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United States District CourtDistrict of NevadaLas Vegas, Nevada
SYMBOL TECHNOLOGIES, INC., .et al., . Docket No. CV-S-01-701-PMP(RJJ) Plaintiffs . CV-S-01-702-PMP(RJJ) . CV-S-01-703-PMP(RJJ)
vs. . .LEMELSON MEDICAL, EDUCATION .& RESEARCH FOUNDATION, .LIMITED PARTNERSHIP . . Defendant . Las Vegas, Nevada . December 06, 2002 . . . . . . . . . . . . . . . 8:45 a.m.And related cases and parties
COURT TRIAL - DAY 10
THE HONORABLE PHILIP M. PRO PRESIDINGCHIEF UNITED STATES DISTRICT COURT JUDGE
COURT RECORDER: TRANSCRIPTION BY:
ERICA DAVIS NORTHWEST TRANSCRIPTS, INC.U.S. District Court Las Vegas Division
P.O. Box 35257Las Vegas, Nevada 89133-5257(702) 658-9626
Proceedings recorded by electronic sound recording, transcript
002
produced by transcription service.APPEARANCES:
FOR THE PLAINTIFFS: JESSE J. JENNER, ESQ.STEVEN C. CHERNY, ESQ.CHARLES QUINN, ESQ.ALBERT E. FEY, ESQ.WILLIAM J. McCABE, ESQ.KENNETH B. HERMAN, ESQ.PABLO D. HENDLER, ESQ.JOHN P. HANISH, ESQ.KHUE V. HOANG, ESQ.Fish & Neave1251 Avenue of the AmericasNew York, New York 10020
ELISSA F. CADISH, ESQ.Hale, Lane, Peek, et al.2300 West Sahara Avenue, #800Las Vegas, Nevada 89102
FOR THE DEFENDANTS: GERALD HOSIER, ESQ.8904 Canyon Springs DriveLas Vegas, Nevada 89117
STEVEN G. LISA, ESQ.55 West Monroe, Suite 3300Chicago, Illinois 60603
VICTORIA GRUVER CURTIN, ESQ.LOUIS JAMES HOFFMAN, ESQ.14614 N. Kierland Blvd., 300Scottsdale, Arizona 85254
003
PROCEEDINGS BEGIN AT 8:45 A.M.1
THE COURT: Have a seat everybody.2
All right, Dr. Horn, come on back up, if you would.3
MR. HOSIER: Your Honor, good morning.4
THE COURT: Mr. Hosier.5
MR. HOSIER: Just briefly.6
We're anticipating another one of the patent experts7
and I just wanted to, one, renew the motion in limine, not to8
exclude Martin Adelman from taking the stand, but really9
limiting his testimony and limiting his testimony to the kinds10
of issues that are here in the prosecution laches, the11
reasonable delay, unexplained delay issues. Issues like fraud12
and so on are just inappropriate.13
I think, as we probably have seen from even14
yesterday, we're off into the law and even more there's going15
to be an excursion into the law --16
THE COURT: Well, let's do this. When we get -- I17
don't know that we're going to get to him today --18
MR. HOSIER: Oh, no, no.19
THE COURT: -- because I expect Dr. Horn's direct20
and cross is going to consume the day and probably next week.21
MR. HOSIER: No, I just wanted to hand up -- Judge22
Holland, in the related case down in --23
THE COURT: Alaska?24
MR. HOSIER: In Phoenix.25
004
THE COURT: Oh, in Phoenix. 1
MR. HOSIER: In Phoenix.2
THE COURT: Well, he's in Alaska, but yeah.3
MR. HOSIER: He's in Alaska, but in Phoenix he's4
been in charge of those cases. There, the group that Fish &5
Neave used to represent, now represented by other attorneys,6
have proposed, for a trial we have on February 3 there, an7
expert witness to testify on the law.8
THE COURT: Uh-huh.9
MR. HOSIER: Judge Holland just issued an opinion10
excluding that witness from testifying, which we just want to11
commend to the Court here.12
THE COURT: Okay.13
MR. HOSIER: And just hand that up.14
THE COURT: All right. Have you got a copy for Mr.15
Quinn there?16
MR. HOSIER: Yes. And that's all, just to alert the17
Court to the potential issue.18
THE COURT: All right. Well, I'll look at that over19
the weekend and be prepared to address it when the witness --20
MR. QUINN: Your Honor, at the risk of delaying21
things for another few seconds, we need clarification on what22
I thought your ruling was yesterday, that the Lemelson23
Foundation would identify their first three witnesses. We24
didn't get that identification, and I'm told this morning that25
005
apparently we're not going to, so if you could just clarify1
that.2
THE COURT: Other than Dorothy Lemelson and one3
other witness, whose name escapes me, there were three more.4
MR. QUINN: There's supposed to be two others after5
Mrs. Lemelson, Your Honor.6
THE COURT: Okay.7
MR. HOSIER: Well, Your Honor, I just spoke with Mr.8
Jenner yesterday and it seems now very clear that they're not9
going to get through their case until next Wednesday and10
probably early into the following Monday. I don't want to11
have witnesses that are going to drag over multiple days. I12
mean, we clearly have Dolly Lemelson coming, we have Dr.13
Grindon coming, we have Brian Williamson coming, we have Mr.14
Putnam coming. Exactly the order in which I put them I'll --15
THE COURT: But those are going to be the first16
four?17
MR. HOSIER: But maybe not in that order.18
THE COURT: No, I understand.19
MR. HOSIER: Yes.20
THE COURT: But they're going to be the first four. 21
Okay. 22
MR. HOSIER: Well, except if I run into scheduling23
problems, but, I mean, by next Wednesday -- I mean, we don't24
have very many. I think most all our case will be in in five,25
006
six days, except for one witness, or --1
THE COURT: Who's that?2
MR. HOSIER: It probably will be Dr. Hunt, which3
would take more time, and whether --4
THE COURT: And you definitely don't expect to call5
Hunt early?6
MR. HOSIER: Right.7
THE COURT: You expect to call him at the end?8
MR. HOSIER: Right.9
THE COURT: Okay.10
MR. HOSIER: So they basically got it. We're going11
to have most of the witnesses that week. If we have --12
THE COURT: All right. Well, get your -- you know13
those four. Get the order of them as early as you can in14
terms of who's going to go first, but I think that --15
MR. HOSIER: I mean, they're going to know it by --16
THE COURT: And what I'll do, Mr. Quinn, is I'll17
give you --18
MR. HOSIER: I mean, they're going to know it --19
THE COURT: I'll give you the weekend, that20
following weekend anyway. I wouldn't expect you to be21
prepared to deal with one of the individuals, other than the22
first couple that were mentioned, next Wednesday or something23
anyway.24
MR. QUINN: That's fine.25
007
THE COURT: And I'd simply put over any examination1
of those witnesses 'til the following Monday.2
MR. HOSIER: I mean, they had 27 witnesses didn't3
even want to give us the Wednesday before.4
THE COURT: No.5
MR. HOSIER: Some cut down. We got seven or so and6
they know it and they're complaining. This is what I have7
with New York lawyers all the time.8
MR. QUINN: Well, Your Honor, if --9
THE COURT: Well, no, I -- no, we don't --10
MR. JENNER: Just a minute, Your Honor.11
THE COURT: Hold on. Hold on. We don't -- we 12
don't --13
MR. QUINN: If I might, all Mr. Hosier had to do was14
tell us -- 15
THE COURT: Right. Right.16
MR. QUINN: -- that the first four were going to be17
Mrs. Lemelson, Grindon and --18
THE COURT: Right. We don't -- we don't need19
aspersions about lawyers from any locale. I think -- this is20
a case --21
MR. QUINN: And I just want the record to reflect,22
Your Honor, that I'm from New Jersey.23
MR. LISA: I was born there.24
THE COURT: All right, well, then --25
HORN - DIRECT008
MR. JENNER: Your Honor, I've been unusually silent1
about this kind of thing, but I would like these kinds of side2
comments to stop.3
THE COURT: Yeah. You know, --4
MR. JENNER: I don't think they contribute anything5
to the proceedings.6
THE COURT: No, no.7
MR. JENNER: And we've put up with this all through8
the trial.9
THE COURT: They don't. And, frankly, you know,10
there have been times when both sides have made statements11
about -- not each other so much, but clients back and forth,12
and that doesn't contribute anything to the dialogue. It's13
the kind of thing I expect sometimes from clients who feel14
strongly, passionately about things, who probably hate each15
other in some respects or resent each other in some respects,16
and sometimes with good reason, sometimes not, but not from17
counsel.18
So let's move on and let's just hear from Dr. Horn,19
and let him continue with his, and hopefully wrap up his20
direct examination as quickly as we can.21
MR. HOSIER: I get these shrill comments about my22
client being a liar and a cheat in the midst of examination.23
THE COURT: No, no. I know. I know. Look -- yeah.24
MR. HOSIER: I mean, it's -- for these people to25
HORN - DIRECT009
suggest this I think is ridiculous.1
THE COURT: Look, it doesn't -- I'm not impressed2
with comments about a client being a liar and a cheat either. 3
I'm not -- I've got cases all day long about people who are4
liars and cheats. I send them to prison all day long. I've5
got libel cases from a colorful local resident suing the6
junior senator from the State of New York and other people7
that are pending in front -- just remanded by the Circuit. I8
mean, I've got cases all over the place that involve9
allegations of libel or lying or cheating, and there you've10
got evidence to deal with, but let's move on and avoid the11
hyperbole.12
(Pause in the proceedings)13
THE COURT: Go ahead.14
MR. JENNER: Thank you, Your Honor. Thank you, Your15
Honor. I think I'm losing my voice.16
DR. BERTHOLD HORN, PLAINTIFF'S WITNESS, RESUMES THE STAND17
DIRECT EXAMINATION (Continued)18
BY MR. JENNER:19
Q I'd like to return briefly to the issue of a written20
description that came toward the end of your testimony21
yesterday and I'd like to ask you just a couple of more22
questions. I want you to make some additional assumptions of23
the kind that I asked you yesterday.24
I'd like to ask you first to assume that the claims of25
HORN - DIRECT0010
the patents are construed in a manner that would permit them1
to cover the use of image processing algorithms.2
A Okay.3
Q If the claims were to be construed in a manner that would4
cover image processing algorithms, in your opinion would a5
person of ordinary skill in the art in the 1956 to 1963 time6
frame have understood that Mr. Lemelson intended to disclose7
and claim such an invention?8
A No, because he doesn't describe any algorithms or9
programs that would be instantiation of algorithms. He10
doesn't even show a flow chart, which would be a way of11
indicating an algorithm without writing it down in a12
programming language.13
Q All right, the same question, Dr. Horn, as to image14
analysis algorithms as opposed to image processing algorithms,15
to the extent that there's a difference.16
If the claims of the patents-in-suit were to be construed17
in such a manner as to enable them to cover image analysis18
algorithms, in your opinion would a person of ordinary skill19
in the art in the 1956 to 1963 time frame have understood that20
Mr. Lemelson intended to disclose and claim such an invention?21
A My answer would be the same. There are no algorithms and22
no programs.23
THE COURT: Explain to me again, though, because it24
escapes me, the difference between image analysis and image25
HORN - DIRECT0011
processing as simply as you can.1
THE WITNESS: Certainly, Your Honor.2
Image processing is a set of techniques for3
producing a new image from an existing image. For example,4
you might sharpen it, crispen it or you might blur it or, you5
know, perform some of the manipulations that are done in photo6
shop or some superimposition of the image.7
THE COURT: Enhance it in some way?8
THE WITNESS: Enhance it.9
THE COURT: Okay.10
THE WITNESS: Whereas image analysis takes an image11
on its input and doesn't produce an image on its output, but12
produces some kind of summary result, such as the area of the13
object is 25 or the easel is not a widget of type A in this14
image.15
THE COURT: Thank you.16
Go ahead.17
MR. JENNER: I don't normally do this, but could I18
ask the Court's permission if it would be all right this19
morning if I utilize a cough drop?20
THE COURT: Oh, sure, yeah. No, go ahead. Go21
ahead.22
BY MR. JENNER:23
Q Now I want to ask you the same type of question regarding24
digital image processing.25
HORN - DIRECT0012
A Yes.1
Q I want you to assume that the claims are construed in a2
manner that would permit them to cover digital image3
processing. If the claims were to be construed in that4
manner, in your opinion would a person of ordinary skill in5
the art in the 1956 to 1963 time frame have understood that6
Mr. Lemelson intended to disclose and claim such an invention?7
A Again, the answer is no. For example, just to start off8
with, for digital image processing you need a digital image. 9
No digital image is created here. We're dealing with analog10
video waveforms.11
So, to reiterate, the digital image is an array of12
numbers representing brightnesses and they're sampled in the13
image on positions called picture cells or pixels and there's14
nothing like that disclosed here.15
Q The same thing with digital image analysis. If the16
claims were to be construed in a manner that would permit them17
to cover digital image analysis, in your opinion would a18
person of ordinary skill in the art in the 1956 to 1963 time19
frame have understood that Mr. Lemelson intended to disclose20
and claim such an invention?21
A My answer again would be that, no, he did not.22
Q All right, sir, now yesterday I asked you if there were23
any digital codes shown on the tapes of the environment other24
than the parallel location codes shown in Figure 1 and you25
HORN - DIRECT0013
told me last night that you wanted to add something to the1
answer that you gave.2
A Yes. I neglected to mention that there are other codes3
labeled PC', for example, which could be used to record the4
location in a serial manner rather than parallel. So rather5
than have the code spread across multiple tracks, you can6
write the binary digits of the code along one track.7
There are also additional uses of that code, for example,8
to indicate a tolerance range that could be used in additional9
analysis.10
Q Do those codes represent the amplitude of a video signal?11
A No, they do not.12
Q Now I asked you yesterday if there is any disclosure of13
circuitry to perform multiple subtractions, I guess, as I'm14
told, the way that I phrased it, and you said no. What did15
you understand by my reference to multiple subtractions?16
A I imagine that you intended to mean successive17
subtractions, so if, for example, the image has several18
inflections along one scan line, that will subtract the19
position of the second from the first, the third from the20
second, the fourth from the third and so on. That's the kind21
of subtraction I was thinking you were referring to.22
Q Yes, that is what I was intending to refer to, sequential23
subtractions.24
A Yes.25
HORN - DIRECT0014
Q And I was told that I used the term multiple and I wanted1
to make sure that we clarified any possible misunderstanding2
about that.3
Now I don't think I asked you specifically about the4
utilization of synchronization or sync codes on the magnetic5
medium. What are sync or synchronization codes?6
A Well, in the arrangements of multiple tracks on the7
magnetic tape that Lemelson says is basic to his invention,8
the very first track, C1, is one that carries a single pulse9
that tells you where the picture starts. And, obviously,10
that's very important because everything in the picture is11
going to be in reference to the position of that pulse, so12
that's usually called S1, the sync pulse.13
Q And is that shown, for example, in Figure 3?14
A Yes. On track C1, over on the left-hand part of the --15
Let's see if I can aim for the right spot here. It's over16
here, and I'll take my graphic away, so it's labeled here sync17
signal and it's on track C1. And, again, it's the beginning18
of the image and everything is in reference, measured in19
reference, to that sync pulse and the processing depends on20
starting with that pulse.21
Q All right, sir. Now I'd like to go back to where we left22
off yesterday and I'd like -- I had asked you some questions23
about the development of the machine vision art.24
Do you recall that?25
HORN - DIRECT0015
A Yes.1
Q Now I'd like you to give the Court some idea of the work2
that actually was done between about 1956 and the 1980s to3
make machine vision practical.4
And have you prepared a chart to help explain the actual5
development of the art?6
A Yes, I have.7
Q I would ask you to turn to Exhibit 3468 in the binder,8
which is a fold-out chart.9
A Yes.10
THE WITNESS: I might say this was a very painful11
chart to prepare because counsel kept on taking out lots of12
things that I wanted to add that I thought were very important13
to the development of machine vision.14
BY MR. JENNER:15
Q Well, what, in your opinion, does the chart, what's still16
left on the chart, represent?17
A It shows some of the major events in the development of18
machine vision going up from the mid-1950s to mid-1980s. It19
excludes work on character recognition and particle counting20
and so on before 1950, but it highlights some of the more21
important developments.22
Q Now, as you alluded to, does this chart include all the23
developments in machine vision during the three decades that24
you might consider to be pertinent to the development of the25
HORN - DIRECT0016
art?1
A No, it does not.2
Q Now what, if anything, is a common thread in the3
development represented on this chart?4
A The common thread is algorithms. Everything depends on5
the development of algorithms. Certainly, the hardware6
available improved during those years, but the same algorithms7
that were developed by, for example, Huff in 1962 are still8
used on modern hardware.9
So the key is the concept of a recipe for computation or10
algorithm.11
Q And the use of such algorithms on improving equipment?12
A Yes.13
Q For most of the entries on the chart there are references14
under the subject matter to one or more of plaintiff's trial15
exhibit numbers. Is there a correlation between those trial16
exhibits and the event listed on the chart?17
A Yes. In each case we've picked a paper or patent that18
represents that development.19
Q All right, I'd like to hand you a binder.20
(Pause in the proceedings)21
MR. JENNER: And this separate binder has been22
essentially prepared with a cover sheet or index which has23
been marked as Plaintiff's Exhibit 3414. That's what appears24
inside the first tab and the index is intended to bring25
HORN - DIRECT0017
together the various other plaintiff's exhibits that are1
included in the binder.2
BY MR. JENNER:3
Q Have you examined this collection of documents, Exhibit4
3414, to confirm that it includes the publications that are5
identified on the chart?6
A Yes.7
THE COURT: Did you include a translation of that8
first article? My German would not be good enough to --9
MR. JENNER: We did not.10
THE COURT: Okay.11
MR. JENNER: I think it's more intended to represent12
the scope of the art. What I'm going to do is to ask the13
witness -- In fact, I will ask the witness.14
BY MR. JENNER:15
Q Without spending too much time on particular terminology,16
can you just explain to the Court what some of the17
developments on the chart are and why you consider them18
important to the development of machine vision over the19
decades?20
A Okay, I'd first like to address Your Honor's question21
about the first article. I can't translate the whole article,22
but the title, at least, is "Lectures Over Content, Area and23
Perimeter." One of the topics in machine vision is to indeed24
determine the shape, area and perimeter of elementary shapes25
HORN - DIRECT0018
in the image area.1
Q Now this article is listed under the topic of morphology,2
so I take it this article has something to do with what's3
called morphology?4
A Yes. One of the important developments in machine vision5
was to acknowledge the two-dimensional nature of the image,6
that objects are not linear in the image, they represent some7
area, and that the shape is important and that automatic8
methods should be developed to determine that shape and to9
describe it.10
Q All right. With reference to the chart, can you11
summarize what you consider to be some of the important12
developments?13
A I'll just pick some, edge and curve detection. Starting14
in the 1960s, very early on, people had the notion that there15
must be a way of distinguishing an object from its background16
by comparing brightness values and very early on they also17
determined that that actually was quite difficult, that you18
could not determine a boundary between an object and the19
background just by comparing numbers on either side of the20
boundary. And one of the things they determined is that you21
can only tell there's an edge by looking at a considerable22
area and seeing, okay, one part of it is considerably brighter23
than another part of it and, in essence, collecting24
statistics, simple things like averages, the average of this25
HORN - DIRECT0019
area is larger than the average of that area, and then using1
that in further decision making, whereas just comparing two2
neighboring brightness values is completely unreliable.3
And it's a surprise because at first you think that that4
should work and it took several years for machine vision to5
reach that conclusion and to find a way around it.6
And I'll pick another one.7
Q Well, let me stop with that for a moment and just ask you8
if you can relate that development to the disclosure of the9
patents-in-suit.10
A Okay, sorry. I didn't make that clear.11
Finding inflections along a scan line in an analog video12
signal is exactly what I was talking about when I was saying13
comparing neighboring brightness values and that's exactly the14
thing that these people discovered didn't work and why they15
had to work for many years to find statistical techniques that16
are based on large image areas to find edges or inflections17
properly.18
Q All right, sir, would you please continue?19
A The next development on this list is the half transform,20
for which Huff received the patent quite early on, which is a21
little surprising because, of course, there was a time where22
algorithms were not patentable. You had to have a physical23
implementation to receive a patent and he did that.24
So what is it he did is he developed an algorithm for25
HORN - DIRECT0020
detecting lines and curves in images. And the reason, again,1
this is not trivial is that images are noisy. The numbers in2
the images are not the perfect numbers that you might at first3
expect and that to reliably find edges and straight lines and4
curved lines requires a collection of statistical information.5
And his method is called the transform method because he6
basically has a mathematical technique of mapping the image7
into another kind of representation and in that representation8
there will be strong peaks. So if there's a line at a certain9
angle and a certain position, in the transform there will be a10
strong peak at a certain position.11
And that's about as much of the technical detail I'd like12
to say on that one.13
Q And why is that something you consider important to the14
development of the art?15
A Well, first of all, it's one of the first patents16
covering more complex machine vision algorithms and then17
because, again, it emphasizes this idea that the detection,18
even of just edges and lines, is not a trivial matter. This19
man received the patent for coming up with a very good way of20
doing that and just finding inflections along a scan line is21
not the way to do it.22
Q Well, you anticipated my next question, which is is there23
anything in the patents-in-suit that in your opinion points24
the way towards what became the Huff Transform?25
HORN - DIRECT0021
Q Well, there's a related matter, which is, again, the1
detection of inflections, which is based simply on determining2
whether a signal is above or below a threshold and only takes3
into account local information so that, if there's any4
corruption of that information, as there always is due to5
noise, you can't be sure that you have an edge and so Huff6
solved that by collecting statistical information over large7
parts of the image.8
Q So are you saying that Huff solved the problem that was9
actually left remaining by the patents-in-suit?10
A Yes.11
Q All right, can you continue with the chart?12
A Well, I'll pick another one, blob analysis, which went13
through a series of developments ending up with a package14
supplied by SRI that was adopted initially by Automatix.15
Q Who is SRI?16
A SRI is the Stanford Research Institute. It's associated,17
of course, with Stanford University. It did a lot of work for18
the Department of Defense and was also critical in the early19
developments of machine vision.20
Now one of the reasons blob analysis is interesting --21
Let me first say what it is. The idea is that we can take22
certain image regions that correspond to images of objects and23
analyze the nature of those imageries. For example, we can24
determine their size, of course, their perimeter and, if25
HORN - DIRECT0022
they're elongated, we can determine how they rotated in the1
image. All of these are very important things for directing2
robotic equipment to, for example, pick a part off a conveyer3
belt.4
And one of the things that's interesting about blob5
analysis is that it works entirely without reference to a6
standard. It doesn't depend on having had a picture of the7
object ahead of time that's somehow stored and compared. In8
blob analysis you determine -- you find an object and you9
determine its orientation entirely based on the shapes in the10
image as opposed to doing some sort of comparison.11
Q Now is there anything in the patents-in-suit that is12
related to blob analysis?13
A You'll have to remind me what it is you're referring to.14
Q The development of blob analysis, is there anything in15
the patents-in-suit that discloses blob analysis?16
A No. And, in fact, precisely because of the point that17
the patents-in-suit involve comparison with a standard or at18
least use gating signals derived from a standard, it's very19
different. This is a technique that works on its own,20
straight from the images, without a standard image.21
THE COURT: We had earlier testimony concerning -- I22
believe it was something called connectivity algorithm, is23
that --24
THE WITNESS: Precisely, Your Honor.25
HORN - DIRECT0023
THE COURT: It's the same thing.1
THE WITNESS: That's exactly what this is about,2
yes.3
BY MR. JENNER:4
Q Now let me ask you, in that sense, does the work on the5
time line, Exhibit 3468, foreshadow the development of the6
algorithms that are used today by Cognex?7
A Yes. Certainly there have been tremendous advances and8
improvement by people like Bill Silver, but the roots of much9
of that work can be found in this earlier work, often in the10
research laboratories and so on.11
Q All right, sir. And, in that same vein, you recall12
yesterday I asked you whether current modern machine vision is13
simply a -- I think I called it smaller, faster, better14
version of what is disclosed in the Lemelson patents or is15
something entirely different and you gave an answer to that16
question.17
A Yes. It's something entirely different. And I think by18
pulling out a few of these examples, I hope to have made it19
clear just how it is different.20
Q All right. And let me ask you now the same question in21
relation to Cognex machine vision products and their use.22
Would you consider Cognex machine vision products and their23
use to be simply a faster, smaller, better version of what is24
disclosed in the Lemelson patents or is it something entirely25
HORN - DIRECT0024
different?1
A No, they're definitely entirely different in all of the2
ways that I've described so far and noting again that the3
disclosure in the Lemelson invention is very narrowly focused4
at two particular things that it can do, this point-by-point5
comparison and the measurement along a scan line and then, not6
to repeat myself, but it's based on certain assumptions which7
turn out not to be very good assumptions.8
Q All right, sir, going back to the chart, is there9
anything on the chart that actually reflects some of the work10
that you did?11
A Well, I left most of that out because I don't12
particularly enjoy blowing my own horn.13
Q Yes, but, at my insistence, did you include something? 14
A Yes. I believe -- Well, I believe, amongst other things,15
you've got something in here on the edge detection and the16
work we did at MIT on robotic guidance based on robots. That17
would be the machine vision guidance of robotic equipment and18
Winston is the person I worked with on what I called hand/eye19
systems where we're using a camera to determine the position20
and orientation of objects and then using that to control the21
movement of a manipulator arm to pick up those objects and to22
place them or combine them with other objects.23
Q Would you turn in the binder to tab 11? There is an24
article from the Massachusetts Institute of Technology,25
HORN - DIRECT0025
Artificial Intelligence Laboratory, entitled, "The1
Binford/Horn Line Finder."2
Are you the Horn of the Binford/Horn Line Finder?3
A Yes. This is an article I wrote to describe the image4
analysis in the hand/eye system that I just referred to, which5
was built in 1970. I was then forced to leave the country for6
a year and a half to work off the scholarship I had and, when7
I returned in July 1971, I wrote up the results we had in 19708
and then I added graphics to it in 1973. So that's this9
report.10
And this talks about our work on edge detection, which11
included the discovery that, well, gee, just comparing12
neighboring values of brightness in an image isn't going to13
work and this describes a method that uses a large area of the14
image to obtain statistical information to confirm that15
there's an edge in a particular position.16
Q Now as you said earlier that much of the development17
reflected here relates to the development of algorithms?18
A Yes, pretty much all of it here is -- the central theme19
is always algorithms.20
Q Could practical machine vision have emerged without the21
work summarized in this chart?22
A No.23
Q In your opinion, is any of the research and development24
set forth in the chart and reflected in this binder disclosed25
HORN - DIRECT0026
by the Lemelson patents-in-suit?1
A None of it is disclosed by the patents.2
Q In your opinion would machine vision technology be one3
bit different today if the Lemelson patents had never issued?4
A No.5
Q Why not?6
A Because --7
MR. LISA: Your Honor, that calls for speculation. 8
I mean, how can he -- I mean, gross speculation, frankly;9
would life be any different if they hadn't issued.10
THE COURT: Well, right, if the airplane hadn't been11
invented. I'm sure --12
MR. LISA: Or if perhaps Wright didn't invent it.13
THE COURT: No, no, I understood the question really14
to relate to any connection between Lemelson and what has15
developed, not if Lemelson had never existed would machine16
vision -- 17
MR. JENNER: The patents. This relates exactly to18
the technology and in the area of his expertise.19
THE COURT: Oh, I understand that. Restate the20
question just so I --21
MR. JENNER: Would machine vision technology be any22
different today if the patents had never issued.23
THE COURT: All right, I'll let the witness give his24
opinion on that.25
HORN - DIRECT0027
THE WITNESS: Well, in my opinion, it wouldn't and1
one of the reasons is that in all of my work I haven't come2
across any scholarly publication that referenced it or that3
was based on it and so -- and also, in my contacts with people4
in the field, I've never come across it until these suits5
arose.6
And so it has not had an influence on any of these7
areas, so my answer would be no.8
BY MR. JENNER:9
Q Do any of the developments that you have referred to over10
the 30-year period of time reflected in the chart derive from11
the disclosures of the Lemelson patents-in-suit?12
A No. And, in fact, many of them go in directions that13
resolve some of the problems of the kinds of techniques14
described in the patent.15
Q In your opinion, do the patents-in-suit deserve any16
credit for the development of machine vision as it's practiced17
today?18
A No.19
Q To the best of your knowledge, what are some of the most20
frequently cited publications in the machine vision field?21
A Well, now I can't avoid talking about myself. Probably22
the most cited paper is the one on optical flow that I wrote23
in 1978, which relates to finding movement in images and24
creating a vector field describing that movement. It has over25
HORN - DIRECT0028
a thousand references and is one of the reasons I received one1
of the awards I did.2
Q To your knowledge, how often have any of the Lemelson3
patents-in-suit been cited in this published literature?4
A Zero.5
Q So, in view of your experience over the decades reflected6
in the chart, your work in the art and your knowledge of the7
work done by others, is it appropriate for defendant to8
characterize the Lemelson patents as pioneering?9
A No.10
Q In fact, as you have alluded to, do you have an opinion11
as to whether or not anything useful could be made in12
accordance with the disclosure of the Lemelson patents?13
A I don't believe there's any way of building it, even if14
the parts of it could be found, or that it would work if15
somehow, magically, all of the problems with the parts were16
corrected or the fact that some of the parts just don't exist.17
Q All right.18
MR. JENNER: And on that note, Your Honor, I would19
like now to turn to the topic that we call non-enablement.20
THE COURT: All right.21
MR. LISA: Your Honor, so my silence is not taken to22
admit these -- as an admission that the documents are23
admissible, we certainly object to the articles being admitted24
for the truth of the matter stated. We have no objection to25
HORN - DIRECT0029
the expert's testimony, but the articles and things attached1
to this chart are pure hearsay.2
THE COURT: All right.3
MR. JENNER: All right. Well, in that case, Your4
Honor, -- well, I guess I ought to ask Your Honor for a ruling5
on that.6
THE COURT: Well, --7
MR. JENNER: I acknowledge that there is a hearsay8
rule provision regarding learned treatises and, if it's Your9
Honor view that these should not come in as indicative of the10
witness' testimony regarding the development of the art, then11
I would ask the witness a few more questions about a couple of12
topics that he hasn't mentioned and then offer the table of13
contents, which lists the publications, to go along with his14
testimony.15
I would go whichever way Your Honor prefers.16
THE COURT: Let me do this. I'll reserve ruling on17
receiving 3414 and the attachments thereto. They're each, I18
think, marked separately, even though they're tabbed. Well,19
no, maybe they're not.20
MR. JENNER: I believe they are.21
THE COURT: Well, they are.22
MR. JENNER: They are.23
THE COURT: They are. Yeah, they bear different24
markings.25
HORN - DIRECT0030
MR. JENNER: Right. They're all separately numbered1
so that, if there's a need, they --2
THE COURT: And they don't duplicate other things3
that have already been received then?4
MR. JENNER: That's correct.5
THE COURT: Okay.6
MR. LISA: Perhaps we could request if they have --7
if counsel has a translation of that first article that we8
could look at. I mean, --9
THE COURT: Well, you see, it's not something10
obviously that I'm going to be able to read. It's indicative11
of what the witness, in his expertise, testifies is relied12
upon in the development of particular technology, machine13
vision technology, over the years.14
MR. LISA: I certainly can't ask any questions off15
of it as I don't -- I can't read it or understand it.16
THE COURT: And I think the witness indicated he17
could not.18
Have you read a translation of that particular19
article or are you able to read it?20
THE WITNESS: I've read it. I haven't seen a21
translation of it.22
THE COURT: All right.23
MR. LISA: And I would add too, Your Honor, the fact24
that the witness relied on these does not make them admissible25
HORN - DIRECT0031
under Rule 703.1
THE COURT: No, I understand that. I understand2
that. Yeah, let me reserve ruling on that. I don't need any3
more testimony concerning them. I'll be able to make a4
ruling, but --5
MR. JENNER: All right. And, Your Honor, what I'd6
like to do contingently along with the chart is in the7
event --8
THE COURT: Oh, the chart I will receive.9
MR. JENNER: Yes, I understand that.10
THE COURT: Yeah.11
MR. JENNER: What I'd like to do also, as12
illustrative of the witness' testimony, in the event Your13
Honor does not receive the full binder, is offer separately14
Exhibit 3414.15
THE COURT: The table of contents.16
MR. JENNER: Which is the two-page index that lists17
the topics related on the chart and the fact that there are18
documents that are representative of those developments.19
THE COURT: Do you have a separate objection to the20
table of contents, Mr. Lisa?21
MR. LISA: Actually, I might, Your Honor, as it22
might be argumentive, the arguments of counsel and not the23
testimony of the witness. To have something as illustrative24
as a witness' testimony leaves it wide open as to what it's25
HORN - DIRECT0032
being introduced for. The witness testified whatever he1
testified to. If it's just a table of contents that repeats2
the -- you know, that repeats verbatim the titles, I have no3
problem with that, Your Honor.4
MR. JENNER: It does repeat verbatim the titles as5
far as I am aware.6
THE COURT: Yeah.7
MR. JENNER: And then it --8
THE COURT: That's what it appears to do.9
Well, first of all, I'll receive 3414, but, as to10
the attachments, let me reserve ruling on that.11
(Plaintiff's Exhibit No. 3414 admitted)12
BY MR. JENNER:13
Q Now, sir, in your review of the Lemelson patents-in-suit,14
did you come across any errors that in your opinion would have15
prevented the system disclosed by the patent from working?16
A Yes, I did. And they come in several categories,17
including use of devices which don't exist, errors in circuits18
and so on.19
Q All right. And did you prepare a chart that summarizes20
some of the errors that you found in the patent?21
A Yes.22
Q Would you turn to Exhibit 3469?23
A Yes.24
Q Can you identify 3469?25
HORN - DIRECT0033
A Yes. This is the chart of some of the problems I found.1
Q Does the chart include each and every error that you2
found in the patent?3
A No, it does not.4
Q Why not?5
A Well, in the interest of time, counsel and I agreed to6
reduce the number of items that we'd focus on just to7
illustrate the kinds of problems we're dealing with.8
Q Now I'm going to ask you to go through the chart with me9
and explain some of the errors that you found.10
First, is there any error you found that pervades the11
entire patent?12
A Yes. For example, the use of a multitrack analog13
videotape recorder, which did not exist and never did exist14
actually.15
Q And what about item 7, can't reliably detect inflections?16
A That's another one that is central because all of the17
processing is only off the gating and clipping, so the18
clippers are, of course, what are used to detect inflections19
and therefore, if you can't reliably detect inflections,20
everything is compromised.21
Q All right, let's go back to number 1, the multitrack22
analog videotape recorder. And by that are you referring to23
the recording member indicated by the number 10 in the various24
figures of the patent?25
HORN - DIRECT0034
A That's correct.1
Q Now did a wide-band multitrack analog video recording2
system exist in the 1956 to 1963 time frame?3
A There wasn't one. There were several experimental ones. 4
Obviously, everyone was very keen to be able to get away from5
live broadcast, so Bing Crosby, for example, worked very hard6
on this, as did several electronics companies, and RCA had an7
experimental device.8
The problem was finally solved later by Ampex, but,9
importantly, the Ampex device recorded only a single video10
track and, as we saw, Lemelson's system depends on an11
arrangement of signals on a multitrack tape, which, as he12
says, is basic to his invention.13
Q Well, would, in your opinion, the Ampex system have been14
capable of utilization in the embodiments of the Lemelson15
patents?16
A No, because it was a single-track device. It worked17
somewhat similar to today's VHS recorders in that it recorded18
the information across the length of the tape rather than --19
across the tape rather than along the tape. That's how it got20
a much longer line to record on essentially, in contrast to21
the other attempts, such as the RCA tape recorder.22
Q Did the single-track Ampex videotape recorder catch on23
commercially?24
A The Ampex recorder?25
HORN - DIRECT0035
Q Yes, the Ampex recorder.1
A Oh, it certainly did, and everyone else immediately took2
licenses to it, including RCA, and it was further developed to3
eventually become the kind of recorder we have today.4
Q Did the experimental work you referred to at the Bing5
Crosby Laboratories lead to anything commercial or practical?6
A No. It wasn't practical for a number of reasons. The7
Bing Crosby tapes used multiple tracks, but only because they8
couldn't record the video signal on a single track, so they9
split it up across ten tracks and they had a switch that would10
go between the ten tracks. The switch introduced a noise that11
was quite clearly visible in the picture as stripes and12
obviously, if you're going to try and make an accurate point-13
by-point comparison of images, you're going to be severely14
compromised by having superimposed stripes on the image that15
you're looking at.16
Q What happened to the experimental Bing Crosby multitrack17
recorder?18
A They abandoned it fairly early on and it was never heard19
from again.20
Q If I were a person of ordinary skill in the art in 195621
and I wanted to try to implement Mr. Lemelson's system, could22
I go down to the corner videotape recorder store and buy a23
Bing Crosby multitrack recorder?24
A No. And, in fact, you wouldn't even have found a working25
HORN - DIRECT0036
multitrack analog videotape recorder in research labs.1
Q What about the RCA multitrack experimental recorders, did2
anything ever come of that?3
A RCA used a different technique for splitting up --4
MR. LISA: Objection. Your Honor, I'm objecting as5
to the lack of foundation for some of his testimony. How does6
he know whether you could go down to the store and buy it in7
1956. He wasn't even there.8
THE COURT: Well, all right. I think the witness is9
not testifying that he was there in 1956 looking for such a10
store, but that based on his understanding of the technology11
at the time it didn't exist, so you couldn't.12
MR. LISA: But we have no foundation that he's even13
studied this issue for back then. There's nothing.14
THE COURT: Well, I'll let you go into that on15
cross-examination if you want to explore his -- what he was16
doing in 1956 or what he's studied about that period in17
history.18
But go ahead. I'll overrule the objection at this19
point.20
BY MR. JENNER:21
Q All right, the same as to the RCA experimental multitrack22
system that you referred to, what ever happened to that?23
A It was also abandoned and RCA took a license from Ampex24
as soon as Ampex solved the problem of recording on magnetic25
HORN - DIRECT0037
tape.1
Q Did anyone commercialize a multitrack analog video2
recording system of the kind that could have been used in3
implementing Mr. Lemelson's system to record the signal4
arrangement that he said was basic to his invention in column5
10 of the patent?6
A No, nobody did develop such a system.7
Q Are there multitrack audio systems -- audiotape systems?8
A Yes, certainly. Multitrack audio systems were developed9
and some of us are old enough to remember the old eight-track10
systems, for example, which, I guess, was in the seventies.11
Q How do the bandwidth of the multitrack audio systems12
compare to the multitrack video system that would be called13
for by the patent?14
A Audio requires 20,000 cycles per second bandwidth, video15
requires the order of 3 to 4 million, so there's about a16
factor of 100 or 200 difference in bandwidth required, which17
is a huge number in terms of what it takes on the tape to18
record a signal.19
Q Could the multitrack audiotape recorder of a roughly20
20,000 cycles per second bandwidth have been used in the21
embodiments of the Lemelson patent?22
A No.23
Q Why not?24
A Because Lemelson deals with television cameras producing25
HORN - DIRECT0038
analog video signals of high bandwidth that could not be1
recorded on audiotape.2
Q Aren't there tape recording systems today that record3
video on tape, like a VHS tape?4
A Yes, there are. And VHS, for example, as I mentioned, is5
somewhat similar to the Ampex design in that it has only one6
video track. It may have additional tracks for control or7
cuing or audio, but those would be lower bandwidth tracks. 8
There's only one high bandwidth track.9
Q So, by way of example, could a common VHS type of tape10
have been used or be used in order to implement the Lemelson11
system?12
A No, because it wouldn't have been able to store the13
signal arrangements he described with multiple high bandwidth14
tracks.15
Q Now you say that no multitrack videotape recording system16
was available. Did Mr. Lemelson explain, in his patents, how17
to make and use a multitrack video recorder capable of18
recording the video signals that he said were basic to his19
invention?20
A No. He just assumed there was such a thing and I believe21
he based that assumption on the publication of a research22
report on an experimental RCA device.23
Q Given the absence of any disclosure in the patent of how24
to make such a multitrack video recorder, do you have an25
HORN - DIRECT0039
opinion as to whether or not a person of ordinary skill in the1
art in 1956 or 1963 could have made and used a multitrack2
video recorder for recording the video signals without undue3
experimentation?4
A No. And one reason I say that is that major research5
labs, powerhouses like RCA, worked on this problem and they6
had often dozens of people, perhaps a dozen senior engineering7
people, working on these problems for years and they weren't8
able to successfully solve this problem.9
So it's not something someone could do without undue10
experimentation certainly.11
Q Now are you aware that the patents refer to the12
possibility of using something called a storage tube to store13
an analog video signal?14
A Yes.15
Q What was a storage tube in about 1956?16
A A storage tube was a vacuum device with a deflectable17
electron beam that would store an image and typically they18
were used to provide persistence to an image so that, if19
something was displayed, you would be able to view it for a20
while even though the original signal went away.21
Q Did the possibility of using a storage tube solve the22
problem of not having available a multitrack analog videotape23
recorder?24
A No, because the storage tube, at best, could store one25
HORN - DIRECT0040
analog video signal. It could not provide the basic1
arrangement of signals that Lemelson refers to on his2
multitrack tape.3
Q Such as the gating signals?4
A Such as the sync, gating and other control signals.5
Q Do you have an opinion as to whether or not Lemelson6
required the multitrack videotape recorder even with the use7
of a storage tube?8
A He required it. And, of course, he shows in the figure9
the use of a storage tube in conjunction with the multitrack10
tape.11
Q Are you aware that the defendant has suggested that a12
type of storage tube called a conversion storage tube could13
have been used to reduce the bandwidth of a conventional14
television video signal to audio levels?15
A Yes, I'm aware of that.16
Q Do you agree that this is suggested by the references in17
the patents to storage tubes?18
A No, it isn't, because Lemelson is referring to what's19
called the direct view storage tube, which allows you to view20
the image, as well as store the image, and there's no21
suggestion of what are called scan conversion tubes, which22
would allow you to convert between different bandwidths.23
An example of a scan conversion tube is the one used to24
convert a radar signal to something you can view on a screen.25
HORN - DIRECT0041
THE WITNESS: As you know, Your Honor, in a radar1
signal a pulse is sent out and returns are received and these2
are plotted on a tube in radio fashion and then, and I'm sure3
you've seen this in many movies, the line turns around the4
center.5
Now the time taken for the radar to scan the whole6
area around the radar could be several seconds and also7
there's this awkward radio scanning pattern, so for display,8
to say air traffic controllers, that image is converted in a9
conversion storage tube to one that can be displayed on a10
ordinary TV.11
And that was one use of conversion storage tubes, but12
these are not the kinds of tubes that Lemelson was referring13
to.14
BY MR. JENNER:15
Q Now is there passages in the patent that lead you to16
conclude that Lemelson was referring to viewing storage tubes17
and not a conversion storage tube?18
A Yes. He explicitly says a viewing-type storage tube, a19
direct view tube.20
Q Let me call your attention to column 10, the passage21
starting at line 63 and carrying over to column 11, line 8. 22
Is there anything in that passage that relates to this issue?23
A Yes. He says the duration and character of the PB124
signal, that's the analog video signal, is preferably such25
HORN - DIRECT0042
that it may be used when reproduced therefrom to modulate the1
right beam of a video picture or storage tube and then he2
refers to a co-pending application filed in 1957.3
Q All right. And also would you look at the top of column4
11 -- column 10 starting at line --5
THE COURT: 63?6
MR. JENNER: Thank you.7
THE WITNESS: Yes, this text. I don't know if you8
want me to read it all out, but it --9
MR. JENNER: No, just the pertinent part.10
THE WITNESS: Okay, he's basically saying that it's11
-- "Thereafter, the signal is reproduced at video frequency12
and used to modulate the picture-generating right beam of a13
video monitor screen."14
So it shows that there's no change of bandwidth or15
frequency here in the storage tube. It's simply a device for16
storing and, at the same time, displaying an image.17
BY MR. JENNER:18
Q Did you also find information in the prosecution history19
that relates to this?20
A Yes.21
Q Would you turn to Exhibit 4A?22
MR. JENNER: Your Honor, Exhibit 4A is an excerpt23
from the 1963 prosecution history, which is Exhibit 4, and24
it's part of an appeal brief that was filed by Mr. Lemelson.25
HORN - DIRECT0043
THE COURT: All right.1
BY MR. JENNER:2
Q Do you have that, Dr. Horn?3
A Yes.4
Q Would you turn over to page 388 and at the top of page5
388 do you see that there's a reference to a book entitled6
"Storage Tubes" by -- it says Kroll and Kazan. Do you see7
that?8
A Yes.9
Q What was that book?10
A That was a book at that time describing storage tubes,11
these vacuum tube devices for image storing and display.12
Q Now starting at the bottom of page 387, at the very end13
it says "Applicant" and then it goes to the top of the next14
page.15
"Applicant," meaning Mr. Lemelson, "has a copy of the16
text entitled 'Storage Tubes' by Kroll and Kazan, 1952, which17
is a well-known text defining various video storage tubes,18
most of which are of the direct viewing image-generating19
types."20
Do you see that?21
A Yes.22
Q And then, if you look in the next paragraph, about six23
lines from the end, do you see where Mr. Lemelson said, "To24
one skilled in the art of television, the term 'video storage25
HORN - DIRECT0044
tube' refers to a direct viewing storage tube."1
Do you see that?2
A Yes.3
Q How, if at all, does that bear on your opinion as to what4
kind of a storage tube is referred to in the patent?5
A This, again, confirms the notion that, when he's talking6
about storage tube, he's talking about this type of storage7
tube, mainly a direct view storage tube, not a scan conversion8
kind of a tube.9
Q Now in your opinion, based on the information in the10
patent and the prosecution history, would a person of ordinary11
skill in the art in 1956, 1963 -- well, 1963, have understood12
Mr. Lemelson to have been referring to the use of a conversion13
type of storage tube?14
A No.15
Q Now are you aware that there is a reference, near the end16
of the patent, to something called a slow scan type of camera?17
A Yes. There's a reference to -- a single reference to18
slow or fast scan camera.19
Q And let's find that. Would you turn to column 62, lines20
27 to 34, and in particular the sentence that starts on line21
27? It says, "For example, a system may be provided utilizing22
one or more slow and/or fast scan video cameras," and then it23
continues.24
Do you see that?25
HORN - DIRECT0045
A Yes, I see that.1
Q What do you understand slow scan video camera to refer2
to?3
A Well, it's not clear since this is the only reference to4
slow scan in the application and, since standard video was a5
standard, NTSC, well defined, known number of lines, number of6
frames per second and so on, there were some experimental7
devices that might be referred to as slow scan. We don't know8
exactly what he has in mind here, but it could be a reference9
to such an experimental device.10
Q Is there anything at all in the patent, the entirety of11
the patent, where it refers to or explains what is meant by a12
slow scan camera?13
A No. And, in fact, it's quite contrary to the notion of a14
slow scan camera because he repeatedly talks about television15
cameras, he talks about video signals of high bandwidth,16
analog video signals of high bandwidth, recording them on the17
tape and so on.18
Q Now you referred to some experimental work. Would you19
turn to Exhibit 1373? This is Defendant's Exhibit 1373, which20
is way in the back of the binder. It's the next to the last21
document in the binder. And this is the point where, in22
turning to that, you have to be careful or the whole binder23
falls apart.24
(Pause in the proceedings)25
HORN - DIRECT0046
Do you have Defendant's Exhibit 1373?1
A Yes.2
Q Can you identify this?3
A This is an article published in QST in 1958.4
Q What, if anything, does this article disclose about a5
slow scan video camera?6
A This is written by Capthorne MacDonald and it describes a7
particular device that he developed for essentially sending8
facsimile pictures over ham radio frequencies, which was9
something of interest to ham radio operators at the time that10
television became widely available. They tried to find ways11
of sending pictures, typically scanned photographs or film, to12
other ham radio operators.13
Q What was the nature of the so-called slow scan camera?14
A The slow scan camera was a flying spot scanner, in other15
words, an electron beam, deflectable electron beam device, as16
I described yesterday, where the film or film negative was17
placed in contact with the cathode ray tube and the whole18
thing was enclosed in a light-tight box and there was a19
photocell that would detect the light coming out from the20
other side of the film.21
Q In your opinion, would such a slow scan flying spot22
scanner have been usable in Mr. Lemelson's system to solve the23
problem of not having a multitrack analog video recorder?24
A No. And one reason is that, in order to achieve the low25
HORN - DIRECT0047
bandwidth so they could transmit these signals over ham radio,1
they had to dramatically compromise on the image quality,2
starting off simply with the number of lines and the number of3
resolution elements along a particular line.4
So the pictures they produced were not of a quality that5
would have been suitable for any kind of detection of6
inflections. And, you know, there's some samples in here,7
which, of course, have suffered a little bit from multiple8
xeroxing, but you can see that the number of lines is very9
small, only 120 lines, and the resolution isn't very good10
horizontally.11
They were also very poor in signal to noise quality. And12
there's a way of measuring that in electrical engineering13
called decibel and the quoted signal to noise ratio for these14
systems was the order of 20 decibels, modern broadcast15
television is the order of 40 and so the noise that you'd see,16
if you looked at one of these pictures, aside from the fact17
that it was very low resolution, would have been substantial.18
Q And what do you mean by noise?19
A Again, noise is the superposition of measurement errors20
and, in this particular case, a significant part of the error21
comes from the cathode ray tube because the faceplate is not22
uniform. There are little grains of phosphorescent material23
and, as the beam scans across the grains, different amounts of24
light are created. It's not perfectly constant.25
HORN - DIRECT0048
Q Also, would the fact that the flying spot scanner has to1
be enclosed in a shroud or a light-tight environment have had2
any effect on its utility in Mr. Lemelson's system?3
A Yes. Importantly here, the whole apparatus has to be4
enclosed in a light-tight enclosure, which isn't particularly5
practical if you're dealing with a factory environment or the6
kind of conveyer belt system we see in Figure 13.7
Q Is this article, Exhibit 1373, referred to in the8
Lemelson patents?9
A No.10
Q In your opinion, what is the likelihood that the person11
of ordinary skill in the art would have even come across this12
article?13
A It's very unlikely given the way we've defined the person14
of skill in the art as being someone with an electrical15
engineering degree and a background in television electronics16
and signal processing. This is the publication of the ham17
radio operators.18
Q Now there's another article I'd like you to take a look19
at and that's Defendant's Exhibit 166, which is one before the20
one you're looking at now.21
Can you identify what Defendant's Exhibit 166 is?22
A Yes. It's one article on an experiment in video23
telephone by Bell Labs.24
Q Did it have a name?25
HORN - DIRECT0049
A Yes, sorry, experimental picture phone.1
Q Was this known at one point as the AT&T picture phone?2
A Yes, I believe that's the term that was used at some3
point.4
Q All right. What, if anything, does it disclose about a5
slow scan camera?6
A Well, actually it doesn't disclose a slow scan camera. 7
It uses a standard vidicon, so there's no slow scan camera per8
se. It then uses a recording and reproduction mechanism to9
produce a diskatized image of -- I believe it's 60 or 80 lines10
with 40 dots in each line, so it's being sampled rather than11
being continuous so that you have a total of 2,400 dots for12
the whole image, which, again, is very low resolution and poor13
quality, even for telephone -- video telephone use and they14
abandoned this as far as I know.15
THE COURT: It's a little difficult to read, but is16
it your understanding this publication was dated in 1956? In17
other words, what time frame are we talking about?18
THE WITNESS: I believe so, yes.19
MR. JENNER: There's a copyright notice.20
THE COURT: Well, there is at the bottom. I can21
make out -- it looks like 1956.22
MR. JENNER: It looks like 1956.23
THE COURT: All right, go ahead.24
MR. JENNER: And the MacDonald article was 1958.25
HORN - DIRECT0050
THE COURT: Right. That was very apparent.1
MR. LISA: Your Honor, it says September 1956 at the2
bottom.3
THE COURT: September '56, okay.4
BY MR. JENNER:5
Q Would the information with the vidicon device of Exhibit6
166 have been usable in Mr. Lemelson's system to solve the7
problem of not having a multitrack analog video recorder?8
A No. The vidicon itself is just a standard vidicon and9
the rest of the apparatus produces a signal that isn't the10
standard video signal that would be required for Lemelson's11
system.12
Q Now are you aware that the language about slow scan that13
I called your attention to in column 62 was not added to the14
patent application, the common specification, until 1963? Are15
you aware of that?16
A Yes.17
Q So I ask you whether or not a person of ordinary skill in18
the art in 1963 would have been able to solve the problem of19
the unavailability of a multitrack analog video picture20
recorder by utilizing the information in either of these21
articles?22
A They would not have been able to.23
Q Does any machine vision system today use a multitrack24
analog video picture recording device?25
HORN - DIRECT0051
A No.1
Q Are you aware that defendant has suggested that a person2
of ordinary skill in the art would have resorted to a slow-3
speed flying spot scanner to provide a lower bandwidth signal4
that could be used with an audiotape recorder?5
A Yes.6
Q Do you agree with that approach?7
A No, because, throughout the patent specification,8
Lemelson talks about standard television video signals and he9
does talk about the use of vidicon, iconoscope or flying spot10
scanner, but, as we discussed yesterday, the flying spot11
scanners referred to were standard television ray devices. 12
They were designed to produce output for television broadcast,13
so they did not solve the bandwidth problem. They had exactly14
the same bandwidth as would the output of an ordinary15
television camera.16
Q Were there instances where someone in the art used a17
special flying spot scanner at a lower bandwidth?18
A Yes. There were some experiments, first of all, in the19
early days of television before the deflectable electron beam20
tubes were invented and there was some experiments, for21
example, in optical character recognition where people used22
flying spot scanners to scan pages with characters or numbers23
on them, particularly equipment hooked up to computers.24
Q Were those instances generally known to the person of25
HORN - DIRECT0052
ordinary skill in the art that relevant to the Lemelson1
patents?2
A Not in my view. These were specialized research3
efforts.4
Q Were they referred to in the patents-in-suit?5
A No.6
Q What's the likelihood, in your opinion, that a person of7
ordinary skill in the art even would have come across8
references to those instances?9
A Very low, because these would be in other areas. I mean,10
it's remotely possible that someone happens to have a hobby in11
another area and there would be some cross-current as a result12
of that, but the person of ordinary skill in the art couldn't13
be assumed to have strayed into other fields to learn these14
things.15
Q Now you noted that there were references in the patent to16
a magnetic drum or a magnetic disk?17
A Yes.18
Q What was a magnetic drum in about 1956?19
A The magnetic drums and disks were used for storage,20
digital storage, in computers. They started to replace some21
of the other storage methods that were less convenient, such22
as mercury tanks.23
Some of the early computer memory, it's hard to believe24
now, but had tubes of mercury and a loudspeaker on one end and25
HORN - DIRECT0053
a microphone on the other end and signals would travel through1
the mercury at the speed of sound and be received on the other2
end. And, essentially, the part of the signal that was inside3
the tube was the memory and it was read out serially on the4
other end.5
So people tried very hard to find better ways of storing6
signals, digital information, and the disks, magnetic disks,7
and drums were one of those experimental areas. A drum would8
be a cylinder coated on the outside with magnetic material and9
there was a read/write head that would record along a track10
circumferentially on that drum. A disk would be, similarly, a11
flat disk with a magnetic material coating on top, much as12
today's computer disks are.13
Q Were those normally used with digital or analog14
information signals?15
A They were used for digital computer storage, so they16
would store digital information and, by the way, relatively17
little of it initially because it was very difficult to pack a18
lot of information onto a certain length of track on the19
magnetic material.20
Q Was there, in 1956 or 1963, a multitrack magnetic disk or21
drum that could have been used to record the high bandwidth22
video picture signals of Mr. Lemelson's patent?23
A No. These were not for recording high bandwidth analog24
signals.25
HORN - DIRECT0054
Q Beyond the mere suggestion in the patent about magnetic1
drums or disks, does Mr. Lemelson ever actually explain in the2
patent where to get a multitrack magnetic drum or disk or how3
to make one?4
A No, he does not.5
Q What, if anything, do you conclude that a person of6
ordinary skill in the art would have understood as to the7
nature of the recording member, 10, that Mr. Lemelson intended8
for use in the embodiments of his patent?9
A Well, he uses flexible magnetic tape as his primary10
example and, since there was no explanation of how to use or11
get a drum or disk, I guess someone reading this would focus12
on magnetic tape.13
Q And based on the explanations that you have given, was14
any such multitrack magnetic tape recording device for15
recording the high bandwidth analog video picture signals16
available in 1956 or 1963?17
A No.18
Q So, in your opinion, do the Lemelson patents enable any19
method of recording and reproducing the analog video picture20
signals using a multitrack magnetic recording device?21
A No, they do not.22
Q Now I'd like to turn to the second item on Exhibit 346923
and that is the -- under the grouping components that didn't24
exist is the title "Progressive Code Subtracter."25
HORN - DIRECT0055
Do you see that one?1
A Yes.2
Q Why do you list that as an error?3
A Lemelson shows on the tape the progressive code that we4
discussed yesterday and yet he uses the subtracter circuit in5
Figure 1B dashed to subtract location codes. Now the6
subtracter circuit in Figure 1B dashed is suited for7
subtracting binary numbers, binary codes, not progressive8
codes and, if by mistake you enter progressive codes into that9
circuit, you will get a completely meaningless binary number10
out of it.11
Q All right, let's first take this a piece at a time. 12
First, if you'd just bring up 1B and would you point out in 1B13
where it shows progressive codes.14
A The location codes here are recorded on the upper tracks15
of the tape and on each track you'll see a widened rectangle,16
which indicates high, if you like, and an area in between17
which would indicate low, so each of these tracks is a 0/118
representation.19
And then, reading across the track at some position, the20
combination of those codes is the location code. The21
particular code used here is a progressive code.22
Q Now it's a progressive code on the tape of Figure 1B, but23
what kind of subtraction circuit is it in Figure 1B'?24
A It's a circuit designed for binary codes.25
HORN - DIRECT0056
Q And the circuit designed for binary codes of Figure 1B'1
used successfully progressive codes?2
A It can be used. It will produce a meaningless number on3
its output however.4
Q Well, if it produces a meaningless output on its output,5
is it good for anything?6
A No.7
Q All right. Was there a reason why a progressive code8
needed to be used on the tape?9
A Yes. In order to deal with misalignment of tape heads or10
any kind of skew of the tape, progressive code must be used11
rather than a binary code.12
Q All right. And have you prepared a chart to try to13
explain why that is so?14
A Yes, I did.15
Q Would you turn to Exhibit 3470?16
(Pause in the proceedings)17
Would you explain first what is shown in the top part of18
3470?19
A The top shows use of a binary code and first let me20
explain the axes here.21
Horizontally, running from left to right, is time, so22
we're looking at the signal reproduced from a magnetic tape as23
a function of time, as time progresses, and it starts on the24
left at a location that I've identified as 15.25
HORN - DIRECT0057
Q So 15 would be one of the progressive code locations on -1
- sorry, one of the code locations possible on a tape?2
A Yes.3
Q And this is a binary numbering system though?4
A Right. And the binary representation for that is 011115
and, of course, we can see that because 1 plus 2 plus 4 plus 86
is 15.7
And what happens in the upper part of the diagram is8
that, when we get to the right-hand side, we're looking at a9
code of 16, so the notion is that we've just made a transition10
from a part of the tape that's labeled 15 to a part of the11
tape that's labeled 16.12
Q And what happens when the system of 1B tries to read the13
code off the tape?14
A The problem is that it will get the correct code 15 when15
it happens to read it right at the left-hand edge of the16
diagram. It will get the correct code 16 if it happens to17
read it exactly at the right-hand edge as indicated.18
Now, if it reads in between, for example, at the line19
marked 7, then, because the tracks are not perfectly aligned,20
some of them will have switched to the new number and some21
won't.22
Q Is that likely to happen in practice?23
A In this case it's guaranteed to happen.24
Q Why?25
HORN - DIRECT0058
A Because we need to have a very large number of location1
codes on the tape packed very closely together and the2
alignment of heads is a difficult process that's hard to push3
past maybe a thousandth of an inch. I mean, that's a very4
small distance between the heads. And a thousandth of an5
inch, as we'll show later, is a very large distance in terms6
of where we are on the scan line. So the codes are coming7
very, very rapidly and even the tiniest displacement of the8
heads will ensure that they aren't going to be switching at9
exactly the same time.10
And so we can get all kinds of in-between codes. We can11
get huge codes, like 21, and very small ones, like 5, just for12
illustrative purposes.13
Q And the 21, using 21 as an example, does the fact that if14
you read between 15 and 16 with a binary code that you might15
get a 21, does that have something to do with the nature of16
the binary code?17
A Yes. The reason we see this problem is that in the18
binary code several tracks can change at the same time. So in19
this sample we -- example we chose 15 and 16 as particularly20
good to illustrate this point because, if you look on the21
right, the number 16 in binary is 10000, so all of the tracks22
here change simultaneously -- well, they should in any case. 23
The top track's changing from a zero to a 1 and the others are24
changing from a 1 to a zero.25
HORN - DIRECT0059
Q Now how does the utilization of a progressive code in the1
system of Figure 1B help to solve this problem of2
misalignment?3
A If we look in the bottom half of the illustration, we see4
the same transition now with a progressive code. And there5
are different kinds of progressive code, but they all share6
the characteristic that only one track changes at a time. So7
here we see that the progressive code for 15 happens to be8
01000 and the progressive code for 16, on the right, is 11000,9
so only one of the tracks changes.10
And now, if we read somewhere in between the part of the11
tape that's labeled 15 and the part of the tape that's labeled12
16, we will, at worst, get a number that's off by one, that13
is, we might be reading 15 where we should get 16 or we might14
read 16 where we should read 15, whereas, as Your Honor saw in15
the other example, we can get just about any kind of error16
rather than just a simple error of plus or minus one.17
MR. JENNER: Now could we switch?18
BY MR. JENNER:19
Q We have an animation to show what happens when you use20
Figures 1B and 1B', to have a binary subtracter subtract the21
progressive code.22
If we start with Figure 1B.23
A Yes. So here on the tape again is the progressive code,24
which, if we looked at it carefully, we see only changes one25
HORN - DIRECT0060
track at a time. Then here's a blowup of that showing five1
tracks in cyan or some such color, indicating the code. We've2
divided the tape up into unit length, as stated by Lemelson,3
and there's a different code in every unit length. If we cut4
across any one of these lines, we get a different code.5
And now we're showing the code running past the tape --6
excuse me, the tape running past the tape heads. The tape7
heads are here -- oops, there. And the output eventually will8
appear in circuit 1B'. Notice also the appearance of a gating9
signal down here, which defines the area we're going to look10
at, as well as two marks that are shown in light color that11
indicate inflections. One is approximately at 9 or 10,12
somewhere here, and the other one is approximately at 17 and13
18. So these are intended to represent the edges of an object14
and we're trying to measure the distance between them.15
Now, as the tape runs along, nothing happens until we get16
to the gated area. Then within the gated area we'll hit that17
inflection and that will send a pulse through the pulse18
transformer up here that will open these gates and allow the19
code, shown in yellow, to flow upward into the computing20
circuit -- into the computing circuit CO which is shown on the21
right as a blowup.22
And we see there that it's read out the code 10000, and23
I'll draw a circle around that, so that code is now loaded24
into the shift register, SR1, so it remembers that code.25
HORN - DIRECT0061
Now the tape moves on until it comes to the second1
inflection and again here, when it finds the second inflection2
down here, a pulse is sent through the pulse transformer,3
which opens these gates, and the signal -- the code now is put4
into the shift register 2 and the circuitry for deciding which5
of the two we're not showing here for the moment. And this6
time the code is 00100, and the idea is that we'll find the7
dimension of the object by subtracting those two numbers.8
So the first thing that happens is that one of the9
numbers is put through what's called a complementer, which10
basically changes its sign, so, if it was 21, it now becomes11
minus 21, and, of course, now if we added, that's equivalent12
to subtracting.13
Q And what happens when we add the processed progressive14
codes -- I should say subtract the processed progressive codes15
in the binary subtracter?16
A We come out with a binary number which, you know, if17
interpreted as a binary number, is minus 12, which makes no18
sense. It says that the dimension is negative, that the right19
edge happened before the left edge, and, of course, this20
absurd answer is simply a reflection of the fact that we used21
the wrong codes. We have progressive codes on the tape, and22
we're using a circuit that's designed for binary codes.23
Q So will -- when you use progressive codes with a binary24
subtracter, does that result in an error?25
HORN - DIRECT0062
A Yes.1
Q What if you use binary codes on the tape in order to be2
able to work with the binary subtracter? You indicated that3
the binary codes offer the likelihood of a -- of an erroneous4
reading as you showed in the chart of Exhibit 3470, correct?5
A Yes. And while Lemelson shows progressive code in the6
figures, he actually tells you that for the binary subtraction7
to work, you need to -- the code on the tape needs to be a8
binary code, those are his words.9
Q But you've said that if you use a binary code on the10
tape, and due to the problem of misalignment, you are likely11
to read a wrong code. In going from 15 to 16, for example,12
you could read a 7 or a 5 or a 21, depending upon the13
instantaneous reading of the tape; correct?14
A Yes, as we saw in Exhibit 3470, with the binary code we15
have this problem of misalignment or tape skew.16
Q In your opinion, how often would an error occur in17
reading the code from the tape if it was a binary code on the18
tape?19
A In this case it would happen practically all the time20
simply because the codes are so close together.21
Q Now, was there any technique known in 1956 to solve this22
problem by converting progressive codes to binary codes?23
A Well, certainly not something that Mr. Lemelson suggests.24
Q Nothing in the patent?25
HORN - DIRECT0063
A That's correct. 1
Q Are you aware of a document, a patent, that suggests a2
solution to this?3
A Yes. Progressive codes were used widely in what were4
then called analog to digital converters, and since computer5
circuits for arithmetic used a different code, there was a6
strong incentive to find ways of converting between them, and7
a series of efforts were made in that regard. And there's a8
particular patent by Carbrey that illustrates one such method.9
Q And would you turn to Defendant's Exhibit 1803 at the10
back of the binder? And can you identify Exhibit 1803?11
A Yes. This is the Carbrey patent, 2,571,680.12
Q When did it issue?13
A It issued October 16, 1951.14
Q Who was it assigned to? Can you find that on the first15
text page after the figures?16
A Bell Telephone Lab.17
Q So, the owner of the patent was Bell Telephone18
Laboratories?19
A Yes.20
Q In your opinion, what is the likelihood, first of all,21
that a person of ordinary skill in the art would have found22
this patent?23
A Very unlikely. It's in a completely different area from24
the one that the person of ordinary skill in the art would25
HORN - DIRECT0064
have been familiar with.1
MR. LISA: Your Honor, I'm objecting to this2
testimony as beyond the scope of this witness's expert report. 3
In fact, these patents were called to the attention of this4
witness in Lemelson's reports. There was an extensive5
rebuttal report, a supplemental rebuttal report, and this6
witness ignored and said not one word about this patent, and7
so I move to strike the answer and have it excluded. The time8
for them to make their comments about the patent was months9
ago when these expert reports were provided, and we did not10
have an opportunity to cross-examine him on that part of his11
report.12
THE COURT: All right. Mr. Jenner?13
(Pause in the proceedings)14
MR. LISA: Perhaps they can just show us in the15
report where it is 'cause we happened to notice it was16
missing.17
THE COURT: All right. 18
MR. JENNER: All right. I'm informed by co-counsel19
that, as we understand it, this is not something that was in20
their expert reports. We found this patent on our own, they21
apparently found it, and we saw it on their exhibit list, so22
it's not in anybody's expert report. It was simply something23
that has turned up independently in connection with24
preparation for trial, I guess.25
HORN - DIRECT0065
MR. LISA: I will represent to the Court, Your1
Honor, that that patent is cited in Dr. Grindon's report.2
THE COURT: All right. Well, let's take our break3
and you all can look at the report and find it. We'll take a4
15-minute recess, grab the doctor's report and show it to5
counsel.6
(Court recessed at 10:19 a.m. until 10:35 a.m.)7
THE COURT: All right. Let's go ahead and proceed8
here.9
MR. JENNER: Your Honor?10
THE COURT: Yeah. Did you --11
MR. JENNER: First of all --12
THE COURT: -- look it up?13
MR. JENNER: -- counsel is correct. This Carbrey14
patent was referenced on page 11 of the Grindon rebuttal15
report, so there's no doubt about that.16
THE COURT: Okay. 17
MR. JENNER: We overlooked that reference.18
THE COURT: All right. 19
MR. JENNER: We found it separately. They've listed20
it in their exhibits. We have brought it forth. As far as21
I'm concerned, if the ruling is that we shouldn't refer to it22
further, we won't refer to it further.23
THE COURT: All right. Well, let's go ahead and24
move on then and I'll sustain your objection. All right. 25
HORN - DIRECT0066
DIRECT EXAMINATION (Continued)1
BY MR. JENNER: 2
Q Now, Dr. Horn, let's suppose that a person could3
construct a device in accordance with the teachings of the4
Lemelson patent and went ahead and operated Figures 1B and 1B'5
using a progressive code on the tape and a binary subtracter,6
resulting in the error that you have spoken of.7
A Yes.8
Q First of all, do you have an opinion as to whether or not9
it would have been apparent to the person of ordinary skill in10
the art what the source of the problem was?11
A No, not at all, because he's following the directions12
laid out in the specification and now he's getting some13
erroneous result. One of the challenges of engineering design14
is to connect a problem with the part that -- the guilty part,15
if you like, the aspect of the overall system that produces16
that problem. So I think in this case, for example, it17
wouldn't have been clear that it had that particular cause;18
there could have been many other reasons why you get the wrong19
answer.20
Q But in your opinion would it have required some amount of21
research or experimentation even to identify what the source22
of the problem was?23
A Yes.24
Q Okay. First, I told Your Honor that the animation that25
HORN - DIRECT0067
we showed before of --1
THE COURT: Right.2
BY MR. JENNER: 3
Q -- Figures 1B and 1B' producing the minus 12 number is4
Exhibit 3254B.5
THE COURT: Thank you.6
BY MR. JENNER: 7
Q Now, just to be clear, is there any suggestion in the8
patent, the Lemelson patents, of either the recognition of the9
problems you've referred to, that is that if you use a binary10
code, you get erroneous readings, if you use a progressive11
code it doesn't work? Is there any recognition in the patent12
of the problem?13
A No. And as I mentioned, there's a contradiction between14
the figures and the text on that part.15
Q And given that there's no recognition of the problem,16
does it follow that there's no solution given for the problem?17
A Well, there's certainly no solution proposed.18
Q Now let's go on to the third problem that you list on19
your chart, Exhibit 3469, of components that didn't exist, and20
that is a shaft encoder with sufficient resolution. Now, what21
do you mean by that one?22
A One of the methods for creating location codes as an23
alternative to the one that we discussed with a multi-track24
tape, was to use a shaft encoder that would -- we briefly25
HORN - DIRECT0068
viewed earlier that has a disk that goes around with a shaft. 1
The shaft could be connected to a roller that has a tape2
moving on it, and Lemelson explicitly mentions one such shaft3
encoder made by the Electronic Corporation of America which4
was typical of the shaft encoders of that time. 5
And, Your Honor, I used these myself in robotics6
equipment where we needed to find the joint angles of robot7
arms.8
Q All right. So let's bring that, but first of all, is9
this the shaft encoder and encoder disk that you referred to10
yesterday in connection with describing how portions of the11
patent work?12
A Yes.13
Q All right. And would you turn to the bottom of column 3714
of the patent so that we can get the context for this. There15
is a reference in lines 60 through 65 to a shaft encoder of a16
particular type produced by the Electronic Corporation of17
America; do you see it?18
A Yes. Type 30913.19
Q Now would you turn to Exhibit 2479?20
(Pause in the proceedings)21
A Yes.22
Q Can you identify Exhibit 2479?23
A Yes. This is an article describing that particular shaft24
encoder. The article is a kind of review of various kinds of25
HORN - DIRECT0069
shaft encoder and it specifically talks about the particular1
one mentioned in Lemelson's specification.2
Q And does it actually show the shaft encoder in one of the3
figures?4
A Yes. In page 1112, Figure 9.7 is one such illustration. 5
It's also shown in Figure 9.6 and I believe also on the first6
page under the heading "Shaft Position Encoders," again,7
illustrating this particular device.8
Q Now this, in turn, is the illustration, the one on page9
1112 of Exhibit 2479 that you used as the basis for the10
illustration of the shaft encoder that you showed the Court11
yesterday?12
A Yes. Someone helped clean up the text which wasn't very13
readable in the copy.14
Q All right. And this shaft encoder illustration in turn15
is at Exhibit 3471?16
A Yes.17
Q Now what was the shaft encoder supposed to do insofar as18
the generation of location codes is concerned?19
A It was a form of analog to digital converter that would20
convert the mechanical -- the rotary motion of the arm into a21
binary code.22
Q And I believe you illustrated with figures at Exhibits23
3472 and 3473 how the shaft encoder disks would work with a24
progressive code or a binary code; correct?25
HORN - DIRECT0070
A Yes. Again, for the example of just five binary bits1
which, of course, isn't nearly enough, but to fit it on a2
simple graphics, we just used five.3
Q All right. Now I'm not going to ask you to go again4
through how it works, we've covered that. What I want to ask5
you is, in your opinion, would the shaft encoder arrangement6
have worked in Lemelson's system?7
A No, and the main reason is that it's way too slow. It's8
another example of something we'll see later of electro-9
mechanical parts that are just too slow to co-act with video. 10
We saw that video is a very high-speed, high-band-width11
phenomenon.12
Q Can you elaborate on why it is that the slowness of the13
shaft encoder in relation to the video signals would be a14
problem? Why is that?15
A In order to make measurements within the scan line, we16
have to divide the scan line into many different units, each17
having a code. Now a scan line takes only one fifteen18
thousandths of a second, so the time available is very short. 19
The whole scan line goes past in sixty millionths of a second,20
and so we have to be able to make measurements within that21
scan line of, let's say, a hundredth of a scan line or the22
five hundredths of a scan line. 23
So, the interval available for each code is very short,24
and this device has a number of features that prevent that25
HORN - DIRECT0071
from being possible. One is that when you flash the tube, the1
readout flash source on the right, it will stay on for six2
micro-seconds.3
Q Now how do you know that, first of all?4
A It says that explicitly in the article.5
Q So, if I turn back to the article, which unfortunately6
I've lost, 2479, can you point out where it refers to the7
flash length of six micro-seconds?8
(Pause in the proceedings)9
A This is on page -- page 1113 in the top -- in the left10
column, the fourth paragraph, where it says, "Owing to the11
short flash duration, six micro-seconds, accurate readouts can12
be obtained at angular velocities up to 1200 RPM." Now in13
their use, obviously they thought this was a big deal that you14
could get something as short as six micro-seconds, but for15
this purpose it's not nearly adequate.16
Q And when you say for this purpose, you're referring to17
use in the Lemelson patents?18
A Yes.19
Q Now, are there other reasons why the shaft encoder won't20
work in terms of speed?21
A Yes. The other reason is that you can't flash it very22
often. After a flash tube is triggered, there's a refractory23
period where it's not possible to re-trigger it, and this24
limits the number of times per second that you can get a25
HORN - DIRECT0072
readout.1
Also, you have to be careful not to overheat a device,2
and what they say here in the third paragraph is a maximum3
rate of readout of 600 times per second.4
Now, Your Honor, a picture goes past in a thirtieth of a5
second, so this means at best you can get 20 flashes during6
one picture. So that means at best you can measure somehow 207
points within the whole picture. And, of course, the picture8
has 525 scan lines, so that means there's no way to get more9
than one measurement on a scan line. In fact, if you -- if10
you make a measurement on this scan line, you have to wait 2611
scan lines before you can trigger the tube again. And the12
whole thing is based on measuring the distance between13
inflection on a scan line and the next inflection on the scan14
line.15
Q Now, what is the effect of that in terms of being able to16
generate the location codes fast enough with a shaft encoder?17
A It means that it wouldn't work, you wouldn't be able to18
produce them fast enough.19
Q Now do you have an illustration to try to help explain20
the effect of these time periods?21
A Yes, I do.22
Q 3474? Would you turn to that.23
A Yes.24
Q And I guess 3475 as well. Could you explain what 347425
HORN - DIRECT0073
and 3475 are intended to show?1
MR. JENNER: And they're also up on the monitor,2
Your Honor.3
THE WITNESS: If I may, I'd like to start with 3475?4
BY MR. JENNER: 5
Q Okay. 6
A So this shows the rest of the scan line period of 647
microseconds, this is the standard, of which 10 microseconds8
is actually used to get back from the right-hand end of the9
line to the next line. So, actually the time available for10
the rest of the scan is 54 microseconds. And here we see a11
flash of six microseconds. 12
Now the code better not change during that time. So the13
codes have to be spaced far enough apart that you don't have14
more than one code every six microseconds. So, I guess,15
dividing it means you can't get more than nine of them in a16
scan line. So that would -- that alone would restrict you to17
making a measurement no more -- with no more accuracy than one18
part in nine across the whole scan line. And, of course, the19
object might occupy only a small part of that scan line, so20
the problem is actually even worse.21
Then if we go back to 3474, we see that in addition we22
can't actually flash very often, and according to the23
publication, it's limited to 600 flashes per second -- there's24
a typo there, I'm afraid. It should be 600 flashes per25
HORN - DIRECT0074
second. There are 30 frames a second, and so there would be1
one flash every 26 lines, again, as I indicated, meaning you2
couldn't make measurements within one line. And the whole3
thing is based on measuring the distance between inflections4
within the scan line.5
Q Now what is the overall consequence of these limitations6
on the shaft encoder?7
A Well, first of all, it means you can't use the shaft8
encoder for creating location codes, and then, given the other9
problems we described with the other way of creating location10
codes, it means there's nothing that allows you to do any of11
these measurements.12
Q In your opinion, given the problems you have described13
with the binary and progressive codes that are shown in the14
Figure 1B, 1B' embodiment and the problems that are shown with15
the alternative of creating location codes with a shaft16
encoder, is there anything left in the patent that would17
enable you to use Figures 1B, 1B'?18
A Well, an alternative would be to use an oscillator, and19
to just count the cycles of the oscillator and use that as a20
location code. And the problem with that is that that would21
assume that the tape is running at perfectly constant speed. 22
And it's well known with even audio tapes that that's not23
possible. And when you buy a quality one, they'll give you24
specifications on what are called W-O-W flutter and jitter,25
HORN - DIRECT0075
which are different ways of measuring the fluctuations in the1
speed.2
Now for audio, these fluctuations are obviously annoying3
to the listener, but people can deal with relatively large4
variations in the speed of the tape. But even -- but in video5
work, obviously the problem is much worse because any6
fluctuation in the tape speed is going to affect the7
measurement. And the way this really shows up is that8
measurements using such an oscillator would be based on the9
sync pulse. 10
If Your Honor remembers on channel C1, there's pulse S1,11
which is where everything starts, it's the beginning. And so12
the counting starts there and has to go through all of the13
lines before it gets to a particular place.14
Now if there's even an error of one part in 1000 or one15
part in 10,000 of the speed of the tape, the place you end up16
with when you're, say, halfway down the video frame could be a17
significant distance to the left or to the right on a scan18
line. And so this third possible method of using -- of19
generating location code is also fatally flawed.20
Q So what, in your opinion, is the effect of these various21
problems on the ability of a person of ordinary skill in the22
art to use Lemelson's Figure 1B, 1B' methodology for making23
location and lineal measurements?24
A Well, it's not possible to use them, and that's pretty25
HORN - DIRECT0076
important since this is one of the main teachings of the1
patent.2
Q Are you saying it just doesn't work?3
A It just doesn't work.4
Q All right. Let's go on to the fourth error on your list5
under the subject of "Components that didn't exist," and that6
one is a useful method for moving a camera using a7
manipulator. Here are you referring to the Figure 168
embodiment that shows a camera on some kind of a manipulator9
arm?10
A Yes.11
MR. JENNER: Could we bring up 16?12
BY MR. JENNER: 13
Q Now first of all, what's the nature of the problem that14
you're referring to here?15
A Well, first of all, I should say that at that time there16
was no problem moving one of these devices such as the17
manipulator arm up here through a fixed set of predetermined18
positions, sort of like playing back a tape. You might take19
the arm manually through a certain sequence of motions and it20
would just record the joint angles for each motion. So, that21
was definitely possible.22
Q Now let me -- let me just make sure that's clear from my23
point of view. Are you saying that it was okay to have the24
arm make the same sequence of motion every time?25
HORN - DIRECT0077
A Yes.1
Q Is that what you mean by predetermined?2
A Yes.3
Q Okay. Then what's the problem?4
A Now the problem is that if there's any suggestion of5
changing that movement to, for example, in response to some6
kind of signal that says, oops, the object is two inches to7
the right, so repeat that motion, but now go two inches to the8
right, that surprisingly is very difficult. And the reason is9
that the arm kinematics of such a device involve complicated10
equations and --11
Q Stop -- stop there for a minute and could you explain for12
the record what you mean by kinematics?13
A Yes. The idea is that there's a business end of the14
device called the end defector down here, and the purpose is15
to put that end defector in a desired position in space, such16
as on the conveyor belt in a certain position, or at a certain17
point above the object to take a picture of it. But actually,18
you can't directly control that position. What you can19
control is the angle of this rotary joint, the angle of this20
rotary joint, and then also the rotation about this axis as21
shown by the little arrow going around, and there may be22
additional axes. 23
So, the part that's of interest to me is that there's a24
complicated relationship between the angles you can control25
HORN - DIRECT0078
and the thing you want to control, which is where the end of1
the device is.2
Q Now, first of all, if prepositioning is indeed required3
so that the arm makes the same movement all the time with4
respect to a prepositioned object, can the arm do that?5
A Yes.6
Q But if prepositioning is not required so that the arm is7
to be caused to move in different ways each time an object is8
presented to it, what's the consequence?9
A The consequence is that you would need to have solved10
what I call the kinematic equations, which are things with,11
you know, trigonometric functions like signs and co-signs, and12
that was not accomplished until later, and it can, in fact,13
only be accomplished for certain designs, that is, the14
mechanical engineer that designs that arm needs to know about15
this problem and design it in a particular way to arrange for16
the joints to work just the right way so the equations can be17
solved.18
Q Does Mr. Lemelson explain in the patents how to solve19
these problems of the kinematic equations?20
A No, he does not.21
Q Does he even acknowledge in the patent that this is a22
problem that exists?23
A No.24
Q How long did it take until someone solved these kinematic25
HORN - DIRECT0079
equations that you're referring to?1
A Well, Your Honor, I'm very familiar with this because I2
solved one of the first kinematic equations. I had an arm3
designed for me by Victor Shineman [phonetic], who later got4
his Ph.D. at Stanford for that work, and I solved the5
equations for that arm in the early seventies.6
Q Did you publish a report on your solution to the7
kinematic equations?8
A Yes.9
Q Roughly, when did you publish the report?10
A Oh, I was afraid you were going to ask me. Probably '7411
or '76, somewhere around there.12
Q But it was when you were at MIT?13
A Yes.14
Q In your opinion, could a person of ordinary skill in the15
art in 1963 have solved the problem of providing kinematic16
equations for Mr. Lemelson's manipulator arm?17
A No. I think most people would have been unaware that18
there was even an issue.19
Q But in terms of the skill of the person of ordinary skill20
in the art, could he have solved the problem if he had21
recognized that there was an issue?22
A No.23
Q What, in your opinion, then, is the consequence of the24
inability to solve the problem of the kinematic equations for25
HORN - DIRECT0080
the manipulator arm in 1963?1
A That there was no useful way of moving the manipulator2
arm other than in a completely fixed and predetermined way.3
Q Let's go to the fifth issue under components that didn't4
exist, and that is "Electro-mechanical components that can co-5
act with a video signal." And I take it we had a precursor of6
this before with the shaft encoder?7
A Yes.8
Q Just generally, what do you mean by the overall heading9
"Electro-mechanical components that can co-act with video10
signal"?11
A Video signals are high-band width and pass by very12
quickly. The whole image passes in a thirtieth of a second. 13
A single scan line passes in fifteen thousandths of a second. 14
Mechanical devices, when designed well, can react fast in15
terms of -- in human terms, but not fast enough to keep up16
with these. So, use of things like pole and ratchet17
mechanisms, relays, servo motors, and the shaft encoder and so18
on are beyond the capabilities of keeping up with the video19
signal.20
Q Now can you give an example of how this comes up in the21
patent beyond the shaft encoder?22
A Yes, for example, the clipping level of the supposed23
clipper is adjusted using a servo motor.24
Q Now where is that? That's in --25
HORN - DIRECT0081
A In Figures 10 -- 10 and 11.1
Q All right. 2
MR. JENNER: Let's see if we can get that up on the3
monitor. Figure 10 is Number 76?4
MR. LISA: And that number again, Jesse, please?5
MR. JENNER: It's Exhibit 3487 is Figure 10, 3488 is6
Figure 11. 7
BY MR. JENNER: 8
Q Would you rather have Figure 10 or 11?9
A Let's start with 11.10
Q 11. So, that's 3488, and it's 77 on your --11
A So --12
Q Would you explain what the problem is in connection with13
Figure 11?14
A Well, first let me say that this is what Lemelson15
considers a clipping circuit, and we'll get later to why this16
isn't a clipping circuit. And he here wants to adjust the17
threshold so that, if you remember, the purpose of the18
clipping circuit is to decide whether the analog video signal19
is below a threshold or above a threshold. 20
And here we're trying to provide for the possibility of21
adjusting that threshold so that, say, for example, in one22
part of the image you have a dark object and a light object in23
another part, so you'd like to use a different level for the24
two. And what he's showing is what's called a potentiometer,25
HORN - DIRECT0082
the sort of semicircular object here which is --1
Q What's a potentiometer?2
A It's a resistive wire just wound up in a -- in a -- on a3
spool, and there's a wiper that moves along it such that the4
resistance will vary depending on how far you have to go5
through the wire until you reach the wiper.6
Q So it's a variable resistor?7
A It's a variable resistor with low resistance if the wiper8
is near the beginning and high resistance if it's near the9
end.10
Q Okay. 11
A Then the wiper is moved by a servo motor down here12
operating through a set of gears, and the signals for the13
servo motor come off additional tracks on the tape beyond the14
ones we've already discussed. The -- these tracks control15
that servo motor by turning it on and turning it off and so16
on. So the notion is that by operating the motor for a17
certain period, it will turn through a certain angle, which18
would produce a change in resistance. 19
And this is much too slow to be useful because if it was20
going to adjust the threshold within one image, a thirtieth of21
a second, it would have to make this motor-driven device move22
and come to a correct position within a thirtieth of a second,23
which is completely impractical, particularly given the24
presence of the reduction gear.25
HORN - DIRECT0083
Q All right. So having the example of the shaft encoder1
and the servo-motor-driven potentiometer, in your opinion what2
is the consequence of Mr. Lemelson's reliance on electro-3
mechanical components to co-act with his video magnetic4
recording medium?5
A Well, they wouldn't work fast enough, and so any use of6
those components makes it impossible to perform the necessary7
functions.8
Q Now your last item under "Components that didn't exist"9
is x-ray and other scanners. And I take it there is some10
references in the patent to some other scanners that we11
haven't talked about yet; correct?12
A Yes. Lemelson just mentions, without explanation, the13
possibility of using x-ray scanners, ultrasonic scanners,14
maybe atomic radiation, and so on.15
Q All right. Let's point out where that is. Would you16
look first at column 63, line 45 and following in the17
paragraph little (e)?18
A Yes. And do you see that it refers to other scanners of19
the same or different characteristics on the area under20
change, such as radar, ultrasonic, infrared, x-ray, et cetera?21
A Yes.22
Q Okay. And would you also look at column 56, lines 45 to23
50?24
A Yes.25
HORN - DIRECT0084
Q And there it says the scanning device CAM may comprise a1
deflection control beam scanning video camera, which we've2
certainly heard about, as described, or any suitable radiation3
scanning means, such as one utilizing x-rays, infrared4
radiation, sonic or other forms of radiation. Do you see5
that?6
A Yes.7
Q Were there, first of all, radar scanners in 1956 that8
could be used in place of Lemelson's video camera?9
A No.10
Q Why not?11
A They -- there were no devices for producing analog video12
from radar signals. If I may say, off this list there's one13
interesting exception, which is infrared, in that, depending14
on how we interpret that, it could be near infrared or far15
infrared. Far infrared is heat radiation as the radiation our16
bodies give off, and that's certainly not dealt with anywhere17
here. However, near infrared is very similar to visible18
light, and, in fact, vidicons can be adjusted or -- using a19
different faceplate, in essence, to be sensitive to near20
infrared. 21
And if you take picture with near infrared, you get22
pictures which are very similar to visible light, so there's23
nothing really new.24
Q What about radar? What's the problem with radar?25
HORN - DIRECT0085
A Well, there's no way of scanning with a radar beam in the1
sense of scanning as exposed here.2
Q What about ultrasonic? Was there an ultrasonic scanner3
that could have been used in Lemelson's system in 1956 or4
1963?5
A No. There were devices for getting echoes using6
ultrasonic signals, but there were no scanners of ultrasonic.7
Q Were ultrasonic scanners developed at a later date?8
A Well, devices that are called scanners, and, again, we9
have this generalization of a term from its original meaning10
to a more general meaning, which do not scan, but use11
something called synthetic aperture and tanner technology to12
achieve an image, and we've all seen pictures of the insides13
of people's bodies achieved that way, but they do not scan14
with an ultrasonic beam, they produce a radio frequency signal15
that goes off in many directions and is received by a set of16
ultrasonic receivers, and a complicated mathematical operation17
reconstructs the image of the inside of the object. So18
they're not scanners in the sense we've described here.19
Q Is there any explanation of how you would use anything20
like that in the patent?21
A No.22
Q Was anything like that available in the 1956, '63 time23
frame?24
A No. These were developed only very recently.25
HORN - DIRECT0086
Q What about x-ray scanners? Could an x-ray scanner have1
been used in Lemelson's system in 1956 or 1963?2
A Well, no, and in fact if you knew of a way of deflecting3
x-rays, you would be a famous man, because a lot of people4
would like to know how to do that both for astronomy and, for5
example, we discussed CAT scanning earlier, where,6
unfortunately, we're resorting to crude techniques because 7
x-rays come out of a tube and they go where they want to go. 8
You can't deflect them or scan with them.9
Q So what overall in your opinion do you make of these two10
references in the back of the patent to x-ray, ultrasound,11
radar types of scanners?12
A They're not very helpful because there's no explanation13
of how any of that would work. And as I discussed, it14
wouldn't work.15
Q And in fact, was anything like that available?16
A No.17
Q All right. I'd like to go on now to the group of18
problems that you list under "Functional problems." What do19
you mean by that?20
A These are problems with the way the invention is supposed21
to operate and some of them relate back to the assumptions22
that I mentioned at the beginning that underlie the operation23
of the invention.24
Q This what you were talking about yesterday as fundamental25
HORN - DIRECT0087
-- fundamental conceptual problems that would prevent the1
system from working even if you could get all the components?2
A Yes.3
Q The first item you have under functional problems is4
"Can't reliably detect inflections." What do you mean by5
that?6
A I mean that the inflections, which, after all, are the7
bases of everything, the video signal is never analyzed8
without being passed through gating and clipping, so we're9
always dealing with inflections, that these inflections can't10
be found reliably due to a number of effects such as noise and11
small changes in lighting, small changes in the sensitivity of12
the detector, and so on.13
Q All right. Noise sensitivity, is illumination another14
factor?15
A Yes.16
Q Distortion?17
A Yes.18
Q Let's talk about the vidicon, first of all. What was the19
overall quality of a vidicon signal like in the 1950s?20
A It was pretty poor. When I started, we still had some21
vidicon cameras that we had pretty much abandoned in favor of22
image dissectors. The -- again, a measurement of the -- one23
measurement of quality is what's called signal-to-noise ratio,24
and at that time, it was the order of 26 dbs or sometimes25
HORN - DIRECT0088
later, perhaps, 36 dbs.1
And I should explain, Your Honor, that the difference --2
it's a exponentially rising scale, sort of like the Richter3
scale. If you go from 7 to 8 that doesn't mean it's, you4
know, just a little bit more, it means there's a big jump. 5
So --6
Q When you talked this morning about a difference between7
20 decibels and 40 decibels, what actual order of magnitude8
difference was that?9
A That's a huge difference. That's a factor of a hundred. 10
In other words, a picture that has a 20 db signal to noise11
ratio is a hundred times as noisy as a picture that has a 4012
db ratio.13
Q All right. So, vidicons were noisy?14
A Vidicons were noisy. They suffered from deflection15
inaccuracies, distortions, they suffered from blooming where16
if you had a bright area, it would tend to spread out. They17
suffered from flare, which is a phenomenon where light18
deposited in one part of the image would affect other parts of19
the image. And the reason that's important is because even if20
you gate and you select out a particular part of the image,21
you're not free of effects from other parts of the image.22
This was one of the big surprises I had when I first used23
imaging devices. I would try and measure accurately the24
brightness in one area of the image, and I couldn't correlate25
HORN - DIRECT0089
the results, it kept on changing, until I realized that if1
there was anther object somewhere else in the field of view,2
it would make a difference to the measurement. And that's3
called flare.4
And I guess I've talked about blooming, distortion,5
flare. The faceplate was not uniformly sensitive. The way6
the faceplate was created was to deposit some semiconductor7
material and metals in a vacuum, and you can never assure that8
all parts of the surface are covered with the same amount of9
sensitive material, so quite often there would be a10
significant variation and a droop, and on the cameras we had11
in the 1960s sometimes there would be a 50 percent variation12
in sensitivity from one part of the surface to another, which13
wouldn't affect its use in television because people aren't14
very sensitive to overall slow changes in brightness, but it15
would, of course, have a devastating effect on anything that's16
trying to measure inflections.17
Q Would a flying spot scanner in the 1950s have been any18
more reliable or useful than a vidicon?19
A No. The -- it would have suffered from the same --20
essentially the same problem because we're dealing with the21
same technology of electron beams deflected in a vacuum tube22
subject to the same distortions, and so on. And in addition,23
as I mentioned a couple of times, the phosphorescent surface24
was not uniform, it was grainy, and would introduce additional25
HORN - DIRECT0090
noise. So the signal-to-noise ratio from flying spot scanners1
was generally worse than it was in Vidicons.2
Q Now, let's stay with noise for a minute. Can you give3
some examples of how noise can be created in the real world?4
A Well, first of all, any time you make a measurement5
there's some small variation in that measurement. If you6
repeat the measurement, it will not be exactly the same. 7
And in the case of the camera, this is particularly8
important because the signal is very, very small, and the9
noise in a signal isn't significant if you have a very strong10
signal, just as if your radio station is nearby, you can't11
really tell that there's any sort of superimposed noise. If12
the signal is weak, such as a distant radio station, all of13
these fluctuations, lightening storms a few hundred miles14
away, power supply surges, will all become apparent and15
contribute to the noise. 16
So in the factory environment, for example, there would17
be motors starting up that cause fluctuations on the power18
supply, and so on. So there are all kinds of sorts of sources19
of noise, but the most important is to realize that any20
measurement is going to involve noise and that measurement of21
very small signals, such as the ones in the vidicon tube, are22
going to be more subject to noise.23
MR. JENNER: Now, Your Honor, could the witness just24
for 30 seconds make a drawing at the easel to show the effect25
HORN - DIRECT0091
of noise on a signal?1
THE COURT: Sure. What's that most recent number?2
MR. JENNER: 3522.3
THE WITNESS: I think we're all going to get pretty4
tired of this figure because I'll be repeating it--5
THE RECORDER: Just a moment.6
THE COURT: Oh, she needs to get a microphone over7
to you first, Dr. Horn, but I think we know where you're going8
to start.9
THE WITNESS: Yes. Well, suppose that we have an10
ideal signal somehow that we're expecting a transition from11
one area to another, that should look something like this. If12
we measure this signal there will be some errors in the13
measurements, and the magnitude of the error may not be14
significant if we're dealing with a large signal, but it will15
be significant with a small signal, such as the video signal. 16
And we're going to end up with some wave form of this type.17
BY MR. JENNER: 18
Q And that's due to noise?19
A And that's due to noise. Now the exact way this will20
look will depend on issues such as the band widths of the21
noise and the band width of the signal, so don't hold me to22
each of the little waves. But general speaking, that's what23
noise does.24
Q All right. And what might be the effect on measuring25
HORN - DIRECT0092
inflections of noise like that?1
A Well, there are a number of possibilities. First of all,2
suppose that our threshold is here, it's shown by the red3
line, then you'll note that the place that the analog signal4
crosses the red line is changed a little bit. And next time5
we measure it, the blue signal with the noise is going to look6
different, and the way this transition has changed will be7
different, too. So, every time we measure what's supposedly8
the same signal, we'll get a slightly different answer.9
Q And what would be the effect of that, if any, on trying10
to make a comparison of inflections in analog and video11
picture signals?12
A It would mean that you will always see a difference.13
Q You will always see a difference?14
A You will always see a difference. So if, for example,15
the blue line was the standard, now we measure another signal,16
the inflection will occur in a slightly different place.17
Q And is that true even if, in fact, it's the same object?18
A Yes.19
Q All right. What happens if you have a higher threshold?20
A Well, let's in green indicate a threshold at this level. 21
Now you'll notice that because of the noise going up and down,22
the wave form actually goes above the threshold and then comes23
back down through the threshold and then rises again. So24
instead of having a single transition from low to high, one25
HORN - DIRECT0093
inflection, we have a transition from low to high, high to1
low, low to high, we've got three inflections, so the result2
is that measurement of a dimension will be corrupted.3
Suppose, for example, that this was the left edge of an4
object and somewhere along here we would find the right edge,5
and the dimension we're measuring is between the left and the6
right edge.7
Q About a foot and a half, your hands indicate?8
A Yes.9
Q Okay. 10
A So the idea is an inflection comes along, we find its11
location code, another inflection comes along, we find its12
location code, then we subtract. 13
Now in this case we find that there are three14
inflections, and so the system doesn't know where these15
inflections come from, it just says, okay, here's one16
inflection, here's another inflection, let me subtract them,17
and obviously it's now going to say the object is only that18
wide. So that's another illustration of the effect of noise.19
Q All right. Thank you. Now do you actually have an20
exhibit made from one of defendant's exhibits that shows the21
effect of noise?22
A Yes.23
Q Could you turn to 3477. Would you explain what 3477 is?24
A 3477 is, first of all, at the top an image from one of25
HORN - DIRECT0094
defendant's exhibits.1
MR. JENNER: Let me explain there for a moment, Your2
Honor, 'cause you haven't seen this yet, and I don't know3
whether you will or not, but we've been provided through the4
normal process with the animation exhibits from defendant when5
we exchanged.6
THE COURT: All right. 7
MR. JENNER: And this is taken from one of those8
exhibits which we were provided with.9
THE COURT: All right. 10
BY MR. JENNER: 11
Q Dr. Horn, go ahead.12
A So there's an image of a gauge and over here we've13
enlarged it, enlarged a section of it, again focusing on the14
scan line because everything here operates on scan lines.15
So the red line going across the middle through the16
numbers 20 and 80 is the particular scan line we picked out17
for this. Shown below it --18
Q Just to be clear about that, this could be the usual 525-19
line raster scan of a TV image?20
A Yes.21
Q And you've picked out just one line across the portion of22
the gauge that you want to look at?23
A Yes.24
Q Okay. 25
HORN - DIRECT0095
A And then in the row below that, here, we see the actual1
analog video signal along that scan line, and you may be able2
to distinguish some of the features, for example, where it3
scans across the line the number 20, we see three peaks here4
corresponding to the white areas of the number 2, and two5
white areas from the number 0.6
And another feature I'll just point out, is this area7
here which corresponds to scanning across the needle of the8
gauge. And the needle might be of interest because the system9
might be trying to determine whether the needle is in a10
certain position or some other position.11
So, this is the analog video signal. Then the curve12
below it is the output of what I call a thresholder.13
Q Would that be -- would that bear any relationship to a14
clipper?15
A Yes. This corresponds to the clipper in the16
specification except that the clipper doesn't do the right17
thing. So, I've hypothesized here that we've replaced it with18
something that does produce a two-level signal.19
Q All right. 20
A And it's easy to see that the thresholder output has only21
two levels, low and high, and that one of those levels22
corresponds to when the analog wave form is below a threshold,23
and the other level corresponds to when it's above a24
threshold.25
HORN - DIRECT0096
Now the exact results you get will, of course, depend on1
how you pick the threshold, and so I want to first of all say2
that I tried this with many different thresholds and I get the3
same general results. And, of course, this points out also4
the difficulty of picking a fixed threshold, that is, it's --5
I've arbitrarily, for this illustration, just put it right in6
the middle between black and white. But in order to get good7
results, someone might want to adapt that somehow to adjust8
it.9
Q Now, would you turn to the second page of 3477 and tell10
me if this illustrates the effect of noise, since that's what11
it seems to say?12
A Yes.13
Q Could you explain what the second page of this exhibit14
shows about the effect of noise?15
A Yes. I want to first just point out that the first two16
curves are simply reproduced from the figure we had before, so17
that's -- and that's going to be common to the illustrations. 18
Then below that we have added a small amount of noise to the19
signal indicated as .02, meaning 2 percent noise, which is a20
relatively small level of noise.21
Q And just to be a little bit more precise about that, how22
does 2 percent noise level compare to things that might happen23
in the real world?24
A That's on the order of the kind of noise you might see in25
HORN - DIRECT0097
the vidicon.1
Q Okay. 2
A And now we take this analog video signal that I've3
indicated in red and we threshold that and we obtain an analog4
video signal -- excuse me, a two level signal that5
superficially looks very similar to the one we find up here. 6
Now if we treat the -- this signal here as the standard,7
that's our picture of what the object is supposed to look like8
and we compare it with the tests down here, then we do find9
that there are places where they don't agree. And the10
important thing is that even if they don't agree in one place,11
the system will say that the parts are not identical. 12
And so we find that in this case they actually don't13
agree in quite a number of places, and some of those are due14
to the slight movement of inflections that I indicated at the15
board. Some of them, on the other hand, are due to this16
phenomenon of crossings multiple times. 17
So, for example, in this area -- oops -- in this area18
down here, the what looks like a fat bar is actually three19
separate bars due to the fact that -- due to noise, the20
multiple crossings.21
Q Now just for explanatory purposes, what does the XOR in22
the lower right mean?23
A XOR is a logical operation, it's short for exclusive or. 24
So usually when we say or, we mean inclusive, that is, you say25
HORN - DIRECT0098
A or B, that might mean A or B, but if both A and B are true,1
that's also okay, where exclusive or is A or B but not both A2
and B. And the reason that's relevant here is because this is3
the operation intended in the circuit in Figure 3. And so4
we're just reproducing what the circuit in Figure 3 is trying5
to accomplish. And so the output of the circuit in Figure 36
would include these isolated spots of errors.7
Q So are all those peaks on the bottom line of this8
illustration places where there would be inflections caused by9
noise?10
A Yes. And now keep in mind that this is going to happen11
on every line. So the opportunity for an alarm signal saying12
these two objects are not the same are enormous, and the13
likelihood of finding them the same is essentially zero.14
Q Now, could you fix this by using a different threshold?15
A Well, actually I tried this with 20 different thresholds16
going all the way from near the bottom to near the top, and I17
get different results for every threshold, but they all have a18
certain number of errors.19
I've also experimented with lower noise levels, for20
example, 1 percent noise, and I get fewer errors, but21
importantly again, even a single error is enough to say that22
the parts are not the same.23
Q Have you had personal experience with these effects of24
noise?25
HORN - DIRECT0099
A Certainly. When I started at MIT, I used a vidicon and1
an image dissector tube and we had extensive problems because2
of this noise, and we had to develop algorithms to cope with3
them, or, if you like, to ameliorate the effects of noise.4
Q Is there any discussion in the patent about how to deal5
with and solve the problems of noise?6
A Lemelson uses the word "noise" in one place, but7
apparently with a different meaning. It's where he's8
explaining that part of a signal has to be free of noise,9
meaning there are no other inflections there. And that, I10
think, implies simply that he didn't want other objects of11
varying -- varying properties in that part of the image12
because he didn't want to be disturbed by them, which is13
different from the noise term that we're using here.14
Q So, is there any discussion or explanation or solution of15
the problem that you have discussed about noise?16
A No.17
Q What about illumination? Why, if it was, why was18
illumination a problem?19
A Illumination was important because the measurements in20
the image are the product of the reflectance of the surface21
and the amount of light falling on it. So, something could22
appear at a low voltage level in the signal because either it23
didn't reflect much light or because not much light was24
falling on it. So, if you change the lighting, all of the25
HORN - DIRECT00100
signals change correspondingly. If you double the amount of1
lighting, the signals go up by a factor of 2. And so that2
correspondingly would displace inflections or cause some3
inflections to disappear.4
Q Have you also had personal experience with illumination5
problems?6
A Yes. For example, at one point we decided to install a7
generator, power generator, to separate ourselves from the8
vagaries of Cambridge Electric in our work at MIT. We finally9
decided this was a futile attempt and instead to develop10
algorithms that were not sensitive to overall brightness11
fluctuations12
Q Did Mr. Lemelson discuss anywhere in the patent the13
problem of illumination?14
A No. In fact, he thinks that ambient lighting is15
appropriate or adequate.16
Q Is that something he discussed in the prosecution17
history?18
A Yes.19
Q Would you turn to Exhibit 3B? And I'll call your20
attention to page 211.21
MR. JENNER: This, Your Honor, is from the 195622
application in Exhibit 3.23
THE COURT: All right.24
// 25
HORN - DIRECT00101
BY MR. JENNER: 1
Q And on page 211, would you read down through about the2
eighth or ninth line to where a sentence ends with "ambient3
light or conventional illumination"? Do you see that?4
A Yes.5
"Applicant system employs a scanning cathode ray beam6
which is deflection controlled to selectively scan an7
image field portion of which field ordinarily vary in8
light contrast under ambient light or conventional9
illumination."10
Q Now what, if anything, does that indicate to you about11
the circumstances under which Mr. Lemelson envisioned12
operation of his system?13
A Well, ambient light, as I said earlier, would refer to14
just the light that's ordinarily around a room, such as light15
streaming in from the windows or overhead light, and so he16
wasn't contemplating any special lighting such as, for17
example, putting the lights right up against the camera or18
using a ring light around the camera or any kind of special19
lighting arrangement.20
Q In your opinion, if all the other problems of the system21
could be fixed and went away, could the system operate under22
ambient illumination?23
A No, because the variations in lighting would introduce24
corresponding variations in the analog video signal, which25
HORN - DIRECT00102
would cause displacements of the inflections, and, once again,1
everything is based on the inflections being in the right2
place.3
Q Now did you make a graphic again from that same gauge4
exhibit to show the effect of illumination?5
A Yes.6
Q And that's in 3477, once again.7
A It's the last one --8
Q Yeah. It's the fourth page of 3477. Would you explain9
what this shows in relation to illumination?10
A Again, the first two lines I just reproduced from where11
we started. It's just the analog video of the gauge and its12
threshold as a result. Then what I did is to artificially13
create a signal that would occur if the lighting was reduced14
by 5 percent. 15
Now, Your Honor, incandescent light bulbs are very16
sensitive to voltage fluctuations. A 1 percent change in17
voltage produces a 3 1/2 percent change in brightness, so the18
5 percent change in brightness I postulated here is quite19
common. It corresponds to changings, let's say, from a 110-20
volt supply to a 111 1/2, and, believe me, the fluctuations in21
power supplies are much larger than that.22
Q For example, is that a fluctuation that would be23
realistic in terms of a factory environment?24
A In the factory environment, you might find larger25
HORN - DIRECT00103
fluctuations because every time some large machine starts up,1
there's a drop in the supply voltage.2
Q Okay. 3
A So then I took this -- now these two signals, the4
modified one and the original one superficially look5
essentially the same, but if you inspect them closely, you'll6
find that these peaks, for example, here, are a little bit7
lower than the peaks in the original.8
I then took this reduced lighting scan line, if you like,9
and put it through the threshold circuit to obtain the10
threshold that result here, which, again, superficially looks11
very much like the standard threshold that result up there,12
but if we carefully compare them point by point as Lemelson13
does, through the circuit, for example, of Figure 3, which I14
here call an XOR circuit, we find that they don't match in a15
considerable number of places.16
And, again, I did this with many -- with many different17
variations of threshold and I get the same kind of results.18
Q All right. Now could you turn to 3478? This is a still19
picture taken from one of the demonstrations that I think Mr.20
Schuessler made when he testified about Symbol Technology21
products. What does this illustration show, if anything,22
about the effects of illumination variations?23
A There's a object with bar code on it that has different24
properties in the background. You can see a lower area that25
HORN - DIRECT00104
is -- that is relatively bright over here, and then to the1
left of it an area where the reflectance in the background is2
not as bright. 3
In the scan down here we see that the signal isn't at all4
what you might expect if you're scanning a bar code. You5
would expect to see just the perfect wave going between black6
and white with little rectangular patterns, sort of like the7
threshold or signals I've shown, when, in fact, the real8
signal looks like the one down here, and you have to somehow9
be able to make sense out of this even though the signal in10
this part is of substantially different character from the11
signal in the left part simply because of variations in12
brightness.13
Q Now what, if anything, does this indicate about the14
possibility of using Mr. Lemelson's fixed thresholding or15
fixed clippers to be able to threshold a signal such as shown16
in Exhibit 3478?17
A Well, it certainly wouldn't be useful, as we see. If we18
pick the threshold as shown by a dotted line around about19
here, then all of the transitions in the left area are20
actually above the threshold, and there will never be any21
inflections found there. Conversely, in the right part of the22
image, only in rare places does the signal rise up to the23
threshold. So, many of the transitions will be missed, and24
the ones that are found are going to be very sensitive to25
HORN - DIRECT00105
small changes in lighting.1
Q What, if anything, does this show, in your opinion, about2
the effect of illumination on the ability to use thresholding?3
A It means it's going to be impossible to use thresholding4
in the presence of variations in illumination.5
Q All right. Another problem you referred to as a6
fundamental problem was distortion. How would distortion have7
appeared in a system like Mr. Lemelson's?8
A Distortion would have displaced image elements. The --9
what distortion does is essentially warp what's in the image,10
it stretches it in places and compresses it in other places,11
thereby displacing positions of inflections.12
Now, if I may say, in the case that the distortion is13
fixed, it's not so much of an issue as long as the object is14
prepositioned. In other words, if you're comparing a standard15
against a test and both the standard and the test are warped16
in some way, they may still -- they may still have a chance of17
being compared. The difficulty comes in if either the object18
is not prepositioned, now you're going to a different part of19
the image which is distorted in a different way, or if -- or20
if there's a change in the distortion.21
Now vidicons had an adjustment called electronic focus,22
so unlike an ordinary camera where focusing just means moving23
the lens, with a television camera there's two adjustments;24
one is a mechanical motion of the lens which, of course, has25
HORN - DIRECT00106
to be correct, and the other one is an internal adjustment1
that's dependent on the voltage. So there's a potentiometer2
you can adjust to adjust the voltage.3
One of the effects of adjusting that voltage is to change4
the distortion. In fact, the whole image rotates slightly as5
you adjust that knob.6
Q Did you have personal experience with distortion?7
A Yes. With our vidicons, we had precisely this kind of8
problem, and it's a problem to this day in electro-optical9
equipment.10
Q In fact, if you turn to Exhibit 84, which is an article11
from 1980 by Mr. Reinhold who testified earlier, Mr. Reinhold12
and a Mr. Vandanbrugh [phonetic] about automatics; do you have13
that?14
A Yes.15
Q Would you turn over to the bottom of page 24. And in the16
last paragraph where he's talking about the camera system, you17
see that he says toward the bottom:18
"For many purposes such vidicon-based cameras are19
perfectly adequate. Where precisely repeatable20
measurements are necessary, however, vidicons have some21
drawbacks. Because they scan a photosensitive surface22
with an electronically deflected electron beam vidicons23
are sensitive to small changes in the deflection signals24
causing a distortion of the picture."25
HORN - DIRECT00107
So he's talking about distortion which he then goes on to1
say, "Can cause as much as a 10 percent error," which he is2
saying in 1980. Is that consistent with your experience?3
A Yes. And it's also consistent with the specifications of4
the picture tubes that were used by EMR as in specifications5
that Wilder prepared. And it's also consistent with my own6
experience of both vidicons and image dissectors as shown in7
one of my artificial intelligence lab reports from the8
sixties.9
Q What, if any, effect, in your opinion, would distortion10
of this kind have had on the ability of a person of ordinary11
skill in the art to be able to make and use a system such as12
Mr. Lemelson describes in 1956 or 1963?13
A Well, supposing all of the other defects could somehow be14
fixed, then it would have meant that you would not have been15
able to make accurate measurements.16
Q All right. And one last aspect of the inability to17
reliably detect inflections, does displacement have an effect18
here?19
A Yes. Even the tiniest displacements will produce20
movement of the inflections that correspond to the21
displacement.22
Q And, again, do you have a graphic that shows this?23
A Yes. I think it's part of the one we looked at earlier.24
Q 3477?25
HORN - DIRECT00108
A I guess it's the second to last page in that exhibit.1
Q This is the page that on the right hand says, shifted2
.001?3
A Yes.4
Q And what does that mean?5
A That indicates that a very tiny amount of motion has6
occurred in the image, .001 meaning a thousandth of the width7
of the image, so that's very small. And that motion could8
have arisen from, for example, a change in the electronics of9
the vidicon, aging of the vidicon, supply variations or,10
conversely, in a very different context, a very tiny motion of11
the object, some error in prepositioning.12
Again, the top two lines are just a repeat of the same13
old thing from the very first graphic. Then the third row14
shows the picture signal shifted by a thousandth of the width15
of the image. And, of course, there's no visual difference16
between these two because the change is so microscopic.17
Similarly, when we threshold this shifted signal to18
obtain this signal, it looks just like that one, and it should19
because it's the same -- exact same wave form, there's no20
change in noise or anything.21
Now when we compare the two, using the circuits of Figure22
3, or as I indicated here XOR, there are a large number of23
places where they don't match. In fact, every single24
transition is moved a tiny bit, and so there will be a25
HORN - DIRECT00109
mismatch at that position.1
And again, to reiterate, a single mismatch means that the2
object -- the test object is not identical to the standard3
object.4
Q Now, would using gates the way Mr. Lemelson suggests to5
use gates in the various figures of his patent, solve all6
these various problems you've referred to about measuring7
inflections?8
A No, because as we saw, these problems due to distortion,9
change in lighting, noise and shift in image position affect10
potentially all of the inflections. So all that gating does11
is reduce the number of places where you have an error, but12
you'll still have an error.13
Q In your opinion, would a person of ordinary skill in the14
art in 1956 or 1963 have been able to solve the various15
problems of noise, illumination, distortion, and displacement16
in order to be able to make reliable detections and17
measurements with inflections?18
A No. First of all, they wouldn't have been really aware19
of these problems, and, secondly, there is no incremental way20
of going from what Lemelson describes to a solution. In other21
words, machine vision systems can handle all of these22
variations quite easily, but that's because they operate in a23
fundamentally different way. There's no way to put a little24
fix in here and a little fix in there to go from what's25
HORN - DIRECT00110
described here to something that solves these problems.1
Q In view of that, is Mr. Lemelson's system predicated on2
the use of clippers at fixed threshold levels and gates3
something that can produce a practical solution by measuring4
inflections in analog video picture signals?5
A No. In fact, the -- in machine vision, thresholds are --6
fixed thresholds are not used because they just don't work.7
Q All right. Now I'd like to turn to the next item under8
"Functional problems." This item is "Cameras don't have9
trigger inputs, can't be synchronized to tape." What do you10
mean by that?11
A The television cameras we're talking about are12
integrating devices in the sense that light falls on them, a13
charge is built up, and then you read it out. Now, the14
important thing is that the charge you read out is the product15
of the brightness and the time. I other words, if you wait16
longer, you get a larger signal. And what this means is you17
have to read it out at a fixed rate, so every thirtieth of a18
second. If say --19
Q Is that what TV cameras do?20
A That's what TV cameras do, and that's why they do it.21
Q They read out at a fixed rate?22
A Yes.23
Q And that rate is?24
A A thirtieth of -- 30 frames a second.25
HORN - DIRECT00111
Q All right. 1
A Now if you waited longer, the signal would rise in2
proportion. If you took the picture earlier, if you scanned3
it earlier, it would correspondingly be a lower voltage level.4
Q So that's kind of an illumination problem? If you read5
it too soon or read it too late, the amount of brightness will6
be greater or lesser?7
A It has exactly the same effect that the signal you get is8
directly proportional to illumination, and also directly9
proportional to the scan interval time.10
Q All right. Why is that a problem in the context of11
cameras not having trigger inputs?12
Q The problem is that the system requires synchronization13
of what's on the tape with the camera. 14
If Your Honor recollects, on track C1 there's a sync15
signal that says the picture starts here. Now imagine the16
tape is running and the sync signal comes along, the intent17
here is to then immediately start reading out the camera and18
recording the video signal there. But the camera may be right19
in the middle of its one thirtieth period of charge20
integration, and if you read it out at that point, the signal21
will be only half of what it should be. So there needs to be22
a way of synchronizing the two so that when the tape comes to23
that point as one, the camera happens also to be at the point24
as one, and that's the part that can't happen.25
HORN - DIRECT00112
Q Can't happen?1
A It can't happen because the camera is free running. It2
has its own internal deflection generators, and it has a3
single output that just is the video signal.4
Q And I take it the effect of reading out the signal too5
soon could be illustrated by the same figure you showed the6
Court before, the 5 percent illumination reduction; it would7
have the same general effect?8
A The same general effect except much larger.9
Q All right. So we don't have to do that again.10
In your opinion, what is the consequence of the inability11
to synchronize Lemelson's camera with the magnetic recording12
medium?13
A Well, it pretty much makes it impossible to use because14
it's all based on recording these video signals on the tape in15
synchrony in the signal arrangement he describes, and then16
reading it out to analyze it.17
Q Okay. Let's move to the next item on the list, number 9,18
"Signals recorded on different tracks can't be aligned19
properly." What do you mean by that one?20
A For the system to operate, the various tracks have to be21
aligned precisely. For example, if you're going to compare22
the standard and the test track, they have to obviously be23
reproduced in exactly the synchronous time correspondence. 24
And, as I mentioned earlier, the possible accuracy of25
HORN - DIRECT00113
alignment of heads on the tape is much coarser than what would1
be required for this purpose.2
Q Does Mr. Lemelson in the patent recognize the problem of3
-- of the inability to align the tracks properly?4
A No, he doesn't mention it.5
Q And I take it if it's not mentioned, there's no solution6
discussed either?7
A Right.8
Q Could the disclosed embodiments and ideas of Mr. Lemelson9
have been made and used without solving this problem?10
A No. This is a critical part of the problem.11
Q Would a person of ordinary skill in the art in 1956 or12
1963 have known how to solve this problem?13
A No. There was no technology for dealing with it.14
Q Go on to the next issue, number 10, "Gating signals won't15
be recorded in the appropriate place." What does that mean?16
A An important part of the signal in arrangement that17
Lemelson says is basic to his invention is that there be18
precisely aligned gating signals that identify the regions19
that you're going to actually analyze.20
Q Those are the gates that are shown in figures like 3 and21
4 and such?22
A Yes. And, now, one of the issues of using such a system23
would be how do you record those? We already discussed how to24
record the analog video, but now we're dealing with how to25
HORN - DIRECT00114
record and put these gating signals in just the right place. 1
And Lemelson does have a suggestion for doing that, but it's2
one that happens not to work.3
Q Let me call your attention to column 40, line 58 of the4
patent and ask if this passage starting at line 58 or in the5
paragraph starting at line fifty -- I'm sorry, I'm in the6
wrong place -- yes, column 40, line 58 has anything to do --7
A Yes, it's right at the bottom of the column where he's8
talking about enlarging the optical system. 9
Q I'm on the wrong line.10
A So if the business the --11
Q Okay. Well, it starts -- starts around line 66 or 67. 12
What does that have to do with this?13
A He proposes here to create gating signals that are larger14
than the regions he wants to analyze by simply magnifying the15
image.16
Q And what do you mean by magnifying the image?17
A Well, he doesn't make it clear. He says the optical18
system of the scanning device may be enlarged a necessary19
degree. I'm not sure what that means. The only way I can20
interpret it is that we're using a lens of different focal21
lengths so that we get an enlarged picture.22
Q What happens if you do that?23
A Certainly the regions are enlarged as he intended, the24
problem is that they're also moved sideways. As you can25
HORN - DIRECT00115
imagine if you take a picture and you enlarge it, everything1
moves radially outward from the center point, so not only do2
things get larger, but they're also shifted corresponding to3
their position in the image.4
Q Did you have -- did you make an illustration to show5
this?6
A Yes.7
Q Would you turn to Exhibit 3479 in the binder? What does8
3479 show?9
A This is an illustration based on Figure 8' -- no, well,10
one of the figures. And it shows different regions, AB and11
AC, and let's suppose we're trying to create gating signals to12
analyze the region AB down here. One way we could do that is13
simply scan across region AB as shown by the red line and to14
note the inflections and to base the gating signal on the15
magnetic tape on the position of those inflections. And so we16
just, for illustrative purposes, put the picture next to a17
piece of the magnetic tape.18
Now those gating signals wouldn't work because they're19
right on the edge of the object, and so they're too narrow;20
you need to make them slightly larger so that you're sure that21
the inflection actually is within that region. 22
So, can we go to the next illustration, the next part of23
this? Okay. 24
So, the way I understand his proposal to enlarge the25
HORN - DIRECT00116
optical system, we are going to enlarge the image by enlarging1
the focal length of the lens. And the indication here with2
arrows is that when you do that, everything moves outward from3
the center of the image. The arrows indicate the directions4
of motion. 5
And so in the next illustration we see what would happen,6
namely, sure enough the area AB is now larger, that's the7
desired effect. Unfortunately, it's also moved away from the8
center so that now if we write the gating signals down onto9
the tape, they will be wider, but displaced sideways and10
completely useless for analyzing the object AB.11
Q Now does Mr. Lemelson show any recognition in the patient12
that this is a problem?13
A No.14
Q Does he show any other technique for correctly locating15
gating signals?16
A He briefly mentions another technique based on a pulse17
generator. Now a pulse generator is a device you can dial in18
numbers or dial in positions and say, okay, I want a pulse at19
this position of that length, but somehow it means that you20
have to have some process that will take the physical21
situation and create those width and positions.22
Q Let me call your attention to column 39 at line 54 and23
ask you what, if anything, this has to do with the creation of24
gating signals?25
HORN - DIRECT00117
A Well, this is a method for creating the gating signals1
directly from the -- let me make sure this is the section --2
directly from the signal itself. And this is where we3
started, saying that if we just put the gates right where the4
edges of the object are, that isn't going to work.5
Q All right. S, this is the root of the problem where you6
can't just precisely align the gate with the portion of the7
image you want to deal with?8
A Yes.9
Q All right. So, you've described methods of creating10
gating signals and explained that they would not actually11
work. In your opinion, would a person of ordinary skill in12
the art in 1956 or 1963 have been able to correct either13
method from making the gating signals without undue14
experimentation?15
A No.16
Q Why not?17
A There's no clue of how to go from here to there. I don't18
even know how you would approach it based on this basic idea19
of enlarging the optical system. There's no way to fix that.20
Q Let's move to the next --21
THE COURT: Well, before we go to circuit problems,22
let's go ahead, it's noon, so we'll take our luncheon recess. 23
We'll be in recess until 1:30 and reconvene then on the24
balance of it.25
HORN - DIRECT00118
(Court recessed at 11:57 a.m. until 1:42 p.m.)1
THE COURT: Come on back up, Doctor, if you would.2
Counsel, before we get started, my clerk was going3
over the exhibits. Each day she tries to do her minutes and4
include in there the exhibits which are received. And she was5
telling me everybody's been really good about working with her6
and making sure that she gets the accurate ones. But it7
occurred to me, after listening to her, that maybe one thing8
that might help would be at the end of each day if you all9
could collaborate a bit and then the next day just provide her10
with a list of those exhibits that the parties agree were to11
be received.12
For example, we've had exhibit books where maybe not13
every exhibit was talked about, but the clear intent and14
understanding of the parties was they would all come in,15
copies of patents and so forth, and others where there's16
objection to them. And maybe you could just give her both of17
those, and that way I'd be able to parse out and deal with18
those that are objected to, as opposed to those as to which19
there is no objection. Then our minutes could accurately20
reflect that.21
Is there anything else? You think that that would22
cover it? Okay. Just wanted to pass that on before we --23
MR. LISA: One small housekeeping matter, Your24
Honor.25
HORN - DIRECT00119
THE COURT: Yeah. Mr. Lisa.1
MR. LISA: Mr. Silver very nicely advised us that2
our wireless network pops up every now and then on some of3
their computers.4
THE COURT: Oh.5
MR. LISA: And for the same reasons that we wouldn't6
walk over and go through their files in the courtroom, we'd7
hope that Your Honor would admonish lawyers to respect our8
files and not -- not peruse them.9
THE COURT: Oh, yeah. Certainly. I'm sure nobody10
-- nobody would, and vice --11
MR. LISA: And there's no accusation being made.12
THE COURT: No, no.13
MR. LISA: I think Mr. Silver very nicely just14
advised us.15
MR. JENNER: No need to admonish.16
THE COURT: Great. All right. Let's go ahead and17
proceed, then with -- we were up to circuit problems, logic18
circuits are not properly clocked on -- I can't read the19
exhibit number any longer, but it's on the selected enablement20
issues.21
THE WITNESS: It's 3469.22
MR. JENNER: 3469. But before -- before I go there,23
Your Honor, I've got a couple of examination housekeeping24
matters I want to take the witness over.25
HORN - DIRECT00120
THE COURT: Sure. Okay.1
DIRECT EXAMINATION (Continued)2
BY MR. JENNER:3
Q Dr. Horn, I notice in going through my materials that I4
forgot to ask you yesterday about references in the patent to5
one other item that I wanted to cover, and that's an item6
called photoelectric scanning.7
A Yes. 8
Q I would like to have you look at the references to9
photoelectric scanning, and I'll ask you about that.10
First, would you turn to column 6, line 25. Actually,11
the paragraph starts at line 23.12
A Yes.13
Q There's a reference there, "Various automatic measurement14
and comparison scanning techniques are provided herein whereby15
a picture signal derived from photoelectric or video scanning16
an image field or part of a field is recorded on a magnetic17
recording member, et cetera." Do you see that?18
A Yes. I read that to be synonymous. In other words, it's19
saying photoelectric is video scanning. Which makes sense,20
since photoelectric means something to do with photons and21
something to do with electrons, converting photons to22
electrons.23
Q Is that "something" a photoelectric device that would24
scan an image field?25
HORN - DIRECT00121
A Yes.1
Q Okay.2
THE COURT: So while it's stated in the disjunctive,3
it's really talking about the -- you read photoelectric or4
video scanning to basically be synonymous, then?5
THE WITNESS: Yes.6
THE COURT: Okay.7
BY MR. JENNER:8
Q Further down in the same column there's a sentence that9
starts in line 44, "For many of the functions described," and10
then it goes on and talks about how "a picture signal may be11
passed directly from a video storage tube or other12
photoelectric scanning device to the reproduction amplifier,"13
and so on. Do you see that?14
A Yes. And I read that as being alternatives of using a15
video storage tube or some other kind of photoelectric16
scanning device, such as television camera.17
Q All right. And what would be the nature of the output of18
that device?19
A High bandwidth analog video signal, standard television20
signal.21
Q The other occurrence is in column 24. And it's the22
paragraph that starts on line 48, "Figure 3 shows."23
A Yes.24
Q And then there's a reference in that sentence to,25
HORN - DIRECT00122
"scanning signal recordings, which are signals derived from1
photoelectric scanning of moving objects or video beam2
scanning of image fields."3
What, in your opinion, does photoelectric scanning mean4
in that context?5
A Well, I'm not really sure, because there's no reference6
to scanning of moving objects in the application. The objects7
are always in the fixed and predetermined position. 8
Furthermore, if you move the object while you're scanning it,9
you'll get a smeared image, which will be useless for purposes10
of measurement or comparison. So I really don't know exactly11
what this might be referring to.12
Q All right. Insofar as how you interpret this13
photoelectric scanning device, how, if at all, do the14
statements made in the prosecution history affect your views15
as to what that means?16
A Well, Lemelson throughout says that he's dealing with17
television cameras and signals derived from them producing18
analog video signals of high bandwidth so -- or flying spot19
scanners, all of which are deflectable electron beam devices. 20
And so if this is a reference to such a device, I'm not sure21
quite how to interpret it because of the moving object part.22
Q There has been a suggestion that this could be referring23
to a light source and photocell for receiving the light from a24
light source. Do you have an opinion as to whether this could25
HORN - DIRECT00123
be a reference to that kind of device?1
A Well, no. That wouldn't make a lot of sense, because the2
whole specification is about a camera, an imaging device,3
television camera, something with a lens in it that creates an4
areal image, not something that simply samples a single point,5
like a photocell.6
Q Does the information in the patent and in the prosecution7
history about full-frame scanning of an image field have any8
bearing on your views?9
A Yes. That again affirms the notion that we're dealing10
with full-frame scanning and an image that's actually being11
scanned, as opposed to a device that merely detects where the,12
for example, light beam is interrupted.13
Q Is there any other information that you are aware of in14
the patent that relates to whether there is any different15
device that you would refer to as a photoelectric scanning16
device?17
A There's nothing else in the patent that might suggest18
other than my interpretation.19
Q All right. You don't have any other information on that?20
A Right.21
Q This morning I asked you about the effects of22
illumination, and I referred to an exhibit, which is 3478,23
which is the still that was taken from a video presented by24
one of the witnesses from Symbol. Do you remember that?25
HORN - DIRECT00124
A Yes.1
Q During the lunchtime break you pointed out to me that the2
effect in this Exhibit 3478 is due to more than just3
illumination, which is what I had asked you about. Would you4
explain what you mean by that.5
A Yes. The brightness in the image is proportional to the6
product of reflectance and illumination so that variations in7
illumination have similar -- well, actually the same effect as8
variation in the reflectance.9
When I looked at this picture I realized that the10
variations here are due to the fact that inside this11
cylindrical container of jewelry cleaner there's a whitish12
deposit at the right end which provides a different background13
reflectance from the other part, which is a clear liquid,14
which presents a darker background. And in this case that's15
what accounts for the difference in the signal on the right.16
But, by the way, the -- apparently the scan is from the17
right to the left, which is -- which helps perhaps unconfuse18
some of us; because the left part of the -- the left part of19
the graph on the right corresponds to the right part of the20
scan on the object.21
But again, to repeat, the effect of variations in22
background reflectance are essentially the same as the effects23
of changes in lighting. So the problems I described that24
result from lighting changes would similarly come about from25
HORN - DIRECT00125
changes in background reflectance.1
Q How did you characterize it, that it's a product of2
reflectance and illumination?3
A Yes.4
Q And the effects are -- are similar, you say?5
A Yes.6
Q Okay. Now, this morning, when I asked you about gating7
signals, we got to a point where I called your attention to8
the bottom of column 39. And there is more material that goes9
on after the bottom of column 39, I guess from line 65 and10
following into column 40, about -- more information about11
creating gating signals. Do you have that?12
A Yes. I believe I got so carried away answering your13
question about the text at the bottom of column 39 I neglected14
to pay attention to the part at the top of column 40. So let15
me explain that method for producing gating signals.16
The notion is that one could produce a cutout, something17
like a cardboard rectangle with areas that are chopped out,18
and place that carefully with relation to the camera and scan19
that and determine the gating zones based on those cutouts.20
Q Is that what's referred to in the first line on21
column 40?22
A Yes. "Said mask or map is correctly positioned in the23
scanning field of said beam scanning means," yes.24
Now the practicality of this is I believe nonexistent. I25
HORN - DIRECT00126
mean, if I imagine, for example, that this is my field of view1
and I'd like to permanently eliminate Mr. Quinn here, I'd have2
to cut out a rectangle -- sorry, Charlie -- cut out a3
rectangle, and the problem would be twofold. First of all,4
how do I create this cardboard mask? I can -- I can put it5
down here and cut it out, but how do I get it to reflect the6
actual shape that I have there? And the second problem is,7
how do I then take that cardboard mask and align it in the --8
exactly the right position with respect to the camera? So I9
don't consider this a practical method for obtaining gating10
signals, either.11
Q All right. You mean literally cardboard, or just some 12
material that a mask is made from?13
A Well, it could be some other flat material, plastic14
perhaps.15
Q All right. So in your opinion this is not a practical16
method for creating gating signals, either?17
A That's correct.18
Q Is there any explanation given in the patent about how to19
go about doing this, to solve the two problems you refer to?20
A Well, it mostly just describes this notion of creating21
that cutout and positioning it with respect to the camera, but22
it doesn't actually explain how to create the cutout or how to23
position it accurately with respect to the camera.24
Q Is there any information in the patent that in your25
HORN - DIRECT00127
opinion would enable a person of ordinary skill in the art in1
1956 or 1963 to know how to do this, to make these masks or2
maps using cutouts?3
A No.4
Q Now, this morning I also asked you whether the use of5
gating signals would remove the problems of noise,6
illumination, displacement, and distortion. And you told me7
you wanted to clarify your opinion about this. Would you do8
so now.9
A Yes. This morning I showed what happens with inflections10
as the result of changes in illumination, noise, distortion,11
and image motion. And I wanted to point out that gating12
signals can reduce those problems in certain cases by dealing13
with small variations in the positions of inflections. They14
cannot, however, deal with missing inflections or inflections15
that shouldn't be there. And, as we saw, we have all three of16
those effects.17
Furthermore, many of the circuits are also sensitive to18
very accurate positioning of the inflections, including19
Figure 3, which is the one I kept on referring to.20
And then finally I'd like to point out that the way I21
read the patent, Lemelson's intent with the width of these22
gating regions was a way of dealing with manufacturing23
variations. For example, in Figure 8', where he shows the24
cutout area AC -- where he shows the cutout area AC, in the25
HORN - DIRECT00128
text he explains that the reason the gating signal has to be1
wider than the area itself is to allow for small manufacturing2
variations in the position of that cutout or hole. So it's3
not intended to deal with positioning errors. It's there to4
deal with manufacturing variations.5
And just roughly speaking, if one were to -- wanted to6
deal with both of those, then the zone would again have to be7
enlarged. And that's not what we're seeing in the description8
of the patent. He uses that to deal with manufacturing9
variations.10
Q So what, then, is your opinion overall as to the ability11
of gating signals to be used to solve the problems you raised12
regarding noise, illumination, distortion, and displacement?13
A They can't solve the problem. They will affect some of14
the figures in different ways from other figures.15
Q All right. Let's turn back to 3469, the list of selected16
enablement issues that we've been going through. And we had17
hit the point at the lunch break of circuit problems.18
Now, first, what do you mean by circuit problems in this19
context?20
A These are more concrete problems at the circuit level. 21
Lemelson shows circuits like clippers and what he calls22
Schmitt circuits. So we're getting down to the nitty-gritty23
of implementation detail.24
Q Are these all of the --25
HORN - DIRECT00129
THE COURT: Problems at the circuit level generally1
are, but I'm thinking of a different circuit, I think.2
THE WITNESS: Oh. I see. No, I hadn't thought of3
that ambiguity in terminology.4
THE COURT: Yeah. It's a -- that's a lawyer joke.5
BY MR. JENNER:6
Q Are these all of the circuit problems that you have7
encountered in the patent?8
A No. There are many more. In order to keep this to a9
finite time, jointly with counsel we selected these.10
Q There are some people who may think we've already11
exceeded a finite time. So let's go through these three.12
First of all, Number 11 is, "Logic circuits are not13
properly clocked." What do you mean by that?14
A In order for logic circuits to operate correctly, they15
should look at the inputs only at certain times. If you16
remember, Your Honor, logic circuits work with bi-level17
signals. Now, no signal can change instantaneously from one18
level to another, so there's a brief moment where it's making19
a transition.20
Now, if the logic circuit is looking at the signal while21
it's making the transition, either the output is wrong, or22
actually it won't be a correct bi-level signal.23
THE COURT: It's going to miss it.24
THE WITNESS: It's going to miss it.25
HORN - DIRECT00130
And so typically logic circuits will use a clock1
which essentially says you're only allowed to look at the2
inputs here, there, and there, and then make sure that the3
inputs are stable, that when you look they're not busy4
changing.5
And this is particularly important with respect to6
storage units such as what Lemelson calls flip-flops. They're7
particularly sensitive to this problem of looking at the wrong8
time.9
BY MR. JENNER:10
Q Now, can you point out in an exemplary figure how this is11
a problem. Is this a problem at Figure 3?12
A Yes.13
Q All right.14
A I was going to look at what I call the XOR circuit in15
Figure 3, which is the combination of logic gates AN12. So16
it's this part of the circuit. And the intent of this circuit17
is to compare two gated clip signals to look for any18
differences.19
And one of the problems with this circuit is that the and20
and or gates are real physical circuits. They don't operate21
instantaneously. Their output changes a little bit after the22
inputs change. And what's more, they don't have an23
instantaneous rise. The wave goes from low to high in the24
smooth way.25
HORN - DIRECT00131
Now, one of the things that happens is that the output1
from the or circuit, the one that's shown as a blue rectangle,2
is guaranteed to have a slightly different timing from the3
output of the and circuit AN12 shown as a triangle, and4
they're combined in the not circuit N. And the result is that5
it's the same as if one of the two signals had been slightly6
shifted in time. And again, that means that the inflections7
don't match exactly. So it's as if the images don't match,8
simply because there's a circuit timing issue.9
Now, as it turns out, this could be patched over by10
adding a little bit of delay so that the two paths just kind11
of match up. And engineers will tell you that you can't ever12
really do that. But even if you did, it would mean that on13
the other end -- so now we're dealing with the rising wave14
form, and we match it up there on the trailing, on the falling15
part of the wave form. You'd actually have increased the16
severity of the problem. So that's a very simple example of17
this kind of timing problem which we teach our engineering18
students right up front you solve by going to clocked19
circuits.20
Q Did Lemelson show any recognition in the patents of this21
timing or clocking problem?22
A He did -- he did in some places insert small delays,23
which I believe were intended to cope with this problem. As I24
indicated, those delays don't work for two reasons. The one25
HORN - DIRECT00132
is you -- even with a delay you can never guarantee that1
things match up exactly. And even if they match today, with2
aging of components, power supply variations, the phase of the3
moon, whatever, they won't match indefinitely.4
And the other reason is that even if you get them to5
match for one particular wave form, such as the rising of the6
wave form, they will not match for the falling wave form. So7
you can't really deal with this with delay circuits.8
Q Insofar as clocking of logic circuits might be a solution9
to the problem, is there any showing in the patent of clocking10
of the logic circuits?11
A There's no clocking of logic circuits shown.12
Q Is this the kind of problem that a person of ordinary13
skill in the art could have solved in 1956 without undue14
experimentation?15
A Well, our second-year students at MIT in the year 200216
probably could, but not a person of ordinary skill in the art17
in the 1950s or 1960s.18
Q Did you have any personal experience that affects your19
opinion about this?20
A Yes. This is one of the first problems one runs into21
when experimenting with logic circuits. And if you haven't22
taken the course before, which is -- was the case in my case,23
you're puzzled by it, you don't know what's going on until you24
finally discover there is this transition timing problem.25
HORN - DIRECT00133
Q All right. The next item under circuit problems is that,1
"The clipper doesn't work." What do you mean by that?2
A Well, this is actually a combination of three thoughts. 3
One is that the clipper -- a clipper does not perform the4
action that we require. The second part is that the clipper5
shown as a circuit is not a clipper. And the third part is6
that the circuit shown does not perform a useful function.7
Q All right. Could you take those one at a time and8
explain what you mean.9
A Okay. Let's look at Figures 10 and 11, which are the10
clippers. And I don't want to draw that graph again that I've11
been drawing five times, so I'll just refer to it.12
What the clipper does, a real clipper, such as the diode,13
triode, pentode clipper, video clipper that Lemelson refers14
to, is to allow a signal to follow an input up to a certain15
point and then to stay at that level or, conversely, to stay16
at a certain level until the signal rises above it. But in17
either case it's producing an analog voltage output. That is18
then fed into a log circuit.19
And that's the problem. The logic circuit only wants two20
levels, high/low, true/false, 0/1. And so a clipper is not21
the appropriate circuit component to perform the function22
that's required here. So that's point one.23
Point two is that this clipper circuit as a circuit --24
Q Doctor, before -- before you do that --25
HORN - DIRECT00134
MR. LISA: Objection, Your Honor. I'm -- I have an1
objection. And this is another instance in which we have a2
brand-new opinion being stated by an expert. Dr. Horn has3
taken contrary positions in his expert report as to what a4
clipper is and what Mr. Lemelson supposedly described. In5
fact, there are pages and pages about this in the expert6
report, and this is a brand-new opinion never before stated by7
this expert.8
THE COURT: You say the witness has taken -- or has9
testified or reported differently than he is now as to the10
clipping function or what a clipper does?11
MR. LISA: If you'd like to flip the chart back, I12
can explain what the -- what Dr. Horn has explained in his13
prior depositions and expert reports. And upon seeing, I14
guess, now rebuttals and doing some homework, he's decided to15
change his opinion.16
THE COURT: Well, let me just ask. Is the opinion17
you're offering now, the testimony you're offering now18
different in any way, in your judgment, from what you had19
previously either testified to at deposition or included in20
your reports?21
THE WITNESS: No, Your Honor. I think the confusion22
may have arisen from the fact that since none of this makes23
any sense with a clipper, I've used Lemelson's term "clipper"24
as the circuit component that is at that point in the circuit. 25
HORN - DIRECT00135
And there's a -- I mean, I don't know what Mr. Lisa's1
referring to, but I can imagine one possibility is that if I2
use the term "clipper" to refer to a thresholding circuit that3
performs the conversion to bi-level.4
THE COURT: All right. Well, I'll tell you what. 5
On this I'm going to overrule your objection. I'll let you6
go, you know, obviously into that. And if he's inconsistent,7
based on your cross-examination, then that'll have whatever8
impact it has.9
MR. LISA: Thank you, Your Honor.10
THE COURT: All right. Go ahead, Mr. Jenner.11
BY MR. JENNER:12
Q All right. Before you leave the first point --13
THE COURT: That's it, yeah. What's the number on14
that one?15
MR. JENNER: This is -- if this is the right one,16
this is 3511.17
BY MR. JENNER:18
Q Is this the circuit which you didn't want to have redraw19
that you're referring to?20
A Yes. These are the wave forms I was referring to.21
Q All right. And what is it about these that's22
pertinent --23
THE COURT: And let me just say, you see, Mr. Lisa,24
when -- referring back to 3511, when the witness was just25
HORN - DIRECT00136
explaining just before your objection what he was talking1
about, I was picturing what we've got up there, what he'd2
drawn previously, and it didn't sound inconsistent with that3
to me.4
MR. LISA: Your Honor, the description of those two5
circuits is what Lemelson has said from the beginning were6
meanings of clippers. And in fact we have presented to Dr.7
Horn that the manner in which Lemelson describes and uses the8
clipper is the top figure.9
Now, what Dr. Horn has said from the beginning is10
that that's not true, that wasn't the definition of a11
clipper --12
THE COURT: Okay.13
MR. LISA: -- a clipper was only what you see on the14
bottom of that figure.15
THE COURT: All right. Well, then I'll let you16
impeach him wherever he's said that. But let's go ahead.17
MR. LISA: I can even cite the paragraph through his18
expert report, if you'd like.19
MR. JENNER: That sounds like cross to me.20
THE COURT: Well, it will be, obviously. And21
appropriate cross if there's an inconsistency. But -- 22
BY MR. JENNER:23
Q All right. Dr. Horn, could you go ahead and just relate24
these figures to the first point you were making.25
HORN - DIRECT00137
A In either case, the clipper or the inverted clipper, the1
output is an analog wave form that's moving around at2
different voltage levels, and it's not confined to just two3
levels, so independent of whether the top or the bottom4
interpretation is taken.5
Q Now, is this what Lemelson's clipper does, or what a real6
clipper does, or what?7
A Well, when you say "Lemelson's clipper," which one are8
you referring to? Because in the text he repeatedly refers to9
standard circuit components, such as diode clippers, triode10
clippers, pentode clippers, video clippers. And that's the11
operation of such a clipping circuit.12
Q So when you say "that," the illustration in 3511 is the13
wave form of a standard clipping circuit --14
A Yes.15
Q -- is that right?16
A That's right.17
Q Okay. But that's not what Lemelson's clipper does?18
A That's not what his circuit in Figure 10 and Figure 1119
does.20
Q And does that go to one of your remaining points?21
A Yes.22
Q Okay. Please.23
A So the circuits in Figure 10 and Figure 11 have what's24
called capacitive coupling on the inputs and, in the case of25
HORN - DIRECT00138
Figure 10, on the output, as well.1
Q What does that mean, capacitive coupling? What does that2
refer to?3
A That means that a steady signal will not continue4
through. So one of the possibilities is that if the input is5
slowly varying and rising, there will be no effect on the6
output. And you can see how that is going to mean that using7
a fixed threshold is impossible, because you don't really know8
exactly at what level you are. So if there's a slow rise in9
the input signal, it will be lost because of the capacitor,10
and therefore there's no clipping at a fixed threshold11
possible.12
Q What is the capacitor of the capacitive coupling? What's13
the device that's shown in the figure there that's a14
capacitor?15
A It's the double line on the -- on the left over here. 16
Sorry I didn't indicate that before.17
Q The pair of parallel lines?18
A Yes.19
Q Okay. And there's one at the input and one at the20
output?21
A Yes.22
Q All right. And once again, what is the effect of this23
capacitive coupling in the circuits shown by Mr. Lemelson?24
A It prevents clipping at a fixed threshold.25
HORN - DIRECT00139
Q And what's the consequence of that?1
A Well, that goes against the whole idea of using a clipper2
with a fixed threshold. It's a different circuit, if you3
like.4
But beyond that, he's using a vacuum tube here. And5
vacuum tubes require negative grid bias to operate. That6
means the grid, which is the circuit element with the little7
dashed line, has to be kept at a negative voltage for the8
circuit to operate correctly. The 6J6 in particular requires9
a -8-volt grid bias. And instead, it's connected directly to10
ground. The effect of that is that there will be a large11
current flowing in this tube, and I would imagine that the12
anode would start to glow red. I don't know if it would13
actually burn out or something, but it's certainly not to its14
health. And it also means that it won't perform any useful15
function, because it's just saturated, meaning there's a16
steady current in the anode circuit and therefore no variation17
in the output.18
Q Now, you've described a lot of what you characterize as19
problems here with this. But what I'd like is for you to20
explain what's the effect here of the ability of the clipper,21
whatever it is, to interface with the logic circuits that come22
after it.23
A Well, it's not producing a bi-level output, for a start,24
because of the capacitive coupling. And beyond that, it's25
HORN - DIRECT00140
actually not producing an output, because the tube is running1
in a saturated mode. It's not amplifying or doing anything.2
In addition, the resistor, which is variously referred to3
as RG, R8, or R9, I guess here it's the resistor over here,4
RG, is purported to be a way of adjusting the threshold of the5
clipper and the whole idea is that we'll pick a particular6
threshold where parts of the image are below that and parts7
are above. But this circuit component doesn't perform any8
such function. It simply changes the resistance from the grid9
to the ground. It's in no way adjusting a threshold.10
If I were to conjecture how to fix this circuit, well,11
getting rid of all of this and starting over would be a good12
way. But short of that, I mean, the minimum you'd have to do13
is, instead of having a variable resistor, is have a variable14
voltage source that adjusts the grid bias.15
Q In your opinion would a person of ordinary skill in the16
art in 1956 have been able to recognize and cure these17
problems so as to enable the clipper to have an output that18
would be able to interface with the logic circuits?19
A No. I think they would have found it doesn't work, and20
they might have had a very hard time finding the circuit21
component that could be blamed for it not working.22
And then upon further inspection they would have found23
that there's an inconsistency between the figures and the24
description in the text of use of a well-known device, a diode25
HORN - DIRECT00141
clipper, triode clipper, pentode clipper, video clipper. 1
Those are all well-known terms.2
Q Would this be something that could be fixed without undue3
experimentation in the 1956 to 1963 time frame?4
A Well, no. Because if you go back to just ignoring this5
and putting in a standard component, it's not going to work. 6
If you put this in, it doesn't work. It wouldn't have been7
something that had an obvious solution.8
Q Did you have any -- you said 6J6. It looks like 6J5.9
A 6J5, yes.10
Q Did you have any personal experience with a 6J5 tube that11
leads you to any of your conclusions?12
A Yes. I experimented with electronics before I went to13
university, and I was lucky to find a supply of World War II14
leftover equipment, and the 6J5 was a widely used tube that --15
for audio amplifiers, for example.16
Q All right.17
A And I probably burnt out a couple of them in my time.18
Q All right. Would you turn to the last item under19
"Circuit Problems." And this is, "Multi-threshold clippers20
produce no useful output." What are you referring to there?21
A There's a part at the very end of the specification where22
Lemelson proposes using more than one clipper.23
MR. LISA: Objection, Your Honor. Another situation24
where this witness's testimony is way beyond his expert25
HORN - DIRECT00142
report. There was not a word about this in his expert report. 1
And this has been brought to his attention now nearly a year2
ago in Lemelson's expert reports. I move to exclude.3
THE COURT: Mr. Jenner.4
MR. JENNER: I'm advised that this is true.5
THE COURT: All right. All right. I'll sustain the6
objection, then.7
BY MR. JENNER:8
Q Okay. In that case, we'll leave this item out and go on.9
That's the end of the items on Exhibit 3469, so I'd now10
like to turn, Dr. Horn, to the issue of non-infringement.11
And just to clarify what's going to happen here, you are12
going to express positions with respect to patent claims13
asserted against the use of machine vision systems only;14
correct?15
A Yes.16
Q And you will not be expressing non-infringement opinions17
regarding patent claims asserted against the use of the Symbol18
Technologies bar code equipment?19
A That's correct.20
Q Those will be dealt with later by Dr. Allais; correct?21
A Yes.22
Q Okay. Now, I'd like to turn to Exhibit 3467. Do you23
have that?24
A Yes, I've got it.25
HORN - DIRECT00143
Q Can you identify what Exhibit 3467 is.1
A It's a table of non-infringement comments going claim2
element by claim element in reference to Cognex products and3
the '626 patent.4
Q Now, this continues on through only the independent5
claims that are asserted against the use of Cognex equipment,6
not the dependent claims; correct?7
A Yes. I understand that if an accused product does not8
infringe the independent claims, it by definition doesn't --9
can't infringe the dependent claims.10
Q All right. Now, are your non-infringement opinions based11
on the claim interpretations that you testified about earlier?12
A Yes, they are.13
MR. JENNER: All right. I'm going to ask Mr. Serra14
-- could you just put up, unless it's already up there, the15
small chart. Do I have it? Okay.16
BY MR. JENNER:17
Q Are those the claim constructions of Exhibit 3429?18
A Yes.19
Q And are those the claim interpretations on which you rely20
for the formulations of the non-infringement opinions that21
you've arrived at?22
A Yes.23
Q Now, what I'd like to do to see if we can expedite this24
is ask you if you would go through one claim as exemplary,25
HORN - DIRECT00144
taking the first claim, which is Claim 8 of the '626 patent,1
and explain your non-infringement opinions with respect to2
this claim.3
MR. JENNER: And, this, Your Honor, goes to what I4
hope will be what we're able to do, which is to set forth a5
pattern here, kind of common usage, and then agree that we6
will put in the charts, rather than go through them one by7
one.8
THE COURT: All right.9
BY MR. JENNER:10
Q Dr. Horn, could you proceed with Claim 8 of the '62611
patent.12
A Yes. Claim 8 starts off with:13
"A method of converting analog information to digital14
form comprising the steps of:15
"(a) generating a variable electrical analog16
signal derived from scanning a varying process and17
being representative of physical variations in scan18
said process."19
And this relates to the scanning term that we defined and20
the variations term.21
Now, the scanning term includes the requirement for22
prepositioning, and Cognex products do not require an object23
to be stationary or prepositioned.24
The scanning limitation also requires use of a electron25
HORN - DIRECT00145
beam scanning device. The CCDs and CMOS sensors used by1
Cognex are not such devices. There's no beam used to scan the2
image of an object.3
The scanning limitation also involves generating a4
continuous analog video signal. And the CCD and CMOS sensors5
do not generate a continuously variable analog signal. The6
staircase signal output by these devices is continuous in7
voltage level, which corresponds to brightness, but is not8
continuous in time or space, because each pixel in the array9
is discrete.10
In fact, in many of their products there's no television11
picture signal. The digital image is created directly from12
the bucket brigade output of the CCD that we saw before.13
Also, the surface inspection product from the SISD14
Division of Cognex use a CCD sensor with a single row of15
pixels, which would correspond to line scanning, not full-16
frame scanning. And the term "scanning," the way we've17
interpreted it, includes full-frame scanning, a full raster18
scan.19
Q Well, just to pause, as far as the first limitation of20
Claim 8 is concerned, these distinctions between the accused21
-- I should say the use of the accused Cognex products and the22
first limitation of Claim 8 are based on the interpretation23
that you have found for the scanning limitation as set forth24
on 3429; correct?25
HORN - DIRECT00146
A That's correct.1
Q All right. Would you continue with limitation (b).2
A Claim element (b):3
"analyzing a selected portion of said analog signal to4
the exclusion of other portions of said analog signal."5
And this goes to the analyzing term as it's defined on6
the chart, referring to analog signals being recorded in sync7
on -- along with gating signals on separate tracks of multi-8
track magnetic tape. And then these signals are passed9
through gates and they're clipped and compared synchronously10
by logic circuits to determine the presence and absence of11
inflections.12
And so Cognex systems don't do those things. Cognex13
systems do not analyze a linear recording of continuous analog14
video signals of a test object, since they deal directly with15
digital images. They do not gate a predetermined length of16
the signal to the exclusion of other areas along a scan line. 17
They do not clip the gated signal at a predetermined level;18
they use gray levels. They do not use logic circuits to make19
point-by-point determination of whether an expected inflection20
occurs within the gated length of the signal, or, in the case21
of flaw detection, whether an unexpected inflection occurs in22
the gated length of the signal.23
And what they're doing is very different from this very24
specific thing that the Lemelson prescription tells us to do.25
HORN - DIRECT00147
Q Why don't you pause there --1
THE COURT: Mr. Jenner, with regard to Claim 8, and2
I'm assuming the ensuing ones, the witness is pretty much3
reciting the comments that are contained, with some4
preliminary testimony. Would it not be just as viable to, as5
he's acknowledged that he's set forth his comments, to receive6
those? If there's some specific matter you want to draw out7
concerning any one of them, do that. Then if Mr. Lisa on8
cross-examination takes issue, as I'm sure he may, with some9
of those comments, address that and then pick it up in10
redirect. It just seems to me to be a lot faster.11
MR. JENNER: That's what we had in mind, and that's12
why I suggested yesterday that we were hoping we could agree13
on a process of expediting this by getting some sort of14
underpinning and then just submitting the charts.15
THE COURT: Right. I sure don't want to have to --16
all of us sit here while he -- while the witness basically17
recites --18
MR. JENNER: Nor do we.19
THE COURT: -- what is in the 31 or so pages of20
reports. So let's take -- let's take that approach, and if21
there's something critical that you want to pull out of any22
one of the claims -- asserted claims, go ahead and do it. But23
I'm sure Mr. Lisa will be ready to raise issues he has24
regarding any one of the comments, and go from there.25
HORN - DIRECT00148
MR. JENNER: All right. Judge, what I would do is1
ask the witness, and I was about to do this, with regard to2
limitation (b), the analyzing limitation --3
BY MR. JENNER:4
Q You've just said what it is that the Cognex products5
don't do or how they're not used in accordance. Can you just6
explain the difference. What is it that the Cognex systems do7
do that makes their use different?8
A Well, the Cognex systems find, identify, and inspect9
image areas, and they do it using digital images that are read10
directly, they do it using algorithms that represent11
mathematical and statistical techniques, they collect12
statistical information to reach a decision. And, as it says13
here on the second page, there's a summary, "Cognex systems14
analyze two-dimensional digital gray scale images, not clipped15
signals. They do not analyze analog signals from a16
preselected length of the scan line. They don't gate.17
"To the extent that Cognex systems use two-dimensional18
regions of interest that is larger than object of interest but19
smaller than the entire digital gray scale image, it is to20
promote computational speed and efficiency. It's not a21
requirement."22
Q All right. One thing that you didn't mention in23
particular, the analyzing limitation as you've construed it24
calls for the use of the synchronous recording of the various25
HORN - DIRECT00149
signals on a multi-track magnetic recording medium. Do the1
Cognex products in their use meet that part of the analyzing2
limitation as construed?3
A No, they don't.4
MR. JENNER: All right. Your Honor, I would at this5
point submit the charts as --6
THE COURT: All right.7
MR. JENNER: -- essentially the witness's non-8
infringement conclusions based on the claim construction9
process that we went through yesterday.10
THE COURT: All right. Well, I'll receive 3467 with11
that understanding, and then we can take it up on cross and12
redirect to the extent it needs to be refined or further13
analyzed.14
(Plaintiff's Exhibit 3467 admitted)15
BY MR. JENNER:16
Q Okay. Now, at this point I would move on to the issue of17
the invalidity of the asserted claims of two of the patents,18
the '626 and '918 patents, over specific prior art.19
Dr. Horn, at my request have you compared the asserted20
claims of the '626 and '918 patents with certain prior art21
patents?22
A Yes.23
Q And in particular did you consider three prior art24
patents called Anderson '915, Shepard '481, and25
HORN - DIRECT00150
Rochester '535?1
A Yes, I did.2
Q Okay. I'd like to start with the Anderson patent by3
having you give a brief explanation of the relevance of the4
Anderson patent. And in order to assist with that --5
MR. JENNER: First of all, Your Honor, the Anderson6
patent in full --7
THE COURT: 3506 --8
MR. JENNER: Is 2936.9
THE COURT: Oh. 2936. Okay.10
MR. JENNER: And just to jump ahead, the Shepard11
patent is 2939. The Rochester patent will be 3313.12
BY MR. JENNER:13
Q Starting with the Anderson patent, would you give a14
description of what you consider to be relevant aspects of the15
Anderson patent.16
A Yes, certainly. The Anderson patent describes a method17
for using a electron beam camera to measure the width of an18
ingot running underneath the camera. So shown in Figure 1 of19
Anderson's patent, first of all at the top is the camera. 20
There's a lens here and a iconoscope tube up here, such as the21
one mentioned by Lemelson. The signal from the electron beam22
scanner is read out here and passed through this amplifier.23
Q Let me ask you to stop there for a minute. Where is the24
image that is being looked at? Is the image on the face plate25
HORN - DIRECT00151
of the iconoscope, or is it down at the bottom of the pink1
area?2
A The image is on the face plate of the iconoscope in this3
area.4
Q And what is that an image of?5
A It's an image of the object found at the bottom, which6
is, again, an ingot.7
Q Okay. So continue. What happens with the image on the8
face plate?9
A It is scanned and a analog video signal is produced. So10
this shows the scanning of the image of the ingot. And Your11
Honor will notice that across the ingot there's a kind of wavy12
line of more or less the same height. That corresponds to the13
reflectivity of the ingot itself. Then next to it the line is14
lower, indicating some background next to the ingot. But15
also, outside that area are some sharp peaks. And these16
represent the kind of other signals, background stuff on the17
floor of the factory, which, for example Lemelson's gating18
system is aimed at removing. And we actually see the same19
gating idea here in this system.20
So if you could continue with the animation.21
This signal -- this is a line scan that is removed from22
the -- this is one line out of a scan that's amplified and23
brought over to this point in the circuit on the right.24
Q Let's pause there for a minute. You used the term "line25
HORN - DIRECT00152
scan." Are you saying that this iconoscope is a line scanning1
device?2
A That's why I corrected myself. It's a iconoscope with3
full-frame scan, which is looking for convenience at one line4
of the scan.5
Q All right.6
A Now, in order to gate that signal, a slightly different7
approach is taken where a trigger circuit up above adds a8
signal to the analog video from the iconoscope.9
And these are drawings from the patent. This is10
Figure 2. And what's it's showing is details of the signal11
with the noise pulses on the right and on the left and the12
actual image of the ingot in the middle.13
And now what happens is a gating signal is added to14
essentially lift the part of the signal that we actually want15
to pay attention to, namely, the ingot, and it then passes16
through a clipping circuit, which, as we described, has a17
threshold and passes the signal above the threshold and cuts18
off everything below.19
So at this point we have an indication of where the ingot20
is, and that signal now in the next step is used to gate an21
oscillator. In other words, there's a device producing22
regular oscillations only when the -- when the signal from the23
clipping circuit is high.24
Finally, the output from the oscillator is counted, and,25
HORN - DIRECT00153
not surprisingly, the number of cycles corresponds to the1
width of the ingot. And that's basic operation of this2
device.3
Q Okay. Now, did you prepare charts for the Anderson4
patent in comparison with the claims of the -- I think it's5
the '626 patent?6
A Yes.7
THE COURT: Is that 3506A?8
MR. JENNER: You're ahead of me, Your Honor. That's9
right. Flip through here fast enough. Yes, 3506A.10
BY MR. JENNER:11
Q Is that the -- is this the chart comparing the claims of12
the Anderson patent that are asserted against Cognex -- sorry,13
the claims of the Lemelson '626 patent that are asserted14
against Cognex with the Anderson '915 patent?15
A Yes.16
MR. JENNER: And I've been handed a note I should17
remind Your Honor the animation that we just used for this18
purpose is part of Plaintiff's Exhibit 3254D.19
THE COURT: All right.20
BY MR. JENNER:21
Q Now, does the chart 3506A reflect your opinion regarding22
the anticipation of the '626 patent claims by the Anderson23
patent?24
A Yes, it does.25
HORN - DIRECT00154
Q All right. Could you explain how you apply the Anderson1
patent to the Lemelson '626 patent claims.2
A The Claim 8 of '626 reads:3
"A method of converting analog information to digital4
form comprising the steps of...."5
And the system in Anderson described in Figure 16
certainly converts analog information into digital form, the7
digital result being that number that indicates how wide the8
ingot is.9
Element (a) says:10
"generating a variable electrical analog signal derived11
from scanning a varying process and being representative12
of physical variation in said process."13
And in Anderson the beam from the iconoscope labeled 2 in14
Figure 1 scans the image of an item such as ingot 1, and then15
produces a variable electrical signal. And the signal, of16
course, is representative of physical variations in the ingot.17
Claim element (b):18
"analyzing selected portion of said analog signal to the19
exclusion of other portions of said analog signal."20
And this, of course, relates to the gating process that21
we just saw. The photosensor 5, that is the front of the22
iconoscope, generates various pulses representing background23
as well as the ingot, so that the part of the pulse in the24
middle represents the ingot. And then we have the noise25
HORN - DIRECT00155
pulses or background pulses to the left and the right. The1
clipping circuit 16, as a result of the addition of the gating2
signal, now will only transmit pulses that represent the3
ingot. The long pulses -- the author calls the part of the4
wave form that corresponds to the ingot a long pulse, and that5
is analyzed to the exclusion of other portions of the signal.6
Then in element (c):7
"converting the selected portion of said analog signal to8
at least one binary digital code which is representative9
of a quantitative value of the variable of the selected10
portion of said electrical signal."11
The long pulses 28, in other words, the part that12
represents the ingot, are converted to binary digital code13
representative of a quantitative value, i.e., we're counting14
the cycles out of the oscillator to determine the width of the15
ingot. And those are quantitative values corresponding to the16
variations of selected portions of the variable signal and so17
on.18
Element (d):19
"processing said at least one binary digital code to20
generate further signals which are indicative of21
information contained in the original said variable22
analog signal."23
The binary -- oh. Excuse me. I misspoke. I jumped24
ahead. The binary digital codes in (c) are the outputs of the25
HORN - DIRECT00156
clipper, which basically indicate where we're on the ingot and1
where we're not on the ingot.2
It's in part (d) where we're dealing with the cycle3
counter. The binary digital codes are processed by the gated4
oscillator, and the cycle counter 19, which generates signals5
that indicate the width of ingot 1.6
So there's a match element for element for Claim 8.7
Q Now, let me be clear about this. In the invalidity8
context are you applying your claim constructions, or are you9
applying what you understand to be Lemelson's claim10
constructions?11
A Lemelson's claim constructions.12
MR. JENNER: Okay. Now, Your Honor, we have the13
same process here where I would ask the witness to give you a14
summary of what the Rochester and Shepard patents are about so15
you'll have a record of what they are. But then the charts16
basically are a statement of how the witness applies17
Lemelson's -- his understanding of Lemelson's claim18
constructions to the prior art.19
THE COURT: Go ahead. You can briefly summarize the20
other, the Shepard and Rochester --21
BY MR. JENNER:22
Q All right. Let's -- let's turn to the Rochester --23
THE COURT: 2939?24
MR. JENNER: The Rochester patent -- let's see,25
HORN - DIRECT00157
which is Exhibit 3313.1
THE COURT: Oh. Rochester's not 29 -- that was2
Shepard, 2939.3
MR. JENNER: Right. Shepard I'll come to. 4
Rochester is 3313, and the charts for Rochester are 3506B.5
MR. LISA: Is that B, as in boy?6
MR. JENNER: B, as in boy.7
And 3506D.8
BY MR. JENNER:9
Q And what I'd like to have you do is -- as a predicate, is10
just give a general description of what it is about the11
Rochester patent that you find pertinent.12
A Rochester describes a system for optical character13
recognition based on a electron beam deflectable scanning14
device. Rochester was one of a number of authors at IBM, and15
they actually took apart an IBM typewriter in order to insert16
this apparatus into the -- into the typewriter so it could17
view the printed, in this case, set of digits on the platen,18
on the paper that was in the typewriter.19
In the figure we see the electron beam deflectable20
scanning device over here with sweep generators that cause the21
line scan and the raster scan of the whole image. There's a22
lens 72 that focuses the face plate of the electron beam23
scanner onto the piece of paper. Light is reflected from the24
paper and picked up in the photo tubes down here. And that25
HORN - DIRECT00158
analog video signal is then analyzed.1
And it starts off by going through amplifiers and2
limiters, amplifier because it's a very weak signal, and the3
limiter is another term for clipper or a device for4
essentially trying to determine whether a part of the paper is5
inked or not inked, and the circuit down here called black-6
and-white circuit makes that decision. Its output is one or7
the other, depending on the signal from the -- the analog8
signal from the device.9
Now, there's a great deal of additional circuitry10
involved with actually recognizing the different digit shapes. 11
And they're represented here by the shape rule circuits and12
they are compared against stored memory information on the13
shapes of various -- various digits in this case, finally14
leading to something they call the Christmas-tree-shaped15
decoder.16
The way this works is that it looks at one characteristic17
of the image and says, well, given this characteristic -- for18
example, it might have a included area like the interior of19
the digit 9. And it'll say, well, given that I know that it20
has an included area, it can be a 9 or a 6 or maybe a 4,21
depending on how you write the 4. And so now it has reduced22
the number of possibilities. It says it's not just 0, 1 up to23
9, but it's only a small number of possibilities.24
And then it makes a further decision. It says, okay, now25
HORN - DIRECT00159
we know that it's a 6 or 9 or a 4, let's look at another1
characteristic of the shape and pin it down even further. And2
it's called a Christmas tree because it says, if you're3
switching out to the number of possibilities and once having4
arrived there you switch out again, so the whole thing kind of5
branches out in a tree-like fashion, something we'd Tree6
Search today.7
Finally, the result of all of this activity is sent to8
some output device, such as a card punch. So the idea would9
be you could put a piece of paper with numbers into the10
device, and it would read it and then punch out cards that had11
the corresponding information on it.12
Q All right, sir. And can you confirm that Exhibits --13
maybe you already did this, but that Exhibits 3506B and 3506D14
are the charts which summarize the way in which you have15
applied the Rochester patent against what you understand to be16
Lemelson's interpretation of the '626 and '918 patent claims?17
A Yes, that's correct.18
Q Now, there is one more prior art reference that you have19
considered, and that's the Shepard '481 patent.20
A Yes.21
MR. JENNER: Can we get that up?22
We don't have an animation of that, but we have some23
stills.24
//25
HORN - DIRECT00160
BY MR. JENNER:1
Q Can you explain in summary what Shepard discloses that2
you consider to be pertinent to your invalidity chart.3
A It's again a electron-beam-based scanner up here. And in4
this case it's aimed at character recognition, rather than5
digit recognition. The -- a flat surface over here has the6
characters on it. The light from the scanner is focused on it7
using a set of lenses in here.8
The light reflected from the surface is then picked up by9
a photocell and amplified and processed.10
Do we have that Figure 1 in a larger scale, 'cause I11
can't really read it. Okay. Thank you.12
So once again we have the electron beam scanning device,13
we have the analog video signal being amplified, and then14
there's something called a quantizer here.15
I need to change glasses. Excuse me.16
The quantizer turns it into a bi-level signal. The17
output of the quantizer is then sent to an inverter, the idea18
being that this way we have a signal that indicates whether19
there's ink there, and we have a separate -- on a different20
wire a signal that indicates there's no ink.21
These are then passed through gating circuits to limit22
attention to particular parts of the field.23
And I'm sorry to do this to you, Matt, but could we have24
Figure 2.25
HORN - DIRECT00161
Figure 2 indicates that we're not looking at everything,1
we're only looking at certain points on the scan lines. For2
example, here we have 1A and 1B. So of that scan line we're3
only looking at two points. And similarly for the other scan4
line. So that's the purpose of the gating signal.5
And if you could go back to Figure 1, I'll just point out6
some of the other features of this device. There's what's7
called a permanent memory, which is interesting, because it's8
basically a plug board, and it shows what people then thought9
a memory is. And the way you tell this device how to10
recognize these characters is basically to wire up in a very11
tedious manual way the plug board.12
There's also a temporary memory over here for storage of13
character information and for partial recognition information. 14
So this device will look for particular arrangements of black15
areas and -- he calls them shapes, and each shape will trigger16
a particular circuit and say, okay, I've seen a long vertical17
line in this character, or, I've seen three horizontal lines18
in this character. And then the decision on what character it19
is is based on that. For example, with three horizontal lines20
it could be an 8, if we're talking about digit, or it could be21
a 3 and so on. And so the final output is at the bottom22
output and storage.23
So we see the same elements again, scanning with24
deflectable electron beams, analog video signals, quantizing25
HORN - DIRECT00162
or clipping, and then gating, and finally analysis by logic1
circuits, 'cause that's what all of these recognition pulse2
counter circuits and so on are, the comparator circuits, and3
finally some output of a binary code representing that4
character.5
Q Now, in Exhibit 3506C have you applied the relevant6
portions of the Shepard '481 patent to the asserted claims of7
the Lemelson '626 patent?8
A Yes.9
Q And again, did you use Lemelson -- what you understand to10
be Lemelson's claim construction for that purpose?11
A That's correct.12
MR. JENNER: Your Honor, I guess what I would do is13
offer 3506A through E now as the setting out in writing of the14
witness's opinions as to how these references get applied to15
the claims.16
THE COURT: Very well. I'll receive those. Through17
E, that's right. Yeah.18
(Plaintiff's Exhibits 3506A through 3506E admitted)19
MR. JENNER: All right. At this point, Your Honor,20
we'll move on to the last -- I hope the last subject we have21
for Dr. Horn. And that is the issue of prosecution laches, or22
at least that aspect of prosecution laches to which this23
witness's testimony is relevant.24
//25
HORN - DIRECT00163
BY MR. JENNER:1
Q Dr. Horn, are you aware that there is another issue in2
this case called prosecution laches?3
A Yes.4
Q And one potential part of that issue is whether or not5
there is what are called intervening rights as to the various6
patent claims.7
A Yes.8
Q Now, I'm going to focus with you only on patent claims9
asserted against Cognex. And once again, Dr. Allais will deal10
with patent claims asserted against Symbol; is that correct?11
A Yes.12
Q Now, are you aware that Cognex employees have testified13
about Cognex products that plaintiffs assert to be intervening14
rights?15
A Yes, I've read the transcript.16
Q All right. I'm not going to ask you about those, since17
they have been covered by the Cognex witnesses. Instead, what18
I want to do is to focus on the three other entities that we19
assert to be intervening rights. And those are Automatix20
products, an EMR product, and a Stut patent.21
A Yes.22
Q Are you with me?23
A Yes.24
Q Okay. Let's start with first the Automatix products. 25
HORN - DIRECT00164
Did you familiarize yourself with the Automatix Partracker,1
Seamtracker, and printed circuit board assembly products that2
are at issue?3
A Yes.4
Q Generally what did you do to familiarize yourself with5
those products?6
A I read the deposition of Reinhold -- Reynolds? -- I7
always get them mixed up -- and the transcripts presented8
here. I read the product literature. I was intimately9
familiar with Automatix, first of all as an investor, and then10
in connection with consulting with Acuity, which was the11
successor corporation of Automatix.12
Q All right. And --13
THE COURT: Excuse me. You say the transcript of is14
it Arnold Reinhold? Is that who you --15
THE WITNESS: For Automatix, yes.16
THE COURT: All right.17
MR. JENNER: And I emphasize, Your Honor, that the18
flow of this is that the charts that were prepared and had to19
be submitted with the witness's expert report were prepared20
before trial, obviously.21
THE COURT: Yes.22
MR. JENNER: What he has seen is the Reinhold23
deposition testimony and the product literature with it. The24
charts that will come next are not based on the trial25
HORN - DIRECT00165
testimony, because they were prepared before trial.1
THE COURT: Sure.2
BY MR. JENNER:3
Q Now, also are you familiar with the EMR comp gauge4
product at issue in this case?5
A Yes.6
Q And what generally did you do to familiarize yourself7
with the EMR product?8
A Again, I looked at publications of Mr. Wilder, I read the9
transcript of his trial presentation, and I looked at product10
literature. I was already familiar with EMR from my time at11
-- early days at MIT. Schlumberger owned EMR. I consulted at12
one time for Schlumberger. We at one time used image13
dissector camera tubes produced by EMR.14
Q Did you also see any of the deposition of a Mr. Reynolds?15
A Yes.16
Q Okay. And these charts, once again, for EMR were also17
prepared before trial and submitted with your expert report;18
correct?19
A Yes.20
Q Finally, could you look at Exhibit 1388 in the binder of21
exhibits. And can you identify Exhibit 1388.22
A Yes. This is the Stut patent assigned to Siemans.23
Q Now, the Court has not heard anything about the Stut24
patent, so I'm going to ask you in a minute just to give a25
HORN - DIRECT00166
summary of what is disclosed by Stut that you consider1
relevant.2
But first, at our request and as the result of your3
review, did you participate in the preparation of some claim4
charts comparing various Lemelson patent claims with the5
Automatix and the EMR products and the Stut patent?6
A Yes, I did.7
Q And were those charts submitted as an attachment to your8
expert report on prosecution laches?9
A Yes.10
Q They were given to the other side before trial?11
A Yes.12
Q Would you turn to Exhibit 3508. And would you just turn13
through the components of Exhibit 3508, and I'll ask you if14
you can confirm that these are abbreviated versions of the15
charts that were provided to defendant.16
MR. JENNER: And, Your Honor, what I mean by17
abbreviated is that the expert report -- at the time of the18
expert report there were additional intervening rights that we19
had identified and were included in these charts, the20
originals of them, and we have simply cut this down for21
purposes of limiting the proof at trial. These versions of22
the charts are limited to Automatix, EMR, and the Stut patent.23
THE COURT: All right.24
MR. JENNER: But they otherwise correspond to what25
HORN - DIRECT00167
we provided defendant.1
BY MR. JENNER:2
Q Can you confirm that, Dr. Horn?3
A Yes, that's right.4
Q And one more predicate. If you could look at Exhibit5
3481, can you confirm that this is a chart that you helped6
prepare which identifies the claims of the Lemelson patents7
against which the Automatix products are applied as an8
intervening right?9
A Yes. This summarizes the other charts.10
Q Did you prepare this with counsel?11
A Yes.12
Q And would you look at 3482. Can you confirm that this is13
a chart that you prepared with counsel, summarizing the14
Lemelson patent claims against which you applied the EMR comp15
gauge product?16
A Yes.17
Q And finally, if you would look at 3483. Can you confirm18
that this is a summary chart that you prepared with counsel19
that compares the asserted -- the claims of the Lemelson20
patents against which the Stut patent is applied as an21
intervening right?22
A Yes, that's it.23
Q Okay. Now, once again, are these claim charts based on24
your claim constructions, or on Lemelson's claim25
HORN - DIRECT00168
constructions?1
A Lemelson's claim construction.2
Q As you understand them?3
A Yes.4
Q Okay. I'd ask you now if you would turn to the Stut5
patent and summarize for the Court the relevant operation of6
the Stut patent that you used as a basis for the creation of7
the claim charts.8
MR. JENNER: We may actually have to resort to the9
Elmo, Your Honor.10
THE COURT: All right. Well, if it's in the exhibit11
book, I've got the book. Just tell me -- the Stut patent is12
1388.13
MR. JENNER: Yes. What I was hoping was that we14
have some vehicle for the witness to be able to highlight. 15
But I guess --16
BY MR. JENNER:17
Q Can you explain the relevant aspects of Stut without18
having to highlight on the screen here?19
A Yes, I believe I can just refer to the numbered items.20
Q Okay.21
A The purpose of this device is to control the growth of a22
silicon bar that is melted. Part of the purification of23
silicon before it's used for manufacturing semiconductors is24
to -- is a single molten-zoned refinement. Think of the25
HORN - DIRECT00169
silicon bar as a vertical cylinder, and we're applying heat to1
it using a coil, a radio frequency coil, a little bit like a2
microwave oven, and the coil slowly moves upward. And so3
there's a part of the bar that is molten and recrystallizes at4
the bottom and is continuously -- more of it's molten at the5
top and it recrystallizes at the bottom.6
Q Dr. Horn, if I can interrupt, if it would be helpful to7
use a laser pointer and the chart.8
A Okay.9
Q I don't know if that helps or hurts, but anyway it's up10
on the screen.11
A Hmm. Well, first we need to get the laser pointer to12
work. Oh. Okay. All right. Got it.13
So this is the silicon bar, and this is the molten zone. 14
And horizontally here we see the coils that are melting it.15
Now, the problem this addresses is how to get this lower16
part of the zone of the bar, which is the solidified part, to17
remain at a constant diameter. And the adjustment, the18
feedback that's possible is by controlling the lower end of19
the bar using a ratchet mechanism -- excuse me, a pinion --20
rack-and-pinion mechanism driven by a motor. And so the21
purpose of the whole system for analyzing the video data is to22
provide feedback so that the bar will crystallize with the23
same width.24
Beyond the video camera, standard video camera, there are25
HORN - DIRECT00170
two circuit components for analyzing the data. There's this1
upper part here, the purpose of which is to determine where we2
are on the bar. And the way this works is that the molten3
section is brighter than the solid section and actually4
there's a gradient from one end of the molten section to the5
other.6
Q What do you mean by a gradient?7
A That is, it gets brighter towards one end so it starts8
rising -- it's a function of how much heat is applied.9
Q There's a change in brightness?10
A There's a change in brightness from one end to the other,11
and then there's a sudden drop of brightness at the place12
where it solidifies. So the purpose of the upper part of the13
circuits is to look for the place where that drop occurs. The14
purpose of the lower part of the circuit is to determine the15
diameter at just that point. And if the diameter is too16
small, then obviously you want to not pull it as fast as you17
have. If the diameter's too large, you start pulling it down18
more rapidly.19
Q Can you just -- because this is a little bit complicated. 20
Could you just focus first on where the scanning part of this21
is.22
A Okay. The scanning part -- oh. Excuse me. Okay. The23
scanning part is done by this video camera. There's a lens24
which produces an image in the video camera, there's an25
HORN - DIRECT00171
amplifier that produces an amplified analog video signal, and1
the analog video signal is then processed by this circuit and2
the circuit down here.3
Q When you say "processed," is "processed" a synonym for4
analyzed?5
A Yes. And in fact we'll see the analog here to the6
Lemelson specification components. Here's a -- what they call7
a limit amplifier. And the purpose of this is to convert the8
signal to two levels. Either it's below the brightness9
threshold level or above. That signal then controls a gate,10
and there's an oscillator down here indicated by the wiggly11
wave form. The gate then allows the oscillations to proceed12
to a counter, but only during the period that the gate is up. 13
So the pulses are counted here, which give us the width of the14
bar at a particular place. So there's full-frame scanning,15
but the final width result is based on the -- a particular16
scan line, and the particular scan line is picked out by this17
part of the circuit. And then there's the possibility of18
output from the circuit to an indicator 23, and there's the19
possibility of feedback down to the servo that's controlling20
the rate at which the bar is being pulled, in the terminology.21
So again, it has the elements of clipping, gating, making22
a measurement between two -- full-frame scanning, electron23
beam scanning, and all of those things.24
MR. JENNER: Now, Your Honor, the witness is25
HORN - DIRECT00172
prepared to go through a description of Automatix and EMR, but1
that testimony has also already come in through the other2
witnesses --3
THE COURT: Right.4
MR. JENNER: -- and he has applied it in the charts. 5
So again, what I would do at this point is to offer the charts6
that have been identified as the witness's opinions regarding7
the intervening rights aspect of this.8
THE COURT: Collectively under 3508?9
MR. JENNER: Yes, sir.10
THE COURT: Yeah. I'll receive --11
MR. JENNER: And the three charts that are just12
check-off charts that show which claims are applied against13
which intervening device.14
THE COURT: Oh. The check-off charts earlier. Yes. 15
I'm sorry.16
MR. JENNER: Those, as well.17
THE COURT: Yeah, and those, as well.18
MR. JENNER: That and 3508.19
THE COURT: All right.20
(Plaintiff's Exhibit 3508 admitted)21
MR. JENNER: Now, could I have a moment, Your Honor,22
just to consult with counsel about a note?23
THE COURT: Why don't we take --24
MR. JENNER: We're getting close to the end here.25
HORN - DIRECT00173
THE COURT: Yeah, let's take -- take 10 minutes and1
give you a chance to do that and make sure that you've got2
everything covered before we proceed further, then, because3
it's been a long session with this witness, and I'm sure Mr.4
Lisa will have some -- some time with him. All right.5
MR. JENNER: Thank you.6
(Court recessed at 3:04 p.m., until 3:18 p.m.)7
THE COURT: All right. Go ahead, Mr. Jenner.8
MR. JENNER: Your Honor, cocounsel reminds me that I9
should inform Your Honor that there will be testimony given by10
Mr. Allais regarding certain intervening rights asserted11
against two of the patents, the '918 patent and the '07312
patent that Cognex will rely on. And we saw no point in13
putting the same evidence in through this witness.14
THE COURT: All right. All right. 15
MR. JENNER: Just so that you're aware of that.16
THE COURT: Great.17
BY MR. JENNER:18
Q Now, Dr. Horn, during examination of Mr. Silver of Cognex19
there was some testimony, some examination, I should say,20
regarding an assertion or a belief that Mr. Silver supposedly21
had that you were biased against Mr. Lemelson. Have you heard22
about that?23
A Yes. I saw that in the transcript.24
Q Are you biased against Mr. Lemelson?25
HORN - DIRECT00174
A No.1
Q About when were you first contacted about possibly being2
an expert in this case?3
A The spring of 2001.4
Q As of the time that you were contacted in the spring of5
2001 were you then biased against Mr. Lemelson?6
A No.7
THE COURT: I think it revolved around either8
efforts or at least some overture to someone at MIT to9
disassociate from Lemelson or cease the -- a particular prize10
that was awarded. Are you aware of what that's about?11
THE WITNESS: Yes, vaguely, from the transcript.12
THE COURT: All right. Had you ever been solicited13
to provide input on that subject?14
THE WITNESS: No. I don't frequent those higher15
circles at the institution. We did hear about Lemelson16
sometime in the late '90s, and it was an occasional subject of17
conversation, lunchtime, with students and faculty members18
sitting around.19
But I was never approached about -- I was never20
approached by an outside agency such as Cognex to do anything21
at MIT to somehow hinder the association between Lemelson and22
MIT, and I never personally on my own approached let's say the23
president of the university or such to indicate something of24
that nature.25
HORN - DIRECT00175
THE COURT: How about -- do members of the faculty1
-- is there an opportunity through either faculty or anything2
else that would allow for the faculty at MIT to take a3
position one way or the other about such a matter?4
THE WITNESS: Well, I'd imagine that if I, you know,5
discussed this with a department chairman, that might have6
some influence on the dean and that might have some influence7
on someone else. But as a matter of fact I did not discuss it8
with a department chairman.9
THE COURT: All right. Okay.10
MR. JENNER: That's where I'm going, Your Honor.11
BY MR. JENNER:12
Q Let me just make sure I cover this ground. It was13
suggested that by -- that Mr. Silver had thought he might14
contact you about approaching people at MIT to disassociate15
MIT from Mr. Lemelson. Did Mr. Silver in fact ever approach16
you to do that?17
A No, he did not. And I was a little surprised at that18
question, because this came up in my deposition. I was asked19
about it, and plainly said no.20
Q All right. Did anybody else from Cognex approach you21
with a view toward having you somehow intervene with the22
president of MIT or anybody else connected with MIT so as to23
cause MIT to split itself apart from Mr. Lemelson? Did24
anybody approach you about that?25
HORN - DIRECT00176
A No, nobody approached me.1
Q Have you ever done that? Have you ever approached2
anybody at MIT for the purpose of trying to cause MIT to3
disassociate itself from Mr. Lemelson?4
A No, I have not.5
Q Apart from the Lemelson Prize and the discussions that6
you just mentioned over lunch with students and faculty and7
such, what, if anything, did you know about Mr. Lemelson when8
you were first contacted by our firm about this case?9
A Very little. I knew that there was some patent issue10
relating to machine vision.11
Q All right. Had you had some contact in the past12
regarding the subject matter of Mr. Lemelson and litigation13
involving his patents?14
A There was a contact from someone at General Motors15
Research in the early '90s, asking me essentially to find the16
early reports about the MIT Artificial Intelligence17
Laboratory, presumably as a -- as a part of a search for prior18
art. But it wasn't something I did as a paid consultant or19
something. He just asked as a favor to look through our old20
publications.21
Q Did you do that?22
A Yes.23
Q Did you become a consultant to General Motors in its24
litigation?25
HORN - DIRECT00177
A No. I was a consultant for General Motors many years1
before, and that's how the contact arose; I knew the people2
there. But I was certainly not paid for collecting -- in3
fact, they could have got them from anyone else at the lab.4
Q Just to be clear, when you were a consultant for General5
Motors many years before, did that have anything to do with6
Lemelson?7
A No, absolutely not.8
Q When you were approached by our firm did you immediately9
agree to serve as an expert for plaintiffs in this case?10
A No, I did not. I don't remember the exact sequence, but11
I made sure to review at least one of the patents before12
committing myself.13
Q At what point did you agree to serve as an expert?14
A Well, I read the patent and decided that there probably15
was a good reason for the cause that I was enlisted in, in16
that I didn't really see how this could be the basis of17
machine vision.18
MR. JENNER: All right, sir. Thank you.19
Your Honor, I have no further questions.20
THE COURT: All right. Thank you.21
Mr. Lisa.22
While Mr. Lisa's gathering his -- what patent was23
that you reviewed, just out of curiosity?24
THE WITNESS: Sorry? What -- 25
HORN - CROSS00178
THE COURT: Which patent did you review before1
you --2
THE WITNESS: The '029.3
THE COURT: The '029. Okay.4
I've got matters at 4:00, so we can only take up to5
that point. But that'll at least get you started. If there's6
an area, a discrete area that you feel you can --7
MR. LISA: We'll pick up right where we left off, I8
think, Your Honor.9
THE COURT: Okay. Fine. That makes a good deal of10
sense and keep my notes in order.11
CROSS-EXAMINATION12
BY MR. LISA:13
Q Now, sir, you just told the Judge that you were not14
biased against Mr. Lemelson; correct?15
A Yes.16
Q Okay. In fact, you had heard of the MIT association with17
Mr. Lemelson in the mid- to late 1990s; correct?18
A That's probably true.19
Q All right. And at that time, long before being contacted20
by Cognex --21
A I wasn't contacted by Cognex.22
Q That's what I just said. Long before being contacted by23
Cognex you had formed the opinion that the relationship24
between MIT and Mr. Lemelson was a bad relationship and that25
HORN - CROSS00179
you were not in favor of it; right?1
A Well, let me again clarify. First, I was not contacted2
by Cognex, I was --3
Q Sir, I just -- I asked a very simple question.4
THE COURT: No, but you did preface it with "before5
you were contacted by Cognex." His testimony was that he was6
contacted by Fish & Neave, not Cognex.7
MR. LISA: I thought I did preface it by saying,8
"Long before you were contacted by Cognex."9
THE COURT: Right. You did.10
MR. LISA: In the late --11
THE COURT: I think that was what he was having12
difficulty with -- 13
BY MR. LISA:14
Q Well, let's -- I'll state it again.15
THE COURT: -- because he -- it can't be long before16
he was contacted by Cognex if he was -- that's pregnant with17
the idea that he was sometime contacted by --18
MR. LISA: All right. I got it. Withdrawn. I got19
it. Withdrawn.20
BY MR. LISA:21
Q In the late 1990s, when you heard of the MIT relationship22
with Mr. Lemelson, you determined you weren't in favor of it23
at that time; right, sir?24
A I don't know about that.25
HORN - CROSS00180
Q Well, why don't we turn to your deposition, page 29, and1
I'll hand you -- we have Defendant's Trial Exhibit 1668.2
A Could you point me to a particular reference?3
Q Page 29.4
A Of the June 14th?5
Q That's correct. It's Exhibit 1668. That's your June6
14th, 2002, deposition. And specifically at page 29, line 9.7
"Did you ever become" -- "Question: Did you ever become8
involved in any effort to have MIT disassociate itself9
from Mr. Lemelson?10
"Answer: I did not involve myself in such an effort,11
though that's what I would have verbalized. I was not in12
favor of it.13
"Question: Why not?14
"Answer: Because from my understanding at the time15
Lemelson used the patent system in an unfair way which16
allowed him to extract license fees from people who had17
been using inventions without knowing that he had patent18
applications in process that dated far back, and I didn't19
think this was a fair way of using the patent system.20
"Question: You said, `my understanding at the time.' 21
What was the time that you were referring to?22
"Answer: It must have been the late 1990s."23
Were you asked those questions, sir, and did you give24
those answers?25
HORN - CROSS00181
A That's correct.1
Q So in fact, sir, in the late 1990s, when you heard of the2
MIT relationship with Mr. Lemelson, you decided you weren't in3
favor of it; right?4
A Well, it says what it says. I wasn't in favor of it. 5
And you're equating that with saying I have a bias.6
Q Well, let's go further. You actually stated that you had7
formed an understanding that Mr. -- that what Mr. Lemelson did8
was an unfair thing; right?9
A That's correct.10
Q All right. And you formed that opinion back in the late11
1990s; right?12
A Keeping in mind this was before I'd done anything more13
than talk with colleagues.14
Q That's right, sir. You had not looked at a patent yet,15
had you?16
A That's correct. So -- 17
Q You'd not looked at a file history yet, had you, sir?18
A That's correct.19
Q You had not looked at any of the legal standards applying20
to patents for claim construction; right?21
A Yes.22
Q You'd not looked at any infringement issues; correct?23
A Yes.24
Q You didn't know whether Mr. Lemelson had a patent that25
HORN - CROSS00182
issued in 1963; right?1
A That's probably true.2
Q You didn't know whether prominent members of the3
industry, such as Cognex or Automatix, were receiving4
infringement notices from Mr. Lemelson? You weren't aware of5
that; right?6
A I certainly didn't know that.7
Q All right. Yet at that time, unaware of any facts, you8
formed an opinion and an understanding that what Mr. Lemelson9
did was unfair and not proper; right?10
A Yes.11
Q Now, how many graduate students have you reviewed their12
theses of, or dissertations?13
A I've been advisor on 20 Ph.D.s and reader on 40, and --14
Q Would you approve your graduate students, sir, forming15
opinions and conclusions without doing investigations?16
A Keep in mind that these were informal conclusions sitting17
around a room having lunch with students, not influencing18
anything in the world and not based on a great deal of19
information.20
Q Well --21
A Obviously, when I later read the details, I would have22
formed an opinion based on that.23
Q All right. You completely forgot your predisposition;24
right?25
HORN - CROSS00183
A If I had found evidence to the contrary of the1
predisposition, I would.2
Q All right. Now, what you did back in the late 1990s was3
to express your dissatisfaction and your opposition to the4
Lemelson-MIT Prize Program with your colleagues in your group;5
right?6
A Students and such coming together for lunch.7
Q All right. And that would have included Professor8
Grimson; right?9
A That's possible. I didn't actually go to lunch very10
often in those days.11
Q But you expressed your dissatisfaction of the Lemelson-12
MIT Prize Program and to your associate in the AI group,13
Professor Grimson; right?14
A That's likely. I don't have a specific recollection.15
Q And that's the same Professor Grimson who you reviewed16
his Ph.D. thesis for; right?17
A Yes.18
Q All right. And you're certainly aware that Professor19
Grimson then was hired by Fish & Neave in the Ford and20
Motorola litigations; right?21
A Actually I only learned that when I was approached by22
Fish & Neave in 2001.23
Q All right. But you did learn that; right?24
A Yes.25
HORN - CROSS00184
Q In fact, Professor Grimson appeared briefly in this case1
for a while as an expert; right?2
A I believe in the beginning, yes.3
Q All right. And you've reviewed some of his expert4
declarations submitted to the Court on a summary judgment5
motion relating to your prepositioning issue; right?6
A That's correct.7
Q All right. And after the decision on that case, you8
replaced Professor Grimson on that issue, too; right?9
A I'm not sure that's a good characterization of what10
happened.11
Q Now, a number of your students are employed by Cognex,12
correct, your ex-students?13
A Well, probably. I know of at least two.14
Q You know of at least four that have been; right?15
A Well, I know of a couple more who were briefly employed16
by Cognex.17
Q All right. Well, Bill Silver is one that you -- was a18
student of yours; right?19
A Yes. Many, many years ago.20
Q All right. And you reviewed his Masters thesis in the21
1980 time period; right?22
A That's probably right.23
Q All right. And how about Marilyn Matz?24
A Well, she was a graduate student in our lab. She didn't25
HORN - CROSS00185
complete her thesis work.1
Q But she was a cofounder with Bill Silver at Cognex, as2
well; right?3
A That's what I understand.4
Q All right. And there were several other students,5
including David Michaels and Jean Pierre Schott [phonetic], of6
yours who have gone to Cognex, as well; right?7
A Who I believe are no longer there. But, yes.8
Q Are there any others you're aware of, of your students,9
that have been employed at Cognex?10
A I don't know of any, but I wouldn't be surprised if there11
were some.12
Q All right. Now, in addition to having decided that you13
didn't like what Mr. Lemelson did before looking at anything,14
there was also a time when the MIT relationship with Mr.15
Lemelson actually cost your AI group; right?16
A Sorry? I'm not aware of any cost to the AI group.17
Q Did there come a time that you're aware of that the AI18
group with Professor Grimson --19
Let me back up. Let me ask a question. What's your20
relationship to MIT AI group?21
A MIT has a dual hierarchy. There's a teaching hierarchy22
of departments, and there's a hierarchy of interdepartmental23
labs. So I am in the Electrical Engineering & Computer24
Science Department, and I'm also in the MIT AI Laboratory.25
HORN - CROSS00186
Q Okay. And what is Professor Grimson's position at the1
MIT AI group?2
A He's also in the MIT AI Laboratory.3
Q What do you actually do in the laboratory, sir? What's4
your role?5
A Research.6
Q All right. And as far as hierarchy in that lab, what's7
your relative position?8
A Well, we don't really have a structured hierarchy. There9
is a lab director who currently is Rodney Brooks.10
Q And do you report to anybody in that group?11
A I don't report to anybody, but if Rodney Brooks doesn't12
allocate space for my research activities, I have a problem.13
Q And how many people report to you?14
A Report? I'm not sure students would consider that term15
appropriate.16
Q How many people work with you or under you?17
A How many --18
Q Under your direction?19
A Well, I have an assistant I share with several other20
people. It's expensive to have permanent staff, so we21
actually don't generally have permanent staff.22
Q Okay. Are you able to give us a number, sir, roughly?23
A Me, personally, permanent staff? Zero.24
Q No, students that work with you, sir.25
HORN - CROSS00187
A Students who work with me, well, I cut that number when I1
went on sabbatical at Berkeley, but it's around six.2
Q Has it been any higher than that at any time?3
A Oh, it's varied widely from one to 20, I suppose.4
Q And that's at the AI lab?5
A I don't work only with students in the AI lab, often6
about half of the students would be from other laboratories.7
Q All right. Now, did there come a time when the MIT8
Museum and the AI lab asked Cognex to sponsor an exhibit? Are9
you aware of that?10
A I have no idea.11
Q None whatsoever?12
A That's correct.13
Q All right. And do you have any knowledge as to whether14
that request was turned down by Mr. Shillman because of the15
relationship that MIT had with Mr. Lemelson?16
MR. JENNER: Objection, I think the witness just17
said he had no idea of this.18
THE COURT: Sustained.19
BY MR. LISA:20
Q Let's look at Exhibit 144 and see if I can perhaps21
refresh your recollection. Now in May of 2000, sir, was22
Professor Grimson working with you or a colleague of yours at23
the AI lab?24
A He wasn't working with me, but he is in the AI lab.25
HORN - CROSS00188
Q All right. And of course you knew him at this time;1
right?2
A May I just be given a minute to read this?3
Q I'll ask just a few prefatory questions first.4
A Okay.5
Q You knew him at -- around May of 2000 you knew Professor6
Grimson; right?7
A Certainly.8
Q And you talked with him on occasion at that time; right?9
A At times.10
Q And in fact you talked to him around that time about11
Lemelson; right? On occasion?12
A I don't recollect that.13
Q You deny that, sir?14
A I'm not denying it. I have no recollection of it.15
Q All right. And do you know whether -- did Professor16
Grimson ever communicate to you his distress over hearing that17
MIT's relationship with Lemelson continues to cost the AI lab? 18
He never expressed that to you?19
A I've never heard him express that opinion to me.20
Q All right. And do you know whether -- did Professor21
Grimson ever pass on any views of Cognex employees, such as22
Bill Silver, of what they considered Mr. Lemelson's23
relationship with MIT to be?24
A No, he did not.25
HORN - CROSS00189
Q Never heard a word?1
A No.2
Q All right. Well, I'll ask you to read the Defendant's3
Trial Exhibit 144, which is an e-mail from Bill Silver, about4
the fourth paragraph down. It says, "Bill, Thanks." You can5
see right above it's an e-mail from Eric Grimson. Do you see6
that, sent Wednesday, May 10th, 2000?7
THE COURT: Well, if you just want to use it to8
refresh his recollection, I don't think -- I just read it9
while you were querying the witness, and it doesn't say10
anything about this witness. It's a communication between11
Grimson and Silver following up out of the traffic and12
includes Grimson's overture or request to Silver, "Do you mind13
if I passed you on to senior MIT people?"14
That would not really impeach this witness, because15
it does not indicate communication between Grimson and16
himself. Now, you can ask him if it refreshes his17
recollection; but we really shouldn't read it into the record,18
because it's not in evidence.19
Having read that, does that -- do you recall having20
read that any instance in which Eric Grimson passed along to21
you the sentiments of Bill Silver concerning Lemelson?22
THE WITNESS: No, he did not, Your Honor.23
THE COURT: All right.24
//25
HORN - CROSS00190
BY MR. LISA:1
Q Sir, do you have -- do you know if your views of Mr.2
Lemelson have ever been communicated to Cognex?3
A I don't think so.4
Q Do you know whether in the 1998 time period your dislike5
of Mr. Lemelson or the MIT association with Mr. Lemelson --6
A You're mischaracterizing my position.7
Q So you have no idea how Cognex could have formed such an8
opinion that you had of Mr. Lemelson or could have --9
A What was the --10
MR. JENNER: Objection. Indefinite. What opinion?11
BY MR. LISA: 12
Q Well, sir, you have --13
THE COURT: Well, I think if we go back -- and this14
is in evidence, I know. I don't remember the -- you're15
talking about the Silver e-mail --16
MR. LISA: Exhibit 141.17
THE COURT: -- in which he expressed his view that18
Dr. Horn and perhaps others, I don't remember all of the19
details, held certain views, felt the same way, were fellow20
travelers on this issue, that type of thing.21
MR. LISA: It's Defendant's Exhibit 141, Your Honor.22
THE COURT: 141, okay.23
MR. LISA: Right. And -- 24
THE COURT: And that's in evidence. I'll let you25
HORN - CROSS00191
show that to the witness --1
MR. LISA: Thank you.2
THE COURT: -- and you can ask him about it, if --3
you know, if that refreshes his recollection or --4
MR. LISA: Thank you, Your Honor.5
BY MR. LISA:6
Q Sir, have you ever seen this document before?7
A No. I've seen it referred to in the transcript of the8
proceedings here.9
Q Well, what I'd refer you to is the paragraph beginning10
"Bob." And it says,11
"Bob, many respected professor at MIT don't like Lemelson12
any better than we do. Two names that come to mind13
immediately are Horn and Grimson, and they could probably14
point us to many others. Should we involve these guys in15
getting MIT to stop dealing with Lemelson?"16
Do you see that?17
A Yes.18
Q All right. Sir, does that refresh your recollection that19
your views may have been expressed to Cognex, your views of20
Mr. Lemelson?21
A No, it doesn't. I've never seen this communication, and22
I didn't know about it.23
Q You have no idea how Cognex could have ever formed such a24
conclusion about your opinions regarding Mr. Lemelson?25
HORN - CROSS00192
A Well, specifically Bill Silver, whom I haven't1
communicated with more than a handful of times since he was a2
graduate student at MIT, I don't know how he formed this3
opinion.4
Q Yet you do agree that you had discussions with your5
colleagues at the AI lab in the late 1990s regarding your6
dislike of Mr. Lemelson's association with MIT; right?7
A Yes; as long as we don't exaggerate the importance. 8
We're talking about people sitting around the room at lunch9
and chatting.10
Q And who were those -- now is it in fact true, sir, that11
at that time you did not like what Mr. Lemelson did -- 12
A Oh, I think --13
Q -- his patents?14
A -- I think what I said in the deposition describes how I15
must have felt at that time.16
Q And is it also true, sir, that at that time you were not17
in favor of the MIT relationship with Mr. Lemelson? By that18
time I mean the late 1990s.19
A I'm not even sure I was very much aware of it, but that's20
a possibility.21
Q Well, your testimony that we read before said -- your22
statement was, "I was not in favor of it at that time." Do23
you recall that?24
A Yes.25
HORN - CROSS00193
Q All right. So I'm asking, is that correct, sir, at that1
time you were not in favor of the MIT-Lemelson relationship?2
A Yes.3
Q And it's your testimony that, notwithstanding your4
opinion of what Mr. Lemelson did and your dislike of the MIT-5
Lemelson relationship, you're not biased in this case?6
A I'm not biased.7
Q Now, it is true that you are not an expert on patents;8
right?9
A That's correct.10
Q All right. And you're not an expert on patent11
prosecution; right?12
A That's also true.13
Q And you're not an expert on what goes on in the Patent14
Office; right?15
A That's right.16
Q All right. And this is the first case in which you've17
ever offered or formed opinions on claim construction, right,18
as an expert?19
A That's correct.20
Q It's a big one; right? Lots of claims?21
A I understand it's big.22
Q Now, you remember that you were deposed in June of this23
year, is that what that document states; right?24
A Yes, that's correct.25
HORN - CROSS00194
Q And prior to that time you had prepared -- actually,1
let's back up. You'd reviewed all the patents by then; right?2
A Yes.3
Q You had reviewed the file histories by then; right?4
A Yes.5
Q You were here I believe it was yesterday when Mr. Fey6
stacked the file histories over here. Do you recall that?7
A Yes, I saw that.8
Q And did you review any of the prior art that was cited in9
those file histories?10
A Any of the prior art in the file histories? I reviewed11
some of it.12
Q And how did you select what to review and what not to13
review?14
A Well, obviously if there's part of the file history that15
seemed relevant to an opinion, for example, on what a claim16
means then that might be something to look at. Whereas some17
other aspect of the file history wouldn't be.18
Q So you made a selection process of what appeared to be19
relevant to the claims at issue? Is that a fair thing to say?20
A Well, that's an example of how I might have selected a21
particular piece of prior art.22
Q How did you exclude art, then, sir, that was cited?23
A Well, the art that was not selected is the art that was24
excluded.25
HORN - CROSS00195
Q On what basis, I'm asking, did you decide not to look at1
prior art that was cited in the Patent Office?2
THE COURT: I understood the witness to say that he3
selected prior art to review that in his opinion was helpful4
or necessary to an understanding and that which he did not5
choose to select was by definition excluded because he6
selected what he selected, what he didn't select he didn't. 7
Am I missing -- 8
THE WITNESS: That's correct.9
THE COURT: Okay.10
BY MR. LISA:11
Q And you were -- you were able to do that without much12
difficulty?13
A Well, I wouldn't say without much difficulty.14
Q How long did it take you to make that selection process15
on the prior art, sir?16
A I cannot tell you in terms of hours or days.17
Q Did you review Dr. Williamson's claim construction that18
had been provided pursuant to the Court's directions earlier19
in the case?20
A Yes.21
Q And did you review the claim support charts that had been22
provided by Dr. Williamson pursuant to the Court's directions23
earlier in the case?24
A Yes.25
HORN - CROSS00196
Q And then did you review or spend time looking at the1
Cognex systems that were at issue in the case?2
A Yes.3
Q And then you prepared expert reports; is that right?4
A Yes.5
Q And if I understand correctly, you had an expert report6
that was addressed to invalidity and unenforceability;7
correct?8
A Yes.9
Q And that expert report applied some 40 references against10
the 80 claims at suit; is that right?11
A That's right.12
Q And if I remember correctly, those expert reports also13
apply four volumes of double patenting analysis. Do you14
remember that?15
A Yes.16
Q And do you recall how big the stack was of written17
material relating to all those expert reports that you wrote,18
the first ones on invalidity and unenforceability?19
A You mean the material I looked at, or --20
Q No, the material you wrote, sir.21
A Oh. Well, it's quite a lot.22
Q Yeah, it's --23
A And -- yeah.24
Q This look about right to you?25
HORN - CROSS00197
A I'll take your word for it.1
THE COURT: You're pointing to the three binders and2
then the other stack or just the three?3
MR. LISA: The other stack is plaintiff's stack,4
sir. I'm not --5
THE COURT: Oh, all right. The three binders of6
material then?7
COURT RECORDER: You walked away from the8
microphone.9
(Off-record colloquy)10
BY MR. LISA: 11
Q And there were literally several hundred claim charts12
that you prepared with the assistance of counsel relating to13
issues of prior art and validity and invalidity based on14
double patenting; correct?15
A That's correct.16
Q Then you also reviewed the patents for the issue of17
inoperability to determine what areas of the patents worked in18
your opinion and didn't work; right?19
A Yes.20
Q And you prepared a substantial written report on that, as21
well; correct?22
A That's correct.23
Q All right. And at the same time that you submitted those24
expert reports, Lemelson's experts submitted expert reports on25
HORN - CROSS00198
claim construction and infringement. Do you recall that?1
A Well, we all know how much paper went back and forth.2
Q Well, do you recall Lemelson's experts, particularly Dr.3
Williamson and Dr. Hunt, submitting expert reports on claim4
construction and infringement?5
A Yes.6
Q And specifically Dr. Hunt provided claim infringement7
charts that were separated for the Cognex 3000, 4000, and 50008
products; right? And the 8000 product. Do you recall that?9
A No, I don't recall that. I'll have to take your word for10
it.11
Q You don't recall there being separate infringement12
analyses by Dr. Hunt on the In-Sight products, the Isys13
products, the Web inspection products, and the 3-, 4-, 5-, and14
8000 products?15
A It sounds familiar. But, as you point out yourself, the16
amount of material is substantial, and there's been quite a17
time lapse.18
Q And you remember that volume from Dr. Williamson and Dr.19
Hunt was large as well; correct?20
A Yeah. I remember Dr. Williamson's report being large.21
THE COURT: With regard to time lapse, refresh my22
recollection. When was the -- when were you first approached23
by the law firm of Fish & Neave to consider becoming involved24
in this particular case?25
HORN - CROSS00199
THE WITNESS: Your Honor, it was spring of 2001,1
either April or May, 'round about there.2
THE COURT: All right. And when did you actually3
accept and then begin your analysis, your review?4
THE WITNESS: About a week or two after that,5
approximately.6
THE COURT: So we're still talking about at least7
the summer of 2001, over a year and a half ago, about, when8
you were --9
THE WITNESS: Yes, I started --10
THE COURT: -- engaged in the process?11
THE WITNESS: Sorry, Your Honor. Yes, I started12
before the summer.13
THE COURT: All right.14
BY MR. LISA:15
Q And then after reviewing Lemelson's expert reports you16
studied those and prepared your own rebuttal reports; correct?17
A That's correct.18
Q And that was a rebuttal report addressed to claim19
construction; correct?20
A Yes.21
Q And to Dr. Hunt's infringement analyses; correct?22
A Yes.23
Q All right. Can you tell the Court how much time you24
spent doing all that work, sir?25
HORN - CROSS00200
A I haven't got an accurate count but it's approximately1
500 hours.2
Q Sir, at the time you finished those report you'd spent3
220 hours, between 200 and 250, and you estimated 220 to 2304
at your deposition, to prepare the expert reports, review5
Lemelson's expert reports, and prepare your rebuttal reports;6
correct, sir?7
A Well, the discrepancy is because I didn't get the time8
period you're talking about.9
Q Am I correct, sir, that by the time you were deposed in10
June, which was after all those reports were filed, you told11
Mr. Hosier that it was 220 to 230 hours; right?12
A Well, we went around estimating the number, and it ended13
up somewhere around about there, because I didn't have14
accurate records to consult at the time.15
Q Well, you estimated 200 to 250 and then by dividing your16
billings by your hourly rate you got to 220 to 230; correct?17
A I don't recollect, but I can't doubt -- I don't doubt18
you.19
Q Well, let's look at your deposition, then. Do you agree20
that -- do you recall this, sir, or do you want me to --21
A Well, I said I don't doubt you. I mean, you wouldn't --22
Q All right.23
A -- quote the number if it wasn't there.24
Q All right. Now, how many Cognex -- how much time did you25
HORN - CROSS00201
spend looking at Cognex systems in preparing your reports1
before you were deposed in June?2
A Are you saying physical systems or --3
Q Yes, sir.4
A -- descriptions of systems?5
Q No. Looking physically at an operating Cognex system.6
A Several hours. I can't tell you exactly.7
Q Well, back -- what you said in your deposition, it was8
roughly a half hour that you viewed an operating demo at9
Cognex at one meeting with Mr. Silver. Do you recall that?10
A I don't remember the details, I saw the demo we have over11
here and I saw the barbecue bottle demo and possibly something12
else.13
Q All right. And you said at your deposition that that was14
about a half hour right, sir?15
A I'm surprised, but if that's what I said. I mean, the16
demonstration doesn't take that long; right?17
Q Well, let's look at page 61 of your deposition, sir.18
THE COURT: The June volume?19
MR. LISA: Yes, Exhibit 1668.20
BY MR. LISA:21
Q Page 61, line 19.22
"Question: The only time you recall specifically seeing23
a Cognex product in operation was during this half-hour24
demonstration at Cognex sometime last year; correct?25
HORN - CROSS00202
"Answer: Yes." 1
Were you asked that question, sir, did you give that2
answer?3
A Yes.4
Q Thank you. Now, in Dr. Hunt's infringement analysis he5
provided explanations of how he understood the customers of6
Cognex to actually use the Cognex systems. Do you recall7
that?8
A yes.9
Q And those were in sections of Dr. Hunt's expert report10
relating to how the third parties and end users actually11
operated the Cognex systems; right?12
A I'm not sure about that.13
Q You don't recall reading that?14
A Well, no, I don't specifically recall at the moment.15
Q Okay. What you do recall, though, is that you didn't16
undertake to look at any end-user or third-party use of a17
Cognex system prior to forming your opinions in this case;18
correct, sir?19
A I didn't visit any third-party users. Did Dr. Hunt?20
Q Sir, I'm asking you the questions right now. You can ask21
Dr. Hunt his questions later.22
A Excuse me.23
Q All right. Now, sir, you haven't provided any response24
at all to the infringement contentions of Lemelson should the25
HORN - CROSS00203
Court accept Dr. Williamson's claim construction; correct?1
A I believe that's correct.2
Q So that we're clear --3
MR. JENNER: Objection, Your Honor, this is a --4
this really calls for to some extent a legal conclusion. 5
There is a noninfringement position that he has provided.6
MR. LISA: I --7
MR. JENNER: There may be a misunderstanding here in8
terms of legal jargon.9
MR. LISA: Your Honor, I heard on direct that his10
noninfringement position was based on his claim construction. 11
I didn't hear one word over two and a half days about whether12
or not Cognex products don't infringe if you accept Mr. --13
THE COURT: All right. Well, the witness's answer14
will stand. He's already -- he's already given it. You all15
could argue what -- in fact, this would probably be a good16
point at which to break. I see everybody's here on the 4:0017
o'clock matter.18
So, we'll be in recess until 8:30 Monday morning. 19
And again, except for the brief matters that I've got now in20
some criminal cases, everything else will be fine. You can21
take what you need but otherwise everything else can remain,22
and the court'll be locked up. 23
All right. Have a good weekend.24
MR. JENNER: Thank you, Your Honor.25
00204
MR. LISA: Thank you, Your Honor.1
MR. McCABE: Oh, Your Honor.2
THE COURT: Yes.3
MR. McCABE: Could we take just a minute for a4
housekeeping matter?5
THE COURT: Sure.6
MR. McCABE: We've been trying to schedule the7
deposition of Mr. Witherspoon, who is the other side's patent8
law expert. We originally proposed it for Thanksgiving week. 9
We were told that that wasn't possible. We've been trying to10
schedule it for next week when we have time off.11
THE COURT: Yeah.12
MR. McCABE: I can do it Thursday, I can do it13
Friday afternoon, I can do it Saturday, and I can do it14
Sunday. I am now told that the only time the man is available15
or the man and counsel are available is Friday morning, the16
time when I have a meeting which has been scheduled with three17
other law firms and two clients.18
THE COURT: All right.19
MR. McCABE: And I don't think that's fair or right.20
THE COURT: All right.21
MR. HOSIER: Well, it's -- the problem is -- as I've22
explained to counsel, we have likewise a problem. Mr. Hoffman23
has a four-year-old daughter with a very special birthday24
situation. He has to leave in the afternoon. He can do it in25
00205
the morning. We can do it Friday morning. We can't get the1
witness in order to --2
THE COURT: Who's going to be involved in the3
deposition?4
MR. HOSIER: Mr. Hoffman and me.5
THE COURT: All right.6
MR. HOSIER: And then --7
THE COURT: What about Tuesday morning? Because8
we're not going to be in court Tuesday morning.9
MR. HOSIER: Well, we can't -- we don't have the10
witness available.11
THE COURT: Where's he?12
MR. HOSIER: He's in Washington, D.C. --13
THE COURT: And when was he --14
MR. HOSIER: -- and he's got commitments and we15
haven't even talked --16
THE COURT: Well, was he going to be coming out17
here, or were you going to D.C.?18
MR. HOSIER: No, he's -- we're bringing him for19
their convenience --20
THE COURT: Okay.21
MR. HOSIER: -- physically here, well in advance of22
the testimony. And as I understand it there's a telephone23
conference with some clients that doesn't want to interrupt24
that --25
00206
THE COURT: All right.1
MR. McCABE: Your Honor, that's not accurate at all. 2
It's with three -- 3
THE COURT: Well, what about -- what about -- and he4
can't be here -- when is the man coming in to Las Vegas, then,5
from -- 6
MR. HOSIER: I'm not sure. I think it's Wednesday7
or so. But we've got to spend some time with him in view of8
everything that's gone on in the case.9
THE COURT: Right.10
MR. HOSIER: Our first available time is Friday11
morning, and Mr. Hoffman has to leave Friday afternoon and12
also has a couple of other things on Saturday as well as13
his --14
THE COURT: Right.15
MR. HOSIER: -- daughter's birthday.16
THE COURT: Okay.17
MR. HOSIER: I'm then handling Mr. Niro's deposition18
Saturday afternoon. So we -- and I'm preparing -- he's coming19
in Friday night, and I'm going to work with him, you know,20
bring him up to speed Saturday morning and cutting it down to21
an absolute bone-bare threshold.22
THE COURT: And this matter you've got on Friday23
morning is -- does not relate to this case. It's -- 24
MR. McCABE: It does not --25
00207
MR. HOSIER: No.1
MR. McCABE: -- Your Honor. This is a lawsuit which2
I have basically put on hold while I'm here. It involves3
three defendants. It's a meeting which was set up for my4
convenience because we don't have court on Friday. It's been5
arranged with counsel from three different law firms who are6
meeting to talk to me and at least two of the clients, and7
they kind of expect me to be there. I have told Mr. Hosier8
this going back to when we tried to arrange this earlier in9
the week. We were offered Witherspoon on Sunday. That10
disappeared. We were offered Witherspoon Saturday afternoon. 11
That disappeared. We were offered Witherspoon on Thursday. 12
That disappeared. Your Honor, it's incredible to me that --13
MR. HOSIER: All they have --14
MR. McCABE: -- in the three hours I need, which Mr.15
Hosier knows about, they -- that's the only three hours the16
man's not available.17
MR. HOSIER: That's -- and -- that's a18
mischaracterization, and we've been trying to work out this19
time as best we could. And, frankly, it's the only time that20
we can physically fit in. I don't see why a meeting with21
another client on another matter that isn't compelled by22
people in the midst of litigation, a trial and the pressure23
that we have here, can't go to Friday afternoon. What in the24
world's wrong with Friday afternoon with these people?25
00208
MR. McCABE: Your Honor, the answer to that is easy,1
and Mr. Hosier knows it.2
MR. HOSIER: No, he doesn't.3
MR. McCABE: This is a telephone conference in which4
I'm going to participate, set up for me --5
MR. HOSIER: That's the problem.6
MR. McCABE: -- with people on the East Coast.7
THE COURT: Okay.8
MR. McCABE: And so what's being suggested here is9
that they hang around till Friday night.10
THE COURT: Friday night, yeah. Well, you know,11
it's -- at the same time I'm not going to Scotch Mr. Hoffman's12
situation. He has to travel, as well. So that means it's not13
going to happen on Friday, doesn't it? And that means14
probably there's no need to bring the man out.15
MR. HOSIER: The difficulty is most of our case is16
going to -- the reason initially --17
THE COURT: We'll still be in this case, in18
plaintiff's case, and we only have two and a half days of19
trial next week and I don't know how long Mr. Lisa's going --20
MR. HOSIER: No, no. Sunday is the -- is a week21
from now. We're not talking this Sunday.22
THE COURT: Right. No, I understand, you're talking23
about -- I'm looking at the calendar. You're talking about24
the 13th, 14th, and 15th, right in that time frame.25
00209
MR. HOSIER: Right. The big problem is then we1
start the 16th with our case and he --2
THE COURT: The 16th you may be starting your case,3
may not quite be to that point, but --4
MR. HOSIER: The point is that he's very likely to5
be going on that week, and we're going to be in trial all that6
week, all day.7
THE COURT: Well, I'll take a break during that week8
to allow you to get the deposition in. What I'll do is during9
that week I'll simply take a break.10
MR. HOSIER: Okay.11
THE COURT: I may already have, let's take a look. 12
Donna, on Tuesday the 17th and Wednesday the 18th we're only13
in court from 1:00 to 4:00 and 1:00 to 4:00. According to14
that schedule, we've got two mornings there.15
MR. HOSIER: Well, and they've agreed that it's16
about a half day. I guess we could --17
MR. McCABE: Yeah, Your Honor, I --18
MR. HOSIER: -- try and work that in.19
THE COURT: If you have -- and if you need to, I'll20
take the afternoon off on one of those days so you can get21
that done.22
MR. HOSIER: Okay. That's fine.23
THE COURT: So on the 17th or the 18th. You visit 24
-- that way you don't have to bring the guy in --25
00210
MR. HOSIER: Right. Thanks, Your Honor.1
THE COURT: -- next week, late. You can bring him2
in Sunday or Monday or whatever, get him ready, figure it out,3
talk about it, and if you can't do it on one of those mornings4
I'll take one of those afternoons off.5
MR. HOSIER: That's fine.6
THE COURT: God knows we got -- I got plenty else to7
do and --8
MR. HOFFMAN: Your Honor, I've committed -- to work9
with him on this. And, by the way, I do appreciate your10
understanding of my situation.11
MR. HOSIER: And there's just one problem we have,12
is we have also a summary judgment motion hearing in front of13
Judge Holland in Phoenix.14
THE COURT: On which date?15
MR. HOFFMAN: The 19th, it's a Thursday afternoon.16
MR. HOSIER: The 19th, which is -- we were kind of17
counting on that day to --18
THE COURT: Thursday the 19th?19
MR. HOSIER: As long as we're talking about20
problems.21
THE COURT: Well, and that's in Phoenix Thursday22
afternoon, huh?23
MR. HOFFMAN: And, Your Honor, we asked Judge24
Holland if there was any way to --25
00211
THE COURT: Are all of you going down for that, is1
that -- 2
MR. HOSIER: No, no, no, no. We -- we're going to3
see what we can do about that. But the problem is that we're4
getting pretty well squeezed. I was hoping to be at that5
hearing. It may not be possible for me to be at that hearing,6
because I may be putting a witness on.7
THE COURT: Okay. Well, somebody I'm sure can cover8
you on the summary -- I assume, on the summary judgment.9
MR. HOSIER: Yeah, we've got a pretrial conference,10
oral argument.11
THE COURT: What about on behalf of -- are you12
involved in that?13
MR. JENNER: We're not in that -- we're not in that14
case.15
THE COURT: Oh, okay. Well, it's not an issue. 16
Okay. It's yours. Well, you know --17
MR. HOSIER: We've got a little bit of a crunch, but18
that's part of the --19
THE COURT: Yeah. Well, let's take care of the20
problem on the witness in this case right now, and either the21
17th or the 18th in the morning or in the afternoon.22
MR. HOSIER: Well, the 17th -- what about the 17th? 23
What day of the week is that?24
THE COURT: Well, you all talk about it and look at25
00212
your schedule. Okay?1
(Court recessed at 4:04 p.m. until Monday,2
December 9, 2002 at 8:30 a.m.)3
* * * * *4
5
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8
9
10
11
12
13
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15
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22
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25
00213
WITNESS INDEX AND EXHIBIT LIST
WITNESS INDEX
PLAINTIFF'S WITNESSES: PAGE
BERTHOLD K. HORN, Ph.D.Direct Examination (Continued) by Mr. Jenner 9Cross-Examination by Mr. Lisa
* * *
EXHIBIT LIST
PLAINTIFF'S EXHIBIT NO. ADMITTED
3414 Index to Dr. Horn's chart 323467 Dr. Horn's Non-infringement Conclusions3506A-E Comparisons of Prior Art Patents to Lemelson's
Claim Construction3508 Charts and Opinions re Intervening Rights
* * *
00214
CERTIFICATION
I (WE) CERTIFY THAT THE FOREGOING IS A CORRECT TRANSCRIPT FROMTHE ELECTRONIC SOUND RECORDING OF THE PROCEEDINGS IN THEABOVE-ENTITLED MATTER.
NORTHWEST TRANSCRIPTS, INC.NEVADA DIVISIONP.O. BOX 35257
LAS VEGAS, NEVADA 89133-5257(702) 658-9626
GAYLE M. LUTZ FEDERALLY CERTIFIED MANAGER/OWNER
MANAGER/SUPERVISOR OF NEVADA
D. Lohmuller/L. Lizar/F. Hoyt/K. McCrea 12/06/02 TRANSCRIBER DATE
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