Attorney Docket No. 264068-454054
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Curt Manufacturing, LLC,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`
`______________
`
`Case IPR2019-00625
`Patent 6,068,352
`
`______________
`
`Petitioner’s Reply
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Curt Manufacturing, LLC,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`
`______________
`
`Case IPR2019-00625
`Patent 6,068,352
`
`______________
`
`Petitioner’s Reply
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER FAILS TO CARRY ITS BURDEN OF
`PROVING AN INVENTION DATE EARLIER THAN MCGRATH ........... 2
`A.
`Patent Owner’s Evidence of Actual Reduction to Practice is
`Fatally Insufficient ................................................................................ 3
`1.
`Patent Owner Fails To Demonstrate That The
`“Commander-Based” Prototype Is A Reduction To
`Practice Of Claims 64 and 70 ..................................................... 3
`a.
`There is No Corroborating Evidence To Support
`The “Commander-Based” Prototype ................................ 4
`i.
`After-The-Fact “Expert” Testimony Cannot
`Corroborate the Inventors’ Testimony ................... 4
`Inventor-Generated Documentary Evidence
`Is Not Corroborating Evidence .............................. 6
`There is No Evidence that the “Commander-
`Based” Prototype Satisfies All of the Claim
`Limitations ........................................................................ 9
`The Alleged Testing Does Not Demonstrate the
`Commander-Based Prototype Worked for Its
`Intended Purpose ............................................................ 12
`The Prototypes Allegedly Built and Tested by September
`21, 1994 Were Not an Actual Reduction to Practice ................ 16
`a.
`Patent Owner Failed To Produce Corroborating
`Evidence for This Theory Also ...................................... 16
`Patent Owner Did Not Establish That These Other
`Alleged Prototypes Satisfy All of the Claim
`Limitations ...................................................................... 17
`
`ii.
`
`b.
`
`c.
`
`2.
`
`b.
`
`- ii -
`
`
`
`c.
`
`3.
`
`The Alleged Testing Does Not Demonstrate that
`the Additional Prototypes Worked for Their
`Intended Purpose ............................................................ 21
`The “Blue Breadboard” Prototype was Not An Actual
`Reduction to Practice ................................................................ 21
`Patent Owner Has Not Established Diligence During the
`Critical Period ...................................................................................... 22
`III. CONCLUSION .............................................................................................. 24
`
`B.
`
`- iii -
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`CASES
`Apple Inc. v. Valencell, Inc.,
`No. IPR2017-00315 (P.T.A.B. 2018) ............................................................. 9, 11
`Breen v. Henshaw,
`472 F.2d 1398 (C.C.P.A. 1973) ............................................................................ 5
`Brennan v. Muetterties,
`230 U.S.P.Q. 145 (B.P.A.I. 1986) ...................................................................... 13
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) ........................................................................ 6, 7
`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) .............................................................................. 4
`Creative Compounds, LLC v. Starmark Labs.,
`651 F3d 1303 (Fed. Cir. 2011) ........................................................................... 22
`Dentsply Research & Dev. Corp. v. Cadco Dental Prods.,
`14 U.S.P.Q.2D 1039 (C.D. Cal. 1989) ................................................................. 7
`Elmore v. Schmitt,
`278 F.2d 510 (C.C.P.A. 1960) ............................................................................ 15
`Freeman v. Motorola, Inc.,
`209 U.S.P.Q. 829 (N.D. Ill. 1980) ................................................................. vii, 5
`Hahn v. Wong,
`892 F.2d 1028, 1033 (Fed. Cir. 1989) .................................................................. 8
`Hopkins Mfg. Corp v. Cequent Performance Products, Inc.,
`No. IPR2015-00616 (P.T.A.B. 2015) ................................................................. 21
`Hunter v. Beissbarth,
`230 USPQ 365 (B.P.A.I. 1986) .......................................................................... 22
`Kolcraft Enters. V. Graco Children’s Prods.,
`927 F.3d 1320 (Fed. Cir. 2019) ............................................................................ 6
`
`- iv -
`
`
`
`Loral Fairchild Corp. v. Victor Co. of Japan, Ltd.,
`931 F. Supp. 1014 (E.D. N.Y. 1996), aff’d, 181 F.3d 1313 (Fed.
`Cir. 1999) ............................................................................................................ 14
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 2
`Mahurkar v. C.R. Bard,
`79 F.3d 1572 (Fed. Cir. 1996) .............................................................................. 2
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) ............................................................................ 3
`Monsanto Co. v. Mycogen Plant Sci., Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 23
`Payne v. Hurley,
`71 F.2d 208 (C.C.P.A. 1934) .............................................................................. 16
`Slip Track Sys. v. Metal-Lite, Inc.,
`304 F.3d 1256 (Fed. Cir. 2002) .................................................................. 1, 4, 14
`Valencell, Inc. v. Fitbit, Inc.,
`784 F. App’x 1005 (Fed. Cir. 2019) ....................................................... 11, 12, 20
`Wiesner v. Weigert,
`666 F.2d 582 (C.C.P.A. 1981) ............................................................................ 24
`OTHER AUTHORITIES
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 21
`37 CFR § 42.6(a)(3). .......................................................................................... 20, 21
`F.R.E. 702 .................................................................................................................. 6
`
`- v -
`
`
`
`PETITIONER’S UPDATED TABLE OF EXHIBITS
`
`Exhibit
`No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`USPN 6,068,352 to Kulkarni et al. (the
`’352 Patent) (Patent under Inter Partes
`Review)
`File History for USPN 6,068,352
`Declaration of Dr. Leland Spangler in
`Support of Petition for Inter Partes
`Review of the ’352 Patent
`USPN 5,620,236 to McGrath et al.
`(McGrath)
`USPN 5,149,176 to Eccleston
`(Eccleston)
`USPN 3,497,266 to Umpleby
`(Umpleby)
`USPN 4,856,850 to Aichele et al.
`(Aichele)
`USPN 3,909,075 to Pittet, Jr. et al.
`(Pittet)
`USPN 3,967,863 to Tomecek et al.
`(Tomecek)
`USPN 4,295,687 to Becker et al.
`(Becker)
`USPN 4,398,252 to Frait (Frait)
`USPN 5,282,641 to McLaughlin
`(McLaughlin)
`USPN 5,615,930 to McGrath et al.
`(McGrath ’930)
`USPN 4,721,344 to Frait et al. (Frait
`’344)
`USPN 5,741,048 to Eccleston
`(Eccleston ’048)
`
`Publication
`Date (unless
`otherwise
`noted)
`Aug. 20, 1996
`(filing date)
`
`N/A
`
`N/A
`
`Type of
`Prior Art
`(Pre-AIA
`35 U.S.C.)
`
`N/A
`
`N/A
`
`N/A
`
`Sept. 27, 1994
`(filing date)
`Sept. 22, 1992 § 102(b)
`
`§ 102(e)
`
`Feb. 24, 1970 § 102(b)
`
`Aug. 15, 1989 § 102(b)
`
`Sept. 30, 1975 § 102(b)
`
`July 6, 1976
`
`§ 102(b)
`
`Oct. 20, 1981 § 102(b)
`
`Aug. 9, 1983
`
`§ 102(b)
`
`Feb. 1, 1994
`Dec. 15, 1995
`(filing date)
`Jan. 26, 1988
`Dec. 6, 1994
`(filing date)
`
`§ 102(b)
`
`§ 102(e)
`
`§ 102(b)
`
`§ 102(e)
`
`- vi -
`
`
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Coupling, The New IEEE Standard
`Dictionary of Electrical and Electronics
`Terms (5th ed. 1993)
`Curriculum Vitae of Dr. Leland “Chip”
`Spangler
`Product Data of ADC08031, 2, 4, 8
`
`Product Data of ADC08131, 34, 38
`Deposition Transcript of Stephen
`Zavodny (12/19/19)
`Declaration of Dr. Leland Spangler in
`Support of Petitioner’s Reply
`Advances in Modelling of Mechatronic
`Systems: The Toolset FASIM_C++ for the
`Simulation of Vehicle Dynamics
`Freeman v. Motorola, Inc.
`(Unpublished)
`Dentsply Research and Dev. Corp. v.
`Cadco Dental Products Inc.
`(Unpublished)
`
`N/A
`
`N/A
`
`June 1999
`
`June 1999
`
`N/A
`
`N/A
`
`Dec. 1999
`
`Decided May
`3, 1980
`Decided Dec.
`11, 1989
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`- vii -
`
`
`
`I.
`
`INTRODUCTION
`The only issue remaining in this proceeding is whether Patent Owner has
`
`met its high standard of proving that it has an earlier invention date than McGrath.
`
`Patent Owner does not contest that, if McGrath is prior art, the challenged claims
`
`of the ’352 patent are anticipated and obvious as set forth in the Petition. Patent
`
`Owner’s attempt to swear-behind this invalidating prior art, however, fails on
`
`multiple levels.
`
`First, Patent Owner’s theory relies exclusively on the self-serving testimony
`
`of the inventors, as well as inventor documentation. But “[t]o prove reduction to
`
`practice by inventor testimony, the inventor’s testimony must be corroborated by
`
`independent evidence.” Slip Track Sys. v. Metal-Lite, Inc., 304 F.3d 1256, 1265
`
`(Fed. Cir. 2002). Patent Owner’s failure to produce any independent evidence
`
`corroborating its alleged reduction to practice is dispositive.
`
`Second, even putting aside the failure to corroborate with any independent
`
`evidence, Patent Owner’s evidence of actual reduction to practice is fatally
`
`incomplete. Patent Owner’s evidence simply does not establish that—at any time,
`
`let alone prior to McGrath—the alleged brake controller prototypes on which it
`
`relies satisfy each and every limitation of the challenged claims. Patent Owner’s
`
`evidence also fails to establish that the invention worked for its intended purpose.
`
`- 1 -
`
`
`
`Finally, on its alternative theory of conception plus diligence in reducing the
`
`brake controller to practice, Patent Owner’s attempt to establish diligence during
`
`the relevant timeframe falls well short, given lengthy and unexplained periods of
`
`inactivity.
`
`II.
`
`PATENT OWNER FAILS TO CARRY ITS BURDEN OF PROVING
`AN INVENTION DATE EARLIER THAN MCGRATH
`To antedate McGrath as prior art, Patent Owner must prove that it was either
`
`the “first party to reduce an invention to practice” or “that it was the first to conceive
`
`the invention and that it exercised reasonable diligence in later reducing that
`
`invention to practice.” Mahurkar v. C.R. Bard, 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`
`“[A] patentee bears the burden of establishing that its claimed invention is entitled
`
`to an earlier priority date than an asserted prior art reference.” In re Magnum Oil
`
`Tools Int'l, Ltd., 829 F.3d 1364, 1375–76 (Fed. Cir. 2016).
`
`Patent Owner offers various theories in its attempt to disqualify McGrath as
`
`prior art. It argues: (A) that its inventors reduced the invention to practice before the
`
`filing of McGrath; and (B) in the alternative, that the inventors conceived of the
`
`invention before the filing of McGrath and were diligent in reducing the invention
`
`to practice during the critical timeframe. For the reasons below, Patent Owner’s
`
`attempts to prove either of these theories is fatally insufficient.
`
`- 2 -
`
`
`
`A.
`
`Patent Owner’s Evidence of Actual Reduction to Practice is Fatally
`Insufficient
`Patent Owner points to two alleged reductions to practice. First, Patent Owner
`
`alleges that a prototype the inventors built using parts from another brake controller
`
`called the “Commander” constituted an actual reduction to practice of claims 64 and
`
`70 by January 28, 1994. See Paper 10 at 6–17, 32. Second, Patent Owner alleges
`
`that its inventors constructed additional prototype brake controllers by September
`
`21, 1994, which are actual reductions to practice of claims 1 and 65–67. See Paper
`
`10 at 18–27, 39.
`
`To establish an actual reduction to practice, Patent Owner must demonstrate:
`
`(1) construction of an embodiment meeting all limitations of the challenged claims;
`
`(2) a determination that the invention would work for its intended purpose; and (3)
`
`the existence of sufficient evidence to corroborate inventor testimony regarding
`
`these events. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006).
`
`For every single alleged reduction to practice, Patent Owner fails on all three
`
`requirements.
`
`1.
`
`Patent Owner Fails To Demonstrate That The “Commander-
`Based” Prototype Is A Reduction To Practice Of Claims 64
`and 70
`Patent Owner’s reliance on the “commander-based” prototype to antedate
`
`McGrath fails. There is insufficient evidence to corroborate the inventor testimony,
`
`there is no evidence tying numerous claimed limitations to the prototype, and there
`
`- 3 -
`
`
`
`is no evidence that the prototype worked for its intended purpose. For any of these
`
`three reasons, this alleged prototype does not provide Patent Owner with an
`
`invention date earlier than McGrath.
`
`a. There is No Corroborating Evidence To Support The
`“Commander-Based” Prototype
`An “inventor’s testimony must be corroborated by independent evidence.”
`
`Slip Track Sys., 304 F.3d at 1265. Whether there is sufficient corroboration is
`
`governed by a “rule of reason” analysis, however, the rule of reason “does not
`
`dispense with the requirement for some evidence of independent corroboration.”
`
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
`
`The only evidence that Patent Owner offers to allegedly corroborate its
`
`inventors’ testimony is: (i) the testimony of its paid expert, Dr. John Martens; and
`
`(ii) documentary evidence that originated with the inventors themselves. Paper 10
`
`at 7–12. Neither of these is sufficient as a matter of law.
`
`i. After-The-Fact “Expert” Testimony Cannot
`Corroborate the Inventors’ Testimony
`Dr. Martens is not a percipient witness to the alleged reduction to practice
`
`activities that occurred in the 1990s. Dr. Martens had no involvement in, and no
`
`connection to, any of the allegedly inventive activities. Instead, he merely attempts
`
`to make “observations” based on a review of the inventors’ testimony and the
`
`- 4 -
`
`
`
`inventor-generated documents that he undertook specifically for this proceeding.
`
`See, e.g., Ex. 2034, ¶ 47
`
`Moreover, Dr. Martens has no personal knowledge of the documents
`
`associated with Patent Owner’s development of a microcontroller-based brake
`
`controller. Dr. Martens has never worked at Teknosha/Horizon, let alone during the
`
`applicable timeframe of 1992–1996. As such, Dr. Martens can shed no light on
`
`when certain activities occurred, or when certain documents were completed.
`
`But the law requires that “the observations of [a] corroborating witness must
`
`have been contemporaneous; he must have recognized and appreciated the claimed
`
`invention at the time the work was done—reduction to practice cannot be established
`
`nunc pro tunc.” Freeman v. Motorola, Inc., 209 U.S.P.Q. 829, 834 (N.D. Ill. 1980)
`
`(citing Breen v. Henshaw, 472 F.2d 1398, 1401 (C.C.P.A. 1973)). Dr. Martens’
`
`“observations,” therefore, cannot serve as independent corroborating evidence.
`
`Nor can Dr. Martens’ testimony serve to corroborate dates associated with
`
`certain inventor documents—again, he was not there and had no involvement. And
`
`to the extent Dr. Martens’ purports to offer “expert” testimony about dating
`
`practices, he is no expert. He plainly lacks any specific training in document dating,
`
`and his testimony amounts to nothing more than his own ability to read a date on the
`
`face of a printed document. See, e.g., Ex. 2034, ¶ 48 (“I have reviewed the electrical
`
`schematic...and found that it does, indeed, include a date of May 20, 1993.”).
`
`- 5 -
`
`
`
`Consequently, Dr. Martens’ testimony about dates does not meet the standard of
`
`Federal Rule of Evidence 702 and Daubert, and should be excluded or, at a
`
`minimum, given no weight.
`
`ii.
`
`Inventor-Generated Documentary Evidence Is
`Not Corroborating Evidence
`Inventor-generated documentary evidence cannot serve as corroborating
`
`evidence to support inventor testimony as a matter of law, because it is not
`
`independent. See Kolcraft Enters. V. Graco Children’s Prods., 927 F.3d 1320, 1324
`
`(Fed. Cir. 2019) (finding no reduction to practice where all evidence of prior
`
`conception originated with the inventors); Brown v. Barbacid, 276 F.3d 1327, 1335
`
`(Fed. Cir. 2002) (“[A]n inventor’s own unwitnessed documentation does not
`
`corroborate an inventor’s testimony about inventive facts.”).
`
`Here, putting aside the inventor and expert testimony, Patent Owner’s only
`
`documentary evidence of alleged reduction to practice originated from the inventors
`
`themselves. Specifically, Patent Owner points to exhibits 2003–2005, 2014, and
`
`2016 to corroborate the commander-based prototype reduction to practice theory.
`
`Paper 10 at 5–14. But each of these unwitnessed documents originated with the
`
`inventors, and therefore cannot satisfy the legal requirement for corroboration.
`
`Exhibit 2003 contains two photographs purporting to show a microcontroller-
`
`based brake controller breadboard prototype. Id. at 6. Mr. Zavodny testifies that he
`
`constructed the prototype shown in those images in 1993. Ex. 2032, ¶ 23. Exhibit
`
`- 6 -
`
`
`
`2004 contains two more photographs purporting to show a different microprocessor-
`
`based brake controller that inventor Zavodny allegedly constructed sometime in
`
`1993. See Paper 10 at 6–7; Ex. 2032, ¶ 25; Ex. 1020, 18:5–14. And while Mr.
`
`Zavodny declares that he personally took the photographs, he never alleges that any
`
`non-inventor witnessed him do so, and there is no other evidence corroborating
`
`Zavodny’s account. Ex. 2032, ¶¶ 23, 25. Accordingly, Exhibits 2003 and 2004
`
`constitute “an inventor’s own unwitnessed documentation [which] does not
`
`corroborate an inventor’s testimony about inventive facts.” Brown, 276 F.3d at
`
`1335.
`
`Exhibit 2005 purports to be a letter written by inventor Albright attaching an
`
`Invention Disclosure written by inventor Zavodny. Ex. 2032, ¶ 27. Pages 8–9 of
`
`Exhibit 2005 (“Figure 1.4”) are alleged to be a hand-drawn schematic of a
`
`microcontroller-based brake controller completed by Mr. Zavodny on or before May
`
`20, 1993, and taken from his lab notebook. Paper 10 at 7; Ex. 2032, ¶¶ 27(B), 52;
`
`Ex. 1020, 29:2–25. Mr. Zavodny testifies that he alone drew the schematic shown
`
`in Figure 1.4, and that he is the only person who signed the schematic. Ex. 1020,
`
`29:10–12; Ex. 2032, ¶ 27(B). Mr. Zavodny never alleges that any non-inventor
`
`witnessed him prepare Figure 1.4. See Ex. 1020, 29:16–25. As such, Figure 1.4
`
`cannot serve as corroborating evidence because it constitutes an inventor’s own
`
`unwitnessed documentation. See Dentsply Research & Dev. Corp. v. Cadco Dental
`
`- 7 -
`
`
`
`Prods., 14 U.S.P.Q.2D 1039, 1042 (C.D. Cal. 1989) (holding that “laboratory
`
`notebooks...authored solely by the alleged inventor...do not satisfy the corroboration
`
`rule”). Moreover, the signatures of Albright and Smith at page 15 of Exhibit 2005
`
`fail to corroborate this document because Albright and Smith are co-inventors and
`
`their signatures were not contemporaneous with the alleged completion date of
`
`Figure 1.4. See Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989).
`
`Exhibit 2014 is alleged to be computer code that Mr. Zavodny “wrote for the
`
`brake controller described in the Invention Disclosure.” Ex. 2032, ¶ 74; see also
`
`Paper 10 at 12–14. Mr. Zavodny claims that he “completed writing the code in
`
`Exhibit 2014 by November 2, 1993.” Ex. 2032, ¶ 75. There is no evidence that any
`
`non-inventors witnessed Mr. Zavodny write the code included as part of Exhibit
`
`2014 during the 1993 timeframe. Consequently, Exhibit 2014 also constitutes an
`
`inventor’s own unwitnessed documentation, which cannot serve as corroborating
`
`evidence.
`
`Exhibit 2016 is alleged to be a “screenshot of the metadata for Exhibit 2014.”
`
`Ex. 2032, ¶ 75; see also Paper 10 at 12–13. However, Exhibit 2016 is merely
`
`unauthenticated hearsay insufficient to corroborate the inventors’ testimony because
`
`there is no indication who took the screenshot, where it was taken, when it was taken,
`
`or how it was obtained. The screenshot is not a self-authenticating document, nor
`
`does it fit within any exception to the rule against hearsay. When asked about
`
`- 8 -
`
`
`
`Exhibit 2016 during cross-examination, Mr. Zavodny could not clarify where the
`
`screenshot came from, only noting that he “did not personally take that screenshot.”
`
`Ex. 1020, 34:25–36:19.
`
`Because Patent Owner failed to introduce any independent documentary
`
`evidence purporting to corroborate the inventors’ own accounts of the alleged earlier
`
`reduction to practice, Patent Owner is not entitled to an earlier invention date for the
`
`commander-based prototype.
`
`b. There is No Evidence that the “Commander-Based”
`Prototype Satisfies All of the Claim Limitations
`Patent Owner alleges the commander-based prototype is a reduction to
`
`practice of claims 64 and 70. Paper 10 at 6–7. But the evidence fails to show that
`
`the commander-based prototype satisfies all of the limitations of those claims.
`
`First, Patent Owner never actually analyzes the photographs of Exhibit 2004
`
`to show where the elements of claims 64 and 70 are found in the commander-based
`
`prototype. See Apple Inc. v. Valencell, Inc., No. IPR2017-00315 (P.T.A.B. 2018)
`
`(Paper 45 at 46) (holding that Patent Owner failed to provide sufficient evidence to
`
`antedate a prior art reference where it did not explain how the images illustrated the
`
`claimed elements). Instead, Patent Owner analyzes a hand-drawn schematic (Figure
`
`1.4 to Exhibit 2005) in an attempt to show the presence of the claim elements therein
`
`(see Paper 10 at 8–12), and then relies on conclusory, uncorroborated inventor
`
`testimony that the commander-based prototype shown in Exhibit 2004 reflects the
`
`- 9 -
`
`
`
`physical embodiment of Figure 1.4. Paper 10 at 7–12. Patent Owner’s failure to
`
`correlate Figure 1.4 to the commander-based prototype shown in Exhibit 2004
`
`renders any reliance on Figure 1.4 legally irrelevant.
`
`Nor can one of skill independently analyze the correlation between Figure 1.4
`
`and Exhibit 2004 because countless circuit elements are obscured from view in the
`
`photographs of Exhibit 2004 due to a plastic cover blocking a complete view of the
`
`circuit board. See Ex. 1020, 24:8–17, 25:18–23, 26:4–27:4, 43:9–13, 45:7–9.
`
`There is also genuine concern over whether the commander-based prototype
`
`reflects an identical version of that device as it allegedly existed in the 1993–1994
`
`timeframe. Mr. Zavodny relies upon “visual inspection” to support his assertion that
`
`the prototype has not been altered since 1994, see id. at 20:4–7, and concedes that
`
`no testing was performed on the prototype in 2019 to evaluate whether it worked.
`
`Id. at 20:12–14.
`
`Second, Mr. Zavodny admits that the claimed input circuit is not visible in the
`
`images of Exhibit 2004. Ex. 1020, 22:20–23. Mr. Zavodny further testified that
`
`neither a phototransistor nor a physical pendulum/shutter—both necessary
`
`components of the input circuit based on Patent Owner’s analysis of Figure 1.4 (see
`
`Paper 10 at 8–9)—are visible in the images of Exhibit 2004. Ex. 1020, 25:18–26:9.
`
`When confronted with a nearly identical situation in Apple Inc. v. Valencell,
`
`Inc., the Board held that a Patent Owner failed to demonstrate actual reduction to
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`- 10 -
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`
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`practice where prototype images provided insufficient detail to identify claimed
`
`elements. Apple Inc. (Paper 45 at 46). Similarly, in Valencell, Inc. v. Fitbit, Inc.,
`
`784 F. App'x 1005, 1009 (Fed. Cir. 2019), the Federal Circuit affirmed a finding by
`
`the Board that the Patent Owner failed to establish actual reduction to practice where
`
`“[t]he photographs depicted only an exterior view and...no
`
`internal
`
`connections...[were] shown.’” A similar outcome is warranted here.
`
`Third, even assuming Figure 1.4 is a complete and accurate representation of
`
`the prototype (there is no evidence of that), Patent Owner fails to demonstrate how
`
`a prototype embodying Figure 1.4 would meet all limitations of claims 64 and 70.
`
`For example, Patent Owner fails to establish that a prototype embodying Figure 1.4
`
`would necessarily include an “input circuit” as that element is defined in claim 64.
`
`While Patent Owner identifies the structural components of Figure 1.4 that it
`
`contends reflect the claimed input circuit, it provides no explanation as to how those
`
`elements (i.e., the LED (D1), phototransistor (Q1), and shutter at pin RA2) are
`
`capable of “generating a brake level signal representing the braking force to be
`
`applied by the towed vehicle’s brakes,” as required by claim 64. Paper 10 at 8–9.
`
`Similarly, while Patent Owner identifies the structural component of Figure
`
`1.4 that it contends reflects the claimed microcontroller, it provides no explanation
`
`as to how that element (i.e., the “PIC microcontroller”) is capable of “generating and
`
`supplying the pulse width modulated control signal...[and] varying the duty cycle of
`
`- 11 -
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`
`
`the pulse width modulated control signal...to thereby cause said power switching
`
`circuit to deliver a braking current to the brakes of the towed vehicle,” as required
`
`by claim 64. Paper 10 at 7–8.
`
`And Patent Owner’s discussion of the supposed computer code for the PIC
`
`microcontroller does not cure the defect. See Paper 10 at 12–13. Patent Owner only
`
`analyzes a mere eight lines of code from a program spanning 367 pages (see Exhibit
`
`2014) in its attempt to show that the PIC microcontroller was programed to perform
`
`as claimed. Paper 10 at 12–13. More importantly, Patent Owner never explains how
`
`the code would configure the PIC microcontroller to perform all of the functions
`
`recited in claim 64. See id. (failing to address how the code would configure the PIC
`
`microcontroller to, inter alia, “vary[] the duty cycle of the pulse width modulated
`
`control signal...to thereby cause said power switching circuit to deliver a braking
`
`current to the brakes of the towed vehicle”). Patent Owner’s failure to show that the
`
`commander-based prototype met all limitations of claims 64 and 70 is fatal to its
`
`reduction to practice theory.
`
`c. The Alleged Testing Does Not Demonstrate the
`Commander-Based Prototype Worked for Its
`Intended Purpose
`Patent Owner contends that the commander-based prototype was subjected to
`
`a “tilt table” test prior to January 28, 1994, and that such testing indicated that the
`
`prototype worked as intended. Paper 10 at 14–17. It did not.
`
`- 12 -
`
`
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`First, the tilt table test described in Patent Owner’s Response cannot be relied
`
`upon as a reduction to practice because it did not meet every limitation of claims 64
`
`and 70. See Brennan v. Muetterties, 230 U.S.P.Q. 145, 156 (B.P.A.I. 1986) (“Since
`
`the testing relied by [Patent Owner] did not meet all of the limitations of the [claim],
`
`it cannot be properly relied upon for a reduction to practice.”).
`
`For example, claim 64 requires that the microcontroller “cause said power
`
`switching circuit to deliver a braking current to the brakes of the towed vehicle.” Ex.
`
`1001, 48:61–49:2 (emphasis added). However, the tilt table test never involved
`
`connecting any of the prototypes to the brakes of a towed vehicle—rather, it was a
`
`bench test. See Paper 10, at 14–17, 19, 25–26. And Mr. Zavodny confirmed in his
`
`deposition that the alleged tilt table testing of the commander-based prototype never
`
`involved connecting the prototype to the brakes of a towed vehicle. See Ex. 1020,
`
`32:1–17. The tilt table test cannot be relied upon for a reduction to practice because
`
`it did not meet all of the limitations of the challenged claims.
`
`Second, Patent Owner does not present any test results. Instead, Patent Owner
`
`merely describes the nature of the test allegedly conducted, and offers mere
`
`uncorroborated, conclusory inventor testimony that the testing was successful. See
`
`Paper 10, at 14–17, 19, 25–26; see also Ex. 1020, 17:4–9, 21:18–22. However, “the
`
`inquiry is not what kind of test was conducted, but whether the test conducted
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`- 13 -
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`
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`showed that the invention would work as intended....” Slip Track Sys., 304 F.3d at
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`1267 (emphasis added).
`
`Patent Owner cannot carry its burden on the testing requirement in the
`
`complete absence of any test results. See Loral Fairchild Corp. v. Victor Co. of
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`Japan, Ltd., 931 F. Supp. 1014, 1029 (E.D. N.Y. 1996) (Circuit Judge Radar, sitting
`
`by designation), aff’d, 181 F.3d 1313 (Fed. Cir. 1999) (finding no actual reduction
`
`to practice where a party failed to present “specifics about test results,” which were
`
`deemed “critical” “[w]hen measuring reduction to practice”).
`
`Third, the tilt table testing is insufficient to show that the commander-based
`
`prototype worked as intended because the testing did not adequately simulate the
`
`normal operating conditions under which a microcontroller-based brake controller
`
`is intended to be used. See Ex. 1021 ¶¶ 4–49; Ex. 1022.
`
`A microcontroller-based brake controller is not a stand-alone invention.
`
`Rather, it is intended to be incorporated within a larger system including both a
`
`towing vehicle and a towed vehicle. As explained by Petitioner’s expert, Dr.
`
`Spangler, this larger system introduces external circuit and parasitic elements that
`
`impact the performance of a brake controller. Ex. 1021, ¶¶ 19–24. However, the tilt
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`table test—which never involved connecting a brake controller to any towing or
`
`towed vehicle—did not account for any external circuit and parasitic elements that
`
`would necessarily be present under actual operating conditions. See Paper 10 at 14–
`
`- 14 -
`
`
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`17. Indeed, Mr. Zavodny acknowledged during his deposition that it was expressly
`
`not the practice of Tekonsha in the 1994 timeframe to release a commercial version
`
`of a brake controller without first testing it in actual vehicles. Ex. 1020, 32:19–22.
`
`For this reason alone, the tilt table test is insufficient to demonstrate that the
`
`commander-based prototype worked as intended. See Elmore v. Schmitt, 278 F.2d
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`510, 513 (C.C.P.A. 1960) (“The device in issue is not made or sold with the idea of
`
`using it alone, but as part of some practical apparatus, and until it has been shown
`
`by actual tests to meet the conditions normally encountered in at least one such use,
`
`it is not, as a matter of law, actually reduced to practice.”)
`
`Moreover, the tilt table test did not simulate the dynamic nature of normal
`
`operating conditions. For example, the “varying” limitation of Claim 64 requires
`
`that the microcontroller exhibit a dynamic, time-variant response based on changes
`
`to the brake level signal. Ex. 1001, 48:64–67; Ex. 1021, ¶¶ 25–31. However, the
`
`tilt table test, which merely involved measuring the input and output of a brake
`
`controller while it was fixed at a given angle, failed to simulate the changes in
`
`acceleration and deceleration that would be expected under normal driving
`
`conditions. Id.
`
`In addition, the tilt table test does not allow for sufficiently accurate
`
`measurements of brake controller performance. As explained by Dr. Spangler, the
`
`crude tilt-table test and the uncalibrated “test box” could not accurately measure
`
`- 15 -
`
`
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`either input to a brake controller, or output from a brake controller. Ex. 1021, ¶¶
`
`32–49.
`
`Accordingly, Patent Owner’s tilt table testing does not support an actual
`
`reduction to practice. See Payne v. Hurley, 71 F.2d 208 (C.C.P.A. 1934) (finding
`
`no actual reduction to practice of spark-plug invention where only laboratory testing
`
`was performed; actual reduction to practice demanded testing in a vehicle).
`
`2.
`
`The Prototypes Allegedly Built and Tested by September 21,
`1994 Were Not an Actual Reduction to Practice
`Patent owner alleges that it constructed additional prototype brake controllers
`
`by September 21, 1994 that constituted an actual reduction to practice of claims 1
`
`and 65–67 (and possibly claims 64 and 70 also). See Paper 10 at 18–27, 39.
`
`However, Patent Owner’s theory fails for reasons s
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