`received from the button.” I do not follow Dr. Grindon’s argument. I find claim 48 to be
`
`quite clear and understandable, and I intend to testify to that effect. See also my analysis
`
`below regarding claim 48 in the ‘653 patent. I also believe that this limitation would have
`
`been clear to one of ordinary skill in the art in the late 1990s.
`
`Infringement
`
`39.
`
`I hereby incorporate my statements regarding infringement from my Opening
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`13
`
`
`
`Escort Ex. 2040, pg. 13
`
`

`

`Report.
`
`40. Attached as Appendix Q is my rebuttal to Dr. Grindon’s infringement report.
`
`
`
`III.
`
`DATA OR OTHER INFORMATION CONSIDERED
`
`41. The data or other information that I considered in forming my opinions is listed in
`
`Appendix R.
`
`IV.
`
`EXHIBITS USED TO SUPPORT OR SUMMARIZE
`OPINIONS
`
`42.
`
`I expect to use certain exhibits (demonstrative or otherwise) to support and/or
`
`summarize my opinions. I anticipate that these exhibits will be taken either directly or
`
`indirectly from the data and other information listed in Appendix R.
`
`V.
`
`
`
`QUALIFICATIONS
`
`43. A detailed account of my work experience and other qualifications is listed in my
`
`curriculum vitae attached as Appendix F to my opening report. Included in my curriculum
`
`vitae is a list of all publications I authored in the previous 10 years.
`
`VI.
`
`OTHER CASES
`
`44. A list of all other cases in which, during the previous 4 years, I have testified as an
`
`expert at trial or by deposition is attached as Appendix F to my opening report.
`
`VII.
`
`COMPENSATION
`
`45.
`
`I am being compensated for my time and effort on this case at the rate of $350.00
`
`per hour. None of my compensation is contingent upon any outcome in this case.
`
`VIII.
`
`RIGHT TO SUPPLEMENT
`
`46.
`
`I reserve the right to supplement and/or amend the opinions expressed herein in
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`14
`
`
`
`Escort Ex. 2040, pg. 14
`
`

`

`response to positions taken by experts or defendants, including any technical expert.
`
`I further
`
`reserve the right to amplify what is stated in this report, including claim charts and add
`
`additional detail, where necessary, especially in View of information not presently known to
`
`me or new information presented by defendants’ experts prior to, or at trial, and to supplement
`
`this report should additional information be brought to my attention during the course of this
`
`proceeding.
`
` February 16, 2011
`
`Chris Gregory Bartone
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., RE.
`
`15
`
`Attorneys Eyes Only
`
`Escort Ex. 2040, pg. 15
`
`Escort Ex. 2040, pg. 15
`
`

`

`CERTIFICATE OF SERVICE
`I HEREBY CERTIFY that on the 16th day of February 2011, I delivered a copy
`
`of the foregoing by email to defendants’ counsel as addressed below.
`
`Brett A. Schatz
`Gregory F. Ahrens
`WOOD, HERRON & EVANS, L.L.P.
`441 Vine Street
`2700 Carew Tower
`Cincinnati, OH 45202
`bschatz@whepatent.com
`gahrens@whepatent.com
`
`
`
`
`
`
`
`
`
`
`
`
` /s/
`Michael S. Dowler
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
`
`Attorneys Eyes Only
`
`
`16
`
`
`
`Escort Ex. 2040, pg. 16
`
`

`

`
`
`Appendix A -- Orr’s Alleged Prior Invention
`
`
`
`Analysis of Documents Relied on by Dr. Grindon (the “Orr Materials”):
`Below is my analysis of each of the documents or items Dr. Grindon relies on as
`supporting his prior invention opinion (hereafter referred to as the “Orr Materials”). As
`explained, it is my opinion that none of the Orr Materials adequately evidences, much
`less corroborates, the conception or actual reduction to practice of any of the asserted
`Fleming patent claims allegedly invented by Mr. Orr.
`(1) “The Entire Zip Collection”
`Dr. Grindon never defines the documents that constitute “the entire zip
`collection”. I have been told to assume that this collection refers to the “zips” file that
`defendants produced to Mr. Fleming on November 18, 2010 and containing ESC 14814-
`818. If that is not correct, I reserve the right to have Dr. Grindon explain what he means
`and to comment thereafter.
`
`Taking the “zip collection” one document/file at a time, the first document is ESC
`
`14814. This appears to be software provided by Rockwell in support of its NAVCARD
`product. This software appears to be dated May 1990 – September 1996. This software
`enables a computer to communicate with the NAVCARD GPS receiver. Given the
`source (i.e., Rockwell) and the functionality of the software, it is my opinion that these
`documents show nothing about what Mr. Orr conceived or physically reduced to practice
`in April or May 1996. These documents also do not disclose any, much less all, of the
`claim elements of any of the challenged patent claims. These documents also evidence
`nothing about a device or any tests of a device built in April or May 1996, whether that
`device embodied each element of each challenged patent claim, or whether those tests
`demonstrated that the device operated for its intended purpose.
`
`ESC 14815 appears to be a collection of raw data files taken from a radar detector
`
`in the June 1992 – December 1993 timeframe. These documents are dated years before
`Mr. Orr’s alleged conception and reduction to practice in April or May 1996. As such,
`these documents are not contemporaneous with Orr’s alleged prior inventions and they
`
`Page1of22
`
`AppendixA
`Attorney’sEyesOnly
`
`Escort Ex. 2040, pg. 17
`
`

`

`
`
`show nothing about what Mr. Orr conceived or physically reduced to practice in April or
`May 1996. These documents also do not disclose any, much less all, of the claim
`elements of any of the challenged patent claims. Moreover, because Mr. Orr apparently
`generated these documents, they are not independent of him, as required to properly
`corroborate his alleged prior invention. These documents also evidence nothing about a
`device or any tests of a device built in April or May 1996, whether that device embodied
`each element of each challenged patent claim, whether those tests demonstrated that the
`device operated for its intended purpose, or the timing of when those tests were made.
`
`ESC 14816 appears to be two files dated April 22, 1996 showing raw GPS data
`
`that has been charted. These files show nothing about what Mr. Orr conceived or
`physically reduced to practice in April or May 1996. These documents also do not
`disclose any, much less all, of the claim elements of any of the challenged patent claims.
`Moreover, because Mr. Orr apparently generated these documents, they are not
`independent of him, as required to properly corroborate his alleged prior invention.
`These documents also evidence nothing about a device or any tests of a device built in
`April or May 1996, whether that device embodied each element of each challenged patent
`claim, or whether those tests demonstrated that the device operated for its intended
`purpose.
`
`ESC 14817 appears to be raw GPS data files dated April 22-30, 1996. These files
`
`show nothing about what Mr. Orr conceived or physically reduced to practice in April or
`May 1996. These documents also do not disclose any, much less all, of the claim
`elements of any of the challenged patent claims. Moreover, because Mr. Orr apparently
`generated these documents, they are not independent of him, as required to properly
`corroborate his alleged prior invention. These documents also evidence nothing about a
`device or any tests of a device built in April or May 1996, whether that device embodied
`each element of each challenged patent claim, or whether those tests demonstrated that
`the device operated for its intended purpose.
`
`
`Page2of22
`
`AppendixA
`Attorney’sEyesOnly
`
`Escort Ex. 2040, pg. 18
`
`

`

`
`
`ESC 14818 appears to be XLS files with corresponding data graphs dated April
`
`23 – 30, 1996. These files show nothing about what Mr. Orr conceived or physically
`reduced to practice in April or May 1996. These documents also do not disclose any,
`much less all, of the claim elements of any of the challenged patent claims. Moreover,
`because Mr. Orr apparently generated these documents, they are not independent of him,
`as required to properly corroborate his alleged prior invention. These documents also
`evidence nothing about a device or any tests of a device built in April or May 1996, or
`whether that device embodied each element of each challenged patent claim, whether
`those tests demonstrated that the device operated for its intended purpose.
`
`
`(2) A radar detector connected to a laptop computer, through its COM serial
`communications port
`
`
`Dr. Grindon refers to a radar detector connected to a laptop computer, but I am
`
`told that the laptop computer that Mr. Orr allegedly utilized in 1996 for Mr. Orr’s alleged
`GPS/radar detector tests has been lost together with the software that ran on that
`computer. In the absence of this evidence, obviously a different laptop computer
`connected to a radar detector in 2010 cannot be used to corroborate anything, much less
`the alleged conception or reduction to practice of the supposed Orr Prior Invention in
`April or May of 1996. I am informed that the manufacturing of such unauthentic
`evidence is not allowed.
`
`
`(3) QBASIC programs tst4600k.bas and related “.bas” applications such as
`road22.bas, road23.bas, road24.bas, road24a.bas
`
`
`tst4600k.bas appears to be a BASIC program, dated September 25, 1995, that
`
`receives data from a radar detector. Road2x.bas appear to be BASIC programs dated
`June 29, 1992 to July 17, 1992. Given the date of the programs and their functionality, it
`is my opinion th