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`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-1
`
`

`
`PO Box 1320
`
`Ralph Koerner
`Ramona CA 92065
`
`760.789.7382
`
`Bernina/Fritz Gegauf AG
`Seestrasse 161
`8266 Steckborn, Switzerland
`Attention Herr Durville
`
`Dear Herr Durville:
`
`May 4, 2009
`
`Consistent with item 3 of Mr. Freilich's recent email, the following describes my
`activities concerning my conception and diligence to reduction to practice of my
`free motion quilting invention (US Patent 6,883,446). Copies of the referenced
`attachments are included in the enclosed CD.
`
`1.- Early in 2000, my wife Dorothy Koerner, attended a class where free motion
`quilting was demonstrated. Following the class she attempted to practice the art
`on a quilt she was making to be gifted at an August 2000 family reunion In
`Ireland. She found it very difficult to achieve uniform stitch length while free
`motion quilting because of the need
`to synchronize the hand-controlled
`movement of a fabric stack with the foot-controlled stitch rate. The recognition of
`this problem led me to the idea of detecting the movement of the stack for the
`purpose of producing a stitch for every predetermined unit of stack movement.
`Then, and over the succeeding months, I considered various mechanical means
`for measuring stack movement, but was unable to satisfy my goals of
`performance and reliability.
`
`2.- In the Spring of 2002, I conceived a system that I regarded to be particularly
`appropriate for measuring fabric movement.
`It employed an optical sensor to
`directly detect surface movement with respect to orthogonal X-Y directions of a
`fabric stack for the purpose of producing stitches at intervals related to the rate of
`stack movement.
`I recall demonstrating to my wife that I could accurately and
`reliably detect fabric surface movement by using a commercially available optical
`mouse and my personal computer.
`
`3. - In June/July 2002, I decided to build a functioning prototype of the system I
`had conceived to further demonstrate feasibility. To do so, I needed a sewing
`machine which I would be able to modify. My wife was attending a quilting class
`in Ramona, California and asked her classmates if anyone had a "junk" sewing
`machine that I could experiment with. Maria Shetler volunteered that she had a
`suitable machine. Ms. Shetler and I later met at the parking lot of the Episcopal
`Church in Ramona on a Wednesday during July 2002 at which time I acquired
`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-2
`
`

`
`her old Singer sewing machine. (Attachment #1 M. Shetler letter). My intention
`in acquiring the old Singer machine was to incorporate an optical sensor for
`directly detecting movement of a fabric stack with respect to orthogonal X-Y
`directions as a user manually guides the stack in any direction across a machine
`bed and to use the detected movement information to control stitch rate.
`
`4. - I spent the balance of July and part of August 2002 studying the mechanics
`and operating cycles of sewing machines. I disassembled and examined the
`Singer machine, eventually concluding that it was unsuitable as the platform for
`my prototype machine because of the extreme density of parts under the sewing
`table.
`
`5. - During September 2002, I designed and built a feasibility model of an optical
`fabric motion detector system with the aim of eventually incorporating its circuitry
`in a fully functional prototype sewing machine. The feasibility model was
`comprised of a small plastic box containing an optical mouse sensor and
`associated detector electronics. The mouse sensor, derived from a commercially
`available computer mouse, was arranged to "look up" at a fabric surface through
`a small cutout in circuit board material forming the top wall of the box.
`(Attachment #2 is a photograph of the actual plastic box used in my feasibility
`model). The box functioned in association with a circuit board I constructed
`incorporating a PIC 12C508 microcontroller to interpret the X and Y pulse outputs
`I had programmed the
`of the mouse sensor as it responded to fabric motion.
`microcontroller to accumulate values for X andY, to calculate the squares of the
`X and Y values, and to sum those squares as represented by the flow chart
`(Attachment #3) which I prepared on or before September 29, 2002, and then to
`respond to a "distance moved" threshold (sum of squares) for triggering a stitch
`operation as simulated by a relay and LED light also mounted on the circuit
`board. The circuitry of the feasibility box was compatible with the stitch rate
`parameters I had calculated on or before September 16, 2002. (Attachment #4).
`Still in September 2002, I tested my feasibility model by moving fabric in multiple
`directions over the small cutout in the box top wall. I observed that the relay and
`LED light responded each time the fabric moved a predetermined distance in any
`direction corresponding to the "distance moved" threshold I had set. I shared my
`observations with my wife and a couple of acquaintances who I thought would
`appreciate the significance of my concept.
`
`In mid-September 2002, I telephoned my patent attorney, Mr. Freilich, to
`6. -
`explain my invention. I told him that I had run an on-line patent search and was
`unable to find any relevant prior art. Mr. Freilich urged me to promptly prepare a
`written invention disclosure. By September 20, 2002, I completed a drawing
`(Attachment #5) showing the modifications to a conventional sewing machine
`required to implement my concept of detecting manually guided two dimensional
`fabric stack movement across a planar bed for controlling stitch rate, and a
`drawing (Attachment 6 prepared on or before September 18, 2002) illustrating an
`optical mouse device arranged for detecting fabric stack movement.
`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-2
`
`

`
`7. -On September 21, 22, 2002, my family celebrated my 73rd birthday at my
`home in Ramona, California. My two sons, Steve Koerner and Michael Koerner,
`both engineering/physics professionals attended the party. I took the opportunity
`to explain to them that I had invented a free motion sewing machine using an
`optical sensor to directly detect manually guided two dimensional fabric stack
`movement and that by using the detected movement information to control stitch
`rate, I would be able to achieve uniform length stitches. I demonstrated the
`operation of my feasibility model showing that the relay contact closed each time
`the fabric moved a predetermined distance in any direction corresponding to a
`stitch length. (see Statement and Letter, Attachments 7 and 8).
`
`8.- On or before October 14, 2002, I completed compilation of drawings and text
`for the invention disclosure Mr. Freilich had requested in mid-September. My
`invention disclosure describes the problem of producing uniform length stitches
`while free motion quilting and also my solution of providing a machine which
`synchronizes stitch strokes to fabric stack movement for producing uniform
`stitches regardless of the speed of stack movement.
`I subsequently asked my
`neighbor, Donald Blair, an electronics engineer, to read and witness my invention
`disclosure which he did on October 18, 2002.
`I promptly sent a copy to Mr.
`Freilich. (Attachment #9).
`
`9. - October 30/31, 2002, I attended the Houston Quilt Festival and spent
`considerable time observing all of the machines shown there. My observations
`confirmed for me that none of the available machines controlled stitch rate based
`on detected fabric stack movement to produce uniform stitches and that I should
`therefore proceed to build a fully functional prototype machine.
`
`10. - On November 14, 2002, I placed a telephone order for several optical
`mouse development kits with a Mr Devin of Agilent (Attachment# 1 0).
`
`11. - On or before November 25, 2002, I prepared a schematic diagram
`(Attachment #11) showing the control circuit I intended to use in my prototype
`machine.
`
`12.- On December 03, 2002, I purchased a Sears sewing machine (Attachment
`#12) to use as a platform for my prototype machine.
`
`13. - On December 4, 2002, I used my previously built feasibility detector model
`with the Sears machine to control stitch rate using the machine's AC motor.
`Attachment #13 which I prepared on 12/4/02 shows my test setup.
`
`14. - Early in December 2002 I concluded that for reasons of torque and
`dynamic braking a DC motor would be best suited to my prototype machine
`application. I replaced the Sears machine's AC motor with a surplus DC motor.
`On December 12, 2002 I devised a preliminary solid state circuit design for using
`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-2
`
`

`
`the DC motor to actuate my prototype machine (Attachment# 14). That circuit
`was not used on the prototype because relay contacts proved simpler for the
`purpose of demonstration.
`
`15. - By mid-December, 2002 I had fully tested my prototype machine with
`different fabrics and observed that the detector satisfactorily measured stack
`movement across the machine's planar bed and controlled needle cycle
`movement at a rate substantially proportional to the rate of stack movement to
`produce uniform stitches.
`
`16. -During December 2002, I revised and expanded the invention disclosure I
`I completed my revised disclosure by
`had prepared by October 14, 2002.
`December 30, 2002 and promptly sent a copy (Attachment #15) to Mr. Freilich. I
`requested that he promptly prepare a patent application.
`
`17. - Between January 1, 2003 and Feb 12, 2003, I had multiple telephone
`conversations with Mr. Freilich explaining my invention, discussing his initial
`patent application draft, proposing revisions, and finally producing a patent
`application ready for filing. My U.S. provisional application was filed on February
`12, 2003.
`
`Very truly yours,
`
`J
`
`Ralph J. Koerner
`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-2
`
`

`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-3
`
`

`
`Handi Quilter and Tacony v. Bernina
`IPR2013-00364
`Bernina Exhibit 2014-3