Upload
others
View
3
Download
0
Embed Size (px)
Citation preview
001
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 10, 2002 . . . . . . . . . . . . . . . 1:11 p.m.And related cases and parties
COURT TRIAL - DAY 12
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.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 1:11 P.M.1
THE COURT: Have a seat. That's all right, folks,2
have a seat.3
All right. We can have Dr. Horn come on back up to4
the witness stand. 5
Ms. Curtin?6
MS. CURTIN: Good afternoon, Your Honor.7
THE COURT: Good afternoon.8
MS. CURTIN: One matter regarding the exhibit list,9
if we might, before we get started?10
THE COURT: Yeah.11
MS. CURTIN: Friday Your Honor asked the parties to12
confer each evening and see if we could come up with an agreed13
list of what had come in during the day, as --14
THE COURT: Right.15
MS. CURTIN: -- I understood it. And we did that16
over the weekend and that worked very well. I sent a list17
last night of what from my notes appear to have gone in, and18
in response, I got a letter back raising objections to the19
exhibits that had not been raised during the day during the20
testimony, and I will give Your Honor a copy of the e-mail. 21
It was not my understanding that this was intended to be an22
opportunity to raise new objections, but simply a ministerial23
matter of coming up with an agree-upon list of what had24
happened under the rules as the Judge -- as you have set them25
004
up during the day. And, mostly, I guess what we're asking for1
is a little clarification.2
THE COURT: All right. Well, maybe -- maybe I3
haven't been clear in that regard. The -- certainly if an4
exhibit, and I think we've had a variety of objections to some5
of the exhibits that were placed before witnesses, have dealt6
with those, reserved on some, granted up or down others, and7
as to the remaining, the binders of exhibits, copies of8
patents, et cetera, my assumption has been that the parties9
were in agreement that they would come in, it was just a10
question of which ones were actually coming in. 11
But what is the nature of the -- what's the12
objection? Let me see the letter, Donna.13
MS. CURTIN: I think Mr. Serra's letter sets it out. 14
What happened, Your Honor, was I sent an e-mail saying I show15
some exhibits that came in, which ones -- which one -- there16
was one you excluded, and I noted that, and which ones were17
discussed but fall under Mr. Lisa's standing objection. What18
I got back was a list of objections that had not been made19
during the day.20
And I do wish to clarify, we're not necessarily21
arguing over each of these. For instance, 196 we agree it22
should not have been on my list and I apologize for that.23
THE COURT: Or one was not used?24
MS. CURTIN: And the not-used one we also are not25
005
insisting needs to go in, but the rest of these are all1
objections that were not made during the day, and what we need2
to know is, you know, is this an opportunity for a mulligan or3
do we still need to stand up and make our objections during4
the day?5
THE COURT: Okay. Mr. Jenner?6
MR. JENNER: Well, Your Honor, I guess the best7
thing to do is to go through what some of these are. 8
First of all, the first -- 196, I understand has9
been withdrawn?10
MS. CURTIN: Yes.11
MR. JENNER: Okay. So we have 1021 and 1930. First12
of all, I should say that, so Your Honor understands, this is13
not a situation where lists was provided, these are cross-14
examination exhibits, we were not given a list in advance,15
there's no binder in advance, so certainly we could not have16
objected Friday morning. We hadn't seen them as of that -- of17
that.18
As far as the exhibits are concerned, the first two19
is an article that was from the Design News.20
THE COURT: Yeah, I recall that.21
MR. JENNER: That was used with the witness, there22
is no objection to it being used. It was never offered in23
evidence. If it's offered in evidence, it's objectionable as24
hearsay, it doesn't meet -- certainly doesn't meet the learned25
006
treatise exception. 1
The same thing with this book. The book was2
referred to, and it's not objectionable to refer to it, no3
offer of the book was made, the book can't come in because4
it's hearsay and it's not a learned treatise. So, that's the5
reason why no objections were made. These were never offered.6
As far as the other exhibits are concerned, in their7
next row, 1125B, 1127A, and 1146A, I have now been advised8
that one of those three is an excerpt from the 1956 file9
history, and I think the 1956 file history is in. So, we10
would not have an objection to that excerpt if I can figure11
out which one it is.12
The other two are from file histories that have not13
been offered, and we have a completeness objection to that. 14
If the complete file histories are provided, I would think we15
probably won't object to the excerpts for whatever purpose16
they're being used as excerpts as long as the complete files17
are in. And the reason for that is because if Your Honor18
looks at those exhibits, they are pages from original patent19
applications which, in fact, were stricken from the20
application. We think the whole application needs to be made21
available so that the fact that the material that's being22
referred to was stricken could be put in context.23
THE COURT: Well, let me -- let me hear from both of24
you as to how best to approach this in the future. We can25
007
come back and deal with these particular exhibits1
individually.2
During the examination of each witness that's3
offered by counsel, you've had binders of exhibits that for4
the most part I don't think anybody has had an objection to,5
and on cross-examination, in some instances, similarly binders6
of materials, occasionally something else that pops up based7
upon what a witness has said on direct examination or in8
response to earlier questions on cross that maybe had not been9
identified as something the party intended to offer because10
they didn't realize they were going to be using it.11
I wanted to avoid, if possible, and maybe it's not,12
but I wanted to avoid the rote situation of admitting each13
document as we go along; it's very time consuming. We can do14
it and I'm prepared to. Probably in a sense it would be15
easier for my clerk 'cause then she would know what has come16
in and that would avoid this problem in the future. I was17
just looking for some way to try and expedite the flow of the18
case, which I think is sensible in a case like this, but --19
and I fear the approach we would take if we were in front of a20
jury, we'd have to do this, for example, is going to protract21
significantly the trial proceedings, but --22
MR. JENNER: And the problem comes up in this23
particular context where we are not given advance notice of24
the exhibits. I don't fault Mr. Lisa, I mean, there's no --25
008
'cause he's not obligated to give us advance notice of what1
he's going to use on cross. It's a simple fact that he2
didn't, and therefore there was no prior opportunity in this3
instance to know what the exhibits were to take any position4
with respect to them, and there was no offer of them, so the5
occasion really never arose until Friday night, or basically6
after the conclusion of the day to deal with it.7
THE COURT: Right. Well, I think there was probably8
no formal offer because there was an expectation based on what9
we've been doing that --10
MS. CURTIN: No formal offer was necessary, Your11
Honor --12
THE COURT: -- was necessary.13
MS. CURTIN: -- and then if any objection was going14
to be made, it need to be made -- needed to be made at the15
time --16
THE COURT: Yeah.17
MS. CURTIN: -- that the exhibit --18
THE COURT: Well, let's --19
MS. CURTIN: -- was shown to the witness.20
MR. JENNER: I don't know how they would have done21
that.22
THE COURT: -- let's do this then, it's going to be23
hard to otherwise regulate it. I suppose for purposes of both24
offer by the party propounding the witness and crossing the25
009
witness, we better go back to the system of marking and1
identifying and laying the foundation and offering each2
exhibit, and we'll just have to do that an exhibit at a time3
until -- if a party is prepared to stipulate, if there's no4
objection to it, then that will move it quickly, but if there5
is -- 6
MR. CHERNY: May I make a suggestion, Your Honor?7
THE COURT: Yeah.8
MR. CHERNY: I think one of the distinctions that9
Mr. Jenner brought up is if we have a specific objection --10
THE RECORDER: Excuse me, Mr. Cherny --11
MR. CHERNY: I'm sorry. 12
THE RECORDER: -- would you --13
MR. CHERNY: If we have a specific objection to the14
use of an exhibit with a witness on cross, we make it at the15
time. And after the things are used, the exhibits are used16
during the night, Ms. Curtin or whoever sends us a list and17
we'll tell them and that will be the equivalent of the offer.18
Let's say, okay, we've used these things, you didn't19
have any objection to us using these exhibits, do you have any20
objection to us moving them into evidence? At that point21
we'll say we agree to 1, 2, 3, 4, 5, and --22
THE COURT: Well, no, no, let's -- let's move 'em in23
before they're used or in conjunction with using them. I24
think that will eliminate any confusion whether we're talking25
HORN - CROSS0010
about something that is a learned treatise or not or something1
that is hearsay or not, and we'll just have to -- I think you2
can pretty well assume, and I assume in most cases, we're3
talking about things that aren't going to be objected --4
copies of patents and so forth. I just can't conceive of 5
what --6
MR. CHERNY: The bulk of things are not going to be7
objected.8
THE COURT: Yeah.9
MR. CHERNY: I mean, the most things, I assume, on10
their side and our side are not going to be objected, but as11
Mr. Jenner said, when you're dealing with a situation on cross12
and we don't object to the use of it with a witness but we may13
object to it being offered in evidence and there's no specific14
offer, there's no way for us to jump up and say we object. If15
there's been --16
THE COURT: To something that hasn't been offered. 17
Right. I understand. I understand.18
MR. JENNER: Did Your Honor want to proceed with a19
proffer as well where there are exhibits books? Because where20
there are exhibit books based on lists if we get them the day21
before, we have an opportunity to get back to the other side22
and say --23
THE COURT: I think on those the best approach24
initially might be to determine whether the parties have got25
HORN - CROSS0011
objections to any of them that are going to be offered, and1
then to the extent you do, we can address those, but for the2
most part, I expect there won't be. And let's just take that3
approach. So, I'll come back later on and unravel the4
situation as to these. 5
I want to get this witness moving forward on further6
cross-examination.7
Yeah, you can have that.8
THE CLERK: I'll just put the ones that are in9
contention that you've --10
THE COURT: Just they're not yet in until we have a11
chance to rule on them. Okay. 12
All right. Go ahead, Mr. Lisa.13
MR. LISA: Thank you, Your Honor.14
DR. BERTHOLD HORN, PLAINTIFF'S WITNESS, RESUMES THE STAND15
CROSS-EXAMINATION (Continued)16
BY MR. LISA: 17
Q Dr. Horn, could you tell me, please, whether you18
discussed with counsel overnight the substance of your19
testimony yesterday?20
A Yes, we talked. We went over the material you provided21
yesterday. Since I hadn't looked at those prior art22
references for a while I had to go through them again, and23
also the prosecution histories that you presented, I wanted to24
read other parts of them since you've selected particular25
HORN - CROSS0012
aspects of them.1
Q About how long did you meet with counsel last night?2
A I didn't keep track, but maybe two hours.3
Q How about this morning?4
A Maybe another couple of hours.5
MR. LISA: Your Honor, I thought we had a admonition6
that in the middle of cross-examinations we weren't going to7
get witnesses hoodwinked, and now in the middle of a cross-8
examination this witness has had four hours of extensive9
consultation with counsel, which to me seems to be entirely10
inappropriate.11
MR. JENNER: May I respond, Your Honor?12
THE COURT: Yes.13
MR. JENNER: First of all, this was brought up in14
the context of it being unfair when exhibit books were15
provided, that counsel could take the exhibit book and go over16
the exhibit book, the exhibits that were going to be used with17
the witness in order, basically, to prepare for what is to18
come. There is no exhibit book in this case, we have no idea19
what exhibits he's going to use, and as the witness says, the20
only thing that was discussed is exhibits that have already21
been used.22
Number two, I think what Your Honor said is that23
even under the circumstances where a witness book is provided,24
counsel can talk to the witness, and other counsel is free to25
HORN - CROSS0013
ask the witness what they discussed.1
THE COURT: Yeah. I think that that clearly was2
what I said. We were -- at the time we were dealing with it I3
think it was in the context of a percipient witness as opposed4
to an expert, but I'll let you query Dr. Horn as to the areas5
of discussion, what was reviewed and what was said regarding6
that.7
MR. LISA: Just makes the job longer obviously.8
THE COURT: Well, it does, but, you know, this -- I9
don't think, counsel, as I'm clearly appreciating, there's10
much way around it in this case. I think that there's -- your11
original estimate may be more accurate than I originally12
thought, and we'll just have to struggle with it, so, go13
ahead.14
BY MR. LISA: 15
Q So, sir, I take it you went back and reviewed again the16
1956 file history; is that right?17
A Yes.18
Q And you went back and reviewed again the 1963 file19
history; is that right?20
A Well, parts of it. Yes.21
Q Did you review the '72 file history?22
A I don't recall looking at that.23
Q Why don't you identify what documents you actually24
reviewed with counsel last night and this evening after your25
HORN - CROSS0014
testimony? Please be specific.1
A I found a readable copy of Greanias, so that's one thing2
I looked at. Then the Hemstreet patent. I looked at some of3
the articles you provided, the Design News article, and4
there's another patent, I guess the Shepard, the first Shepard5
patent. And then the exhibits you had, I think 1146A, I6
believe, and 1125B. And I looked at --7
Q Those were the file histories, correct? Excerpts?8
A Yes, excerpts from file histories, and I went back to the9
other parts of the file -- I mean, I didn't read the whole10
file history, obviously, in that limited time, but I tried to11
find where the context was for these.12
Q Are those the only documents you looked at?13
A Well, I also on my own looked through the stack of14
patents you provided.15
Q Is that all 50 of them or just the ones that we marked?16
A No, no, the -- I guess you pulled out, what is it, 215017
to 2158. Oh, and I see another thing here, let's see, what is18
this? 1127A. And I think that's -- oh, oops, oh, that's just19
another copy of 1127A, although one is much thinner than the20
other, so I'm not sure what that means, but, yes, that's it.21
MR. LISA: Your Honor, I will note for the record22
that the prior art that the witness was looking at is prior23
art that plaintiffs provided in this case, not that we did,24
so, to claims there's any sort of surprise about that should25
HORN - CROSS0015
not have caused any reason for discussion. The witness gave1
detailed expert reports on the subject matter of those2
patents, so, for counsel to complain about that, not having3
advance notice, seems to be a little bit odd. 4
And, of course, you received and heard extensive5
testimony from this witness from the same file histories that6
I placed in front of him, except for the two early ones in7
1955, which, while counsel said is stricken, we'll, of course,8
show they weren't stricken.9
But the point is that these are things that this10
witness knew about, testified about, and to assert any sort of11
surprise seems to me to be a little bit odd.12
THE COURT: All right. Mr. Jenner?13
MR. JENNER: I don't know if it needs a response,14
but number one, I think we've already explained what we15
understood to be the circumstances. As far as this being --16
whether or not he's familiar with it, he has testified17
yesterday that as far as those three references are concerned,18
he has not, in fact, looked at them in a long time. They were19
not anything that we offered in our case in chief; it was20
offered on cross-examination. 21
And the fact that he has reviewed those, I don't --22
I don't really understand what's surprising about that.23
THE COURT: Yeah. Look, there's so much material24
here, I'm -- I'm candidly not surprised anybody is reviewing25
HORN - CROSS0016
and re-reviewing. The stacks of material we saw yesterday, I1
don't think most people would be able to retain all of that2
chapter and verse, so go ahead and let's move forward with3
questions that you have remaining on cross-examination for the4
witness. He obviously has certain opinions he's expressed and5
just as your experts have opinions that are contrary, and you6
can go ahead and probe him on those he hasn't covered already.7
BY MR. LISA: 8
Q Now, Dr. Horn, do you have any objection to Dr.9
Williamson's definition of image field because it includes10
within the image field the object?11
A Could you show me his definition so I can be sure?12
Q How about we do this. Why don't we go to your expert13
report at Defendant's Trial Exhibit 197. I believe I have an14
excerpt of that where you set forth its definition. Says "The15
rebuttal expert report."16
MR. LISA: And, Your Honor, this is just an excerpt17
of that large Exhibit 197. So, I'm not going to put a new18
number on it 'cause the page numbers are reflected in the19
original.20
THE COURT: Let me just ask, is 197 -- has that been21
offered in evidence, the report of Dr. Horn?22
MR. LISA: No, Your Honor, and we do not intend to23
put those big expert reports into the -- into evidence.24
THE COURT: All right. 25
HORN - CROSS0017
MR. JENNER: Your Honor, you had referred to the1
expert reports a number of days ago, and I don't know whether2
you have any interest or expectation that they will be3
offered. We're prepared to offer them if the Court wants4
them.5
THE COURT: There was one I was referring to, I6
think Mr. Steiner's, that had been appended to a motion in7
limine, I think was what I was talking about. And I'm sure, I8
just don't remember which ones. At different times I've seen9
at least references to portions of some reports.10
MR. JENNER: This is a little bit -- 11
MR. LISA: I -- I would -- 12
MR. JENNER: -- this is a little bit unusual. If13
this document were proffered as it is, which basically is a14
few pages from a document, I would normally make a15
completeness objection.16
THE COURT: Right.17
MR. JENNER: In this circumstance it's an expert18
report; I'd really be guided by what the Court wants to do19
with expert reports.20
MR. LISA: Your Honor, I would say that for purposes21
of appeal the last thing we want is a stack of prior-art22
allegations that have been dropped and expert reports moved in23
that we haven't responded to because they haven't put it in24
evidence, and I'd object strenuously to having, you know --25
HORN - CROSS0018
THE COURT: All right. 1
MR. LISA: -- ten months of --2
THE COURT: All right. Well, you're --3
MR. LISA: -- stuff moved in.4
THE COURT: -- you're right. I've got plenty in5
evidence. We've got the testimony of the witnesses. I'm not6
going to expect wholesale offers of reports. If you want to7
use this report to either refresh the recollection of the8
witness or for that matter impeach him, I'll let you --9
MR. LISA: Thank you, Your Honor.10
THE COURT: -- pursue it.11
MR. LISA: And that's exactly the reason why this12
has been -- it's got a definition of image field that this13
witness has written, so.14
THE COURT: Okay. On the page 59 there's reference15
to Dr. Williams' [sic] statement as to what is meant by image16
field, at least it begins there. Go ahead.17
MR. LISA: Thank you.18
BY MR. LISA: 19
Q Dr. Horn, did you take a -- recognize this section 7 of20
your rebuttal expert report in which you address Dr.21
Williamson's definition of image and image field?22
A Yes, I did.23
Q All right. And do you recall that Dr. Williamson24
includes in his definition of image field the object itself. 25
HORN - CROSS0019
Do you recall that?1
A Yes.2
Q And you accept that definition now, don't you?3
A The image is not the object --4
Q All right. 5
A -- so I do not accept that definition.6
Q All right. And I take it you set forth in this expert7
report the reasons why you disagree with Dr. Williamson's8
assertion that an object represented in an image field is9
itself part of the image field; right?10
A You're twisting the words.11
Q Well, I -- if you look at --12
A The object is not part of the image field. 13
Q If you look at paragraph 164, sir, I think I just read14
your sentence, so I hope I'm not twisting your words. You15
disagree with Dr. Williamson's assertion that an object16
represented in an image field is itself part of the image17
field; right?18
A Okay. The -- that's right. The object itself is not19
part of the image field.20
Q And just for clarity, would you explain what you mean by21
that objection so we know what we're talking about right now?22
A When an image is formed, a distribution of brightness is23
produced by, for example, a lens or a mirror, and that's -- a24
part of that is the image field. And if I take an image of25
HORN - CROSS0020
this courtroom, I'll have images of Mr. Lisa and everyone1
else, but that image is different from the object itself.2
That's the distinction I was drawing.3
Q And one of the reasons you make that distinction is4
because the Symbol bar code scanners actually emit a beam from5
the scanner that scans the object; right? And you want to6
have a distinction in the claims?7
A The reason I make the distinction is because that's the8
physics of the situation. Out here is the object and there's9
an image forming system, and in here is the image which has a10
representation of those objects, but not the objects11
themselves.12
Q All right. Well, you, of course, recognize that Mr.13
Lemelson said several times in his patent application that his14
definition of image field actually includes the object. He15
said that, didn't he?16
A Not that I recall, you'd have to show me.17
Q All right. Well, let's take a look -- in fact, if you18
look at page -- bottom of page 62 of this excerpt of your19
Exhibit 197 -- I'm sorry, of your expert report, you'll see20
there at paragraph 171, you say additionally Dr. Williamson's21
citation to the definition of, quote, "IFP given in the common22
specification fails to support his contention that the object23
represented in an image is itself part of the image."24
And if you turn the page, you set forth a quote from the25
HORN - CROSS0021
patent, right?1
A Yes.2
Q And is it your contention that that quote supports your3
position?4
A Yes. It talks about the field in the optical system5
which is the image.6
Q So, and you're referring to the very first line where it7
says, "IF/IFP -- refers to an image field being scanned," and8
you've got that in quotes, right?9
A Yes, that's quoted from the specification.10
Q Now, why don't you look at the specification at the11
column and line numbers that you've cited there and actually12
read for us what it says? You can refer to your Exhibit 17A,13
sir. This is column 5, lines 87 to 53. Would you read that,14
please, for the record?15
A "IF/IFP refers to an image or object field being scanned16
to produce a picture signal. The field in the optical17
system of a" --18
Q You can stop right there. You left a couple words out of19
your quote in your expert report; didn't you, sir?20
A Yes.21
Q An object, right? You left it out?22
A I think I treated those as synonymous, the image field --23
Q Then why did you put it in quotes?24
A -- or object field.25
HORN - CROSS0022
Q Why did you put it in quotes and not indicate that you1
were removing the fact that the objects was in the definition2
of IFP, sir?3
A I don't know. I mean, I'm as surprised as -- I don't4
know how that happened.5
Q Did you direct that to be done, or did your counsel6
present it to you that way, sir?7
A I definitely wrote this report, and it may have gone8
through some editing, but maybe I transcribed it incorrectly,9
I don't know.10
Q Well, let's look at your Plaintiff's Trial Exhibit 3486,11
it's one of your summary charts that you presented to the12
Court. It's in your big book.13
(Pause in the proceedings)14
Q You see that chart? And you remember giving some15
testimony about Figure 5, sir?16
A The one titled scanning meant television and --17
Q Exhibit 3486?18
A Sorry, 3486.19
Q Correct. Plaintiff's 3486?20
A This is of Figure from of the patent?21
Q Yes, sir.22
A Yes, okay. I've got it.23
Q Did you prepare or review this exhibit, sir?24
A I reviewed it.25
HORN - CROSS0023
Q Well, do you see at the top there that you've got in1
quotes a statement about Figure 5, do you see that, with a2
citation to column 38?3
A Yes.4
Q Would you turn to that part of the patent, sir, and read5
whether there's any continuation of this sentence after the6
word "scanning"?7
(Pause in the proceedings)8
MR. LISA: For the record, Your Honor, I'm told I9
didn't mention that that's column 38, line 65, et seq.10
BY MR. LISA: 11
Q So let's turn to your Exhibit 17A, sir, and look at12
column 38 where it says at the bottom Figure 5, do you see13
that?14
A Yes. I'm just trying to correlate the text here with15
what I've got over here. Those parts. Yes. Now the point16
here was --17
Q What I'm asking you do first, sir, is to continue reading18
if there's a continuation of the sentence on the top of column19
39 that you omitted from the chart.20
A Yes. ". . . of a particular area or areas of" --21
Q Of?22
A -- "of the image field or object being scanned."23
Q All right. So, what you did is put a period after24
scanning and leave out the fact that it's not only an image25
HORN - CROSS0024
field, but also an object that may be scanned in Mr.1
Lemelson's systems, right, sir?2
A Well, it didn't seem --3
Q Yes or no. Let's not start off down this path. Yes or4
no, and then if you want to explain, I'll give you time. But5
you put a period, you put the end of the quotes, and you left6
out the part of the sentence that referred to the objects7
being scanned; right?8
A The quote ends after "during beam scanning."9
Q Right. Now if one of your doctorate students presented a10
dissertation to you that did that, would you approve it, sir?11
A Yes, if they quoted the relevant part for the purposes of12
that exhibit. And here, for example, the particular area or13
areas are not necessary for the discussion that's presented14
here. 15
Q All right. Well --16
A You have to cut it off somewhere.17
Q -- you think -- well, how about ten lines later which --18
ten words later which indicates that contrary to your19
testimony, in fact, objects are scanned in Mr. Lemelson's20
inventions?21
A Well, he's not --22
MR. JENNER: Your Honor, I -- I need to note that23
counsel is stating that this exhibit was used with the24
witness, and our information is this exhibit wasn't used at25
HORN - CROSS0025
all. 1
And, secondly, I don't know what version of this2
exhibit counsel is working from, but we did provide a3
corrected version to pick up typographical errors.4
THE COURT: Well, that's fine, but I did allow Mr.5
Lisa, as I told him I would, to establish those areas where6
there were incomplete quotations, things of that sort, so I'll7
allow him to do that.8
With regard to Exhibit 3486, Dr. Horn, what was your9
role in the preparation of this particular exhibit?10
THE WITNESS: Your Honor, I prepared these in11
collaboration with counsel, and I don't remember exactly who12
did what. I mean, I did look at this, and obviously13
considered that using this much of the text was adequate for14
the purpose here. And, you know, many of these sentences are15
very long and it got truncated before it got onto "a16
particular area or areas of the image field or object being17
scanned," but that's all I can say about that.18
BY MR. LISA: 19
Q Is it fair to say, sir, that in the part of the expert20
report that we just looked at in Exhibit 197 and here in your21
Exhibit 3486, in both instances what you did was truncate or22
remove references to the object being scanned?23
A Yes, and it may have had something to do with the fact24
that there are places where Lemelson isn't particularly25
HORN - CROSS0026
precise with language, and he refers to images of objects at1
times as if they were objects, and sometimes we do that when2
we're talking about pictures.3
Q And, in fact, in his definition he says exactly that,4
doesn't he, sir, that the object -- that he defines image5
field to include not only the image, but also the object;6
right, sir?7
A Well, I -- we went through that a minute ago.8
Q Right. And, in fact, if what Mr. Lemelson is using is9
something -- to scan objects is something called a reflective10
flying spot scanner in which the beam exits the scanner, then,11
in fact, what is being scanned is the object, right?12
A That's probably a reasonable way to say it.13
Q Thank you. Now, I think you said repeatedly on your14
direct that the 1954 application does not show any type of15
high bandwidth video; right? This is the 1954 application?16
A That sounds right. Yes.17
Q All right. And that it doesn't show scanning with a18
vidicon or iconoscope or anything like that, right?19
A Yes.20
Q All right. And, in fact, what the 1954 application shows21
is what Mr. Lemelson referred to as photoelectric scanning,22
right?23
A He used that term in the '54 application for that light24
source photocell arrangement.25
HORN - CROSS0027
Q And, in fact, the photoelectric scanning that he shows in1
1954, it is your position that that is not a camera, right?2
A That's right.3
Q All right. And it's your position that a person of4
ordinary skill in the art at the time of Mr. Lemelson's5
inventions in the mid-1950s would very clearly understand the6
difference between photoelectric scanning and a camera; right?7
A No, I wouldn't say that. The term "photoelectric8
scanning" is very general, meaning it involves some conversion9
from image to electricity, from photons to electrons, and10
certainly that would include devices that have photocells in11
them, and it would, in another context, possibly refer to12
television cameras.13
Q All right. Well, let's see if we can clarify that a bit. 14
You would agree that the term photoelectric scanning is15
general enough to include both of the types of scanning you've16
just referred to, right?17
A No, you need to look at the context to know --18
Q That --19
A -- what's being talked about.20
Q Let's try starting with a yes so the record is clear, and21
if you want to explain, sir, that's fine. 22
The question again and the answer for the record, if we23
can get that. The question is what you just stated a few24
moments ago is that the term "photoelectric scanning" is broad25
HORN - CROSS0028
enough to include both types of scanning you described, either1
television or video-type scanning, as you've defined it, or2
this arrangement shown in Mr. Lemelson's 1954 application;3
right?4
A In the abstract, if we're not dealing with a specific5
context.6
Q That means yes? Is that right, sir?7
A Yes, it means you have to look at the context, which is8
what I said before.9
Q So, yes, it means it's general enough to cover both, and10
therefore you have to look at the context, right? Can we have11
a straight answer on this for the Court, please?12
A The term is used generally in various places to mean13
anything involving photons and electrons.14
Q All right. It's certainly proper to refer to what Mr.15
Lemelson did in his 1954 application as photoelectric16
scanning, right?17
A He refers to it that way.18
Q All right. And you agree that's proper, right?19
A Yeah, it involves photons and electrons.20
Q Right. Now, when you put Exhibit 3415 up in front of the21
Judge and us on direct, and that's the exhibit of camera with22
the B-1 bomber on it? Do you recall that?23
A Yes.24
Q Your point there was to show that the image of the object25
HORN - CROSS0029
is on the face plate of the CRT and Mr. Jenner asked you1
repeatedly, the beam doesn't leave the device, right?2
A Mr. Jenner asked me, yes, to confirm that the beam3
doesn't leave the device. Yes.4
Q And this is what you said, this, being Exhibit 3415, you5
said "this is what's shown throughout Mr. Lemelson's6
specification"; right?7
A That's his camera cam.8
Q All right. Well, you also are aware that Mr. Lemelson9
says to use a flying spot scanner, right?10
A Yes, which is also an electron beam deflectival device.11
Q And since you've gone back now and reviewed your prior12
art, you're aware that there are other types of what you refer13
to as mechanical flying spot scanners; right? In fact, they14
were shown in your own prior art, right?15
A What specifically are you referring to?16
Q I'm asking you, sir, whether in your review of the prior17
art last night, did you see that you yourself cited prior art18
with mechanical flying spot scanners?19
A In this context, the flying spot scanner is --20
Q Sir, let's start over again.21
MR. LISA: Judge, we're going to be here forever if22
I don't get --23
THE COURT: Yeah. Try -- try again, Dr. Horn, to24
respond in the affirmative or negative. If you find it25
HORN - CROSS0030
necessary to explain, then you may do so.1
THE WITNESS: Yes, Your Honor.2
BY MR. LISA: 3
Q In the 45 references that you cited as prior art, Dr.4
Horn, did you cite references to -- that included the use of5
mechanical flying spot scanners?6
A There were various experimental devices using, for7
example, Nipcaud [phonetic] disk which someone may have8
referred to as flying spot scanners. They are not the flying9
spot scanners referred to by Lemelson.10
Q Well, Mr. Lemelson just says is a flying spot scanner,11
right?12
A But he repeatedly talks about electron beam devices, and13
so he's talking about a specific kind of flying spot scanner,14
namely, the one that someone in the 1950s would have15
recognized as a flying spot scanner.16
Q Sir, where does he say that the flying spot scanner in17
his specification must be an electron beam flying spot18
scanner?19
A He repeatedly in the specification and in the prosecution20
history talks about using electron beam devices, devices with21
reflective or electron beams.22
Q What I'm asking, sir, is when he refers to the flying23
spot scanner in his specification, show me one place where he24
says that the flying spot scanner must be an electron beam25
HORN - CROSS0031
flying spot scanner?1
A Well, he doesn't say anywhere --2
Q Thank you.3
A -- what his flying spot scanner is.4
Q Right. And so he leaves it to the person of ordinary5
skill in the art to determine what is the appropriate type of6
flying spot scanner to use depending on the type of scanning7
he does; right?8
A As I testified before --9
Q Yes, sir --10
A -- in the 1950s --11
Q Again, sir, please try and preface the question -- your12
answer with a yes or a no if you can. What Mr. Lemelson does13
in a specification is leave it to the person of ordinary skill14
in the art to determine what type of flying spot scanner is15
appropriate?16
A Yes, and at the time it would have been a flying spot17
scanner of the type I described using a deflective or electron18
beam.19
Q Right. Now you didn't ever use one of those reflective20
type flying spot scanners, have you?21
A Not of the type that he describes.22
Q All right. Not of any type, have you, sir?23
A Well, I haven't used what I'd call a flying spot scanner.24
Q All right. And, in fact, you weren't practicing in the25
HORN - CROSS0032
fifties at all, were you, sir?1
A No, but some of these devices were used in the sixties2
also.3
Q So they aren't quite so old if they're still being used4
in the sixties, right?5
A Not quite so old.6
Q Well, you said in your deposition that people skilled in7
the art in the fifties wouldn't use flying spot scanners, but8
maybe their parents or grandparents were; do you remember9
that?10
A I don't remember whether that was in the context of the11
mechanical type of scanners that was -- that was popular in12
the 1920s, so, I'm not exactly sure what part of my testimony13
you're referring to.14
Q Well, even so, if we talk about the type of electron beam15
flying spot scanner in which the beam is used in a reflective16
mode to actually scan the object where the beam is emitted17
from the face of a CRT?18
A There's no beam emitted. The electron beam is in the19
CRT.20
Q And it makes a very bright spot on the face of a CRT,21
right?22
A That it does.23
Q And the light, the radiation from that spot is focused24
through optics, is it not, sir?25
HORN - CROSS0033
A Yes, but it doesn't --1
Q Thank you.2
A -- form a beam.3
Q Radiation does leave the CRT, it strikes and is focused4
upon the object, and the reflected energy is detected by5
photocells, right, sir?6
A Yes, but there's no beam. There's an image formed by the7
lens in front of the CRT on the point in the environment, and8
if you, you know, draw a picture of it, it's a conical9
distribution of light rays, it's not a beam in the sense of --10
Q Ah, so the debate is whether the conical beam that's --11
the conical radiation that is focused by the optics is a beam12
or not; is that what your point is?13
A Well, that's certainly one point, yes.14
Q All right. So, now what we can agree on is that in a15
reflective flying spot scanner, the bright spot of light that16
appears on a CRT generates radiation that is focused by optics17
onto the object itself that is scanned, right? Yes or no?18
A The radiation beam is inside the tube.19
Q All right. 20
A And there's an optical system outside the tube.21
Q And that's why I didn't use beam in my question, sir. 22
What I think I said, and I'll ask it again, is in this type of23
a flying spot scanner, operating in a reflective mode, there's24
a very bright dot formed on the CRT, and that's this device25
HORN - CROSS0034
right here, right, the CRT, and the radiation from that spot1
is focused by a lens so that the beam -- not the beam -- so2
the spot traverses the object itself, right? Isn't that3
right?4
A There's a bright spot focused on the object.5
Q All right. And that bright spot scans back and forth6
across the object, right?7
A No. In our -- in the meaning of scanning at that time8
was the scanning of the electron beam in the cathode ray tube. 9
You're now extending the definition of scanning to include10
something else.11
Q To include the dot so it's scanning if the beam faces --12
if the image is on the face of the CRT and the scan lines13
cross the image, you agree that's scanning, right?14
A That's not the part of scanning --15
Q Sir, let's try it again. Yes or no, did --16
A No.17
Q -- you just say that scanning is what occurs inside of a18
CRT?19
A Scanning is what occurs inside the CRT. It's the -- yes,20
it's the deflection of the electron beam to probe out the21
sensitive surface of the vidicon.22
Q All right. And the -- and you're saying that the fact23
that -- and the fact that the spot now traverses the object24
itself is not scanning now?25
HORN - CROSS0035
A Scanning refers to the operation of the deflective or1
electron beam. Now --2
Q So --3
A -- you may have another definition of scanning --4
Q Well, you certainly know, Doctor --5
A -- derived at many years later, since the term has in6
fact broadened in its meaning and people apply it to other7
things, but in the 1950s scanning would have referred to8
exactly this process in the CRT.9
Q And so we're clear then, your dispute over scanning is10
that if the -- if the radiation exits the CRT and traces the11
raster pattern over the object itself and the radiation --12
reflected radiation is detected, that's not scanning?13
A You started off saying the radiation leaves the CRT. The14
radiation beam doesn't leave the CRT.15
Q Sir, again, let's -- I did not say beam. You have to16
listen to the questions, please. If -- there's a spot on the17
fact of the CRT, right?18
A Yes.19
Q That generates light, radiation; right?20
A Yes.21
Q That's focused by optics; right? Yes?22
A Just a second, I'm thinking back of something I said yes23
a second ago. Well, go on, sorry.24
Q You agree there's optics that take that spot of light and25
HORN - CROSS0036
radiation from it and focuses it on the object; right?1
A There's a lens that focuses the light from that spot.2
Q Right. And you could actually see that spot traversing3
the object if you were to watch it, couldn't you, sir?4
A I guess so.5
Q And there are photocells or detectors that detect the6
amount of reflective light from that spot traversing the7
object; right?8
A That's correct. 9
Q And those photocells generate a signal that is indicative10
of whatever the characteristics are of that object that was11
inspected or -- by the spot, right?12
A It's an analog video signal that responds to reflectant13
variations and so on.14
Q All right. Thank you. And it's your contention that15
that's not scanning?16
A It's my contention that the scanning is what happens in17
the tube in this process.18
Q You, of course, recognize that Symbol describes a process19
of the flying spot beam of light to be scanning, right?20
A I wouldn't be surprised if they did that, since, as I21
mentioned, the term has been broadened, as so many terms have,22
and since in communicating with their clients, they probably23
need to use common language to explain what they're doing.24
Q So, in fact, what you've done is create a distinction in25
HORN - CROSS0037
your definition of scanning to keep the scanning operation1
inside the CRT, not outside, right? In the fifties?2
A I've created a definition of scanning that would have3
been the definition a person of ordinary skill in the art4
would have had in the 1950s.5
Q All right. Now you, of course, realize that Mr. Lemelson6
says in his 1956 application and in his common specification,7
actually -- I'm sorry, strike that.8
What he says in his common specification is that you may9
conduct photoelectric scanning of moving objects or video beam10
scanning of image fields, doesn't he? He says that in his11
1963 common specification, right?12
A Well, I think we went over that there's oddness about13
moving objects since none of the rest of the specification14
deals with moving objects, and since moving objects would, in15
fact, smear the image.16
Q Well, it wouldn't smear the image, sir, if it was a17
photocell that was detecting moving objects, a fixed photocell18
with objects being moved by it in a scanning motion; right,19
sir? That wouldn't smear an image, would it?20
A I think we went there yesterday that if you have a21
photocell with a moving object, you're not going to get a22
useful signal out of it.23
Q Well, we said that we talked about the scanning bed, do24
you remember that? You've seen scanning beds in which the XY25
HORN - CROSS0038
stage moves underneath a fixed photocell, right?1
A What I think I said was --2
Q Sir?3
A -- that I've seen -- what I think I said was that I've4
seen devices that scan by moving a microscope lens over a5
transparency --6
Q And you don't doubt --7
A -- which is the opposite of what you're talking about8
with a moving object. You're --9
Q You certainly don't doubt, sir, that those types of10
scanning beds exist, do you, sir?11
A I'm not familiar with them.12
Q Well, what I'd like you to do is look at column 2413
beginning at line 48 of your Exhibit 17A?14
A Give me the line number again.15
Q Twenty -- column 24, line 47. And you'll see there that16
Mr. Lemelson is describing Figure 3, right?17
A Yes.18
Q And you've talked a lot about Figure 3 in your direct19
examination, right? So, you're familiar with it?20
A Yes.21
Q You didn't refer to this part of the patent, did you,22
sir?23
A I think I may have. I don't really remember.24
Q Well, I can tell -- I can assure you this, you didn't25
HORN - CROSS0039
once mention in your direct that it's moving objects that are1
being scanned, do you see that?2
MR. JENNER: That's not so. Objection. That was3
exactly covered in the direct examination.4
THE COURT: All right. Well, the record will bear5
out what was -- what was said. I don't want to engage in a --6
MR. LISA: I agree, Your Honor. I'm sorry.7
THE COURT: -- test of what the witness can remember8
about last week's testimony, but.9
BY MR. LISA: 10
Q Can we agree, sir, that what Mr. Lemelson says here is11
that the scanning signals may be derived from photoelectric12
scanning of moving objects, that's one alternative; right? Or13
video beam scanning of image fields. Do you see that?14
A Yes. And that was the point I addressed in direct 15
that --16
Q Well, what you can certainly agree as well, sir, is that17
what Mr. Lemelson shows in his 1954 application is18
photoelectric scanning, right? 19
A Ah-hah. Well, this is --20
Q Yes or no, sir? Does he show photo --21
A He uses -- he uses the term photoelectric scanning and --22
Q So, yes, he does, right?23
A -- he uses the term photoelectric scanning and that24
doesn't necessarily mean that he's talking about the same25
HORN - CROSS0040
thing because he explains in both exactly what he means by his1
scanning, and the scanning in the '54 application is moving2
around a light source and a detector and seeing when a beam is3
interrupted, where here the whole core of this is using a4
television camera, using an imaging device.5
Q But, sir, here he's talking about a moving object, and6
you can't understand how he can scan a moving object without7
smearing an image; right?8
A Since you're referring to the '54 application, I'd like9
to point out there's no moving object there either.10
Q Sir, there the arm moves, doesn't it?11
A The photoelectric cell and the detector moves, it's not12
the -- it's not a moving object.13
Q Do you know whether he also says in the 1954 application,14
sir, that scanning may be done while the object is moving on15
the conveyor? Do you remember that he says that in '54?16
A I don't.17
Q All right. So, your opinions haven't considered the fact18
that what Mr. Lemelson says in '54 is that either of them may19
move, the arm or the object?20
A The way I remember the use of the conveyor is that the21
object moves on the conveyor until it breaks a beam which then22
provides a form of prepositioning and then other actions are23
taken. He's not scanning it, he's simply detecting that the24
object has arrived at the certain point. That's very 25
HORN - CROSS0041
different.1
Q He's not scanning it with the moving arm in 1954?2
A He's searching for a reflective mark with a moving arm.3
Q He also makes measurements with the moving arm in '54,4
doesn't he, sir?5
A Now you're talking about the photocell light source6
that's moved relative to a cut out?7
Q Yes, sir?8
A There's no moving object. The arm is moving.9
Q All right. And do you know if -- well, you said he10
doesn't do any scanning motion, right? Didn't we agree in11
your deposition that if you take an arm and move it up and12
down to measure a number of different cutouts, and, in fact,13
let me hold a little card up that looks like Figure 99. Do14
you recognize that, sir?15
A It looks a little bit like part of Figure 99 except it's16
flattened out instead of being a three-dimensional object.17
Q Well, technically it is three dimensional, right, sir?18
A Yeah. You're holding --19
Q Okay. Thank you.20
A -- it in your hand.21
Q All right. But, in fact, what he says in nineteen -- in22
the '54 application is that you can measure each of these23
cutouts by moving the arm relative to the device, right?24
A I don't think he indicates what you --25
HORN - CROSS0042
Q Sir?1
A -- just did with your finger. What he says is he shows2
three positions on the part and says, you could measure the3
dimensions from here to there, or from here to there, or from4
here to there. That doesn't in any way suggest a raster type5
pattern, and it also, by the way, doesn't suggest the kind of6
scanning he's talking about in the '56 application.7
Q Okay. 8
A As I repeatedly point out, I don't see the relevance of9
the '54 application other than for purposes of controlling the10
manipulator arm.11
Q Now while we're talking about that let's talk about the12
1972 application then, because one of the things I know you13
didn't reference in your testimony is the decision by the14
Board of Appeals in 1976. Do you remember that decision, sir?15
A This is the second --16
Q Yes, sir --17
A -- appeal court decision?18
Q -- it is.19
A Yes.20
Q And what did they say about the 1954 application, sir?21
A Well, as you know, I'm not versed in patent law, so --22
but if you will please allow me to give an explanation of my23
understanding of it. Lemelson provided a application in '6224
which the examiner rejected for various reasons, including the25
HORN - CROSS0043
use of boxes labeled simply, for example, "computer." He then1
revised that by adding a section that referenced a number of2
patents which the -- which he did in order to avoid modifying3
the text or the figures of the application. 4
When the examiner then agreed that this somehow repaired5
the defect, he then returned to ask for a decision on whether6
his claims were -- could refer to a filing date of '54, and7
the appeal board apparently decided it did, which is something8
that I'm sure there's a legal understanding. 9
From an engineering point of view, it doesn't really make10
much sense to me because they don't refer to material in the11
'54 application. And my understanding would be that the12
appeals board based their decision on some legal argument, but13
did not come to a conclusion that the claims were supported by14
the '54 application.15
Q Well, let's see if I can ask a few follow-up questions on16
that, sir. You certainly recognize that even the examiner in17
the 1972 application agreed that the changes that Mr. Lemelson18
made rendered the claims adequately supported and cured the19
defects that he had made or raised as an objection in '63;20
right?21
A Again, I'm not an expert on these issues, but that's the22
way I read it.23
Q All right. But the examiner took the position that24
because Mr. Lemelson made some changes to the specification,25
HORN - CROSS0044
he was no longer entitled to the effective filing date of the1
1963 or earlier applications; right?2
A I think that's correct.3
Q All right. Well, let's look and see exactly what the4
Board of Appeals said. And I just placed in front of you an5
excerpt from the 1972 application which is Exhibit 1129A.6
MR. LISA: And Your Honor, we do have the entire7
binder here which we'll submit, but this is just a part of it.8
THE COURT: All right. 9
BY MR. LISA: 10
Q And I guess the first thing we'll do since I have it in11
here, I was going to talk about restriction requirements. You12
recognize, of course, that in 1972 the examiner had entered a13
restriction requirement, correct? Do you remember that?14
A Actually, no, but --15
Q Well --16
A -- you'll refresh my memory.17
Q Sure. Page 194 on the top of Exhibit 1129A. And18
actually if you'll look at the -- at 193, you'll see that's an19
office action from the patent examiner, and on top of 194 is a20
description of a restriction requirement. Do you see that?21
A Yes.22
Q And do you understand what a restriction requirement is,23
sir?24
A That he decide to pick a certain set of claims that cover25
HORN - CROSS0045
a particular area and resubmit the application with that set1
of claims.2
Q All right. Well, if you look at page 2, what you'll3
recall, I hope, is that what the examiner said there is there4
were seven separate and distinct inventions claimed in the5
1972 application. Do you see that?6
A Yes.7
Q All right. 8
A Without reading it in detail, it appears he has broken9
them into seven groups.10
Q Right. And if you look at the second paragraph up from11
the bottom, what the examiner says is:12
"The inventions are grouped above" -- "The inventions as13
grouped above are considered to be separate and distinct14
because each is capable of performing its function15
without requiring the presence of the others." 16
Do you see that?17
A Yes.18
Q All right. And then on the next page, top of page 3, he19
says:20
"Because the inventions are distinct for the reasons21
stated above, and have acquired a separate status in the22
art, and since different fields of search for the23
respective inventions have been shown above, restriction24
for examining purposes as indicated is proper." 25
HORN - CROSS0046
Do you see that?1
A Yes. I just want to remind you that I'm not an expert on2
patent law, but I'm following what you're reading.3
Q All right. And certainly your claim construction that4
you've provided takes into consideration that you're not an5
expert in patent law, right?6
A Yes.7
Q In fact, you have limited experience in patent law,8
right?9
A Yes.10
Q And in fact, you've never been involved in a claim11
construction process before, right?12
A That may not be true. I was involved in one previous13
case.14
Q Right. In your own case, right, with your own patent?15
A No, no.16
Q All right. 17
A Another case.18
Q Did you actually perform a claim construction in that19
case, sir?20
A That's what I was trying to recollect. I can't remember21
because --22
Q All right. Well, you can't --23
A -- it was settled before it went to court.24
Q All right. You can't remember ever doing a claim25
HORN - CROSS0047
construction before, right?1
A I can't at the moment remember.2
Q All right. And do you know which of the groups here Mr.3
Lemelson elected first?4
A I can't tell without looking more in detail at the5
application.6
Q Well, do you notice how many of those groups that are7
separate and distinct and have acquired a separate status in8
the art actually say "television," sir?9
A Well, I just noticed that "video" appears in several of10
them, and "television" -- 11
Q Well, let's go to my question first.12
A -- "television" appears in the first group of claims.13
Q All right. And if you look at groups 2, 3, 4, 5, 6, and14
7, there's no reference to "television" there, is there, sir?15
A Well, there's certainly a reference to "video," which in16
the context of --17
Q Sir, let's -- again, let's start with an answer.18
THE COURT: There are -- there are no -- I'll tell19
you what. It's very difficult, because the witness insists on20
qualifying his response. But 2, 3, 4, and 5 do not use the21
word "television." You don't need to elicit from the witness22
a response that --23
MR. LISA: Thank you.24
THE COURT: -- that's obviously not there.25
HORN - CROSS0048
BY MR. LISA:1
Q All right. And in fact groups 6 and 7 relate -- I'm2
sorry. Groups 5, 6, and 7 don't use the word "digital,"3
either, do they? I mean -- I'm sorry, "video."4
A Well, no, they do not. But I don't know what these5
claims are and how they relate to the patents in suit without,6
you know, looking back at the application.7
Q All right. And your opinions provided in this case don't8
take into consideration how the claims that have been asserted9
may relate to these various groups identified as being10
separate and distinct and capable of performing functions11
without requiring the presence of the others; right?12
A Are you representing that all of these claims have13
something to do with the claims that -- 14
Q Sir, let's please answer my question first, and then you15
can give an explanation. I'm asking whether your opinions16
provided in this case take into consideration whether any of17
the asserted claims fall into these other groups.18
A I can't answer that question, because offhand I don't19
remember looking at this document and making a correlation20
between the claims here and the claims that are under21
consideration.22
Q Thank you. Now, you, of course, recognize that -- I23
believe you were in the courtroom during Mr. Steiner's24
examination. Weren't you?25
HORN - CROSS0049
A No.1
Q You weren't? Okay. Do you recognize that members of the2
Board of Appeals in the Patent Office are extremely3
experienced and competent at examining patents?4
A Oh. Let me first correct what I said. I was here during5
part of his testimony.6
Q Were you there during -- here during that part of Mr.7
Steiner's testimony?8
A No, I don't recollect hearing that.9
Q Do you know that Mr. Steiner said he actually knew these10
examiners and considered them to be competent?11
A I didn't hear him say that, but their names came up in12
the discussion.13
Q All right. Board members. I'm corrected by Mr. Hosier14
it's the Board members, not the examiners.15
All right. So do you recall that, sir?16
A I don't recall the details of the examination.17
Q Well, you certainly recognize that members of the Board18
of Appeals would be more experienced at addressing the issues19
of whether someone's entitled to an effective filing date than20
you are; right?21
MR. JENNER: Well, objection, Your Honor. I mean,22
that goes for questions of practice in the Patent Office that23
this witness -- there's no foundation for him to answer that.24
THE COURT: Sustained as to what the competence of25
HORN - CROSS0050
members of the Patent Office would be.1
BY MR. LISA:2
Q Sir, do you profess to have more competence than Patent3
Office Board of Appeals members at addressing those issues?4
THE COURT: Addressing which issues again, the --5
MR. LISA: Effective filing dates of applications.6
THE COURT: Oh. All right.7
THE WITNESS: No.8
BY MR. LISA:9
Q Thank you. Now, if you will, I'd ask you to turn to page10
288.11
MR. LISA: Actually, Your Honor, for the record I'll12
refer that page 286 on the top actually indicates the heading13
at the Board of Appeals, so you can see that the date is14
November 26, 1976, and it's the reference from the United15
States Patent Office Board of Appeals. So -- and the16
Examiners in Chief and Board members are identified there, as17
in a court's opinion.18
BY MR. LISA:19
Q Now, sir, I take it you have read this document before. 20
Correct?21
A At some point. I don't remember the details.22
Q All right. And you knew of it and you knew of its23
existence, anyway, at the time of your direct examination;24
right?25
HORN - CROSS0051
A You mean now, a couple of days ago?1
Q Yes.2
A Yes.3
Q All right. And if you look at page 288, you'll see that4
in the first full paragraph the Board characterizes how the5
rejections had been made and says, quote, "Although the issues6
before us have been expressly framed in several rejections7
under 35 USC 102 and 103"; do you see that?8
A Top of 288?9
Q Yes, sir. It's the first full paragraph, first sentence10
of the first full paragraph.11
A Okay.12
Q And do you remember reading that the rejections --13
"Although the issues before us have been expressly framed as14
several rejections under 35 USC 102 and 103"; do you see that?15
A Are you sure we're on the right page? 'Cause I -- I16
don't see it.17
THE COURT: It's the typed "288" at the top of the18
page?19
THE WITNESS: Yes.20
THE COURT: "273" handwritten at the bottom, and the21
"3" stricken out.22
THE WITNESS: Okay.23
THE COURT: And then the first full paragraph24
starts, "Although the issues before us."25
HORN - CROSS0052
THE WITNESS: Okay. "Claims 51 and 55 to 58 stand1
rejected as being anticipated by --"2
MR. LISA: I think we're on the wrong page. Can I3
help the witness, Your Honor?4
THE COURT: Sure.5
MR. LISA: Thank you.6
THE COURT: Well, actually, you're on the right7
page. You're just in the first paragraph. But I'm talking8
about the first full paragraph below that, the one that9
starts, "Although."10
BY MR. LISA:11
Q So do you recall having read that before, sir?12
A Not specifically. But I did read this, so I must have.13
Q In your experience so far in this do you understand that14
a rejection under 102 and 103 relates to prior art invalidity15
rejections?16
A Well, thank you for refreshing my memory.17
Q All right. But you do recognize that; right?18
A Yes.19
Q Okay. But what the Board then says is, "The issues as20
framed by both the examiner's and appellant's arguments21
additionally fall within the first paragraph of 35 USC 112." 22
Do you see that?23
A Yes.24
Q Do you understand those issues to be issues of adequacy25
HORN - CROSS0053
of disclosure or support for the claims?1
A Yes.2
Q All right. And then what the Board does is identify that3
the '72 application, "The instant application is a4
continuation in part of the 1963, 1954, and 19565
applications." Do you see that?6
A Yes.7
Q All right. And just so we're clear, the '638
application's referred to as a parent, and the other two are9
referred to as grandparents; right?10
A Okay.11
Q All right. Now, the position of the examiner is stated12
just below, and that is that the patents relied upon are prior13
art because applicant -- or Mr. Lemelson was not entitled to14
an effective filing date earlier than the 1972 application;15
right?16
A The instant application. Okay.17
Q Right. And what the examiner -- I think you explained18
this in your own words. What the examiner had said is that by19
adding that new material Mr. Lemelson cured the problems with20
the spec but now couldn't go back earlier to '63, '56, or '54;21
right?22
A That's the way I understood.23
Q Okay. Then on the next page, 289, the Board sets forth24
what Mr. Lemelson's response was. Do you recall that?25
HORN - CROSS0054
A Vaguely.1
Q All right. Well, do you recall that what Mr. Lemelson2
argued was that the parent case was not fatally defective, he3
just failed to rebut the prima facie case of the examiner? Do4
you recall reading that at one time, sir?5
A Yes.6
Q All right. And that what Mr. Lemelson had done in the7
1972 case was to add some citations to what he called prior8
art patents that were both prior to and after his filing date,9
his '63 filing date, to show that these words or boxes that10
the examiner objected to were common usage at the time; right?11
A Minor detail. I think they were mostly to things earlier12
than '63.13
Q All right. Okay. Well, that's true. But what the Board14
says here is -- well, we'll get to that in a second. So your15
recollection is actually correct, sir; mostly prior to '63.16
So what Mr. Lemelson was arguing is that because he is17
now presenting evidence to rebut that case he can show that18
the parent case wasn't fatally defective. Do you recall that?19
A Yes. He said something of that type, yes.20
Q All right. And then what the Board says in the second21
paragraph, quote, "We have carefully reviewed the record22
before us, including the disclosures found in the parent and23
grandparent applications, and as a result of such review we24
find that the various rejections made by the examiner under25
HORN - CROSS0055
35 USC 102 and 103 can be sustained only as to Claims 1 to 41
and 55 to 57." Do you see that?2
A Yes.3
Q Do you recall that in fact what the Board did was reverse4
the examiner on all of the rejections, except for those claims5
identified right there?6
A Yes. And that's what really surprised me.7
Q All right. Well, the Board's reasoning is set forth8
right below. At first it says that the prior appeal didn't9
hold that the application was fatally defective; right?10
A That's what they say.11
Q All right. And then in the next paragraph, in the next12
sequential pages they go on to say that they had reviewed not13
only the parent application but the grandparent 195614
application and the grandparent 1954 application and stated,15
quote, "We conclude that the broadly phrased combinations of16
elements set forth in Claims," and they're identified, "are17
based upon an adequate written description in Grandparent18
Application Serial Number 626,211."19
A Sorry. Where are you now?20
Q Down at the bottom of page 290.21
So what the Board does is say that they've reviewed the22
disclosures found in the grandparent applications and holds23
that certain broad combinations are supported back in '56 and24
that other broad combinations or other combinations are based25
HORN - CROSS0056
upon an adequate written description in Grandparent1
Application Serial Number 477,467. And that's the 19542
application; right?3
A I believe so.4
Q So you certainly recognize that your opinion that the5
1954 application is irrelevant is absolutely inconsistent with6
what this three-panel Board of Appeals decided in 1976; right,7
sir?8
A I didn't say it was irrelevant. I said it was relevant9
as to the movement of the manipulator arm, and that certainly10
would have played into this decision.11
Q All right. Well, let's maybe state it better, then.12
You certainly agree that your opinions that none of Mr.13
Lemelson's claims are entitled to have support in 1954 is14
inconsistent with the Board's determination; correct, sir?15
A Yes, they are. And the thing is that I'm an engineer,16
and I read what is disclosed. And I cannot see the connection17
with the '54 application.18
Now, I understand that there was a legal decision here19
that goes in another direction. I can't ignore my gut20
feelings about the engineering of it.21
Q Well, you certainly didn't raise it in your direct that22
this opinion existed contrary to your opinion; right?23
A I can't remember. Probably not.24
Q All right. And do you know whether any of these Board25
HORN - CROSS0057
members are engineers skilled in particular arts, sir?1
A No, I don't know them.2
Q So you don't know one way or another whether these3
particular examiners are skilled in this particular art;4
right?5
A I don't know one way or the other.6
Q And even though you call it a legal conclusion, you7
certainly recognize that these Board of Appeals members stated8
that they carefully reviewed the disclosures of not only the9
parent case but the two grandparent cases, as well; right?10
A That's what it says here, yes.11
Q And you have not offered a single opinion in your direct12
examination that specifically addresses the decision made by13
these three Board members; right, sir?14
A I believe I did not in direct examination.15
Q Thank you. Now, you recognize, as well, that Mr.16
Lemelson's 1956 application had restriction requirements in17
it, also; right, sir?18
A I don't at the moment recollect.19
Q I've handed you and Your Honor another excerpt of that20
large binder that we provided yesterday, 1127A.21
MR. LISA: I'm not going to renumber each one of22
these. I'm just going to refer to the page numbers, if that's23
okay.24
THE COURT: All right.25
HORN - CROSS0058
BY MR. LISA:1
Q Sir, I've handed you an excerpt of the large binder we2
presented yesterday, 1127A. And, if you will, turn to what is3
identified as page 162 on the top.4
A Okay.5
Q Do you remember looking at this document, sir?6
A Probably. It doesn't ring a bell right now.7
Q Well, you see on the bottom of page 162 what the examiner8
says. Quote, "Since the applicant has submitted claims to9
multiple distinct inventions," I'm sorry, "distinct fields of10
invention, a requirement for restriction to one of following11
groups is made."12
A That's what it says.13
Q All right. And you see there that what he does identify,14
then, on the bottom of page 162 and top of page 163 are four15
groups. Do you see that?16
A Okay.17
Q Do you recall that there was a four-way restriction18
requirement, sir, in the 1956 application?19
A Well, seems to be so.20
Q Well, I'm just asking if you remember that.21
A Well, it rings a bell. I remember the part about having22
to redraw the drawings or something.23
Q Okay. Well, if you look at the middle of page 163, right24
below that last group, the examiner states, "The subject25
HORN - CROSS0059
matter of these four groups of claims are independent of each1
other, since the television inspection system of Group 1 does 2
not require the specific subject matter of Group 2, 3, and 4,3
and vice versa." Do you see that?4
A Yes.5
Q All right. So what the examiner was saying is that the6
claims submitted in Groups 2, 3, and 4 don't require the7
specific subject matter of a television inspection system and8
vice versa; right?9
A Yes.10
Q Do you happen to know which of these groups Mr. Lemelson11
elected in his 1956 application?12
A Elected in his 1956 application?13
Q Yes. Do you realize that in response to this Mr.14
Lemelson had to select one of these groups and was not allowed 15
to prosecute the others in this application?16
A No, I don't remember which one he picked.17
Q Well, you remember that he made comments about his18
scanning device, and you cited to those comments throughout19
the prosecution of the '56 application that the invention that20
he was there claiming, the instant invention there related to21
television scanning; right?22
A Yes.23
Q So would it surprise you that the distinct and unique24
group that he elected was Group 1, relating to television25
HORN - CROSS0060
cameras, sir -- television inspection systems?1
A I'm sorry, what was the question? Would it surprise me?2
Q Would it surprise you, sir, that the group that he3
actually elected was Group 1?4
A No, wouldn't surprise me.5
Q Thank you. Now, do you remember that Mr. Lemelson's 19546
application likewise was subjected to a restriction7
requirement? Do you remember that?8
A No.9
Q I've handed you, sir, an excerpt from Defendant's Exhibit10
1932A.11
MR. LISA: Which, Your Honor, is the third file12
history for this.13
BY MR. LISA:14
Q And I'll ask you to turn to page 202 on the top, sir. Do15
you remember seeing this document?16
A No, I don't recollect.17
Q Well, if you turn to page 205 at the top, that's a few18
pages in, you'll find another restriction requirement. And19
I'm going to ask you if you recall seeing that.20
A No, offhand I don't recollect seeing this.21
Q Do you recall the examiner stating in the 195422
application that there were a great number of distinct and23
independent inventions presented?24
A No, I don't remember this. As you know, I didn't go into25
HORN - CROSS0061
all of the details of the '54 application, because I was1
interested in the part relating to movement of the manipulator2
arm.3
Q All right. So I take it, then, your opinions are based4
on what you consider to be a relatively incomplete study of5
the '54 file history?6
A No. I studied it thoroughly. What I'm saying is that7
there are parts that I don't recollect now because they8
weren't relevant to where I was going with my study of that.9
Q Well, is it fair to say, then, you didn't consider10
relative to your opinions -- relative to your opinions whether11
or not the examiner said that claims that were presented were12
independent and distinct from each other?13
A Well, keep in mind again the context. We're talking14
about the '56 application referring to this for use of the15
manipulator control arm. So the interest would have been in16
claims relating to that.17
Q Well, sir, you certainly recognize that Lemelson has18
presented in its expert reports and has contended that not19
only did the 1956 -- '63 application refer to the '5420
application, but in fact there were a number of drawings added21
in that 1963 application; right?22
A Yes. Let me just correct something. I misspoke when I23
said the '56 application referred to the '54 application. 24
There were -- there was additional text and additional25
HORN - CROSS0062
drawings in the '63 application, and that included a1
manipulator arm.2
Q And it included a manipulator arm with an inspection3
device mounted on the end of it; right?4
A With a camera CAM mounted on it.5
Q Or a photoelectric scanner; right?6
A It's not described or shown that way. It's showing the7
camera CAM, and Lemelson tells you what that is. It's a8
television camera producing video.9
Q All right. And you certainly recognize that that camera10
is mounted on the end of the manipulator arm and controlled to11
move about an object that's presented for inspection; right?12
A Yes. It's mounted on the manipulator arm, and it can be13
controlled to fixed positions -- can be moved to fixed14
positions.15
Q All right.16
A Did you say "moving object"?17
Q No. I said, "moved about the object."18
A Okay. Okay.19
Q Do you know which group of claims Mr. Lemelson elected to20
prosecute in his 1954 application, sir?21
A No.22
Q You don't recall that what he did was prosecute claims23
addressed to the drills and drilling machine? That doesn't24
ring a bell to you?25
HORN - CROSS0063
A Doesn't ring a bell at the moment.1
Q Did you in your review of the prosecution history of the2
1954 application, if you turn to page 206, see that one of the3
groups that he actually -- the examiner actually identified4
related to claims for measuring devices? Do you see that?5
A Which paragraph is it?6
Q Paragraph 7.7
A Yes. Okay.8
Q Do you recall that now?9
A No. I'm saying I'm reading it here.10
Q All right. So you don't -- you didn't consider any of11
this in forming your opinions, sir?12
A I did. But, you know, this has been a very long time. I13
don't recollect right now reading this particular claim14
constriction -- restriction. Excuse me.15
Q Is it fair to say, sir, now that you at least have your16
recollection refreshed that there were several restriction17
requirements made by the Patent Office during prosecution of18
Mr. Lemelson's applications?19
A Yes.20
Q And that in those restriction requirements the Patent21
Office was saying that Mr. Lemelson's inventions as defined by22
the claims he presented were independent and distinct from23
each other? Do you recall that?24
A That's what it says.25
HORN - CROSS0064
Q All right. And in offering your opinions on claim1
construction --2
And in particular I'm referring to your summary chart3
that has the words "scanning," "analyzing," "computer4
analyzing," "computer processing." Do you remember that?5
THE COURT: What's that number again? It's6
something 29, but --7
MR. LISA: Yeah. It's cut off on the bottom of my8
chart, Your Honor, so I have to ask counsel which one it is.9
MR. JENNER: Show me.10
MR. LISA: 3429, Your Honor.11
THE COURT: 3429.12
BY MR. LISA:13
Q And I actually have -- and if you want to turn to your14
book, sir, do you have that exhibit number handy?15
A Yes.16
MR. LISA: Actually, I'll make it easier. I have an17
excerpt here, Your Honor, from the big binder.18
THE COURT: Well, it's only one page, so he's --19
he's got the whole binder right there.20
Do you have 3429?21
THE WITNESS: Yes, Your Honor.22
THE COURT: He's got it. I've got it, too.23
MR. LISA: There's actually a number of the summary24
pages that appeared for each of these terms later, Your Honor,25
HORN - CROSS0065
that I've put in behind this in one little packet. And it1
just makes it easier than turning all the pages in the book.2
BY MR. LISA:3
Q You'll see, sir, that what I've done here is have behind4
Exhibit 3429 the summary charts you presented for scanning. 5
And that's Exhibit 3430, where you stated, quote, "Mr.6
Lemelson used many terms to describe scanning, and they all7
mean the same thing." Do you see that?8
A Yes.9
Q And then after that is 3448, where it says, "Mr. Lemelson10
used many terms to describe his analyzing step, and they all11
mean the same thing." Do you see that?12
A Yes.13
Q And the next one is, "Mr. Lemelson used many terms to14
describe his computer analyzing and computer processing steps,15
and they all mean the same thing." Right?16
A That's right.17
Q And then same thing with variations, he used many terms18
to describe it, but they all mean the same thing; right?19
A Yes.20
Q And finally, digitizing. He used many terms to describe21
digitizing, but they all mean the same thing.22
A That's right.23
Q And the same thing with memory. He used many terms to24
describe his memory, and they all mean the same thing; right?25
HORN - CROSS0066
A Yes.1
Q All right. And what you're asking the Court to do is to2
ignore the many different terms that Mr. Lemelson used in3
these claims that he obtained from the Patent Office and to4
describe these various elements to all mean the same thing;5
right?6
A Yes. Because we have to interpret the claims in terms of7
the specification and what's disclosed therein.8
Q Well, don't you think it's pertinent, sir, that what the9
Patent Office said is that Mr. Lemelson had presented many10
different and distinct inventions in his claims?11
A That's a separate issue. We're talking here about claim12
terms. And I'm saying that there's a relatively small number13
of distinct claim terms that are used in different claims. 14
They're, of course, used in different ways; otherwise they15
wouldn't be distinct claims.16
Q Now, in fact I wrote down a couple of terms you used in17
your examination. One of them was -- and I believe it was18
with respect to variations, "quite a number of different ways19
he described it," is what you said in your examination. Do20
you recall saying that?21
A No. But I'll take your word for it.22
Q So what you're asking the Court to do are take different23
words and ignore those differences; right? Yes, sir?24
A Yes. And that's because in view of the specification25
HORN - CROSS0067
they can only be referring to certain things. We can't1
suddenly introduce new material from somewhere else.2
Q So if one of Mr. Lemelson's claims says, for example,3
that you're to scan the object under inspection with an4
electronic scanning device and says absolutely nothing about5
television or radiation beams or anything else, you still6
think that claim ought to be limited only to high-bandwidth7
beam television motion picture scanning; right?8
A Absolutely. Because that's what he says throughout the9
specification. Now, if he uses a different term or synonym10
here for describing that, that's another matter. But he can't11
-- you can't now say that he's talking about something else.12
Q Well, what if one of his terms is that you're supposed to13
use photoelectric scanning?14
A We just went through photoelectric scanning. My view is15
that in the '56 application, since it's all about television16
and video, photoelectric scanning refers to television cameras17
producing video signals. Which is perfectly reasonable,18
because we've got photons going into them, and electrical19
signals coming out.20
Q Well, what if in your -- have you considered in your21
opinion that several of Mr. Lemelson's dependent claims --22
Do you know what a dependent claim is, sir?23
A Yes.24
Q Would you explain it to the Court just so we're clear.25
HORN - CROSS0068
A It's a claim that copies the elements of another claim1
and adds additional elements.2
Q Right. Do you know whether any of Mr. Lemelson's claims3
further define a scanning device as a television camera?4
A If any of the dependent claims -- I don't offhand5
recollect. I would be surprised, because typically the claims6
tend to be very general without that kind of specific detail.7
Q Well, let me present to you -- I'd like you to look --8
well, do you recognize this as Mr. Lemelson's '061 patent,9
sir?10
THE COURT: This is Exhibit 1105.11
MR. LISA: 1105. Thank you, Your Honor.12
THE WITNESS: Yes.13
BY MR. LISA:14
Q And this is one of the patents in the chain going back to15
1954 and '56 and '63; right?16
A Yes.17
Q All right. I'd like you to look at the back, at the18
claims, sir, and particularly at Claim 1.19
THE COURT: What page are you on?20
MR. LISA: It's column 65, Your Honor, back -- 21
BY MR. LISA:22
Q And if you look at the Claim 1, element (b), it says:23
"(b) electro-optical scanning means disposed at said24
inspection location for examining articles to be25
HORN - CROSS0069
inspected."1
Do you see that?2
A Yes.3
Q That says nothing about it being a television camera,4
does it, sir?5
A Not directly. Again, reading it in the -- in connection6
with the specification, it could be a television camera or7
flying spot scanner.8
Q But if you look at -- and you said a flying spot scanner9
would be what, a high-bandwidth scanning device, sir?10
A Yes.11
Q And that's a form of television camera; is that right?12
A Yes. It's producing a standard television signal.13
Q All right. Why don't you look at Claim 4, sir, over on14
the right-hand column.15
A Okay.16
Q And that says, "An apparatus as defined in Claim 117
wherein said electro-optical scanning means is a television18
camera." Do you see that?19
A Yes. Perhaps here he's trying to draw a distinction20
between television camera and -- or a flying spot scanner21
versus specifically a television camera.22
Q All right. So it's your view that a flying spot scanner23
is a different type of television camera, it's not a24
television camera?25
HORN - CROSS0070
A It's certainly not my view. It may have been his view,1
that's why he's drawing the distinction.2
Q I thought you said that a television -- that a television3
camera would include a flying spot scanner, sir. Isn't that4
what you said a few moments ago?5
A I said that the kind of scanning device we're talking6
about here is an electron beam scanning device, and that could7
be a television camera or a flying spot scanner.8
Q And you said --9
A I remember saying "or."10
Q Then I asked you, is a flying spot scanner a form of11
television camera, and you said yes; right, sir?12
A Well, and what I said was it produces a video output. In13
that sense it's a television camera. I mean, it's not a14
television camera you'd use in a studio.15
Q So now this becomes -- now your definition of "television16
camera" is one that's used in a studio? Is that what you're17
defining a television camera as now, sir?18
A What I'm trying to do is understand --19
Q Let's -- look, we have to be clear on definitions here,20
sir. Claim terms are important. Is it your -- is it your21
testimony now, sir, that your definition of "television22
camera" is limited to a studio television camera?23
A No, that's not what I said.24
Q All right.25
HORN - CROSS0071
A A television camera could be a vidicon, iconoscope, or a1
flying spot scanner. I was answering your question about why2
he's drawing a distinction here. And in -- and my3
interpretation is he wanted to make sure that whoever reads4
this is able to understand that it could be a television5
camera or it could also be a flying spot scanner in his6
interpretation of that word. I mean --7
Q Well, you just said a moment ago that a television camera8
includes a CRT or vidicon or flying spot scanner; right?9
A That's correct.10
Q All right. So --11
A Now, that's not necessarily mean that anyone reading12
these claims will immediately understand that connection.13
Q Well, certainly it makes clear, doesn't it, sir, that he14
doesn't intend the scanning -- electro-optical scanning means15
of Claim 1 to be limited only to a television camera?16
A Apparently here he's -- his impression is that a flying17
spot scanner might not be recognized by everyone as being a18
television camera, and so he's covering both situations, yes.19
Q Well, is it fair to say that the intent provided here by20
Mr. Lemelson is that when he used the word "electro-optical21
scanning means" he didn't intend it to be limited to only a22
television camera? Right? Because that's why he added23
Claim 4; right, sir?24
A I can't tell what his intent was.25
HORN - CROSS0072
Q Well, you can certainly tell that Claim 4 would be1
useless and unnecessary if the only thing that electro-optical2
means could be is a television camera?3
A Well, I imagine if I was writing these claims I'd have to4
take into account what various peoples might interpret words5
to mean. So, to cover myself, I would make sure that I used6
different ways of saying things, and not necessarily implying7
that there's actually a distinction.8
Q And so you'd use different words to say things without9
implying there's a distinction? Is that what you just said?10
A Yes. For example, suppose that -- suppose that we start11
off with the fact that a television camera is a vidicon, an12
iconoscope, or a flying spot scanner. Now, I, the inventor,13
might know that. Now, when I write the claims I might be14
concerned about someone else thinking that there was a15
distinction, so I'm going to write a dependent claim saying,16
and by the way, Claim 1 where the device is a flying spot17
scanner, or, Claim 1 where the device is a vidicon. I might18
do that in order to make sure --19
Q And here he says -- here he said it's a television20
camera. He didn't go to any of the species that you just21
identified. He wrote a claim --22
A But it's the same concept. The concept is that a23
television camera is a vidicon, iconoscope, or flying spot24
scanner. And he might have been concerned that someone25
HORN - CROSS0073
doesn't group them that way but has a different view of the1
division amongst different devices.2
Q And what you're asking the Court to do in its claim3
construction is to ignore different claims or to find that4
there's no distinction among these claims that use different5
words; right?6
MR. JENNER: Your Honor, at this point I think I7
need to object on two grounds. One, it seems to me this is8
really getting now into the legal issue. And number two,9
nothing in the '061 patent -- no claim, I should say, of the10
'061 patent is any of the claims asserted in this suit or has11
been construed. So this is really going I think beyond12
anything --13
THE COURT: Mr. Lisa, on that last point what would14
the relevance be?15
MR. LISA: The law is absolutely clear in forming16
claim construction you're supposed to consider the claims --17
all the claims.18
THE COURT: Well, I understand what you're going to19
argue to me the law is clear, but with regard to this20
witness's --21
MR. LISA: This witness has stated that every claim22
has to be limited to television camera. And what I'm showing23
is he didn't bother to look at claims that made clear that24
can't be so.25
HORN - CROSS0074
THE COURT: All right. Well --1
MR. JENNER: Well, Your Honor --2
THE COURT: Yeah.3
MR. JENNER: Well, we'll --4
THE COURT: I'm not going to strike it. You all can5
argue what it's covered.6
I have a question. My clerk had queried me on this. 7
We've had several exhibits referenced this afternoon with this8
witness, and let's address whether they're all already either9
in evidence or you're moving them into evidence.10
Now, a lot -- some of them are excerpts of something11
which I think is already received. But as to the exhibits12
marked thus far -- let's just take them globally -- is there13
any objection to any of the exhibits placed thus far before14
the witness today by Mr. Lisa, Mr. Jenner?15
MR. JENNER: Your Honor, I don't think so. I'm not16
sure I've got all of them in hand. But if I -- if I can just17
read off what I've got. 1129A --18
THE COURT: Let my clerk -- 19
Donna, do you have your list?20
THE CLERK: I do.21
THE COURT: Okay. Go ahead.22
THE CLERK: I have 1105; 1127A, which was referred23
to yesterday and is one of the ones in contention.24
THE COURT: Well, 1127A is a -- today's is a sub --25
HORN - CROSS0075
MR. JENNER: That's a piece of the '56 --1
THE COURT: -- a piece of a larger --2
MR. JENNER: Yeah. I think that's a piece of the3
'56 file history. And we don't have a problem with that.4
THE COURT: Right.5
MS. CURTIN: Okay. If I can clarify, Your Honor. I6
realize it's a little confusing, and we apologize. But 1129A,7
1127A, and 1932A are actually all the great big binders. And8
he has been referring to excerpts by page number out of those9
binders for matter of convenience.10
THE COURT: Right. Out of pieces of 1127.11
MS. CURTIN: The A is -- right.12
THE COURT: That's fine.13
MS. CURTIN: The A doesn't refer to the excerpt. 14
The A refers to the fact that those are composites that we15
created --16
THE COURT: Got it.17
MS. CURTIN: -- to clean up the file histories.18
MR. JENNER: So these three we don't have a problem19
with.20
THE COURT: Right. Are there any you do have a21
problem with?22
THE CLERK: 1127A, 1129A, and 1932A is already in23
from yesterday.24
THE COURT: Yeah. Donna, what else do you have25
HORN - CROSS0076
there?1
THE CLERK: Another one I have is Defendant's 1105. 2
And Plaintiff's 3486, which Mr. Lisa referred to earlier. 3
That's also not in.4
MS. CURTIN: Okay. Plaintiff's 3486 is one of those5
that we have the standing objection to and that he was cross-6
examining him on to deal later with the reserved objection.7
THE COURT: All right. Then hold that --8
MR. JENNER: That's the one --9
THE COURT: Hold that out, Donna.10
Any others that are still at issue, then?11
MR. JENNER: 1105. Just relevance. But that's --12
no, we won't --13
THE COURT: Is 3415, Donna, was that already in?14
THE CLERK: 3415 was already in.15
THE COURT: How about -- well, 3429 obviously was.16
THE CLERK: 3429 was already in.17
THE COURT: And 197?18
THE CLERK: That was --19
MS. CURTIN: 197 we are not offering, Your Honor.20
THE CLERK: That was the one they're not offering.21
THE COURT: All right. Okay.22
THE CLERK: Okay. So then 1105 is in, also?23
MR. JENNER: Well, Your Honor, I guess --24
THE COURT: Yes.25
HORN - CROSS0077
MR. JENNER: I'm sorry.1
THE COURT: Go ahead.2
THE CLERK: 1105 is in, also, then?3
MR. CHERNY: We have a relevance objection, but4
we're not going to fight bringing it into evidence.5
THE COURT: All right. All right. That'll be6
received, Donna.7
(Defendant's Exhibit 1105 admitted)8
MR. JENNER: We have one other issue, I guess, which9
counsel points out to me that I guess was raised earlier and10
has not fully been resolved, which maybe we need to do11
tonight. We don't have any problem with these excerpts coming12
if the base prosecution history is in.13
Now, the problem that we do have, which I gather has14
not been resolved, is that defendant has one version of these15
prosecution histories, we have a different version. They have16
made up some kind of a composite version, and it's not clear17
to us yet what that is. I think we won't have a problem with18
it if we can look at their composite version overnight and19
confirm -- 20
THE COURT: Why don't the two of you compare them21
tonight, and you can --22
MR. LISA: They were delivered seven weeks ago --23
six weeks ago.24
MR. JENNER: Well, be -- it's at least a different25
HORN - CROSS0078
copy.1
THE COURT: Okay. But focus on them tonight, and2
you can perhaps resolve that. Okay.3
MR. LISA: And for the record, what we'll do --4
well, I think we did refer to 1129A, and why don't we just go5
ahead and put the whole files in so we --6
MR. JENNER: Which one is that?7
MR. LISA: That's the '72 file history.8
MR. JENNER: That's the same idea. As long as we9
can confirm, no problem.10
THE COURT: Sure.11
MR. JENNER: And excerpts will be no problem,12
either.13
THE COURT: Fair enough. Fair enough.14
MR. LISA: I think all the other file histories were15
delivered yesterday. So this is the only one I haven't yet --16
THE COURT: All right.17
MR. LISA: -- yet delivered.18
THE COURT: All right. Let's take 10 minutes, then,19
and let everybody stretch their legs, and then we'll20
reconvene.21
MR. LISA: I was -- noticed time was off a little22
today, Your Honor, on your clock. What time is it really?23
THE COURT: I don't know. That seems to be pretty24
close.25
HORN - CROSS0079
MR. LISA: Oh. Wait. It's not morning. You're1
right. How about that. I thought it was 9:00 a.m.2
(Court recessed at 2:55 p.m., until 3:21 p.m.)3
THE COURT: Have a seat, folks.4
All right. Go ahead, Mr. Lisa.5
MR. LISA: Thank you, Your Honor.6
BY MR. LISA:7
Q I'm going to hand you, sir, Defendant's Trial Exhibit8
1107.9
MR. LISA: Your Honor, I have one without the staple10
for you right now. Thanks.11
THE COURT: That's fine. And let me see what it is.12
MR. LISA: It's the '626 patent in suit.13
THE COURT: All right. Is there any objection to14
1107, or is that already in?15
MR. JENNER: No, Your Honor. That's -- that's okay.16
It's a patent in suit.17
THE COURT: All right.18
(Pause in the proceedings)19
BY MR. LISA:20
Q Now, sir, you recognize that the '626 patent Claim 8 is21
one of the asserted patents; right?22
A One of the asserted claims.23
Q Yes.24
A Yes.25
HORN - CROSS0080
Q And if you look at '626, Claim 8, you will see that it1
describes, "A method of converting analog information to2
digital form comprising the steps of"; do you see that?3
A Yes.4
Q Do you see anywhere in there where it says "scanning"? 5
Second line. See that?6
A Yeah. Element (a).7
Q "Scanning a varying process." Do you see that?8
A Yes.9
Q Then the very next element is "analyzing a selected10
portion of said analog signal to the exclusion of other11
portions of said analog signal." Do you see that?12
A Yes.13
Q Okay. And the first element, (a), is "generating a14
variable electrical analog signal derived from scanning";15
right?16
A Yes.17
Q Does that say "television scanning"? 18
A It does not. But in the context of the specification19
that's the kind of scanning he's talking about. He's saying20
he's using -- I forget the exact words, but right at the end21
he summarizes it by saying this could be a -- this is a22
television camera or flying spot scanner.23
Q And is it your opinion that the signal in Claim 8, the24
variable electrical analog signal, must then be a video25
HORN - CROSS0081
signal?1
A Yes.2
Q All right. Well, let's look at Claim 9. It's on the top3
of column 67.4
A Yes, I see it.5
Q See it says, "Said variable electrical analog signal is6
generated as an analog video signal"? Do you see that?7
A Yes.8
Q So it's your opinion that Claim 8 already requires that9
the analog signal be a video signal; right?10
A Yes.11
Q So you're asking the Court in its claim construction to12
ignore the differences between Claim 8 and Claim 9; right,13
sir?14
A I'm not a patent lawyer, but the way I would write claims15
is so that they would cover all possible cases. And in this16
case the 8 version doesn't talk about variable -- excuse me,17
doesn't talk about an analog video signal directly.18
Q But, sir, you said the claim -- a moment ago I asked you19
if Claim 1 should be limited to a video signal, and you said20
yes -- in Claim 8 --21
A Claim 8.22
Q -- should be limited to a video signal. And you said23
yes.24
A Yes.25
HORN - CROSS0082
Q Now, is it in your opinion and did you consider -- I'm1
sorry. Strike that.2
In your claim construction did you require that Claim 83
be -- describe a system in which the analog signal is defined4
from a video camera scanning an image? In other words, do you5
construe Claim 8 to require the signal to be defined from a6
video camera scanning an image?7
A It's a television camera producing a video -- analog8
video signal.9
Q That would require, then, that it scan an image; right? 10
It's a television camera in your view?11
A Yes, scanning --12
Q Let's look at Claim 10, please.13
A Okay.14
Q You see that Claim 10 says that the "variable analog15
signal defined in Claim 8 is defined [sic] from a video camera16
scanning an image to be analyzed"? Do you see that?17
A Yes.18
Q And it's your view that that's already a requirement of19
Claim 8; right?20
A Well, naturally, I wondered about these things.21
Q Let's first get an answer to the question.22
A Yes. Yes.23
Q Thank you.24
A Naturally, I wondered about this nesting, providing25
HORN - CROSS0083
successively more specific information when all that's1
disclosed in the common specification is actually using analog2
video signals.3
Q So you found the existence of these different claims with4
different words to be inconsistent with your conclusion that5
all the independent claims already had these limitations;6
right?7
A Not inconsistent. I treated it as a way of an inventor8
to make sure that he gets the maximum coverage by first9
stating something very general and, then just to make sure,10
refining it to be more specific.11
Q Well, that's a good point. First you state it general,12
then you refine it to say something more specific; isn't that13
right, sir?14
A Yes.15
Q That's what a dependent claim does; right, sir?16
A That's correct.17
Q And Claim 8 says absolutely nothing about "video" or18
"television"; right?19
A Not directly. But since it's talking about scanning and20
the only kind of scanning disclosed in the specification is21
that kind of scanning --22
Q So in that case, then, Claim 9 and Claim 10 would each be23
superfluous if your claim construction is adopted; right?24
A From a strict interpretation, they'd be superfluous. I'd25
HORN - CROSS0084
imagine that there's some legal advantage to having both1
statements just in case there's a question about how it's to2
be interpreted.3
Q Well, that's what we're talking about, sir, is how you4
interpreted it. Is there a difference, sir, between '6265
patent Claim 8 and '626 patent Claim 9? Under your claim6
construction is there a difference?7
A I don't see a difference.8
Q Is there a difference, sir, between '626 patent Claim 89
and '626 patent Claim 10?10
A No.11
Q But you certainly agree different words are stated there;12
right, sir?13
A Different words are used --14
Q So, yes, different words --15
A -- and so 9 and 10 are more specific, where the others16
depend on what's in the specification to clarify what is17
meant.18
Q Let's look at the '190 patent. And that's Defendant's19
Trial Exhibit 1115.20
THE COURT: Ms. Clerk, that probably is already in21
evidence. If not, it will be received.22
THE CLERK: Yes, Your Honor.23
BY MR. LISA:24
Q Now, if you'd turn to column 66, you'll see Claim 6, and25
HORN - CROSS0085
hopefully you'll recognize that that is again one of the1
asserted claims.2
A Yes.3
MR. LISA: I said the '190 patent. Okay. For, the4
record, I think I'm -- I said the wrong patent number, I'm5
told, so this is the '190 patent, Your Honor.6
THE COURT: It is. Yeah, '190, Exhibit 1115. And7
we're at column -- I'm sorry -- 66. What was the line number?8
MR. LISA: Line 24.9
THE COURT: Line 24. All right. Claim 6.10
BY MR. LISA:11
Q And you see here, sir, where this is "A method for12
controlling scanning of an image field by a scanning device." 13
Do you see that?14
A Yes.15
Q Look over at Claim 1, which is not asserted, sir. That's16
the bottom. Says, "A method for controlling scanning of an17
image field by a camera." Do you see that?18
A Yes.19
Q You'll agree that the word "scanning device" is a broader20
term than the word "camera"; right?21
A Within the context of the specification -- well, the22
camera is usually taken to be both the image-forming part, the23
lens, as well as the vidicon or iconoscope. So there's some24
distinction there in terminology.25
HORN - CROSS0086
Q There's a difference; right?1
A Between --2
Q "Scanning device" and "camera" there is a difference;3
right?4
A Well, the scanning device would be a television camera. 5
"Camera" without the word "television" potentially could be a6
photographic camera or some other device. Of course, it7
wouldn't make any sense in this context.8
Q In this context you would construe "camera" to be the9
same as "scanning device," that is, a high-bandwidth10
television video camera; right?11
A That's correct.12
Q All right. Now, if you look at clause (a) of Claim 613
over on column 66, see that it says, "scanning an image field14
with said scanning device and generating first electrical15
signals which vary in accordance with variations --"16
A Sorry. Which claim?17
Q Claim 6, sir.18
A Okay.19
Q And look at the first element, paragraph (a), which20
describes the scanning step. Do you see that?21
A Uh-huh.22
Q It says, "scanning an image field with said scanning23
device and generating first electrical signals which vary in24
accordance with --" there's an error there "-- variations in25
HORN - CROSS0087
the image field scanned." You see that?1
A Yes.2
Q All right. No mention there about the signals that are3
generated being video signals; right?4
A Not directly.5
Q All right. If you look over at Claim 1 at the scanning6
step, bottom left-hand column of claim -- column 65, do you7
see how the output signal's defined there, sir?8
A "...generating output video signals," yes.9
Q All right. And what Mr. Lemelson asserted in this case10
is Claim 6, not Claim 1; right?11
A Yes.12
Q And do you see that the rest of the claim elements track,13
as well, between those two claims?14
A Yes.15
Q And so you see, of course, that Claim 6 says, "a scanning16
device," and "generating electrical signals with vary -- that17
vary," whereas Claim 1 says, "a camera" and "output video18
signals"; right?19
A Yes.20
Q And you're asking the Court to construe those two claims21
the same with respect to the scanning element; right?22
A Yes. Because the only scanning device he discloses is a23
television camera or flying spot scanner.24
Q Let's look at the '730 patent.25
HORN - CROSS0088
That's Defendant's Trial Exhibit 1106, which, Your1
Honor, we'd move into evidence.2
THE COURT: No objection, I trust, to the patent. 3
That'll be received.4
(Defendant's Exhibit No. 1106 admitted)5
BY MR. LISA:6
Q If you look at the '730 patent, sir, at Claim 7.7
THE COURT: That's column?8
MR. LISA: 66, Your Honor, at the bottom, line 64.9
BY MR. LISA:10
Q See there that it says, "An automatic scanning system11
comprising"?12
A Yes.13
Q Then it says, "a conveyor for handling a plurality of14
articles to be inspected."15
By the way, you notice that language such as that, "a16
conveyor for handling a plurality of articles to be17
inspected," does not appear in many of the asserted claims,18
does it, sir?19
A That's right.20
Q And you would agree that the Court should not read that21
kind of a limitation into all the claims; right?22
A I don't follow.23
Q Well, do you agree that certainly the claims shouldn't be24
limited to only systems or methods in which a conveyor is25
HORN - CROSS0089
used? Right?1
A That's correct.2
Q Yet that's what Mr. Lemelson shows in Figure 13 and3
Figure 16; right?4
A He shows conveyors in Figure 13 and Figure 16.5
Q But it's okay for that limitation not to appear in all6
the claims; right? In your claim construction you don't7
impose a conveyor limitation on all the claims; right?8
A Right.9
Q Okay. Now, clause (b) says, "an electro-optical scanning10
means disposed adjacent said conveyor for scanning a field11
through which individual articles move as carried by said12
conveyor." Do you see that?13
A Yes.14
Q All right. Now, you would certainly require that that15
scanning device be a standard conventional television scanning16
device; right?17
A That's correct.18
Q Well, let's look at Claim 8, which depends on Claim 7. 19
What does Mr. Lemelson say there about what the electro-20
optical scanning means includes?21
A Well --22
Q Well, let's just first answer the question. What does it23
say?24
A I was about to read it. "Said electro-optical scanning25
HORN - CROSS0090
means includes an X-ray beam scanning device."1
Q All right. That's not a standard television camera, is2
it, sir?3
A And it's also not a device that exists.4
Q Well, sir, answer the question first. It's not a5
standard television signal -- camera, is it?6
A If it existed, it might very well produce a standard7
television camera [sic].8
Q Do you know of any standard NTSC motion picture video9
signals that are X-ray based, sir?10
A I don't know of any X-ray beam scanning device.11
Q And yet you know that Mr. Lemelson certainly includes12
whatever that is in the definition of the scanning device of13
Claim 7; right? Yes or no?14
A He does. And it's hard to interpret what that might be.15
Q So you agree, then, that for this claim it's not proper16
to limit the scanning device to only standard television;17
right?18
A No, I don't agree. What I said is that if this mythical19
device that's called an X-ray beam scanning device existed, it20
might very well produce an analog video signal like a21
television picture. In fact, you know, that was my impression22
of what it did, you deflected an X-ray beam and you produced23
some signal that responded to whatever's out there.24
Q That's a standard 3 to 4 megahertz high-bandwidth25
HORN - CROSS0091
television signal, sir?1
A For it to work in his invention it would have to be set2
up that way.3
Q Sir, you know of no such device, do you?4
A Well, there is no X-ray beam scanning device. But for it5
to work with the rest of his circuitry, it would have to6
produce a standard analog video output.7
Q Because you construe every device to be that way; right?8
A Because the only support in the specification is for9
signals of that type.10
Q By the way, let's look at Claim 9 while you're at it. 11
That's at column 67. That claims says, "Said electro-optical12
scanning means includes a beam scanning device operative to13
scan while an article is in motion along said conveying means14
and in its scanning field." Do you see that?15
A Yes, I see that.16
Q That's another thing you say that's not possible in the17
Lemelson spec, right?18
A Yes, and I'm -- I was very surprised by that claim19
because the whole moving object issue was put to rest by the20
Patent Office during the prosecution history.21
Q While we're on the '730 patent let's look at Claim 11.22
A Sorry?23
Q Claim 11, clause (a). Do you see there he actually does24
say "First means for scanning a standard image field and25
HORN - CROSS0092
generating a first video signal of said scanning which varies1
in accordance with variations in said image field." Do you2
see that?3
A Yes.4
Q Now in your view that would include a composite signal if5
it was in fact a standard NTSC scanning signal; right?6
A I'm not sure where you're going with that. I would say7
this was a signal produced by a television camera or flying8
spot scanner --9
Q Is that a --10
A -- and it would be an analog video signal.11
Q -- is that a -- is that -- in your view, is that a12
composite signal, sir?13
A That most likely is a composite video -- excuse me, a14
composite signal, although at the level of detail he provides15
you can't tell whether it has all the sync signals in it or16
not.17
Q All right.18
A I believe he actually somewhere mentions that19
possibility.20
Q Well, you certainly see that in Dependent Claim 12 he21
further defines the video signal as a composite signal,22
including framed vertical sync pulses; do you see that?23
A Yes.24
Q So there he undertakes to further define the video signal25
HORN - CROSS0093
to make it clear that it's a composite signal; right?1
A Which is consistent with what I said that the signal in2
11 could be the signal from a TV camera before you've added3
the composite sync pulses to it.4
Q Let's look at the '073 patent.5
A Sorry, which one?6
Q '073, Defendant's Exhibit 112.7
THE COURT: All right. That will be received, Ms.8
Clerk.9
(Defendant's Exhibit No. 112 admitted)10
BY MR. LISA: 11
Q Let's go to '073, Claim 7, which you'll recognize as an12
asserted claim.13
MR. JENNER: Asserted patent?14
MR. LISA: '073?15
MR. JENNER: Yeah, asserted patent. You said16
asserted claim.17
MR. LISA: Oh, I'm sorry. Asserted patent. Thank18
you.19
BY MR. LISA: 20
Q '073, Claim 7. And there you'll see that Mr. Lemelson21
recites a method for inspecting an image field to determine if22
a select image phenomenon is present in said image field23
comprising and now the scanning element is scanning an image24
field containing at least one optically contrasting image25
HORN - CROSS0094
portion which is detectable with an electro-optical scanning1
means. Do you see that?2
A Mm-hmm.3
Q And while we're on that subject, you recall in your4
expert report that you gave testimony or said in presented5
opinions that you felt or believed that many of Mr. Lemelson's6
claims were what you characterized as means for step-plus-7
function claims? Do you remember addressing that in your8
expert report?9
A Yes. That was a long time ago but I do remember that.10
Q All right. And just to be clear you did not offer a11
single opinion on direct examination regarding whether any of12
Mr. Lemelson's claims fell within Section 112, paragraph 6,13
the means-plus-function or steps-plus-function requirements of14
the statute, right?15
A That's correct. I did not give any evidence in direct16
examination.17
Q Now, if you look at '073, Claim 7, there is nothing in18
there regarding whether or not this is a camera or a19
television camera on the scanning element; right, sir?20
A Let me just check. Yes, it does not mention a camera.21
Q And if you look at Claim 10, which is not asserted, do22
you see that there's a method for inspecting an image field to23
determine if a select image phenomenon is present in said24
image field and there the scanning, it says at the bottom of25
HORN - CROSS0095
the paragraph, "wherein said scanning means includes a1
camera." Do you see that?2
A Yes, I see that.3
Q "And means for effecting controlled relative movement4
between said camera and said image phenomenon in a field which5
is greater in area than the scanning field of said camera." 6
Do you see that?7
A Yes.8
Q All right. So there's a situation where Mr. Lemelson9
added limitations to further define the electro-optical10
scanning means as a camera and means for effecting relative11
movement; right?12
A Yes, as well as changing some of the other claim13
elements.14
Q But in this claim he elected to call it a camera, right?15
A In element (a).16
Q Right. And that claim's not asserted, is it?17
A I don't believe so.18
Q Let's look at the '038 patent which is Defendant's Trial19
Exhibit 110 which we'd move into evidence, Your Honor. If20
you'll turn to column 67 you will find '038 patent, Claim 10,21
which hopefully you'll recognize as one of the asserted22
claims?23
A Okay.24
Q I'm sorry, it's not asserted. I'm sorry. And if you25
HORN - CROSS0096
look at Claim 10 the -- recites a method for scanning and1
generating image information, "said method comprising2
generating a radiation beam and then controllably moving said3
beam to cause said beam to scan an image field." Do you see4
that?5
A Yes.6
Q In your view that would require that it be a standard7
television camera; right, sir?8
A Yes, the radiation beam would be the electron beam in the9
camera.10
Q And are those beams -- does that -- does it -- in a11
standard television do the beams trace out parallel lines on12
the face of the CRT?13
A Yes.14
Q All right. Well, let's look at Claim 12. "A method in15
accordance with Claim 10 wherein said radiation beam is16
controllably moved to scan a plurality of paths which are17
angulated with respect to each other." Do you see that?18
A Yes.19
Q That would exclude a conventional television camera,20
wouldn't it, sir?21
A It would be a camera that had some modification in the22
deflection circuits that's not supported by the common23
specification.24
Q So it's claiming something that you say is not there;25
HORN - CROSS0097
right?1
A That's right. I guess the notion would be that a person2
of ordinary skill in the art would somehow figure out how to3
do that, but --4
Q So in your view a person skilled in the art would know5
how to take a conventional television camera and make it scan6
at a plurality of angles; right?7
A No, I wouldn't agree that a person of ordinary skill in8
the art could do that. I'm saying that who wrote this claim9
might have had that notion.10
Q You certainly agree that this claim is absolutely11
inconsistent with your claim construction that requires a12
standard television picture signal; right, sir?13
A It's inconsistent with what's in the common14
specification.15
Q By the way, if you look at Claim 18 you'll see that that16
depends on Claim 10 as well?17
A Yes.18
Q See that it says there that the plurality of paths are19
parallel with respect to each other?20
A So that describes the raster scan.21
Q Right. But the other claim doesn't?22
A Yes, and where in the specifications is it explained how23
to do that?24
Q So what you see, sir, is that Mr. Lemelson presented a25
HORN - CROSS0098
number of different claims describing and scanning elements in1
a number of different ways, right?2
A Sorry. He presented --3
Q A number of different scanning elements in a number of4
different ways in the claims that he presented to the Patent5
Office; right?6
A Okay. The claims element. Yes.7
Q And the Patent Office decided to allow those claims,8
right?9
A Yes.10
Q And in fact you know it took Mr. Lemelson a lot of years11
to get those claims out; right?12
A Well, I gather so, yes.13
Q Well, it was one of the reasons why you thought what he14
said -- what he did was unfair is 'cause it took so long for15
him to get 'em; right?16
MR. JENNER: Objection, Your Honor. There's no17
foundation, there's no evidence as to how long it took to get18
any particular claim out and especially the ones in this19
patent. There's no evidence about that.20
THE COURT: Sustained.21
MR. LISA: All right. 22
BY MR. LISA: 23
Q Sir, you're asking the Court to ignore the differences24
that we just pointed out in these claims, aren't you?25
HORN - CROSS0099
A What I'm saying is that they're --1
Q Let's first get an answer to my question. Are you asking2
the Court to ignore the differences that we just spent the3
last hour and a half going over with respect to the scanning4
element?5
A I'm not asking that to be ignored. I'm unable to explain6
some of the inconsistencies between what's in some of the more7
obscure claims that we see here, such as the one about X-ray8
scanners and what's actually disclosed in the common9
specification.10
Q Now is that an answer that your counsel told you to give11
during the break when they were talking to you outside in the12
hallway, sir?13
A Not at all, and I resent the implication.14
Q All right.15
A I can tell you exactly what I was told. One was that16
you're going -- you're doing okay, hang in there, and the17
other one was something about the glass structure on top of18
the entrance we were conjecturing whether it was similar to a19
geodesic dome.20
Q And last night did you talk about similarly esoteric21
issues, or did you talk about the claims and the patents?22
A Last night we talked about the three prior art patents23
that you brought to my attention that I hadn't seen for over a24
year.25
HORN - CROSS00100
Q And again this morning you did as well, right?1
A We -- well, I explained earlier what we talked about.2
Q Now, sir, you of course recognize that I could, over the3
next several hours address each and every one of these topics4
put forth in your chart and roll out claim after claim, and5
dependent claims, that shows that there are very clear6
differences among the 600-some claims that issued in Mr.7
Lemelson's patents; right?8
A I don't know whether you can do that.9
Q Well, you know that he used, in your words, many10
different words to describe the analyzing elements; right?11
A That's correct.12
Q And do you also know that he has some claims that are13
very specifically addressed to gating, which you say must be14
in every claim element, right, every claim -- every claim must15
be limited to gating; right?16
A Yes.17
Q All right. And you know we looked yesterday at the '37918
patent, the patent from the 1956 application, and that had19
claims in it describing gating, didn't it?20
A Yes. When we looked at those claims we noted that at21
that time the claim language was very carefully detailed,22
laying out in each element exactly what is to be done, which23
is in stark contrast to the claims that we've studied later24
where the claims are very short and very general, and you had25
HORN - CROSS00101
to resort to the common specification to interpret them. You1
couldn't simply read the claim and really know what's going2
on.3
Q So you didn't have to read -- you don't have to read4
narrow claims in light of the specification then, only the5
broad ones, right?6
A No, that's not what I said. You have to read all claims7
in terms of the common specification, but the earlier claims8
are much easier to understand on first reading because all of9
the details are laid right out there.10
Q Now is that something you discussed last night with11
counsel?12
A No.13
Q Didn't discuss the claims of the '379 patent with14
counsel?15
A Let me first answer that other part. In fact, I brought16
that up in a way yesterday when you were talking to me.17
Q What I asked first was whether you addressed that issue18
with counsel last night, the claims of the '379 patent?19
A The claims of the '379 patent? I don't recollect,20
but --21
Q How about this morning?22
A Certainly the opinion I just gave you was not something23
that I got from counsel --24
Q You don't recall?25
HORN - CROSS00102
A -- because yesterday I was about to address that with you1
when you cut me off.2
Q Okay. So I think the words you used were the later3
claims are in stark contrast to the earlier claims, right?4
A Yes.5
Q So what you're -- what you're asking the Court to do is6
to take these stark contrasting claims and construe them all7
to include a gating limitation; right?8
A Yes.9
Q And you're asking him to read in that gating limitation10
from the common specification, right?11
A And the supporting figures --12
Q All right. And --13
A -- excuse me, and the prosecution history.14
Q And you certainly recognized that not a single claim15
asserted in this case includes expressly any gating16
limitation; right?17
A I don't recollect, but I wouldn't be surprised which goes18
to the point I was making.19
Q In fact, sir, you limit -- or ask the Court to read into20
every claim a requirement that the analyzing step perform a21
comparison between a test image and a reference image; right?22
A Yes.23
Q And yet you know that there are numerous figures in the24
patent and numerous embodiments in the patent that don't show25
HORN - CROSS00103
any such comparison at all; right?1
A Sorry, let me just go back over my claim interpretation2
for the analyzing term.3
Q The analog -- would you state on Exhibit 3429 under4
analyzing, is the analog video signals derived from scanning a5
standard object and a test object?6
A Yes.7
Q And so you have imposed on this limitation a requirement8
that analyzing require scanning a standard object and then a9
test object and recording, in synchrony on separate tracks,10
preselected lengths of the test and the standard signals;11
right?12
A And you've conveniently cut if off where it says, "and/or13
gating signals." The notion is that there are two kinds of14
analyzing, one involving a point-by-point comparison with a15
standard video signal on another track, the other involving16
checking for inflections in a gating area on another track17
derived from a standard object. In other words, telling you18
where the inflections would be in the standard object.19
Q Now you realize in your expert -- we're going to go back20
to that in a second. You realize in your expert reports you21
took the position that the only thing described was comparison22
to a test and reference image signal; right?23
A If you take comparison to include the point-by-point24
comparison and the test for whether one signal has an25
HORN - CROSS00104
inflection where the other one has, then that would be1
correct.2
Q And in fact, just to be clear for the record, if we turn3
to your Exhibit 17A and look at, for example, Figure 4,4
there's certainly no standard picture signal recorded there;5
is there, sir?6
A That's correct. The gating signals on tracks C3, C4, C57
are derived from a standard signal and they indicate where the8
standard signal is expected to have inflections. So this is9
the second case I describe.10
Q But there's certainly no test signal stored in synchrony11
with the -- I'm sorry, strike that. There's certainly no12
standard image signal stored for comparison to the test image13
signal; right, sir?14
A In this case the video signal stored on the tape is the15
test signal. The standard signal is only used to create the16
gating regions that I describe.17
Q All right. Of course you recognize there are numerous18
gating signals there of different lengths and widths, do you19
see that? Different lengths, I mean.20
A Yes.21
Q Okay. 22
A And they're used to deal with different departures from23
the correct position.24
Q So this in a -- this particular embodiment has on one25
HORN - CROSS00105
track a very wide gating signal, that's track C3; do you see1
that?2
A Yes.3
Q And then above that is a slightly narrower gating region;4
right?5
A Yes.6
Q And then above that yet a further narrower region; right?7
A Yes.8
Q And what that enables is for what you said various9
differences in the positioning of the object; right?10
A No, it's for dealing with manufacturer variations so that11
the various outputs on the right, I2, I2, 3, I4, I5, I6, et12
cetera can be used to classify, if you like, products that13
were manufactured better or worse, so.14
Q Now let's investigate that a second. By manufacturing15
tolerances you mean differences in the size of an object16
that's being made, for example?17
A Manufacturing variations.18
Q What does that mean, sir?19
A That it's not identical to the standard object.20
Q All right. And I take it then that it's your opinion21
that these gating signals get set in accordance with the22
manufacturing tolerances that are at issue on a particular23
assembly line, for example?24
A Well, they'd be set based on some standard object that25
HORN - CROSS00106
was the desired manufactured result.1
Q How would that -- I mean, how would that be determined?2
A Well, presumably the manufacturer has a description or a3
drawing of the product he's trying to make, so the -- its4
shape and size would be known.5
Q So that the manner in which you configure the gating6
signals in this particular Figure 4 depend on, for example,7
what's being manufactured; right?8
A Yes, the placement, for example, of these P1 -- I can't9
quite read them on this copy, P1 through P4, would depend on10
where an inspection is expected based on the particular object11
that's being manufactured.12
Q So is it your testimony then that in order to properly13
configure the system as shown in Figure 4 you have to have14
some knowledge of the manufacturing process that's -- of the15
object being manufactured?16
A The gating signals are based on the -- of an image of the17
standard object.18
Q The question, sir, I asked for a yes or no answer. Is it19
your testimony that in order to configure the gating signals20
in Figure 4 you have to have knowledge of the manufacturing21
process?22
A No, you need to have some way of putting gating signals23
on the magnetic tape.24
Q Well, how do you know what they are if you don't know25
HORN - CROSS00107
what is being manufactured and what the tolerances are?1
A Well, you were saying that you have to know something2
about the manufacturing process. I'm talking about knowing3
about the object. In other words, there's an engineering4
drawing for that object and there's a prepositioning device5
that places it in a certain position and that's what's going6
to tell you where the inflections are inspected or not7
expected -- not --8
Q So you're saying that while you -- while they define9
manufacturing tolerances, you don't have to know what's being10
manufactured or what the tolerances are?11
A Sorry, say that again?12
Q All right. The person who's asked to configure the13
system of Figure 4 must know what the manufacturing tolerances14
are, in your view, right?15
A Okay. So now you're talking about the width of these16
gating signals?17
Q Yes, sir.18
A The intent, I believe, is that you will produce a signal19
that indicates a certain deviation from normal manufacturing20
conditions.21
Q The intent is that this system, in your view then, be22
used in a manufacturing process; right?23
A In my view this is producing some --24
Q Sir, let's --25
HORN - CROSS00108
A -- output. 1
Q Let me ask --2
A I'm not -- I'm not saying that it's necessarily used in a3
manufacturing process as --4
Q Then why -- then why do you say that those signals define5
only manufacturing tolerance and not positional tolerance?6
A Because Lemelson, when talking about these signals, says7
that they're there to deal with manufacturing variations.8
Q And manufacturing variations, sir, include positional9
variations, don't they?10
A No, they don't.11
Q Cognex --12
A You bring the -- excuse me, you bring the part into a13
prepositioned alignment in front of the camera and it might be14
slightly smaller or larger than you've designed, but it's15
still prepositioned and aligned. There's no allowance for the16
-- for departure from its correct position.17
Q Sir, you know Cognex's own literature says that you draw18
a region of interest in which to inspect for alignment marks19
to allow for positional variation in the manner in which an20
inspected object is placed in front of the camera; right?21
A No, I don't know that, and the use of the region of22
interest is completely at odds with the use of these gating23
signals here. The region of interest is used to improve the24
efficiency of a computation, and it's typically based on25
HORN - CROSS00109
previous computation. In other words, you first find the1
object, then you say, okay, now, I don't want to process the2
whole image I just want to process this region. Whereas here3
we're talking about a narrow region that defines where an4
inflection is to be found if you know already that the object5
is there. The two things are completely unrelated.6
Q All right. So, sir, in your view, if Mr. Lemelson's7
system is inspecting a bottle, such as this bottle of water8
placed on the lectern, these gating signals will allow for9
manufacturing tolerances in the widths or dimensions of the10
object and still work properly, but won't allow for the object11
to be displaced slightly left or right; is that your12
testimony?13
A Well, first of all --14
Q Yes or no, is that your testimony?15
A No, it's not. What I'm -- what I'm saying is that16
Lemelson tells you to preposition it, the -- and he tells you17
that the purpose of these zones is to allow for manufacturing18
variations. Now you want to depart from his design and say,19
let's not preposition and let's pretend that these tolerance20
zones are there to allow for small movements of the object. 21
Now you're using them for two different purposes, and if22
there's a manufacturing variation and a small shift you'll be23
outside the zone.24
Q How about if there's no manufacturing variation and a25
HORN - CROSS00110
small shift?1
A Well, there's always manufacturing variations.2
Q What if there's not, sir?3
A It goes counter to --4
Q Sir, what if --5
A -- what he tells you to do.6
MR. JENNER: Objection, Your Honor. The witness is7
now answering the question, and I request that he be permitted8
to answer.9
THE COURT: Yeah. He is. That's not a question10
that calls for yes or no.11
Go ahead.12
BY MR. LISA: 13
Q If the manufacturing tolerances are tight and the gating14
signals in Figure 4 are drawn wide, that will allow for15
variation in position won't it, sir?16
A That's not what they're designed for.17
Q Sir, the -- that called for a yes or no answer.18
A It's not -- excuse me.19
Q Want the question back again?20
A Small variations in position might cause the inflections21
to still fall within the -- within the gating signals, but22
that's not what they're for.23
Q So I think we now agree, sir, that in Figure 4 Mr.24
Lemelson does not show a standard image stored for comparison;25
HORN - CROSS00111
right?1
A He shows only gating signals derived from a standard2
image.3
Q He doesn't show a standard image signal; right, sir?4
A Yes.5
Q And you just agreed that if the manufacturing tolerances6
are tight and the gating signals are drawn large, there is7
some accommodation for what you called at least slight8
movement in position; right? Yes or no.9
A Yes. And again with the provision that that's not what10
they're there for, and if you have, in addition, manufacturing11
variations you'll then fall outside the gated regions.12
Q Now if you look at Figure 5, sir, of the patent, that's13
another one in which there's no standard image signal stored14
for comparison purposes; right?15
A There's only a gating track --16
Q Sir.17
A -- derived from a standard --18
Q Again, let's just try and focus on the question. There19
is no standard image signal stored for comparison; right?20
A That's correct.21
Q And to speed things along, in Figures 6, 7, 8, and 922
there are no standard image signals stored for comparison23
purposes; right, sir?24
A That's right. The only gating signal is based on25
HORN - CROSS00112
standard images.1
Q And you also know that at least with respect to Figures 72
and 9, Mr. Lemelson said in column 20 that you don't need to3
use the gating signals; right?4
A He says that, but of course you don't get useful results5
if you do that.6
Q So if we look at your analyzing definition that you have7
on Exhibit 3429, you certainly see that there are many figures8
and many embodiments that don't require the standard signal to9
be stored; right? Yes or no?10
A Yes. I'm just rereading this. Obviously conciseness was11
an issue here and I'm looking for the text that says that12
either a standard signal or gating signals derived from a13
standard signal are stored on the magnetic tape.14
Q All right. Well, that's in the third line; it says,15
"Test, standard and/or gating signals." 16
A Plus sync and gating signals.17
Q So you certainly agree that there are several embodiments18
that we just pointed to that don't require the storage of19
standard signals, right?20
A That don't involve directly storing the standard signals.21
Q Sir, there are several embodiments that don't require22
storage of a standard signal; right?23
A Yes.24
Q And there are several embodiments that don't require25
HORN - CROSS00113
analyzing a standard signal, right?1
A The same answer, again, that they used the gating2
signals --3
Q Let's start over. Is that a yes or no?4
A Yes. There are several figures that show instead gating5
signals derived from a standard signal.6
Q And what we know from column 20 and Figures 7 and 9 is7
that while the gating signals are stored, Mr. Lemelson says8
that you can analyze the image signal without using them;9
right? Column 20.10
A That's correct, in column 20 he makes various11
suggestions, including those, and you know what the rest of my12
answer would be.13
Q Okay. Now your definition of memory --14
THE COURT: With that, it would be a good time to15
break.16
MR. LISA: Okay. Thank you, Your Honor.17
THE COURT: We'll --18
MS. CURTIN: Your Honor, I have on my notes that19
Exhibits 110 and 112 were offered but not admitted. Could20
we --21
THE COURT: Those are two patents --22
MS. CURTIN: Yes, sir.23
THE COURT: -- that were -- those are received. 24
Those are received. All of the patents are received.25
00114
MR. LISA: Thank you, Your Honor. 1
(Defendant's Exhibit No. 110 admitted)2
THE COURT: All right. 3
MR. LISA: Do you have an indication, Your Honor, I4
know we're trying to keep time of how much time I actually5
have left? I've lost track over these few days.6
THE COURT: Well, because of the shortened day we'd7
been almost two and a half days on direct, and I'll have to8
tally it back up. How much longer do you need?9
MR. LISA: Well, one of the problems I have is we10
have a number of charts that went in by summary fashion, and I11
haven't quite figured out yet how to deal with them and I12
indicated that it might be a problem doing so. I'm -- my13
guess would be another hour and a half, couple hours, two14
hours. Which I think they had about 11 and I should be at15
about 8 1/2 or 9 right now.16
THE COURT: Well, probably close to that. I'll give17
you -- I'll give you another two hours.18
MR. LISA: Thank you, Your Honor.19
THE COURT: You can use that tomorrow if you need it20
and --21
MR. LISA: I'll try and shorten it up if I can.22
THE COURT: Great. All right. Thank you, everyone.23
(Court recessed at 4:04 p.m. until the following day,24
December 11, 2002, at 8:30 a.m.)25
00115
WITNESS INDEX AND EXHIBIT LIST
WITNESS INDEX
PLAINTIFF'S WITNESSES: PAGE
DR. BERTHOLD HORNCross-Examination by Mr. Lisa 11
EXHIBIT LIST
PLAINTIFF'S EXHIBIT NO. ADMITTED
110 Patent 115112 Patent '073 951105 Lemelson '061 Patent 791106 Lemelson '730 Patent 90
00116
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
L. Lizar/F. Hoyt/K. McCrea 12/11/02 TRANSCRIBER DATE