Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 29
`Date: June 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CURT MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`HORIZON GLOBAL AMERICAS INC.,
`Patent Owner.
`____________
`
`IPR2019-00625
`Patent 6,068,352
`____________
`
`Record of Oral Hearing
`Held: May 11, 2020
`____________
`
`
`
`
`Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`
`
`
`
`
`
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`

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`IPR2019-00625
`Patent 6,068,352
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DENNIS J. ABDELNOUR, ESQ.
`SCOTT A. BARNETT, ESQ.
`Honigman, LLP
`39400 Woodward Avenue
`Suite 101
`Bloomfield Hills, MI 48304-5151
`(248) 566-8300
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MATTHEW J. CAVANAGH, ESQ.
`DAVID B. CUPAR, ESQ.
`MARK C. GUINTO, ESQ.
`McDonald Hopkins
`300 N. LaSalle Street
`Suite 1400
`Chicago, Illinois 60654
`(312) 280-0111
`
`
`
`
`The above-entitled matter came on for hearing on Monday, May 11,
`
`2020, commencing at 10:00 a.m. EDT, by video/by telephone.
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`IPR2019-00625
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`P R O C E E D I N G S
`- - - - -
`JUDGE GROSSMAN: Good morning, this is Judge Grossman.
`
`We’re here for a hearing in IPR 2019-00625, Curt Manufacturing versus
`Horizon Global Americas. With me, on the panel, are Judges Saindon and
`Meyers, and I’ll ask the parties to each, first, make their appearances, before
`we get into some of the logistical things and start the trial, and, so, first,
`we’ll have Petitioner make its appearance.
`
`MR. BARNETT: Good morning, Board. This is Scott Barnett, on
`behalf of Petitioner, Curt Manufacturing.
`
`JUDGE GROSSMAN: Okay, and can you please just spell your last
`name for me, just to make sure I got it correctly.
`
`MR. BARNETT: Yes, that’s Barnett, B-A-R-N-E-T-T.
`
`JUDGE GROSSMAN: Okay. All right. All right, thank you very
`much, Mr. Barnett, and for -- is there anyone else with you, Mr. Barnett?
`
`MR. BARNETT: Yes, I have my colleague, Dennis Abdelnour.
`
`JUDGE GROSSMAN: Okay, thank you. All right, and for Patent
`Owner?
`
`MR. CUPAR: Your Honor, my name is David Cupar, C-U-P-A-R,
`and I’m here on behalf of the Patent Owner, Horizon Global.
`
`JUDGE GROSSMAN: Okay, and is -- you have any colleagues with
`you, Mr. Cupar?
`
`MR. CUPAR: I do, Matthew Cavanagh, as well as Mark Guinto.
`
`JUDGE GROSSMAN: Okay, thank you. Thank you both. Before
`we start, I’ll just go over, quickly, some of the basic logistics. These video
`hearings are probably somewhat new to you, but they’re also somewhat new
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`to us, since we’ve only started doing them recently. They’ve worked well.
`I’m sure that they will continue to work well. Our technical support team
`has been doing a great job, in keeping us online, in these hearings.
`
`There are just a few basic ground rules that -- to consider. One is to
`avoid problems with some background noise, paper shuffling, talking among
`colleagues. If you are not speaking, please mute your phone, so that there is
`no background interference. If you are speaking, please identify yourself,
`when you’re speaking. The court reporter, in order to have a clear record,
`doesn’t recognize all of us, and needs to know who is speaking, and that
`includes the judges. We’ll do that as well. If you are going to refer to any
`exhibits or documents, the judges all have complete electronic copies, and
`we can look at the documents, but we can’t look at them unless you identify
`them by exhibit number for us. So, if you’re going to call up any
`documents, please make sure you identify them. It not only helps us to find
`them, and follow them during your argument, but it ensures that they’re
`accurately identified in the transcript.
`
`Now, I think, in the trial order, we gave each party 60 minutes. Each
`party will be able reserve some of that for rebuttal, if they would like. I
`think we have, in addition to the substantive case, we have, outstanding, a
`motion to exclude a substantial number of the exhibits. The party -- that’s a
`-- was a motion filed by the Petitioner. The party with the burden can
`address that motion. So, Petitioner, you can address the motion, during your
`60 minutes, but it will be included in your time period, if you’d like to.
`There’s a lot of -- in relationship between the motion to exclude and the
`substantive issues that have been raised by the parties. So, we may be able
`to talk about some of that, together, but I’m not aware that there are any
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`other outstanding motions. If there are, please make sure you call our
`attention to them, and, with that, I’ll ask the parties whether there’s any
`questions, and then if there aren’t, we’ll start. So, for the Petitioner, any
`questions about the basic logistics?
`
`MR. BARNETT: No, Your Honor.
`
`JUDGE GROSSMAN: Okay, and Patent Owner, any questions from
`you about the basic logistics, Mr. Cupar?
`
`JUDGE GROSSMAN: Just one, Judge Grossman, and it says the
`issue here is just who should go first, and the -- and it goes to that burden of
`proof issue you raised, Your Honor, and just a question for you and for
`opposing counsel, as to who should go first, on that basis. The order does
`say for the Petitioner to go first. Under normal circumstances, it makes
`sense. Our position (inaudible) that we invented prior to the McGrath,
`September 27th, priority date. So, the question becomes should we go first,
`or should we keep it as is, set forth in the order?
`
`JUDGE GROSSMAN: I think we’re going to keep it as set forth in
`the order because, even if you weren’t to argue, the Petitioner still has a
`burden. They have to prove, by a preponderance of the evidence, that the
`references and grounds, on which they rely, establish that the challenged
`claims are unpatentable. So, swearing behind is sort of a defense after the
`fact of they have an opportunity to prove the case on their merits, which they
`still have to prove. I -- and then even if there is no opposition, they still have
`to -- they’re a burden of proof. So, I think we’ll let the Petitioner start.
`The Petitioner may want to -- typically, we allow the Petitioner to
`reserve no more than half of its time, 30 minutes, for rebuttal. If the
`Petitioner decided they wanted, perhaps, more, in this case, to rebut your
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`defense, and that they didn’t want to spend quite so much time on the merits,
`we might consider, if they were -- wanted to reserve a little bit more time,
`but typically it’s no more than half, but I think we’ll still start with the
`Petitioner, which always has the burden to establish unpatentability, if going
`to prevail in the IPR Proceeding.
`MR. CUPAR: Okay, Your Honor, this is Dave Cupar speaking.
`JUDGE GROSSMAN: Okay. All right, and Mr. Barnett, with that, if
`-- unless you have any logistical questions, we’ll let you take the
`microphone, and begin. And you have the burden on two of the issues -- on
`both issues, not only on the substantive issue of unpatentability, based on the
`references, but you also have the burden on your motion to exclude, and, so,
`you may address that, as well, during your 60 minutes.
`
`MR. BARNETT: Thank you, Judge Grossman. My colleague,
`Dennis Abdelnour, is gonna start on our -- on behalf of Petitioner Curt
`Manufacturing.
`
`JUDGE GROSSMAN: Okay, Mr. Abdelnour? Is -- Mr. Barnett, is
`Mr. Abdelnour on the line with you? We don’t see him or hear him.
`
`MR. BARNETT: I can see him, his video.
`
`SPEAKER: You have your microphone muted, Mr. Abdelnour.
`
`MR. BARNETT: Yes, it looks like he’s on mute.
`
`JUDGE GROSSMAN: All right, it’s -- if he can unmute himself, and
`then we’ll be able to hear him.
`MR. BARNETT: It looks like he’s muted through -- there. I think
`we’re back, back in business.
`MR. ABDELNOUR: Okay, my apologies. Good morning, may it
`please the Board, Dennis Abdelnour, with Scott Barnett, on behalf of
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`Petitioner. I’m going to refer to some of our slides, as we go through, and,
`so, I’ll refer to them by slide number. I understand the Board has them in
`front of them.
`JUDGE GROSSMAN: Yeah, before we get into that, Mr. Abdelnour,
`as you say, referring to your slides. This -- our trial order, which went out
`on April 28th, laid some ground rules about the demonstrative, and it
`required that the demonstratives on page three, of that trial order, be
`exchanged with the opposing counsel, by email, no later than five business
`days prior to the hearing, and that copies should also be sent at the same
`time, by email, to the Board, five days before the hearing. According to our
`records, we didn’t receive any of the -- we didn’t receive your
`demonstratives until Friday, which was less than five days, and, so, my
`question for you, is, is there some reason why you were unable to comply
`with the trial order to serve them on us, or to provide them to us, five days in
`advance, and whether you provided a copy of the demonstratives to
`opposing counsel, five days in advance?
`MR. ABDELNOUR: Your Honor, my understanding, is that our
`email went out same day as Patent Owner’s went out. Patent Owner’s was
`served at the same time it was served on the Board. So, those did go out five
`days in advance, and, so, I guess this is news to us, but there hasn’t been any
`objection by Patent Owner that they haven’t gotten them. My understanding
`is that they did get them. We received theirs same day as we served ours.
`JUDGE GROSSMAN: Mm-hmm, but we --
`MR. BARNETT: Judge Grossman, this is Mr. Barnett. I, actually,
`am the one who sent the email to the Board. It went out, according to our
`records, on Monday, May 4th, and was sent to both the Board,
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`PTABHearings@USPO.gov, as well as to opposing counsel, in the same
`email, and we never received any bounce back or anything like that,
`indicating that it had not been delivered.
`JUDGE GROSSMAN: Okay, well, we -- for reasons that I don’t --
`can’t explain, according to PTAB Hearings, we didn’t get them until Friday.
`The Judges didn’t see them until today, and we don’t have -- we have not
`received anything from Patent Owner. I don’t know if Patent owner has
`received some slides. So, what I’m going to -- I’m going to, then, stop the
`clock, and not charge you with any of this time, while I just -- I’m going to
`ask Patent Owner, Mr. Cupar, whether you did submit demonstratives
`because, if you did, they do not appear to have been received, and, as of this
`morning, they haven’t been forwarded by PTAB Hearings to the judges.
`MR. CUPAR: Your Honor, this is Dave Cupar, speaking, and to
`answer your question. We did last Monday also provide a one-page
`demonstrative timeline. We don’t need it for the purpose of our
`presentation, however, so, if you have not received it, I won’t even go over
`it. The evidence, itself, is what I will go over, Your Honor.
`JUDGE GROSSMAN: Okay, well, it’s -- unfortunately, we don’t
`have -- the Judges don’t have it. PTAB Hearings has not forwarded it to us.
`They, you know, must -- I don’t know what -- why they didn’t get the
`Petitioner’s until Friday. Did you, Mr. Cupar, receive the Petitioner’s
`demonstratives timely, five days before the hearing?
`MR. CUPAR: I did, Your Honor. Mr. Barnett’s right. The email he
`says he sent last Monday, on the fourth, I did receive that email, and, also,
`Mr. Barnett, I believe, received my demonstrative on the fourth as well. Is
`that right, Mr. Barnett?
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`MR. BARNETT: This is Mr. Barnett. That’s correct.
`JUDGE GROSSMAN: Okay. What might be helpful, in fact, Mr.
`Cupar, one of the things that -- in a case like this, we -- a timeline is often
`very helpful, and we were, in fact, looking forward to a timeline, and I’m
`pleased that you submitted one, and I’m sorry that we didn’t receive it
`timely, but if you could re-forward it to PTAB Hearings, now, hopefully
`they will then get it, and can forward it directly to us, so that we will be able
`to see it, so that when you have an opportunity to take the podium, or the
`figurative podium, or virtual podium, that we, at least, will be able to see
`what you have because we would, very much, like to make sure that we see
`that timeline.
`MR. CUPAR: We are doing that right now, Your Honor. This is
`Cupar speaking.
`JUDGE GROSSMAN: All right, and maybe, in order to ensure that
`the judges see it, and, so, that when it goes to PTAB Hearings, there is
`sometime a delay, as it’s -- in this case, when Petitioner’s got to PTAB
`Hearings on Friday, we didn’t see it until early this morning, the judges. If
`you could send it to my office, email directly, as -- send it to PTAB
`Hearings, but also carbon copy to me, which is
`Barry.Grossman@USPTO.gov, and it will come right into my mailbox, so,
`then -- and I will forward to Judges Saindon and Meyers, so, to ensure that
`we can see it, and allow you to refer to it during your presentation.
`MR. CUPAR: Cupar, will do.
`JUDGE GROSSMAN: Okay. All right, thank you, and, you know, I
`apologize for what appears to be some logistical problem somewhere,
`between the emails and PTAB Hearings, and getting it to us, but we didn’t
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`see Petitioner’s until this morning, and still have not seen the Patent
`Owner’s. So, all right, with that clarification, Mr. Abdelnour, I will reset the
`clock for you, so that we give you your full 60 minutes, and, again, on -- you
`will have the burden to both to establish unpatentability, and you have the
`burden on the motion to exclude. We have the briefs on that. If you choose
`not to specifically argue that, we will decide it on the briefs, but if you’d like
`to address it, you may during your 60 minutes, and before you start your 60
`minutes, I’d like to know whether you want to reserve any time for rebuttal?
`MR. ABDELNOUR: Thank you, Judge Grossman, Dennis
`Abdelnour. We’d like to save 20 minutes for rebuttal.
`JUDGE GROSSMAN: All right. One of the things we don’t have, in
`these virtual hearings, is a time clock, on the Bench, that has the green,
`yellow, and red light, to warn you when your time is in rebuttal, and when
`your time is up. So, I will be keeping the time, and I will do my best to warn
`you in advance of when your 40 minutes of argument time is approaching,
`but you should also keep track of the time, or perhaps one of your colleagues
`there with you could help keep track of the time, but I will start the clock,
`your 60 minutes, now, and -- in just a second, as I finish speaking, and will
`do my best to remind you, but I will be focusing more on what you say, and
`what exhibits you cite to us, and I may not be always looking at the
`stopwatch that I use to keep track of the time. So, you may begin whenever
`you’re ready, and I’ll remind you when you are approaching your 40
`minutes of main argument time.
`MR. ABDELNOUR: Thank you, again. Dennis Abdelnour, with
`Scott Barnett, on behalf of Petitioner Curt Manufacturing, may it please the
`Board.
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`
`As you noted in your opening remarks, our petition was a challenge,
`based on anticipation and obviousness grounds; anticipation over a reference
`called McGrath, and obviousness in view of McGrath in Eccleston. The
`Board instituted on anticipation and obviousness grounds, and I just want to
`set the table. The Board found that we had demonstrated a reasonable
`likelihood prevailing on those grounds.
`McGrath is one 102E Prior Art because it has September 27, 1994
`filing date. That is before the filing date of the 352 Patent. Now, in the trial
`phase of this proceeding, Horizon has never made any argument that the
`prior art does not anticipate or render obvious the challenged claims. That --
`those issues are not in front of the Board. As you mentioned, again, it’s our
`burden to establish that. We believe that the petition, and the cited
`materials, and the expert declaration satisfy that burden, on anticipation and
`obviousness grounds.
`Patent Owner, instead, has argued that McGrath is not the prior art,
`and, so, there should be no arguments about anticipation or obviousness
`because they’ve never been made in the trial phase, and the Patent Owner
`was cautioned that such arguments would be deemed waives, if they were
`not made. So, the only issue in front of the Board, at the moment, is whether
`Patent Owner carries its burden of establishing a prior invention date, prior
`to McGrath.
`Horizon has three separate theories on that regard. Two of them are
`reductions to practice theories on separate of the challenged claims, and one
`is the conception plus diligence theory. We’re going to talk about the
`specifics, but before we do, and I’m looking at slide six of our slide deck, I
`want to set up the legal standard, and there’s two key points here. First, in a
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`proceeding like this, it is Patent Owner that bears the burden of establishing
`a prior invention date, and that’s true as to reduction to practice, as well as
`conception, and, secondly, Patent Owner not only has to do so, and establish
`those incentive facts, but they must corroborate those inventive facts with
`independent evidence. That’s true of reduction to practice, and it’s also true
`of conception and diligence. It’s all inventive facts.
`Turning to slide seven, Horizon’s invention proof falls short on three
`different separate grounds, three levels. The first is that they’ve failed to
`offer any independent evidence to corroborate the inventor testimony, that
`they try to use to establish prior invention. I’m going to cover that topic.
`The second point is that the Patent Owner has not established that any
`alleged direction of practice or conception satisfies each and every limitation
`of the challenged claims. That’s a separate failure, and the final one is with
`respect to the reduction to practice theory. Patent Owner has not established
`that those reductions to practice worked for their intended purposes. Mr.
`Barnett’s going to cover points two and three. On the first point --
`JUDGE GROSSMAN: All right. Before we -- Mr. Abdelnour, before
`we go too far down that, I think -- my recollection is in their response that
`the Patent Owner said there was an agreement about what the date they have
`to beat is, and what the -- so, it would be what the date is, like, of McGrath
`and, so, is -- do you agree with the Patent Owner, that -- you and the Patent
`owner agree on the date they need to get behind, which, I think, the Patent
`owner said was the filing date of McGrath?
`MR. ABDELNOUR: I believe that’s the case. I be -- McGrath was
`filed on September 27, 1994. So, there’s agreement on where they’ve got to
`get behind. There’s --
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`JUDGE GROSSMAN: Okay.
`MR. ABDELNOUR: As we’ll discuss, there’s a disagreement as to, if
`we’re talking about diligence, how far they’ve got to go, to establish
`diligence. We’ll get to that in a minute, but, unless I’m mistaken, I believe
`it’s the filing date of McGrath, September 27, 1994.
`JUDGE GROSSMAN: All right. Thank you.
`MR. ABDELNOUR: As to the evidence, there’s three buckets that
`Patent Owner has tried to use to establish these inventive facts. The first is
`inventor testimony. There’s four declarations from each of the co-inventors
`of the 352 Patent. The second bucket we’ve called inventor documents, and
`these are inventor generated documents. Some are sketches, and schematics,
`and some source code. There’s some pictures in there, but what’s important
`for this purpose is they all come from the inventors. They’re all originated
`with the inventors.
`The final bucket is expert testimony. Horizon has offered that
`declaration of Dr. Martens. Let’s look at those separately, and starting with
`the last one, the expert testimony. Dr. Martens was not a percipient witness
`to any inventive facts, as of the early 1990’s, the timeframe we’re talking
`about, and, so, Dr. Martens can’t possibly corroborate, can’t possibly add
`independent evidence to corroborate the inventive facts in this case, and we
`made that point in our briefing, and Horizon, now, appears to concede that
`point,
`JUDGE GROSSMAN: Mr. Abdelnour, I -- this is Judge Grossman.
`Can their expert sort of verify the technological facts of an exhibit? For
`example, let’s take a look at their -- they have a schematic, I think, the
`reference is exhibit 2006, the Petitioner’s -- or Patent, I’m sorry, the Patent
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`Owner’s Exhibit 2006 is just a schematic diagram, and their expert provides
`some testimony about what is in that. What are the various elements of that
`schematic diagram? Isn’t is poss -- can’t the technical expert verify the
`technical content of that exhibit? It may not corroborate what it is, may not
`be able to authenticate it as a corporate document, but can certainly testify as
`to the technological content? As -- and, so, that’s my question. Is that --
`isn’t the expert testimony allowed, at least to explain what the tech -- what
`shown on a circuit diagram?
`MR. ABDELNOUR: Your Honor, for purposes of looking at the
`technical evidence, and trying to line it up with the claims, to establish
`whether or not that technical evidence would satisfy the claims, we would
`agree, the expert can do it in that sense. That’s what Horizon appears to be
`saying they’ve offered the expert to do, but you’re exactly right. The expert
`can authenticate that evidence, can corroborate, that it is what it proports to
`be, or that the inventors were the proponents of the evidence. That’s got to
`be corroborated. There’s got to be separate independent corroborating
`evidence of that, and, so, putting aside the expert testimony and
`corroboration, Horizon’s left with inventor documents and inventor
`testimony, and this is our motion to exclude -- I’m looking at slide 10, of our
`deck.
`The Board has held, in no uncertain terms, on multiple occasions, that
`you can’t use inventor testimony to authenticate a document that, in turn, is
`going to come back in to corroborate that inventor testimony. This is the
`Microsoft case, and the Neste Oil case. The Neste Oil Board explained that
`what you -- what that creates is a circular situation, in which you have
`inventory testimony on the one hand, and inventor documents on the other
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`hand, and there’s no independent evidence that breaks that cycle, and, so,
`it’s solely reliant on inventors, and that’s insufficient, and the Board has, on
`multiple occasions, excluded inventor documents, on that basis.
`Horizon argues that this is not a question of admissibility, but rather
`the question of weighing the evidence, and, respectfully, even if the Board
`were to admit the evidence, and look at it, and weigh it for what it’s worth, it
`still falls short, as a matter of law, and that’s because inventor documents
`cannot be used to corroborate inventor testimony. There must be some
`independent evidence to establish that corroboration, and, on slide 11, I’m
`looking at the third bullet, which is Medichem. Medichem says we’re
`talking about evidence from -- testimony from somebody other than an
`inventor, documents that don’t originate with the inventor, themselves.
`All right. Turning to slide 12, Horizon says, well, the rule of reason
`helps them because, again, you can weigh the evidence, but the case law is
`also clear on that point, but the rule of reason doesn’t dispense with the
`independence corroboration requirement. Independent knowledge is still
`key to the corroboration inquiry. I think, recognizing this, Horizon has
`argued, well, some of the evidence that we put in, which is inventor
`generated, is, nevertheless, independent, and they point, specifically, to
`exhibit 2005.
`It's not independent evidence. I want to explain why. First, it’s a
`letter written by the inventor, Marsha Albright, to a Patent Attorney. It’s not
`a response from a Patent Attorney. The Patent Attorney didn’t testify in this
`case. So, there is no documents originating from the Patent Attorney’s side.
`This is inventor’s side going out. What is contained in 2005? It’s sketches
`and drawings from an inventor, Zavodny, who prepared them on his own,
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`without any other help, and that sort of unwitnessed documentation, of
`course, is not sufficient. So, Horizon says, and now I’m on slide 15 in my
`deck, Horizon argues this evidence is witnessed by Marcia Albright and
`Bruce Smith.
`The problem with that is that both Albright and Smith are co-
`inventors to the 352 patent, and the law says, and Medichem’s -- we’ve got a
`quote here, “But you cannot use one co-inventor’s testimony or evidence, as
`supporting evidence to corroborate another co-inventor.” Horizon has been
`a --
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`JUDGE GROSSMAN: Does it mat -- this is Judge Grossman.
`MR. ABDELNOUR: Yes?
`JUDGE GROSSMAN: Mr. Abdelnour, before we go off that, does it
`matter that, at the time this was submitted, Albright and Smith may not have
`been inventors of what was submitted, and that Zavodny may have been the
`only inventor at that point, and by the time the application got written and
`filed, the inventive entity may have been expanded to include Albright and
`Smith, as well as one other, that Mr. Kulkarni? But at the time this was
`submitted, the only inventor who signed it was Zavodny, and does that make
`a difference in your mind, that Albright and Smith were not identified as
`inventors, on exhibit 2005?
`MR. ABDELNOUR: Two points -- yes, two points, Your Honor, and
`I’ve got this on slide 16 of our deck, but the first point is I don’t think it does
`make a difference. There’s no distinction between whether or not someone
`considers themselves, at the time of the invention. I’ve never seen a case.
`Horizon hasn’t submitted one, that would support that theory, but, factually,
`it is just wrong, and runs head long into the evidence that Horizon submitted
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`in this case. On slide 16, both Albright and Smith testified, under oath, in
`this proceeding, that, as of January 28, 1994, they consider themselves.
`They were inventors of the challenged claims in this case.
`So, all you have left with -- frankly, I think, the argument is entirely
`based on attorney argument because that’s not what the evidence in this case
`shows. They were inventors, as of that time. They considered themselves to
`be, meaning that the rule that a co-inventor can’t corroborate comes, totally,
`into play.
`JUDGE GROSSMAN: Thank you.
`MR. ABDELNOUR: Referring to slide 17, they also -- thank you,
`Your Honor. They point to what they call metadata, for various documents,
`but there is no metadata in this case. There’s no computer files that have
`ever been submitted, or are of record, before the Board. All we have are
`screen shots of a file listing. We don’t know -- and these documents, not
`only are they not independent because we don’t know where they came
`from, they likely originated with the inventors, but we don’t know where
`they originated at all.
`So, they’re inadmissible, in and of their own rights because they’re
`not authenticated by anybody in the case. We don’t know where they came
`from. We don’t know that they are what they purport to be, and we certainly
`don’t know, ask an attorney argument, and takes it, the briefing’s word for it,
`that these file names line up with any other evidence in this case, and, so,
`that can’t be independent evidence, and it’s inadmissible in and of its own
`rights.
`Patent owner argues, legally, putting the facts aside now, I think, in
`their surreply, fairly, they say, independent evidence of corroboration isn’t
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`required, in a case like this. We think that’s just wrong. The Brown Case,
`that we’ve cited, the Brown Court, in the Federal Circuit, affirmed the
`Board, on the specific corroboration discussion, that’s section three of the
`case, where they say that the inventor has to provide independent
`corroborating evidence. A Board of -- and the Federal Circuit affirmed the
`Board, for finding a failure to provide independent evidence, which is
`testimony or physical evidence from a source, other than the inventors.
`Kolcraft is also on all fours. In that case, the Federal Circuit affirmed
`the Board, again, finding no prior invention, because all the cited evidence
`of this prior conception originated with the inventors. There is no
`independent evidence corroborating the inventions -- the inventor’s story.
`So, let me jump ahead to slide 21.
`JUDGE GROSSMAN: Mr. Abdelnour, this is Judge Grossman, I just
`-- just to make sure that the record is clear, you’re talking about -- the
`Kolcraft case is on your slide number 19, and the Brown case is on your
`slide number 18?
`MR. ABDELNOUR: Correct.
`JUDGE GROSSMAN: Just to ensure that that both the -- just to
`ensure the transcript identifies the right cases, about which you were
`speaking.
`MR. ABDELNOUR: Thank you. Thank you, and those are in the
`briefs. And, so, jumping ahead to slide 21, what you end up with is that the
`classic catch 22 of invention law, which is you have only inventor testimony
`offered to prove an invention theory, and only inventor documents offered as
`corroboration of that. You don’t have authentication, in the one direction,
`you can’t have corroboration in the other direction, all of this without
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`independent evidence, of which there is none in this case, and the theories
`fail, as a matter of law, on that regard alone.
`Let me jump ahead to slide 23. The corroboration and independent
`evidence requirements aren’t just some technicality. There are fundamental
`concerns, and the concern arose out of inventors who may testify in cases
`like -- who would be tempted to otherwise remember facts more favorable to
`their case, and you have that here because what you have is a number of key
`inventive facts, that depend solely on the take my word for it testimony of
`the inventors; for example, that any prototype was ever built, that it was
`programmed, that it worked, that it was tested, that it was -- when it was
`tested, that it worked. As to diligence, for example, there’s a seven-month
`period, smack dab in the middle of the critical period, that’s unaccounted
`for, except solely for the testimony of the inventors.
`Turning to slide 24. We’re also talking about events that --
`JUDGE GROSSMAN: Mr. Abdelnour, this is Judge Grossman. Can
`you point