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 17, 2002 . . . . . . . . . . . . . . . 1:07 p.m.And related cases and parties

COURT TRIAL - DAY 15

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.WILLIAM McCABE, 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 1:07 P.M.1

THE COURT: Have a seat everybody. 2

All right. We can have our witness step back up if3

he's -- oh.4

MS. CURTIN: Good morning, Your Honor. Just a5

couple of things. We apologize, but we neglected to move some6

exhibits in on the recross of Dr. Horn, and I'd like to take7

care of that --8

THE COURT: Okay. 9

MS. CURTIN: -- right now if we could.10

THE COURT: Go ahead.11

MS. CURTIN: The exhibits that we would like to move12

in are 11 -- Defendant's 1102, which is the Lemelson '24713

patent, Defendant's 1122, which is the Lemelson '109 patent,14

Defendant's 2186, which is the Lemelson '833 patent, and15

Defendant's 2188, which is the '481 Lemelson patent. Those16

are the ones that I think are not really controversial.17

THE COURT: Is there any objection to those patents?18

MR. JENNER: Having just heard this, I don't think19

so. If they're all Lemelson patents, I would imagine we'll20

have no objection to it.21

THE COURT: All right. We'll receive those subject22

to --23

MS. CURTIN: Okay. 24

THE COURT: -- striking them if there's any basis to25

004

strike them.1

(Defendant's Exhibit Nos. 1102, 1122, 2186 and 2188 admitted)2

MS. CURTIN: There are -- there are couple of more3

controversial ones that Your Honor had reserved during the4

cross-examination of Dr. Horn, and I don't know if you want to5

take those up now or save those for another time.6

THE COURT: Well, I'm reluctant to take time out of7

the witness that we've got here to consider those. I can go8

back through my notes, but why don't we move forward with --9

MR. JENNER: Might I ask Your Honor that counsel10

just get us an e-mail over the evening and let us know what11

those are so we could look at them.12

MS. CURTIN: Absolutely.13

THE COURT: That's great.14

MR. JENNER: Maybe we have no objection, maybe we15

do. Are those the ones that we objected to?16

MS. CURTIN: Yeah, it's the Design News and the17

Inventors at Work and --18

MR. JENNER: Oh, all right. We will maintain our19

objection to those.20

MS. CURTIN: -- the prepositioning charts. 21

THE COURT: Okay. 22

MS. CURTIN: So, we'll address those at a later23

date.24

THE COURT: All right. All right. Thank you, Ms.25

005

Curtin.1

MR. JENNER: Your Honor, on the subject of one quick2

item --3

THE COURT: Yeah.4

MR. JENNER: -- I understand that some of our people5

went over to inspect some exhibits last night. There are6

things that apparently are listed on defendant's exhibit list7

as available for inspection, although it turns out that8

virtually all of them are documents. And they were told that9

we would not be given copies of these documents now. I don't10

understand why. If they're all documents, it seems to me we11

were entitled to have them as documents a long time ago, and I12

would request that we be given copies of the documentary13

exhibits.14

MS. CURTIN: Your Honor, these are almost all books;15

documents is a nice word, but they're books. They're big16

books. The reason why they were for inspection was because17

they have been given the excerpts that are relevant months18

ago; they were allowed to come and inspect the books. Most of19

these they've known of since expert reports were done last20

December. They choose to look at them now. The fact of the21

matter is we are using them as we work with our experts right22

now, and we will copy them as quickly as we can when they are23

not otherwise being used.24

THE COURT: All right. 25

006

MR. JENNER: None of the ones that I've been told1

about, I understand, are books at all. They're -- a lot of2

them are letters --3

THE RECORDER: Excuse me, Mr. Jenner. Can I get4

just have you come --5

MR. JENNER: I'm sorry.6

The ones that I've been told about, a number of them7

are letters, a couple of them are extracts from a Cognex8

website where we can't tell because the website changes what9

they are. There are some photographs. There's an10

instructional manual from a third party semiconductor company,11

apparently. None of those are the books that I understand12

counsel to be talking about.13

THE COURT: Ms. Curtin, are you aware of what --14

MS. CURTIN: I'm --15

THE COURT: -- Mr. Jenner is --16

MS. CURTIN: I'm not aware of those particular17

documents, and I'm sure they were told as they were instructed18

to be told last night that those materials would be copied as19

quickly as we could without interrupting what we were20

otherwise doing. 21

THE COURT: All right. Give me an idea as to --22

MS. CURTIN: But we are intending --23

THE COURT: Obviously, I understand the textbook,24

you're not photocopying while you're preparing a witness, but25

007

the letters that are referred to and so forth.1

MS. CURTIN: If they were available for them to2

inspect last night, I should expect that they would be copied3

by -- in the next couple of days, but I will have to talk to4

our paralegal about that. I had not heard about that 'til5

just now.6

THE COURT: Well, why don't you all maybe, Mr.7

Serra, or whoever is handling that, can get together with you8

and identify what it is we're talking about and -- so you can9

get -- you know, tomorrow morning we won't be in Court, so,10

you can, perhaps, copy 'em then.11

MS. CURTIN: That sounds fine, Your Honor.12

MR. JENNER: Okay. Thank you.13

THE COURT: All right. Tonight or tomorrow morning.14

All right. Mr. McCabe -- oh. Mr. McCabe why don't15

you come on up and continue with Dr. Allais then.16

MR. McCABE: Thank you, Your Honor.17

Before I start, Ms. Andrews identified five exhibits18

that I referred to yesterday that I did not move into19

evidence, and I'd like to move those into evidence now.20

THE COURT: All right. 21

MR. McCABE: I talked to Mr. Hosier about them and I22

understand he has no objection, so, let me just read off --23

THE COURT: All right. 24

MR. McCABE: -- the exhibits.25

008

THE COURT: Just give us the numbers then.1

MR. McCABE: Right. These are all plaintiff2

exhibits, 3523, 3525, 3527, 3526 and 3327.3

THE COURT: All right. Then there being no4

objection, we'll continue -- or we'll receive those then.5

(Plaintiff's Exhibit Nos. 3523, 3525, 3526 and 3327 admitted)6

MR. McCABE: Okay. 7

THE COURT: All right. You may proceed.8

MR. McCABE: Thank you, Your Honor.9

MR. McCABE: I've put up on the screen Plaintiff's10

Exhibit 3525 which was Dr. Allais' summary chart, and where we11

got to yesterday, just to bring us back up to speed, is we12

went through the first two columns, "scanning" and13

"analyzing," and now I'd like to turn to "computer analyzing"14

and "computer processing."15

THE COURT: And that number, again, was 35?16

MR. McCABE: 3525.17

THE COURT: 3525.18

MR. McCABE: Right.19

THE COURT: Thank you.20

MR. McCABE: So, first I'd like to ask Dr. -- for21

Dr. Allais' convenience, I pulled out a few exhibits from his22

exhibit book just so he would have them handy.23

/24

//25

ALLAIS - DIRECT009

DIRECT EXAMINATION (Continued)1

BY MR. McCABE: 2

Q Dr. Allais, could you turn to Plaintiff's Exhibit 3429,3

which is just Dr. Horn's summary chart?4

A Yes.5

Q Okay. Do you understand that Dr. Horn has interpreted6

the terms "computer analyzing" and "computer processing" to be7

limited to specific circuits and things like that in the8

Lemelson patents, specifically situations where location codes9

are assigned to incremental lengths of the video signal,10

either a binary subtraction circuit which subtracts one code11

from another based on the analysis of the video signal to12

indicate the distance between the two codes or a code-matching13

circuit which is used to find a code on a magnetic recording14

medium?15

A Yes, I understand that.16

Q Okay. Do the Symbol scanners utilize any of those17

particular circuits or processes that I just identified?18

A No, they do not.19

Q Okay. If the Court interprets the term "computer20

analyzing" or "computer processing" as Dr. Horn construes that21

-- those terms, do those terms read on the use of the accused22

Symbol scanners?23

A They will not.24

Q Okay. Could you identify in Exhibit 3526 where those25

ALLAIS - DIRECT0010

terms are found?1

A Yes. This exhibits shows the eight independent patents2

that we're dealing with here and, for example, in the '0383

patent, Claim 4, computer analyzing is highlighted in yellow 4

-- excuse me, green, as it also is on the '190, Claim 6, and5

the '205, Claim 1, and the 753106, the '421, Claim 3.6

Q Thank you. Okay. Going back to your summary chart, the7

next column that you had there was "variations," and I'd like8

to address that term now. Do you understand that Dr. Horn9

equates the term "variations" to a number of other phrases,10

and if you look at Exhibit 3463, which was one of Dr. Horn's11

summary charts that I pulled out -- do you have that?12

A Yes, I have that.13

Q Okay. Do you understand that Dr. Horn equates the term 14

-- his definition of "variations" to cover the terms15

"predetermined variations," "variably optically scannable16

information," and the other terms that are shown on Exhibit17

3463?18

A Yes, I do.19

Q Okay. Do you understand that Dr. Horn construes the20

terms "variations" to mean differences in brightness resulting21

from structural characteristics of an object that marks a22

change in brightness, for example, from light to dark?23

A Yes, he does that.24

Q Do you understand that Dr. Horn's claim construction of25

ALLAIS - DIRECT0011

variation does not include bar code symbols?1

A Yes, he has made that statement, and I understand that.2

Q Okay. Would you identify which of the asserted claims3

includes the term "variations" as Dr. Horn construes that4

term?5

A Well, that would be all eight of the independent claims6

check marked on Exhibit 3525.7

Q Okay. If the Court construes the term "variations" in8

the manner that Dr. Horn advocates, does that term read on any9

of the accused Symbol scanners?10

A No, it does not.11

Q I'd like to turn specifically to Claim 14 of the '91812

patent for a minute, and that's in Exhibit 3526 where you've13

highlighted it. Do you have that, sir?14

A Yes.15

Q Okay. Do you see that it refers to predetermined16

variations?17

A Yes, I do.18

Q Is there anything predetermined about the changes in19

brightness from light to dark within a bar code?20

A Absolutely not.21

Q Can you give us an example to illustrate the lack of22

predetermined variations in a bar code?23

A Well, I believe we have -- one of the exhibits is kind of24

illustrative of that. One example would be if a bar code is25

ALLAIS - DIRECT0012

quite far for the scanner, you get an extremely small signal,1

if it's close to the scanner, you get a much larger signal,2

and I think we have an exhibit to that effect.3

Q Let me turn to a still from Exhibit 3524, and it's marked4

as 3524C. Could you tell us what's shown in that exhibit? 5

It's on the screen if that helps you. Dr. Allais, I put --6

A Oh, it's on the screen. Okay. 7

Q It's on the screen.8

A Yes.9

Q Could you explain what's shown in that graphic or that10

still?11

A Oh, okay. The yellow signal at the top is the analog12

signal out of the photodiode which is, you know, the image13

that we have of the -- of the optical scene being scanned, and14

you can see that's a very, very faint signal. In fact, you15

can hardly tell the bar code part from the background.16

Q Okay. Let me go to the next still in that exhibit, and17

could you tell us what that shows, sir?18

A Yes. That shows the scanner up close to the bar code.19

Again, the yellow signal at the top is the analog signal, and20

here you see a very high amplitude signal with a lot of return21

light to the scanner, so, between these two, there's22

absolutely nothing predetermined about that signal.23

Q Okay. And just so the record is clear, is it your24

understanding that it's the same bar code in both examples25

ALLAIS - DIRECT0013

there?1

A The bar code is the -- yes. It's the portion in the2

middle of this one, and on the prior one it was the one that3

was a little bit darker than the rest of it.4

Q Okay. 5

MR. HOSIER: What's this exhibit?6

MR. McCABE: I've just been corrected, it's not 34 7

-- 3524C, it's 3254C. I apologize for mixing up the digits.8

BY MR. McCABE: 9

Q Does the use of the accused Symbol scanners meet the10

predetermined variations limitation of Claim 14?11

A It does not.12

Q Okay, I'd like to turn to the last column in your chart13

which is "memory"?14

A Yes.15

Q Okay. Do you understand that Dr. Horn construes the term16

"memory" as used in the Lemelson patents to mean a linear17

magnetic tape, magnetic drum or magnetic disk memory?18

A Yes.19

Q Okay. Could you point out where in the claims the term20

"memory" is found?21

A Yes. Memory is found in the '029 patent, in the '07322

patent, in the '205, in the '753, and in the '421.23

Q Okay. And you've highlighted those -- that term?24

A Yes. Whichever exhibit we had, those are highlighted in25

ALLAIS - DIRECT0014

what looks like pink.1

Q Okay. That --2

THE COURT: 3526, I think?3

MR. McCABE: Yes, Your Honor. 3526.4

BY MR. McCABE: 5

Q Do any of the accused Symbol scanners store data in any6

of the magnetic media that I just identified, namely, magnetic7

tape, magnetic drum, or magnetic disk memory?8

A No. They strictly use electronic memory.9

Q Okay. In your opinion, if the Court interprets the term10

"memory" in the same manner as Dr. Horn does, does that term11

read on the use of the accused Symbol scanners?12

A It does not.13

Q Okay. Now I'd like to turn from Dr. Horn's constructions14

to the partnership's constructions of the terms and march15

through the terms in a similar -- or the claims in a similar16

fashion?17

A Very good.18

Q Okay. And by the partnership's constructions, I'm19

referring to the exhibit that was attached to, I believe it20

was Dr. Williamson's December 2001 expert report. Dr. Allais,21

have you reviewed the Lemelson Partnership's claim22

constructions?23

A Yes, I have.24

Q Have you reviewed the Lemelson Partnership's infringement25

ALLAIS - DIRECT0015

analysis as applied to the Symbol scanners?1

A Yes, I have done --2

Q Okay. 3

A -- done that, too.4

Q Have you formed an opinion as to whether the asserted5

Lemelson claims read on the use of the accused Symbol bar code6

scanners when the claims are interpreted using the Lemelson7

Partnership's claim constructions?8

A Yes, I have.9

Q What is your opinion?10

A My opinion is that the Symbol accused products do not11

infringe under the partnership's claim instruction -- claim12

construction.13

Q Why is that?14

A Well that is because for every claim, at least one claim15

element does not read on the use of the Symbol scanners.16

Q Okay. Before we get to the details of the claims, have17

you prepared a graphic to aid your testimony?18

A Yes, I have.19

MR. McCABE: I've put Exhibit 3528 up on the screen,20

and I'll ask Mr. Serra to just bring up a poster of that so21

that Dr. Allais can point out some things on the poster.22

THE COURT: What's that number again?23

MR. McCABE: 3528 is what I have.24

THE COURT: 3528? Thank you.25

ALLAIS - DIRECT0016

(Off-record colloquy re graphic display)1

BY MR. McCABE: 2

Q Okay. Could you explain your graphic to the Court,3

please?4

A Yes. What I've illustrated here is each of the principal5

signals or data in the Symbol scanner as explained earlier by6

Mr. Schuessler. I've eliminated some of the minor things like7

amplification and filtering, and simply put the major signals8

and data on the cart.9

Q Okay. At the left, you show a jar of hand cleaner?10

A Well, that would be --11

Q What does that signify?12

A -- that would be this.13

Q Okay. That's our old friend from the beginning of this14

trial. Could you walk us through the different steps that you15

have there and then explain the significance of the arrows?16

A Yes. The steps proceding from -- and, in fact, the flow17

of signals is from left to right in the chart. Immediately to18

the right of the hand cleaner is the analog signal out of the19

photodiode, or its amplified equivalent. 20

Moving further to the right is the differentiated signal21

which is used to identify the points of maximum slope between22

the dark and light areas and light and dark areas. Moving23

further to the right is the digital bar pattern, sometimes24

abbreviated DBP, where the peaks in the differentiated signal25

ALLAIS - DIRECT0017

determine the transitions from light to dark.1

Continuing on is the clock counts that represent each2

segment of light and darkness, and, finally, at the extreme3

right is the decoded data which, in fact, was the data encoded4

in the bar code on the hand cleaner.5

Q Okay. What exhibit is the hand cleaner there? Just --6

could you just tell us the number so the record is clear?7

A Okay. Exhibit PTX-3255I.8

Q Okay. You finished up with the decoded data. Now could9

you tell us what the arrows immediately before the decoded10

data signify?11

A Well, the arrow pointing to the left shows that the clock12

counts when subject to the decoding algorithms hopefully13

result in the data, that perhaps they result in nothing if the14

decoder fails to decode, but --15

Q Okay. Let me -- let me just stop you there for a second. 16

You said the arrow pointing to the left. From my standpoint,17

it looks like the arrow pointing to the right?18

A You're right.19

Q Okay. 20

A Thank you for correcting that. The arrow pointing to the21

right shows that the clock counts can become decoded data. 22

The crossed-out arrow pointing to the left signifies that from23

the decoded data you cannot go back and reconstruct the clock24

counts.25

ALLAIS - DIRECT0018

Q Okay. And is that why there's a red X through the return1

arrow?2

A That's why there's a red X through the arrow.3

Q Does that signify it's kind of a one-way street?4

A It is.5

Q Okay. Now, moving from let's say the digital bar pattern6

to the clock count, you have a different type of arrow shown7

there. Could you explain that?8

A Well, while you can't go back precisely from the -- from9

the clock counts to the digital bar pattern, subject to10

rounding error and quantizing error in the clocking, you could11

recreate a reasonable facsimile of the digital bar pattern. 12

So I simply treat that as an approximately two-way process.13

Q Okay. And would that be true also for the step between14

differentiated signal and the digital bar pattern?15

A Yes. You would lose some amplitude information, but you16

could find the major peaks going backwards from the digital17

bar pattern.18

Q Okay. And how about from the analog signal to the19

differentiated signal?20

A Well, the differentiated signal, you have really lost all21

of the amplitude information of the analog signal which cannot22

be reconstructed from that differentiated signal.23

Q Okay. How about from the hand cleaner to the analog24

signal?25

ALLAIS - DIRECT0019

A Well, again, from the hand cleaner -- for the analog1

signal, you know nothing about the size, contrast, you know,2

you don't know very much about it except that that's the3

signal that the photodiode got.4

Q Okay. 5

A So you can't go back to the -- to the bar code from6

there.7

Q Okay. I'd like to just return to have you explain in a8

little more detail why it is you cannot go from the decoded9

data to the clock counts?10

A Well, in broad terms, from the decoded data, you would11

have no idea what those individual counts are, and even if you12

just wanted to have a facsimile of the counts, the decoded13

data doesn't even tell you what bar code symbology you had, so14

you know nothing about it.15

Q Okay. Now, when the bar code is scanned, if the position16

of the bar code relative to the scanner changes, does that17

have any effect on the counts?18

A Oh, yes. If -- at a long distance with the same bar19

code, you'll have very low number of counts; when you're up20

close, of course, it's just like if I were standing right next21

to you, you'd look large, and so -- and so you get large22

counts.23

Q Okay. Does changing the position of the bar code scanner24

relative to the bar code symbol change the decoded data?25

ALLAIS - DIRECT0020

A No. As long as it decodes, it's exactly the same.1

Q So, you could get different sets of counts, but same2

decoded data --3

A Yes.4

Q -- depending on positioning?5

A Certainly.6

Q Okay. Okay. I'd like you to turn to Exhibit 3528 -- I'm7

sorry, Exhibit 3364, which is an excerpt, I've just put in two8

pages from Mr. Schuessler's decode explanation.9

A Oh, yes, I see that.10

Q And I'd like to turn to the second page, which is the11

last page in the exhibit.12

A Okay. 13

Q Okay? Could you explain what's shown on that page?14

A Well, what's shown on the page, if you recall that Rick15

Schuessler actually scanned a UPCA symbol, and after16

identifying the quiet zones, he determined that there was a17

guard bar pattern, a left-guard pattern shown with the numbers18

702865, and a corresponding right-guard pattern at the other19

end with the numbers 9434103. Now, you couldn't even get to20

here proportionally if you didn't tell me that we just scanned21

a UPC symbol.22

Q Okay. 23

A That -- we'd have to know that.24

Q Okay. Now from the decoded data, would there be any way25

ALLAIS - DIRECT0021

to come back to these particular clock counts?1

A Well, absolutely not. And, in fact, you couldn't even2

get back to properly proportioned clock counts, because, if3

you recall, the guard-bar pattern in the UPC is nominally a4

bar of one module wide, followed by a space of one module5

wide, followed by a bar of one module wide, so that when we6

look at the guard-bar pattern here, if the symbol were7

proportioned nominally with no ink spread, we would expect8

approximately equal counts, but what we see here is that the9

space is less than half of the width of the bars, owing to ink10

spread in the original symbol.11

Q Okay. And the space is the number -- represented by the12

number 28?13

A That's right. The light -- the gray number 28 represents14

the space in the guard pattern.15

Q Okay. And the numbers 70 and 65 represent the bars in16

the left guard-bar --17

A That's correct. 18

Q -- guard-bar pattern? And is the same also true for the19

right with respect to the ratios?20

A Yes. On the right side we can see that the difference is21

even more extreme. The space here is less than -- well,22

approximately a third of the widths of the bars. And we also23

notice going from the left end of the symbol to the right end24

of the symbol that the bars themselves have grown perhaps half25

ALLAIS - DIRECT0022

again as wide. So, none of this could be ascertained from the1

ideal UPC symbol which one might reconstruct from the decoded2

data if he knew it was UPC.3

Q But you don't know from the decoded data, do you?4

A Well, you don't know any of that. No.5

Q Do you know it's a UPC symbol?6

A You don't even know that.7

Q Okay. So, that, in effect, is why it's a one-way street?8

A Yes, it is.9

Q Okay, let me ask you this. Can you recreate the bar code10

symbol from the decoded data? We saw that you couldn't11

recreate the clock counts; now I want to know, could you12

recreate the bar code symbol?13

A Well, absolutely not. You know, if you told me that the14

decoded data came from a UPCA bar code symbol --15

Q Right.16

A -- I could draw you an idealized UPCA symbol, but it17

would bear no physical relationship to the -- to the bar code18

scan.19

Q Okay. If I told you it was a UPCA symbol, would you be20

able to figure out the size, color, the amount of ink spread,21

things like that in the actual symbol?22

A None of that information could be -- could be determined23

from the decoded data.24

Q Okay. From the analog signal on the chart, can you25

ALLAIS - DIRECT0023

recreate what the bar code symbol looked like?1

A No, you can't do that, all you -- all you see is what the2

photodiode saw, but you don't know how far away it was,3

whether it was far away and dark black or up close and light4

gray or green or blue or purple.5

Q Can you get many different analog signals from the same6

bar code symbol?7

A Oh, absolutely, depending on distance, depending on pitch8

angle, depending on position along the scan line, et cetera.9

Q Okay. I'd now like to turn to the claim charts, which I10

believe are Exhibit 3529. Do you have that, sir?11

A Yes, I do.12

Q Okay. Would you explain Exhibit 3529, what that13

represents?14

A Yes. Here we have the -- on the first page, the Claim 1415

of the '918 patent. On the left is text of the claim itself,16

and on the right is Dr. Williamson's construction of that17

claim in italics.18

Q Okay. And there are certain portions that are19

highlighted. Could you explain the significance of --20

A The highlighted --21

Q -- the highlighting?22

A -- portions are the ones that I wish to point out in the23

ensuing discussion.24

Q Okay. Could you turn to, I guess, the first chart, the25

ALLAIS - DIRECT0024

first page of that exhibit and tell us which elements, if any,1

are not met by the use of the Symbol scanners?2

A Yes. In the '918 patent, Claim 14, Eelements A, B and C3

do not read on the Symbol products.4

Q Okay. Starting with the section that you highlighted in5

blue which shows up in step A, would you explain how that step6

is not met by the use of the Symbol bar code readers?7

A Well, the claim itself says positioning a surface in the8

scanning field, et cetera.9

Q And how does the Lemelson Partnership construe that to10

mean?11

A They construe that to be putting an exterior or outside12

part of an object in a particular place in the area or region13

of observation.14

Q Is that done in the Symbol scanners?15

A No. As you recall, the scanner can go out here and the16

object to be scanned could be at the extreme left, in the17

middle anywhere, at the extreme right, and so that's -- that's18

certainly not met.19

THE COURT: Do you interpret that language of Dr.20

Williamson's putting an exterior outside part, et cetera, as21

being equivalent to prepositioning, the term that's been --22

THE WITNESS: Well, you could -- you could interpret23

that, yes. I mean, it's certainly positioning in a particular24

place is pretty definite. And the -- when they talk about the25

ALLAIS - DIRECT0025

scanning field, that's the, you know, the whole triangle of1

laser light going out from the scanner, and so that would2

imply that you have to have it in a particular place, or3

prepositioned, if you like.4

THE COURT: Go ahead.5

MR. McCABE: Okay. 6

BY MR. McCABE: 7

Q Can we move to step B of Claim 14 of the '918 patent? Do8

you have that, sir?9

A Yes.10

Q Okay. You've highlighted in yellow "to generate control11

signals from portions of said output signal of predetermined12

intensity." How does the Lemelson Partnership construe that13

term?14

A Well, they talk about from parts of the output signal15

having a predefined or a preselected magnitude strength or16

amount.17

Q Okay. Let's just focus on output signal for one second18

here. What output signal do you understand that to be19

referring to in step B?20

A Well, if we go back to step A, that calls for the output21

signal to vary in intensity with variations in the intensity22

of radiation of the field scanned, so that can only be the23

signal out of the photodiode or the amplified signal24

thereafter, and I don't think the partnership disagrees with25

ALLAIS - DIRECT0026

that interpretation.1

Q Given that understanding of the output signal, is the2

output signal from the photodiode in the Symbol scanners, does3

it have a predefined or preselected magnitude strength or4

amount?5

A Absolutely not. We've seen symbols far away and up close6

here just a moment ago that had extremely different amplitude7

strength or amount.8

Q So, is that Claim Element B met by the use of Symbol9

scanners?10

A No, it is not.11

Q Okay. Now you've highlighted -- I'd like to move to step12

C now, step C.13

A Okay. 14

Q You've highlighted "to generate digital code signals15

indicative of the locations of the predetermined variations in16

said scan field." Do you see that, sir?17

A Yes.18

Q How does the Lemelson Partnership construe that term?19

A They talk about creating detectable indicators used to20

convey information signifying or pointing out the particular21

position of the predetermined variations in the scan field.22

Q Do Symbol scanners do that?23

A Well, I believe that the partnership, Lemelson24

Partnership, identifies predetermined variations as being the25

ALLAIS - DIRECT0027

bar code, and, of course, that's not predetermined, but aside1

from that, the location can be anywhere in the scanning field,2

and therefore that claim element is not met.3

Q Okay. Could you just explain what you mean by it could4

be -- the location could be anywhere in the scan field?5

A Well, at a minimum, if you think of a scanning line going6

out, the symbol can be at the left, in the middle, in the7

right, anywhere along that line, or it could be very close. 8

For example, this scanner will scan virtually in contact or9

out a standard symbol perhaps a foot and a half away. So10

there's tremendous variation within the range of operation11

where you can put an object.12

Q Okay. In that element C, it talks about generating13

digital code signals, do you see that? What do you understand14

that to be in -- as the Lemelson Partnership reads this claim?15

A Well, I would -- I would understand that is -- would have16

to be the decoded data.17

Q Okay. So, does the decoded data tell you where the bar18

code symbol was in the scan field?19

A No, it doesn't even tell you what kind of symbol you20

have, so, let alone where it is.21

Q Okay. Okay. Do you have an example of a -- well, we22

don't need to show that. I think we can move to the next23

claim now, the '038, Claim 4? Do you have that claim?24

A Yes.25

ALLAIS - DIRECT0028

Q Okay. Which steps of Claim 4 of the '038 patent are not1

met by the use of Symbol scanners under the Lemelson2

Partnership's claim construction?3

A Well, that would be steps D, E and F.4

Q Okay. All right. Would you like to start with step D5

which you've highlighted in blue? Do you have that?6

A Yes.7

Q Okay. You've highlighted "generating electrical control8

signals." How does the Lemelson Partnership construe that9

term?10

A Well, they read that to be signals used to convey11

information for directing or commanding.12

Q Do you understand what the Lemelson Partnership reads13

that claim element on in the Symbol scanners?14

A Yes. Our best understanding is that they read this to be15

the digital bar pattern signal.16

Q Okay. Is the digital bar pattern signal an electrical17

control signal?18

A No, it is not. In the world of digital design, you have19

two kinds of signals, you have data signals and you have20

control signals. The digital bar pattern, provided it21

contains any data, is strictly a data signal; it's not used in22

any way to command or control.23

Q So, is that step, step D, met by the use of the Symbol24

scanners?25

ALLAIS - DIRECT0029

A It is not.1

Q Okay. Okay. Could you turn to step E?2

A Yes.3

Q And let's start with the portion that you highlighted in4

yellow, "computer analyzing said electrical control signals."5

How do you understand the Lemelson Partnership to interpret6

that phrase?7

A Well, their interpretation of computer analyzing is using8

a programmable electronic machine with addressable memory that9

can store, retrieve and process instructions and data.10

Q And I think you previously testified that the electrical11

control signals, you understood those to be the digital bar12

pattern?13

A That's my understanding of their interpretation of that. 14

Yes.15

Q Okay. Does -- do any of the accused Symbol scanners16

computer-analyze the digital bar pattern?17

A No. The computer built into the decoder of the Symbol18

product analyzes the clock counts. It's incapable of directly19

analyzing the digital bar pattern.20

Q So, that step E would not be met?21

A It would not.22

Q I see that you've also highlighted in pink the term23

"generating coded electrical signals defining at least one24

variable detected during scanning"?25

ALLAIS - DIRECT0030

A Yes.1

Q How does the Lemelson Partnership construe that phrase?2

A Well, that's kind of long. They talk about creating3

detectable indicators using electricity based upon a set of4

numbers, symbols or other data used to represent and convey5

information that signify at least one characteristic that may6

change and that is discovered or ascertained during scanning.7

Q In the portion of part E that you highlighted in pink8

from the claim itself, not from Dr. Williamson's construction,9

there's a term "variations" -- or, I'm sorry, "variable10

detector" --11

A Variable detector.12

Q -- "variable detector." What do you understand that13

variable to be?14

A Well, I would look back at Claim B where I've highlighted15

"variable optically scannable information," and I believe that16

must refer to the same thing, so, we're talking about really17

variations that occur in the analog signal or in the original18

object, that's actually in the object itself, over at the hand19

cleaner, what the bar code looks like.20

Q What do you base that on? Is it based on the21

partnership's construction?22

A Well, "controllably moving said radiation beam scanning23

machine containing" -- well, yeah. I mean, that's in the24

object, and Dr. Williamson talks about changes in properties25

ALLAIS - DIRECT0031

associated with visible light, so, that's the light reflecting1

characteristics of the original object.2

Q What variable is detected by the Symbol scanners during3

the scanning movement of the beam?4

A Well, simply -- simply the analog signal is its best5

representation of that variable.6

Q Does the decoded data, which I understand is the coded7

electrical signals of this claim --8

A Yes, that's how they interpret that.9

Q Does the decoded data tell you anything about the10

appearance or optical properties of the item scanned?11

A Absolutely nothing.12

Q Does the decoded data define anything about any variable13

detected during scanning movement of the beam?14

A No.15

Q Does the decoded data tell you anything about the16

characteristics of the symbols scanned?17

A It does not.18

Q Does the decoded data tell us anything about the19

reflectivity of the symbols scanned?20

A No, it doesn't.21

Q Does the decoded data tell us anything about the size of22

the symbols scanned?23

A Not even the size.24

Q Does the decoded data tell us anything about the color of25

ALLAIS - DIRECT0032

the symbols scanned?1

A There's no color information in the decoded data.2

Q Does the decoded data tell us whether there was ink3

spread in the symbols scanned?4

A No, doesn't tell you that.5

Q Does the decoded data tell us the symbology of the6

symbols scanned?7

A Not even that.8

Q What then does the decoded data tell us?9

A Decoded data simply tells you, in this case of the hand10

cleaner, the numbers that appear printed under the bar code,11

which was what was encoded in the bar code. That's all you12

get.13

Q Do any of the Symbol laser scanners accused of14

infringement generate any signals that indicate what the15

actual symbols scanned look like?16

A They do not.17

Q In your opinion, is step E not met for the reason that18

the decoded data does not define at least one variable19

detected during scanning?20

A Yes, that's true.21

Q I just want to move to step F of that claim. Do you have22

that, sir?23

A Okay. 24

Q Okay. There you've highlighted "employing said coded25

ALLAIS - DIRECT0033

electrical signals" which, again, would be the DBP?1

A Yes. No, wait. Coded electrical signals are the decoded2

data.3

Q Oh, I'm sorry. The decoded data. And it -- you've4

highlighted to indicate the information electro-optically5

detected by the scanning movement of said beam?6

A Yes.7

Q How does the Lemelson Partnership construe that term?8

A Well, they talk about using the coded electrical signals9

to point out, signify or represent the information electro-10

optically detected by the scanning motion.11

Q Okay. Does the decoded data point out any of that12

information?13

A The decoded data has -- has no optical information in it14

whatsoever, it's simply a string of digits or letters.15

Q In your opinion, is step F met by the accused -- use of16

the accused Symbol scanners?17

A Step F is not met.18

Q Can we turn to the next claim -- the next patent, which19

is the '029 patent, Claim 12? Which steps, if any, of that20

claim are not met?21

A Well, steps C and D.22

Q Would you start with step C where you've highlighted23

"generating first information signals corresponding to the24

detected contrasting image portions of the image field25

ALLAIS - DIRECT0034

scanned"? Do you see that?1

A Yes, I do.2

Q How does the Lemelson Partnership construe that term?3

A Well, they talk about creating first detectable4

indicators having data organized so it is meaningfully5

analogous to the detected comparatively different image parts6

of the image field scanned.7

Q What do you understand the Lemelson Partnership to read8

the first information signals to be?9

A I believe the first information signals are identified by10

the Lemelson Partnership to be the decoded data.11

Q Does the decoded data correspond to any image portions of12

the field scanned?13

A No. As we've talked about before, there's no14

relationship whatsoever between the image as scanned and the15

decoded data, which is simply the extracted information from16

the bar code symbol.17

Q In your opinion, is step C met?18

A It is not.19

Q Could we turn to step D where you've highlighted20

"electrically comparing said first information signals with21

signals from recordings in a memory which are indicative of22

said select image phenomena"?23

A Yes.24

Q How does the Lemelson Partnership interpret that phrase?25

ALLAIS - DIRECT0035

A They use the text "examining by using electricity to1

discover" --2

Q Well, you don't need to -- you don't -- you don't need to3

read it in?4

A Okay. 5

Q This the material you highlighted in yellow?6

A Yeah. That's right.7

Q Okay. And you've testified that you understand the first8

informationa signals to be the decoded data?9

A Yes, I do.10

Q Okay. Do Symbol scanners compare any signal with signals11

from -- that are recorded in memory in order to decode a bar12

code?13

A There's -- there's no comparison with signals from14

signals recorded in a memory within the Symbol scanners.15

Q Now, don't the Symbol scanners transmit the decoded data16

to the host computer?17

A Yes, that is normally the case.18

Q When the decoded data is sent to the host computer, is19

there some type of look-up that is done?20

A Well, typically the decoded data would -- would become an21

index into a file and would probably match up or match up22

largely with something called the product code, which is23

what's encoded in the UPC. And so, in that sense, in the24

host, the decoded data is compared to that recorded product25

ALLAIS - DIRECT0036

code.1

Q Does that information in the host computer provide any2

information about the select image phenomena that had been3

scanned?4

A No. The product code simply tells you, you know, almost5

the same thing that you had in the numbers underneath the bar6

code symbol, and then that's associated typically with the7

price of the item, the description, the inventory numbers,8

various things like that. None of that data in the host has9

any relationship to the physical bar code or what it looked10

like.11

Q Okay. Is it your opinion that step D is also not met?12

A That's true.13

Q Okay. Could we turn to the next claim which is the '07314

patent, Claim 7?15

A Yes.16

Q Which steps of that claim are not met by the use of the17

Symbol scanners?18

A That would be steps C, D and F.19

Q Let's start with step C where you've highlighted20

"generating first information signals corresponding to the21

optical characteristics of the image field scanned."22

A Yes.23

Q What do you understand the Lemelson Partnership to24

determine first information signals on?25

ALLAIS - DIRECT0037

A Well, it's the part highlighted in yellow, and 1

includes --2

Q We're on C?3

A In blue --4

Q Yeah.5

A -- and includes the phrase "analogous to the optical6

characteristics of the image field scanned," which is7

consistent with the claim.8

Q What do you understand the first information signals to9

be based -- from the Lemelson infringement analysis?10

A First information signals here in step C would be11

identified by the Lemelson Partnership as the decoded data.12

Q I'm going to ask it again just to make a nice record13

here. Does the decoded data correspond to any optical14

characteristics of the field scanned?15

A It does not.16

Q You've mentioned that step D is also not met, and step D17

requires "electrically comparing said first information18

signals with signals from recordings in a memory which are19

indicative of said select image phenomena."20

A Yes.21

Q Do Symbol scanners compare first information signals22

which, I believe, you said was the decoded data --23

A Yes.24

Q -- with any signals -- with any recordings in a memory25

ALLAIS - DIRECT0038

which are indicative of the image phenomena?1

A No. That does not occur in the Symbol scanners.2

Q Does that occur in the host?3

A It occurs in the host with the same explanation I gave4

for the '029. There is no data in the host that will take you5

back to the image phenomena.6

Q Okay. So when you say it occurs in the host, there's --7

there's no recording in the host of the image phenomena8

scanned?9

A Oh, no. No, no. Just -- just the product code and price10

and other things like that.11

Q Now you've also highlighted step F?12

A Yes.13

Q "Generating digital signals indicative of the location of14

said select image phenomena in said image field scanned."15

A Right.16

Q Is that met by the use of Symbol scanners?17

A No, and I might point out that Dr. Williams [sic] talks18

about signifying or pointing out the particular position of19

the select image phenomena and the bar code scanner or the20

host, either one, have no idea about the position of the bar21

code or any bars and spaces within the field scanned.22

Q Okay. Do symbols -- do the accused Symbol scanners23

generate any signals that indicate the location or particular24

position of the select image phenomena in the image field25

ALLAIS - DIRECT0039

scanned?1

A They do not.2

Q Now let's move to the next claim, it's the '190 patent,3

Claim 6?4

A Yes.5

Q Would you tell us which steps of that patent are not met6

by the use of the Symbol scanners?7

A That would be steps B and C.8

Q All right. Let's start with step B. "Generating coded9

electrical signals indicative of the content of at least a10

portion of the image field scanned." How does the Lemelson11

Partnership construe that term?12

A Well, they talk about creating detectable indicators to13

signify or point out what is contained in at least part of the14

image field scanned.15

Q What do you understand the Lemelson Partnership to read16

the phrase "coded electrical signals" to be?17

A Well, my understanding is that they interpret that to be18

the digital bar pattern.19

Q Is the digital bar pattern indicative of the content of20

at least a portion of the image field scanned?21

A No, it is -- simply is what it is, it's a process signal,22

and it doesn't -- you can't go back from there to what the23

object looked like.24

Q Can you go back to what the bar code looked like?25

ALLAIS - DIRECT0040

A No.1

Q Okay. In your opinion, is step B met?2

A No.3

Q Thank you. Let's turn to step C and start with the4

portion that you highlighted in yellow, "computer analyzing5

said coded electrical signals."6

A Okay. 7

Q What do you understand the coded electrical signals to be8

in the partnership's infringement analysis?9

A Well, we've just identified their interpretation of coded10

electrical signals to be the digital bar pattern.11

Q Could you explain how the portion you highlighted in12

yellow is not met by the use of the accused Symbol scanners?13

A Well, as I explained previously in one of the claims, the14

microprocessor or computer in the Symbol bar code scanner does15

not analyze the digital bar pattern; it's not capable of doing16

so.17

Q What does the microprocessor in a Symbol scanner do?18

A Well, it -- it subjects the counts to some rather19

interesting algorithms, the simpler ones of which Rick20

Schuessler demonstrated to us some days ago.21

Q But it does not process the DBP?22

A It does not directly process the DBP.23

Q In step C you also highlighted in pink "detecting when a24

select condition exists in the image field scanned."25

ALLAIS - DIRECT0041

A Yes.1

Q What is your understanding of how the Lemelson2

Partnership defines a select condition?3

A Well, they interpret that to be discovering or4

ascertaining when a chosen state, property, quality or5

attribute is present in the image field.6

Q Do the Symbol scanners detect when a chosen state,7

property, quality or attribute is present in the image field8

scanned?9

A No, they just simply try to -- try to decode a bar code10

if it's present.11

Q Could the -- could a bar code symbol be interpreted as a12

select condition?13

A Well, that would be pretty difficult because you would14

have to have a very particular bar code with, you know, known15

size, contrast, ink spread, all of those qualities out there16

somewhere to look for.17

Q Okay. In your opinion, is step C met by the use --18

A No.19

Q -- of the accused Symbol scanners?20

Let's turn to the '205 patent, Claim 1. Do you have21

that?22

A Yep.23

Q Okay. Which steps of that patent are not met by the use24

of the Symbol scanners?25

ALLAIS - DIRECT0042

A Steps F and J.1

Q Just catch up on the screen here. In step F, you've2

highlighted in blue "computer processing said varying signal."3

A Right.4

Q What do you understand the varying signal to be?5

A Well, if we look back at step E, the varying signal is6

one that varies in accordance with the intensity of the7

reflected radiation. So that must be the signal out of the8

photodiode which is an analog signal or its amplified9

equivalent.10

Q Do the Symbol scanners process the output of the11

photodiode with a computer?12

A No. A computer is incapable of processing that analog13

signal.14

Q Okay. What happens to the analog signal? Is it retained15

anywhere?16

A Well, the analog signal is a transient signal in time17

which creates the transient differentiated signal as it's18

created, which, in turn, creates the transient digital bar19

pattern, and all of the signals flow through the scanner and20

are immediately discarded.21

Q Okay. So when the differentiated signal is created,22

where is the analog signal that it's created from? What23

happens to it?24

A Well, if we -- if -- we looked at the face of a25

ALLAIS - DIRECT0043

[diciliscope a while ago and it looked like some nice lines1

standing in space. That's because the phosphor has2

persistence so humans can see it, but it's really just little3

dots moving across and wiggling, and when they're gone,4

they're gone. The signal is a -- is a transient time5

phenomena. The only thing that's preserved in the scanner is6

the sequence of counts in memory.7

Q In step F you've also highlighted in yellow "generating8

digital electrical signals defining characteristics of said9

different radiation reflecting marks."10

A Yes.11

Q Could you explain how the -- what the Lemelson12

Partnership reads that on?13

A Well, the digital electrical signals, since they're14

coming out of the computer, and I believe the partnership15

identifies that to be the decoded data.16

Q And is the decoded data defined characteristics of said17

different radiation reflecting marks?18

A No. There's no information. If the reflecting marks are19

the spaces and perhaps the bars of the bar code, there's no20

information in the decoded data to take you back to what those21

bars and spaces were.22

Q Is it your opinion that step F is not met?23

A It is my opinion step F is not met.24

Q Let's turn to step J, and you've highlighted "employing25

ALLAIS - DIRECT0044

said further electrical signals to intelligibly indicate1

information relating to the different radiation reflecting2

marks."3

A Yes.4

Q What do you understand the partnership to read the term5

"further electrical signals" to be in the Symbol scanners?6

A Well, they talk about electrical signals to7

understandably, clearly or meaningfully point out or signify8

or represent intelligence or data which has been organized to9

be meaningful regarding the different radiation reflecting10

marks. Almost the same thing, they're pointing us back to the11

bars and spaces or whatever image phenomena was reflecting12

marks.13

Q And the further electrical signals are the decoded data?14

A Well, they might be the decoded data, or they might be15

data out of the host computer. I think that could be16

interpreted a variety of ways. But in neither case, anything17

downstream of the decoded data knows nothing about the bars18

and spaces that were scanned.19

Q In your opinion, is step F -- step J met by the use of20

the accused Symbol scanners?21

A It is not.22

Q Let's turn to the next patent, the '753 patent, Claim23

106. Would you tell us which steps are not met by the use of24

the accused Symbol scanners?25

ALLAIS - DIRECT0045

A In this patent, steps F and G are not met.1

Q Let's start with step F. You've highlighted in blue2

"computer processing the electrical signals."3

A Yes.4

Q What do you understand the electrical signals to be in5

the Lemelson infringement analysis?6

A Well, again, looking at step E, those are the signals7

that vary with the reflected light from the surface of the8

object, so they have to be the signals out of the photodiode9

or equivalent.10

Q Would that be the analog signal?11

A The analog signal. Yes.12

Q Is the analog signal computer processed?13

A Computers are incapable of processing that analog signal.14

Q And you've highlighted in yellow "generating and storing15

in memory characteristic signals defining at least a portion16

of the production marking."17

A Yes.18

Q Is that -- is that portion met --19

A Well --20

Q -- by the use of the accused Symbol scanners?21

A Again, the only -- the only thing coming out of Symbol's22

computer is the decoded data, and the decoded data carries no23

information about the production marking, or if you want to24

interpret that production marking to be the bar code, it25

ALLAIS - DIRECT0046

doesn't tell you anything about the bar code either.1

Q In the portion that you highlighted in yellow, it refers2

to characteristic signals, it says "storing in memory3

characteristic signals."4

A Yes.5

Q What do you understand characteristic signals to be in6

the --7

A Well --8

Q -- infringement analysis?9

A -- in the interpretation I just gave --10

Q Right.11

A -- characteristic signals would be the decoded data,12

which, of course, is stored in memory.13

Q And that tells you nothing about the production marking,14

if that is the bar code?15

A It does not.16

Q Could the characteristic signals be construed to be the17

counts --18

A Well --19

Q -- in the Symbol scanners?20

A -- they might be, but that would be impossible because if21

we go back and read carefully, it says computer processing the22

electrical signals to determine if the scanning device has23

scanned the production marking, and, if so, generating and24

storing in memory. Well, every time the scanner scans25

ALLAIS - DIRECT0047

anything, clock counts are automatically generated, and only1

after all the clock counts are in place does the decode2

process begin and try to make sense out of it, so, it can't3

first determine something and then be stored in memory. So,4

it can't be the clock counts.5

Q Okay. How do you come up with it must first scan it and6

determine if it has a bar code before it can -- before it7

moves on?8

A Well, the text says scan the production marking, and, if9

so, generating and storing in memory.10

Q And so that "and, if so" gives some order to those steps?11

A It's the sequence. Yes.12

Q So, in your opinion, is step F met for that reason?13

A Step F is not met.14

Q Let's turn to step G where you've highlighted "comparing15

the characteristic signals to reference data stored in memory16

in order to identify the scan production marking." Could you17

explain whether step G is met?18

A Well, again, characteristic signals we identified must be19

the decoded data -- yeah, the decoded data tells you nothing20

about the production marking, bar code, whatever it was that21

it came from.22

Q So, in your opinion, is step G met?23

A It is not.24

Q Does any data from the host computer tell you anything25

ALLAIS - DIRECT0048

about the scanned production marking?1

A No. As we've said before, there's data like price and2

description which tells you nothing about the bar code.3

Q Let's turn to, I think, thankfully, the last claim, the4

'421 patent, Claim 3. Do you have that?5

A I do.6

Q Which steps of that claim are not met?7

A That would be steps F and J.8

Q Would you explain why those steps are not met?9

A Well, we could go through the same tedium, but I've been10

through this claim very carefully, and with the exception of11

step C, the claim language is identical to that of the '205, I12

believe it's Claim 14. Is it -- is that right?13

Q Um --14

A Nope. Claim 1 of the '205.15

Q Okay. 16

A And so, the 205 we've been through, step C, we're not17

discussing. Step C here has a few additional limitations, but18

we'll just let that go for now. Steps F and J are identical,19

and therefore, for the same reason, do not read on the Symbol20

products.21

Q And just to summarize, steps F and J -- I'm sorry, F --22

yeah, F and J of Claim 3 of the '421 patent do not read on the23

use of the Symbol products for the same reasons that steps F24

and J of Claim 1 of the '205 do not read on the use of the25

ALLAIS - DIRECT0049

Symbol products?1

A That's correct. 2

Q Okay. Thank you. 3

Now I'd like to turn to the subject of intervening4

rights. Dr. Allais, we've been through your non-infringement5

analysis under Dr. Horn's and the Lemelson Partnership's claim6

constructions. In the event that the Court finds that the7

Lemelson claims read on the LS-4000 Symbol scanners, which I8

think you have an example of up there?9

A Like this one?10

Q Yeah. Do you have an opinion whether those same claims11

would read on the early Symbol scanners that Mr. Barkan12

testified about?13

A Yes, I do.14

Q What is your opinion?15

A Well, my opinion is that if the claims in the Lemelson16

patents read on the LS-4000, then they would also read on the17

earlier Symbol scanners, such as the LS-100, the LS-7000, 800018

and 8500.19

Q Have you prepared a chart summarizing which of the early20

scanners --21

A Yes, I have.22

Q -- the plaintiffs agreed on? Okay. Could you turn to23

Exhibit 3530? Do you have that?24

A Yes, I do.25

ALLAIS - DIRECT0050

Q Would you please explain Exhibit 3530?1

A Yes. Across the top, across the top of this exhibit, I2

have listed a number of the early Symbol scanners beginning3

with the LS-100 -- 1000, the LS-7000, the LS-7002, the LS-4

8000, and the LS-8500, and the corresponding year when those5

products were introduced to market.6

Q And could you explain the column running down the left?7

A Yes. Down on the left-hand side I have listed the --8

both the independent and dependent claims asserted against the9

contemporary Symbol products.10

Q Okay. I noticed that the '918 patent is not listed11

there.12

A It is not listed here.13

Q And why is that?14

A Well, it's my understanding that the -- that the claim in15

the '918 patent was submitted to the Patent Office less than16

two years prior to the introduction of the Symbol product. 17

No, maybe -- it's the other way around. The Symbol product18

was not introduced two years prior to the claim being taken to19

the Patent Office.20

Q Okay. Could you explain the significance of a check mark21

on Exhibit 3530?22

A Yes. The check mark indicates that in the event that23

that claim reads on the contemporary Symbol products, it would24

also read on the product intersected by the check mark.25

ALLAIS - DIRECT0051

Q What do you base your opinion on?1

A Well, I base my opinion on the fact that the older Symbol2

scanners as testified by Mr. Barkan and Mr. Swartz and Mr.3

Schuessler operated in the same manner as the LS-4000.4

Q Are you personally familiar with the operation of any of5

the Symbol scanners listed on Exhibit 3530?6

A Yes, I am, and particularly the LS-7000, 7002 and 8000,7

which were products that we purchased and resold and used at8

Intermec.9

Q Okay. And you purchased and resold those contemporaneous10

with the dates that are listed?11

A Well, either -- either those dates or within a year of12

those dates.13

Q But aren't there differences between the Symbol LS-400014

and the Symbol scanners that are listed on 3530?15

A Well, yes, there's engineering improvements over the year16

-- over the years. For example, the LS-100 and the LS-700017

used a helium neon gas laser. The LS-4000 and the new18

products use a solid state laser diode, but in both cases a19

laser beam is generated to be used in scanning, so they're20

substantially the same.21

Q Does that difference between the types of laser sources22

make a difference with respect to the claims?23

A No, it does not, and, in fact, the claims do not even24

call out for a laser.25

ALLAIS - DIRECT0052

Q How about differences in the oscillating mirror1

technology?2

A Well, again, the early products, the LS-7000 and so3

forth, used a stepping motor to oscillate the mirror, whereas4

there is a resonant mechanical circuit -- or mechanical5

assembly, rather, used in the contemporary products, but,6

nevertheless, the mirror oscillates and causes the beam to7

scan so that for claim interpretation, they're really the same8

thing.9

Q Do the claims even mention an oscillating mirror?10

A Well, they do not even mention the oscillating mirror. 11

That's true.12

Q Okay. I notice on your chart, Exhibit 3530, there are13

some boxes that are not checked?14

A That's true.15

Q Why is that?16

A Well, that would be because the date of introduction of17

the Symbol product -- and I'll get it right this time -- was18

not two years or more before that claim was submitted to the19

Patent Office.20

Q How did you determine when the claims were submitted to21

the Patent Office?22

A Well, there was a set of dates provided to me.23

Q If you'd turn to the next exhibit in the book, 3531, are24

those the dates that were provided to you?25

ALLAIS - DIRECT0053

A Yes, they are.1

MR. HOSIER: Since I might forget it, Your Honor, I2

don't mind the chart, 3531, but given the witness's testimony3

that he had nothing to do with composing it and the fact that4

we consider this to be inaccurate, to caption it the date Mr.5

Lemelson first presented the asserted claims to the Patent6

Office is argument and misleading.7

THE COURT: Mr. McCabe?8

MR. McCABE: I believe most of these dates, if not9

all of them, comport with what's in defendant's briefs when10

the -- when the actual claim was first presented.11

The only point that we're trying to make here is12

these are the dates that Dr. Allais was asked to consider, and13

we did not ask him to snake through the voluminous file14

histories to pick them out.15

THE COURT: No, I understand. He was asked to16

accept these dates as --17

MR. McCABE: Right. Right.18

THE COURT: -- being accurate. 19

In what respect, Mr. Hosier, are they inaccurate?20

MR. HOSIER: Just 'cause they're not correct. 21

THE COURT: I mean, each of them is --22

MR. HOSIER: They kind of made 'em up to suit their23

purposes, and also, claims to the extent that there's any24

relation to it, claims in significantly the same form trace25

ALLAIS - DIRECT0054

back even a decade or more before and --1

THE COURT: Okay. Well, let's -- let's do this.2

MR. HOSIER: -- it's a sequence of amendments.3

THE COURT: For purposes of this witness's4

testimony, I will receive 3531 as it informs us as to the5

dates which in part provide the predicate for his opinions. I6

won't receive 'em for the truth of the matter as to the actual7

dates that Lemelson first presented the asserted claims to the8

Patent Office, and will rely on such other evidence as the9

parties have to that effect, all right?10

MR. McCABE: Thank you, Your Honor.11

THE COURT: I mean, I'm assuming, and I'm hesitant12

to assume too much, but is there not somewhere on the document13

that is submitted to the Patent Office which contains the14

claim asserted a date stamp or some kind of marking?15

MR. McCABE: Yes, Your Honor, there is. When --16

when any paper is submitted to the Patent Office it's stamped17

with a date, and the date can vary -- 18

THE COURT: Thank goodness. That's --19

MR. McCABE: -- can vary within a few days,20

depending on how it's sent to the Patent Office, but setting21

that aside I don't think Mr. Hosier is talking about a day or22

two here.23

MR. HOSIER: No.24

MR. McCABE: Right.25

ALLAIS - DIRECT0055

MR. McCABE: Our position is these are the dates1

when the claims, as issued, or as close as possible to as2

issued, were actually filed. I believe defendant's position3

is probably more along the lines of, well, there was something4

earlier that we can kind of hook back that's similar, maybe5

not significantly different in their opinion, that would6

change the date.7

THE COURT: Well, if they -- if defendant could8

point to something presented to the Patent Office that9

contained the asserted claim that was earlier than that date,10

obviously.11

MR. McCABE: Right.12

MR. HOSIER: There's no question that it's an13

objective issue to be determined by looking physically at the14

file history --15

THE COURT: All right. 16

MR. HOSIER: -- and what was presented on certain17

dates --18

THE COURT: Okay. 19

MR. HOSIER: -- and how it changed with time is20

presented, but as the Court has heard, it is very typical for21

claims to be amended, and we have situations where, you know,22

you might have a spelling error corrected in a claim at some23

late date, and that kind of literalism is what's gone into24

some of the charts here. 25

ALLAIS - DIRECT0056

In addition --1

THE COURT: Okay. 2

MR. HOSIER: -- there are situations where the claim3

is adjusted, but has a history in its roots back a decade or4

more earlier. So all of this is something we can argue about5

later.6

THE COURT: All right. All right. 7

MR. HOSIER: But I don't want it to be represented8

as being something that is --9

THE COURT: All right. 10

MR. HOSIER: -- it's not.11

THE COURT: You obviously don't accept those as12

accurate dates, but the witness was called upon to rely on13

them in forming his opinions, so --14

MR. McCABE: Right. I just wanted to make clear to15

the Court that Dr. Allais is not here to testify about what16

the claims looked like --17

THE COURT: Sure.18

MR. McCABE: -- earlier on.19

THE COURT: Yeah. Okay. 20

BY MR. McCABE: 21

Q Okay. All right. Now I'd like to shift gears a little22

bit and turn to patents and publications that you've23

considered as a basis for intervening rights?24

A Yes.25

ALLAIS - DIRECT0057

Q Okay. Have you considered certain patents and1

publications?2

A Yes, I have.3

Q Okay. Have you prepared a chart summarizing the patents4

and publications that you've considered?5

A Yes, I've done that.6

Q Would you turn to Exhibit 3532, please?7

A Yes.8

Q You have that? Could you explain Exhibit 3532 for us?9

A Yes. In this chart, I have listed across the top four10

patents and publications beginning with an article about11

London Transport by Mr. Pick [phonetic] in 1958, the second12

column is Hipolanean [phonetic] U.S. Patent 3,225,175, the13

next is the Stites U.S. Patent 3,225,177, and in the right-14

most column, it is the Shawn [phonetic] Patent 3,622,758.15

Q And down the side what have you listed?16

A And down the side I have listed the various claims17

asserted against the Symbol products.18

Q Okay. Do you have an opinion as to whether the asserted19

claims read on the disclosures of the four pieces of art that20

are listed on this exhibit?21

A Well, to the extent that I've placed a red check mark at22

the intersection of a claim with the patent or publication,23

then my opinion is that should those claims read on the24

contemporary Symbol products, they would also read on one of25

ALLAIS - DIRECT0058

these patents or publications as indicated.1

Q I -- let me re-ask the question so I'm not faulted, you2

know, being a patent attorney and screwing it up.3

Do the -- do the articles and publications -- or the4

patents and the publication listed on Exhibit 3532 disclose5

the elements of the asserted claims?6

A Yes, as indicated by the check marks.7

Q Okay. 8

A That's what I meant.9

Q Let's start with the first article that you have listed10

there, that's the London Transport article?11

A Okay. 12

Q Could you briefly describe what that article discloses?13

A Yes. That was a situation in London in the late 1950s14

where the transport company responsible for the busses15

recognized that they had a problem keeping their busses on16

schedule --17

MR. HOSIER: Objection, Your Honor.18

THE WITNESS: -- and they would get busses bunched19

up within the block --20

THE COURT: Excuse me one second.21

MR. HOSIER: I'm sorry to interrupt the witness, but22

his testimony -- this is nothing within the personal knowledge23

of the witness, and I happen to know it because it's an24

article that the witness first saw a couple of weeks before he25

ALLAIS - DIRECT0059

was deposed in this case, and now we're hearing it as though1

it's personal knowledge and what the bus company was doing and2

how they were doing it. He didn't even know it existed as the3

article, and it's only the four corners of the article that4

the witness is relying on. So I think if there's any5

testimony, that ought to be made clear as a foundation, and6

he's then interpreting what the article says, and there's a7

great deal of hearsay in the article as well about what the8

bus company was doing, and he has no way of knowing that to be9

true.10

THE COURT: All right. 11

MR. McCABE: Your Honor, I think my question took12

care of that. I asked him to just summarize the article.13

THE COURT: Yeah, that's fine, let's do that. It's14

not required that the witness be testifying from percipient15

knowledge to give an expert opinion about the London Transport16

circumstance, but I'll let him summarize the article as he17

understands it.18

Is that correct, you read the article that Mr.19

Hosier is referring to?20

THE WITNESS: Yeah, yes, and Mr. Hosier is correct. 21

My knowledge of this comes from the article. I was merely22

trying to put a little life in it to --23

THE COURT: All right. 24

THE WITNESS: -- explain why they were doing this.25

ALLAIS - DIRECT0060

THE COURT: All right. 1

THE WITNESS: So, the essence of it was they worked2

out a scheme for putting coated markings on the busses and3

mounting scanners at the curbside to track the movement of the4

busses.5

BY MR. McCABE: 6

Q Could you turn to Exhibit 3215. That's in the yellow7

volume, it's in your yellow volume.8

MR. McCABE: I divided the witness's book up into9

three pieces, make it easier.10

THE COURT: You're looking at 35 what?11

MR. McCABE: 3215.12

THE COURT: 3215 --13

MR. McCABE: '215.14

THE COURT: I'm sorry. Okay. 15

BY MR. McCABE: **16

Q Do you have that?17

A Yes, I do.18

Q Okay. Could -- is that the Pick article you referred to?19

A Yes, that's the article that we've been discussing.20

Q Okay. When was Pick first published?21

A Well, it was first published in October of 1958.22

Q And briefly, what was the problem that Pick was trying to23

solve?24

A Well, I think I described the problem of busses bunching25

ALLAIS - DIRECT0061

up from traffic or malingering bus drivers that would be kind1

of lazy and speed up so they get behind the bus in front and2

they don't have to keep opening and closing the doors.3

Q How did Pick solve it?4

A Well, Pick designed a scheme of putting reflective5

markings on the side of the bus, and I think we have some6

illustration here that will help the Court understand how he7

did that.8

Q I turned to a graphic which is Exhibit 3533, which is9

figure 1 of Pick just being reproduced and highlighted. It's10

on the screen, Dr. Allais?11

A Oh, well, that makes it easy.12

Q Yeah. Could you just explain Exhibit 3533 for us?13

A I will do that, but I can't --14

THE COURT: Looks a bit like the London underground15

there is --16

THE WITNESS: I can't quite read the screen. 3533?17

BY MR. McCABE: 18

Q Yes.19

A Okay. At the left, you show a drawing of this timing20

plate which they put on the bus. They used highway21

reflectors, and at the top you see two rows of reflectors22

spaced along, I guess they were two inches apart, and one inch23

apart high. And then down below, you see occasional pairs of24

reflectors so that the top series is really a clock track, so25

ALLAIS - DIRECT0062

that if you see reflectors at the top and there's none at the1

bottom, that's a zero bit, and if you see reflectors at the2

top and the bottom, that's a one bit. That's the way the code3

was constructed.4

There's a light source in here indicated in yellow5

which is -- I think it was an automobile head lamp or6

something like that, incandescent at any rate, coming out7

through mirrors and lens systems, and putting a beam out into8

the roadway so that the bus about twelve feet away from the9

scanner, those little reflectors would reflect the light back10

to a photocell. 11

They also had a motor in a rotating disk to chop up12

the beam, so this flashing light would be able to be13

distinguished from stray sunlight or something like that. But14

once they get this light back, they will compare clock track15

against data track. They will then condition that data and16

store it in this sending unit in relays and wait for the right17

moment to transmit it over a telephone line into the bus18

central where they will record that information for future19

analysis. 20

And also they'll display on a big light board for21

every one of the thirty bus routes where each bus is between22

the two point scan. So, it was a system that was tested for23

quite some months in London.24

BY MR. McCABE: 25

ALLAIS - DIRECT0063

Q It's your understanding that was actually used in London?1

MR. HOSIER: Objection to that representation. 2

Again, it goes beyond the witness's personal knowledge.3

THE COURT: Well, it does. Does the article that4

you referred to, 3215, indicate that it was tested for some5

time in London?6

THE WITNESS: That's what I got out of the article.7

MR. HOSIER: Whether that's true or not --8

THE COURT: Well, I --9

MR. HOSIER: -- or whether it worked or not or10

whatever, who knows?11

MR. McCABE: You can never tell when they're only12

written down.13

THE COURT: Well, I don't think anybody is offering14

testimony that this was successful particularly, are you, or 15

--16

THE WITNESS: Well, it was a -- it was a -- it was a17

-- according to the article, and it would be very rare to have18

a technical article fabricated out of whole cloth and19

delivered in multiple cities in London over a period of time20

and have no facts behind it. It was a system that was tested21

--22

THE COURT: All right. 23

THE WITNESS: -- and the London Transport did not24

choose to invest in a permanent system, so it was a working25

ALLAIS - DIRECT0064

model.1

THE COURT: All right. 2

MR. HOSIER: That alone suggests that it, perhaps,3

didn't work, that they never --4

THE COURT: Well, you can --5

MR. HOSIER: -- did it.6

THE COURT: -- you can take it up on cross-7

examination. I don't think it's particularly important.8

MR. HOSIER: I agree.9

BY MR. McCABE: 10

Q Could you turn to the second page of Exhibit 3215, which11

is the first page of the article? Do you have that?12

A Yes.13

Q Under the listing of the authors, the second sentence14

says, it was published in October, 1958, and was read before15

the institution, 6 November in Southwest Scotland Sub-center,16

11 November at the Merze [phonetic] and North Wales Center, 2417

November, 1958, the Southeast Scotland Sub-center, 1718

February, and the East Anglican Sub-center, 2 March, 1959. 19

What is the significance, if any, of having a paper read20

multiple times?21

A Well, again, I wasn't there --22

MR. HOSIER: Objection. No foundation.23

THE WITNESS: -- but I would deem that it was24

considered interesting and worthwhile at the time in order to25

ALLAIS - DIRECT0065

be presented.1

THE COURT: All right. Overruled. Go ahead.2

BY MR. McCABE: 3

Q At the -- toward the end of the article, I think there's4

some discussion with the authors?5

A Yes, there is.6

Q And I think there was some discussion of making some7

changes to the system and things like that?8

A Yes. They made some suggestions for technical9

improvement should the bus company decide to move forward and10

implement it on a large scale.11

Q Is that unusual to have suggestions for technical12

improvement after testing a system?13

MR. HOSIER: Objection.14

THE WITNESS: Well, that's --15

MR. HOSIER: Invites speculation.16

THE WITNESS: -- almost inevitable.17

THE COURT: Well, is the procedure that is reflected18

for reading the articles that's contained in the Exhibit 3215,19

is that consistent with the reading of articles in other areas20

that you're familiar with of your own --21

THE WITNESS: Well, I think it's a -- it's a nicely22

done technical article and very readable.23

THE COURT: Well, I understand that. No, I meant24

the --25

ALLAIS - DIRECT0066

THE WITNESS: Oh, reading before a group.1

THE COURT: -- the reading of the articles before2

various groups?3

THE WITNESS: That's very usual. The engineer4

writes up a paper to be presented --5

THE COURT: Peer reviewed.6

THE WITNESS: -- and he will stand up --7

THE COURT: To be tested.8

THE WITNESS: -- and talk about it.9

THE COURT: Right. Right. Okay. 10

THE WITNESS: Yes.11

THE COURT: Okay. 12

BY MR. McCABE: 13

Q Okay. Let's turn to the next piece of art that you14

considered, which is the Hipolanean patent, Exhibit 1673?15

A Excuse me, exhibit number?16

Q 1673. It's in the -- should be in the blue book.17

A Yeah. Yeah. 18

Q Do you have that?19

A Just getting it.20

Q Would you tell us when the Hipolanean patent was filed21

and when it issued?22

A Yes. The filing date was July, 1960, and it was issued23

December 21, 1965.24

Q Who was the Hipolanean patent assigned to?25

ALLAIS - DIRECT0067

A It was assigned to the Scott Paper Company.1

Q What problem was Hipolanean trying to solve?2

A He was trying to solve what we -- what we --3

MR. HOSIER: Objection. Your Honor, I don't mind4

him asking what does it disclose, but again, it's the form of5

these questions that puts it into a --6

THE COURT: Well, technically you're probably right. 7

It seems to me to be asking the same thing. 8

You're asking him based upon his reading of --9

MR. McCABE: Right.10

THE COURT: -- the patent --11

MR. McCABE: Right.12

THE COURT: -- application --13

MR. McCABE: Exactly.14

THE COURT: -- what does it disclose? 15

MR. McCABE: Right.16

THE COURT: All right. Go ahead.17

THE WITNESS: Yes. Well, in reading the patent,18

it's my understanding that Mr. Hipolanean was trying to solve19

what we call a carton sortation problem where you have many20

cartons of paper goods in a distribution center, and instead21

of, you know, manually having to pick each one up and move it22

where it's supposed to go, you put these cartons on a conveyor23

and have an automated means to divert the carton to the right24

loading dock for a truck or a rail car or perhaps a storage25

ALLAIS - DIRECT0068

rack.1

THE COURT: Similar to what you'd see sorting2

parcels in the post office --3

THE WITNESS: Oh, exactly.4

THE COURT: -- or something like that?5

THE WITNESS: Yes.6

BY MR. McCABE: 7

Q What is your understanding of how Mr. Hipolanean solved8

that problem?9

A Well, he solved that problem by putting a two tier bar10

code on the side of the cartons and devising a scanning and11

sortation system that -- that by scanning that bar code could12

automatically divert the cartons.13

Q Could you turn to Exhibit 3534, and I put it on the14

screen. Is that a graphic that you prepared?15

A Yeah. I think I can see that.16

Q Could you tell us what that shows?17

A Okay. Figure 1 below highlighted in yellow, we have the18

carton itself. You can sort of make out the bar code on the19

side of the carton which is seen more clearly in figure 220

where there, again, is a clock track kind of like we saw in21

the London Transport, that's the lower tier of rectangles, and22

then above that, we see either dark rectangles or the absence23

of a rectangle for the code on the carton.24

Returning now to figure 1, there is the component number25

ALLAIS - DIRECT0069

20 is the -- actually the scanning unit where the -- where the1

code is scanned, and then unit number 18 is a bank of switches2

that can be put in to say we want cartons number 14, 25 and 43

diverted into this particular place.4

You also see a -- 19 represents a kind of a5

mechanical device to shunt the carton off the conveyor.6

Q Could you turn to Exhibit 2902A? It's in the yellow7

book? Do you have that? 2902A?8

A Yeah, working on it.9

Q It's about halfway through the yellow book?10

A Yes, I have that. 11

Q Okay. 12

A Wait, wait, wait. Twenty --13

Q 2902?14

A No.15

Q Let me see.16

A Okay. Finally got it.17

Q Got it?18

A Yeah.19

Q Could you explain to us what 2902A is?20

A Yes, that's a claim chart that I've done for the21

Hipolanean patent, and that takes the various patents in suit22

together with the partnership's claim construction and aligns23

that with processes and elements within the Hipolanean patent.24

MR. McCABE: I offer 2902A.25

ALLAIS - DIRECT0070

THE COURT: Any objection to 2902A?1

MR. HOSIER: No.2

THE COURT: All right. That will be received.3

(Plaintiff's Exhibit No. 2902A admitted)4

BY MR. McCABE: 5

Q And I skipped, when we were talking about Pick, 3273A. 6

Could you turn to that?7

A Yes.8

Q Could you explain what 3273A is?9

A Yes. That's a claim chart that shows the 918 patent10

Claim 14 claim language in the left column, the Lemelson claim11

construction in the center column, and the corresponding12

activity described by the Pick article in the right hand13

column.14

MR. McCABE: I offer 3273A.15

THE COURT: Any objection to 3273A?16

MR. HOSIER: No.17

THE COURT: All right. That will be received as18

well.19

BY MR. McCABE: 20

Q Okay. And the next column in your summary chart, which21

was Exhibit 3532, listed the Stites patent, and I'd like to22

now turn to the Stites patent, which is Exhibit -- I have 38423

here, but it doesn't sound right. Give me one second. It is.24

THE COURT: 384?25

ALLAIS - DIRECT0071

MR. McCABE: I believe it is. Hold on.1

THE COURT: That could be right.2

MR. McCABE: Yes --3

THE COURT: Yeah.4

MR. McCABE: -- it is right. 384.5

THE COURT: 384.6

BY MR. McCABE: 7

Q Do you have that?8

A Got it.9

Q All right. Could you tell us when the Stites patent was10

filed and when it issued?11

A Yes. The Stites patent was filed in September, 1961, and12

issued December 21st, 1965.13

Q Who was the Stites patent assigned to?14

A That was assigned to Sylvania.15

Q Generally, what was your understanding of the problem16

that Stites was trying to solve and how did they solve it?17

A Well, Stites was solving the problem of keeping track of18

rail cars and other moving items such as trucks.19

Q And did --20

A And they solved that by putting a label on the side of21

the rail car which was scannable and building and constructing22

a scanner to scan, record and transmit that data.23

Q Have you prepared a short animation to show how Stites24

operated?25

ALLAIS - DIRECT0072

A Yes, I have.1

THE COURT: Let me just -- haven't we already2

received the -- maybe we have?3

THE CLERK: Yes, [inaudible].4

THE COURT: Yeah, I thought we had. Yeah. I think5

we had already previously received the Stites patent, haven't6

we?7

MR. McCABE: I'm sure we've received the --8

THE COURT: Yeah.9

MR. McCABE: -- Stites patent. 10

THE COURT: Okay. 11

MR. McCABE: Yeah.12

THE COURT: Okay. 13

BY MR. McCABE: 14

Q Could you tell us what's shown here?15

A Well, we see the side of a rail car and some block16

diagram overview of the processing within the Stites scanner.17

MR. HOSIER: What Exhibit is this?18

THE COURT: It's part of 384. It's actually --19

well, I take that back, this --20

MR. McCABE: It's the animation.21

THE COURT: -- this animation is not -- or this --22

MR. McCABE: No, no. And we gave it to you guys.23

(Off-record colloquy)24

MR. HOSIER: Exhibit number?25

ALLAIS - DIRECT0073

MR. McCABE: 3254D.1

THE COURT: Say it again?2

MR. McCABE: 3254D.3

BY MR. McCABE: 4

Q I'm sorry to interrupt. Could you --5

A No problem. I think I'm done with the first panel here.6

Q And could you tell us what's shown in this frame?7

A Well, we see a depiction of the rail car moving into8

place, and, of course, it doesn't really stop, it really9

whizzes by, but for our benefit, it's stopped here.10

THE COURT: We've already had a fair degree of11

testimony about this particular utilization of the vertical --12

MR. McCABE: Yes, exactly.13

THE COURT: -- bar codes, so, I don't know that you14

need to belabor it with this witness unless -- but we've --15

I've already heard what -- oh, goodness, I don't remember his16

name now --17

MR. McCABE: Mr. Collins?18

THE COURT: Yes, Mr. Collins had to say about it.19

MR. McCABE: That's fine. I mean, we'll just ask20

him to generally explain --21

THE COURT: All right. 22

MR. McCABE: -- his understanding of Stites.23

THE WITNESS: Yeah. We'll just go through this very24

quickly. Well, oh --25

ALLAIS - DIRECT0074

BY MR. McCABE: 1

Q No, we're just going to have you orally --2

A Oh, oh. Just go ahead. Well --3

Q -- explain it rather than walk through the animation.4

A Well, as you saw from Dave Collins's testimony, the5

scanner scans vertically and the collected data in the -- in6

the blue and orange channels is processed through and7

eventually either punches a tape, goes into a printer or some8

other --9

THE COURT: Does whatever --10

THE WITNESS: -- disposition of the data.11

THE COURT: -- you want to do with it to process12

whatever data you receive.13

THE WITNESS: That's right.14

BY MR. McCABE: 15

Q Okay. Could you turn to Exhibit 2900A in your book, it's16

in the yellow volume, the yellow one?17

A Okay. 18

Q Okay. Could you explain what's shown in Exhibit 2900A?19

A Well, 2900A is a set of claim charts aligning certain of20

the patents in suit with ** with the corresponding activities21

in the Stites patent. So it's my claim -- claim chart for the22

Stites patent.23

MR. McCABE: I offer Exhibit 2900A.24

THE COURT: Any objection to 2900A?25

ALLAIS - DIRECT0075

MR. HOSIER: No, Your Honor.1

THE COURT: That'll be received.2

(Plaintiff's Exhibit No. 2900A admitted)3

BY MR. McCABE:4

Q We'll turn to the next patent on your chart, which is the5

[Shawn patent, which is Exhibit 1676.6

A Yes, I have that.7

Q Would you tell us when the Shawn patent was filed and8

when it issued.9

A Yes. The Shawn patent was filed November 1970. And10

trying to -- trying to find the issue date here. Oh. 11

November 23rd, 1971.12

Q Okay. Who is the Shawn patent assigned to?13

A That was assigned to RCA Corporation.14

Q Okay. What is your understanding of the problem that15

Shawn was addressing?16

A Well, Shawn was addressing the problem of automated17

checkout in the supermarket in the time period before the UPC18

symbol was announced, and this was in fact RCA's attempt to19

solve that problem.20

Q Okay.21

MR. HOSIER: Objection. Again, goes way beyond22

what's in the patent.23

MR. McCABE: I think the patent addresses checkout,24

assigned to RCA, and then it's a bar -- it's a bar coding --25

ALLAIS - DIRECT0076

early bar coding patent that was actually used.1

MR. HOSIER: If they want to prove anything about2

what was done, they can bring in the witnesses. They've had3

witnesses that could have talked about the subject. They4

deposed them or got a hold of them, but they certainly didn't5

introduce it. Now they're trying to connect a patent with a6

commercial -- not commercial activity, but some test activity,7

and there is no linkage, and there is no personal knowledge.8

MR. McCABE: Well, I think --9

THE COURT: Well, I took it more a patent to solve a10

particular problem, is the way I understood it.11

MR. HOSIER: That I don't have a problem with, a12

statement that -- what the patent is about. It's trying to13

link it to something that was done in the real world that I14

have the problem with.15

THE COURT: All right.16

MR. McCABE: In fact, it was done in the real world,17

Your Honor, and I believe this witness can testify to that.18

MR. HOSIER: Well, if Mr. --19

THE COURT: It may have been.20

MR. HOSIER: -- McCabe wants to get on the stand and21

swear to that, that's fine. But I don't think it's22

appropriate for him to stand here and say it.23

THE COURT: Well, let me ask -- let me ask the24

witness.25

ALLAIS - DIRECT0077

Dr. Allais, do you know what development or1

utilization was made of this particular -- of any patented2

device here?3

THE WITNESS: Well, it's my understanding from being4

in the industry that this patent was basic to the device that5

was installed and operated for some many months in a Kroger's6

store in Ohio as -- as a proof of concept of scanning in the7

supermarket.8

THE COURT: We've had -- and this is the same matter9

that was testified to by Mr. Reinhold, was it, or --10

MR. McCABE: You might be thinking of Mr. Lauer.11

THE COURT: Mr. Lauer.12

MR. HOSIER: Lauer. Mr. Lauer testified generally13

to the subject, but he didn't link anything. And this14

witness, in a deposition that I took, said, I have no personal15

knowledge of any linkage between the patent and the activity.16

THE COURT: Okay. Just speed it along. The patent17

says what it says.18

MR. McCABE: Absolutely.19

MR. HOSIER: Right. That I agree.20

THE COURT: Let's just confine it to that and not21

imbue the witness with some knowledge that maybe he's heard of22

-- I'm not suggesting he hasn't -- but that he has no --23

MR. MCCABE: Sure. I believe Mr. Lauer testified24

about having seen the system operate.25

ALLAIS - DIRECT0078

THE COURT: He did testify regarding the Kroger test1

store and so forth. I just couldn't remember which witness it2

was that had said that. But --3

BY MR. McCABE:4

Q Okay. Have you prepared a graphic to explain part of the5

Shawn patent?6

A Yes. If you can help me find it.7

Q It's Exhibit 3535. And that should be --8

THE COURT: It's on the screen.9

MR. McCABE: Yeah.10

BY MR. McCABE:11

Q Could you explain Exhibit 3535.12

A Yes. We've -- this is taken from Figure 1 of the patent,13

and we've highlighted certain pieces of this in yellow just to14

follow along. On the left, Item 26 is a laser, helium-neon15

laser tube, which is imaged through a lens to a rotating16

polygon mirror which causes the laser line to scan across the17

bottom of a -- of a product on the -- being checked out. 18

Actually, the circular bar code is -- you can't see it from19

here, but it's on the bottom of the can of peas here and comes20

down to a photomultiplier tube, a signal is amplified in21

number 44.22

There's an edge-finding circuit similar to what we see in23

Symbol products here, and in 58 and the surrounding circuitry24

this is processed down into a counter 98 or a counter 104,25

ALLAIS - DIRECT0079

depending on where the scan is. These counters are compared1

to be sure that the outside in and the inside out signals are2

mirror images of each other so they don't misscan an item. 3

That data is then transferred forward into a further decode4

processing and fenced to a computer which looks up price and5

description.6

Q And let me -- let me turn to the next page in the7

graphic, which shows Figures 2 and 3 of Shawn. Could you8

just --9

A Figure 2 of the -- my screen is real blurry, but the10

exhibit is quite clear, the printed exhibit. Figure 211

actually shows the RCA bull's-eye symbol that was printed and12

put on the bottom of the grocery items. And then in Figure 313

we see in A is like a slice of the dark and light areas in14

that symbol, and C is a very idealized analog signal. But15

here they didn't have much depth-of-field problem, so maybe it16

did look that good. And D is little peaks identifying the17

edges between the bars and spaces, and then E is what we've18

been calling a digitized bar pattern.19

Q Thank you. Could you turn to Exhibit 2903A. Do you have20

that exhibit?21

A Yes.22

Q Could you explain what that is.23

A Yes. This is my claim chart for various of the claims in24

suit and the Lemelson Partnership's construction of that claim25

ALLAIS - DIRECT0080

together with the activity going on in the Shawn patent that1

corresponds to each claim element.2

MR. McCABE: I offer Exhibit 2903 [sic].3

THE COURT: Any objection to 2903A?4

MR. HOSIER: No.5

THE COURT: All right. That will be received.6

(Plaintiff's Exhibit 2903A admitted)7

BY MR. McCABE:8

Q Just returning for a brief second to Exhibit 3532, which9

was your summary chart. And I put that on the screen, okay. 10

Just so it's clear, for each of the boxes that you've checked11

you've presented a claim analysis that shows in your opinion12

that each of the elements of a checked claim is disclosed in13

that piece of art; is that correct?14

A Yes. Each of the red check-marked claims would have been15

shown by the corresponding piece of art.16

Q Now I'd like to turn to Kar Trak briefly. Dr. Allais,17

have you considered whether Kar Trak -- whether the asserted18

claims read on the Kar Trak system?19

A Yes.20

Q Have you -- which installations of Kar Trak have you21

considered?22

A Well, I considered three installations, the Boston &23

Maine installation, the New York Transit Authority24

installation, and the Duluth, Mesabi & Iron Range Railroad25

ALLAIS - DIRECT0081

installations.1

Q And could you turn to Exhibit 3536, please.2

A Okay.3

Q Is that your summary chart? And could you explain what4

it is.5

A Yes.6

MR. HOSIER: Your Honor, before the witness answers,7

I'd like to interpose an objection here.8

THE COURT: To his chart?9

MR. HOSIER: To his chart, because it will get us10

off into an excursion to which I have an objection to the11

whole line of testimony. The Boston & Maine Railroad subject12

matter, of which they're going to produce charts, and the13

Duluth, Mesabi, Iron Range Railroad, which is that video we14

didn't watch, one, on the Duluth, Mesabi Railroad video the15

witness testified that he only looked at it as a -- I think a16

historical note or something of that sort. There were no17

charts produced, it's not part of his expert report, neither18

one of these. The New York City Transit Authority is, and I19

don't object to that one. But the other two are not found in20

his expert report, and the testimony was directly to the21

effect, "I did not explicitly rely on the videotape except as22

an anecdotal piece of history."23

MR. McCABE: Your Honor, they're both found in the24

expert report.25

ALLAIS - DIRECT0082

MR. HOSIER: Not in any charts that were attached to1

the expert report that they have relied on for intervening2

rights.3

THE COURT: Mr. McCabe.4

MR. McCABE: If you'd turn to Exhibit 1 of Dr.5

Allais's prosecution laches expert report dated August 19th,6

2002 --7

THE COURT: I don't believe I have that in front of8

me. Yeah. Thanks.9

MR. HOSIER: I'm sorry, Phil. Where is it? Which10

one?11

MR. McCABE: Exhibit 2.12

THE COURT: Exhibit 2, you said?13

MR. McCABE: Yes, sir.14

THE COURT: All right.15

MR. McCABE: I'm sorry. Exhibit 1. Exhibit 1. 16

Exhibit 1.17

THE COURT: Exhibit 1 of Plaintiff's 2895. And that18

bears a separate marking, 2899.19

MR. McCABE: Correct.20

THE COURT: Uh-huh. Okay.21

MR. McCABE: And there you'll see in the third22

column reference to New York City Transit Authority and the23

Kar Trak video.24

MR. HOSIER: I don't have that -- I don't have that25

ALLAIS - DIRECT0083

problem with regard to --1

MR. McCABE: Can I finish?2

MR. HOSIER: I'm sorry. Go ahead.3

MR. McCABE: Thank you.4

And if you'd turn to page 5 of the expert report,5

there's reference to the Boston & Maine Railroad.6

THE COURT: Bear with me.7

MR. McCABE: Under --8

THE COURT: Page 5 of the --9

MR. McCABE: Of the expert report itself.10

THE COURT: Oh. Of the report itself.11

MR. McCABE: Of the report. I'm sorry, Your Honor. 12

Of the report, under "1961."13

THE COURT: Got it. Okay.14

MR. McCABE: There's reference to the Boston & Maine15

Railroad. And then what happened, Your Honor, is we produced16

this expert report, and I believe Dr. Hunt was critical of us17

having put the Sylvania New York City proposal together with18

the Kar Trak video in a single chart, so what we did was break19

it apart, and then we provided another chart of the Boston &20

Maine Railroad, which counsel has had for over a week with no21

objection.22

MR. HOSIER: Well, when am I supposed to object,23

before you go to court?24

MR. McCABE: You were more than welcome to raise the25

ALLAIS - DIRECT0084

issue. But go ahead.1

THE COURT: Well, the objection's being made now. 2

And go ahead.3

MR. McCABE: Yeah.4

MR. HOSIER: And, Your Honor, as you'll see, the5

chart in the back -- I don't have any objection to them having6

the New York City Transit proposal --7

THE COURT: Right.8

MR. HOSIER: -- and the associated video to the9

extent they want to rely on it. But, as the witness said, he10

only looked at it as anecdotal history and not for anything11

substantive.12

THE COURT: Your objection to the latest chart goes13

to the column that purports to summarize the Boston & Maine14

Railroad, May 1961, and the Duluth, Mesabi & Iron Range15

Railroad 1965.16

MR. HOSIER: Yeah. They now break those apart.17

Those aren't the video that's there. They break those apart,18

put them in two separate columns, create two separate new19

expert report charts totally outside of the scope of the20

expert report that was submitted in the case. They I think21

can properly rely on the New York Transit. Those other two22

never have been in this case.23

THE COURT: All right.24

MR. McCABE: They're referenced in the report as25

ALLAIS - DIRECT0085

I've pointed Your Honor to, and I don't believe there's any1

requirement to make -- to make charts for every report.2

MR. HOSIER: No. The only way they're --3

MR. McCABE: We're doing this now --4

MR. HOSIER: I'm sorry.5

MR. McCABE: -- to speed the testimony along.6

MR. HOSIER: The only way they came in the expert7

report, he's got a chronological history, which is what the8

Court kept out of the record the other day. And one of the9

items mentioned on this chronological history that was outside10

of the testimony of the witness is this Mesabi, Iron Range11

video and activity, I should say.12

MR. McCABE: Your Honor --13

MR. HOSIER: And it's not reflected in the video. 14

It's --15

THE COURT: Well, look. I'll let the witness use16

the chart to illustrate his testimony. We don't have to17

receive charts in -- summaries of charts into evidence anyway. 18

But I may receive this. I'm not sure that -- you know, if19

it's inaccurate in any way, I'd certainly --20

MR. HOSIER: What's most important to me is that21

there must be some reason they're going beyond what they had22

before and are going to try and convey something to this23

videotape that's not there -- 24

THE COURT: Well, no. As I understood the --25

ALLAIS - DIRECT0086

MR. HOSIER: -- convey something --1

THE COURT: As I understood Mr. McCabe, what he's2

representing is that what's reflected on the chart simply3

reflects what's contained in the text of the expert report.4

It doesn't -- it doesn't do more than what's in the5

text of the report, does it?6

MR. HOSIER: Well, this is a prelude to where he's7

going next, which is --8

THE COURT: Well, just answer that first. I mean --9

MR. McCABE: Yeah. In the expert report we10

referenced the three installations.11

THE COURT: Right.12

MR. McCABE: Attached to the expert report was a13

claim chart that went through and detailed two of them, New14

York City and the Duluth, Mesabi. We submitted that to15

defendants in August. We waited, we waited, we raised the16

issue with the Court, trying to get their prosecution laches17

reports. We did not get theirs until the end of October, at18

which point they criticized our charts. So we went back and19

tried to overcome their criticism. We provided those charts,20

and we heard nothing from them until today.21

MR. HOSIER: But they're not overcoming our22

criticism. They're -- what they're trying to do is to do23

something different than they had done before and to try and24

get into evidence -- this Boston & Maine Railroad, there isn't25

ALLAIS - DIRECT0087

a single shred of paper, nothing that discloses what this is.1

THE COURT: I'll tell you what. Let's move forward. 2

I'll reserve ruling on whether to receive --3

What's the number again of the chart?4

MR. McCABE: 3536, Your Honor.5

THE COURT: -- 3536, on whether to receive that6

chart into evidence in its entire form or its entirety until7

after cross-examination. Okay.8

MR. McCABE: Thank you.9

THE COURT: Go ahead.10

THE COURT: In fact, this might be probably a good11

time for a -- for a brief recess. How are we doing timewise,12

Mr. McCabe?13

MR. McCABE: Very good. I probably have maybe a14

half hour more.15

THE COURT: Okay. Let's take -- let's take a 10-16

minute break, and then we'll reconvene at about 3:00 o'clock,17

maybe a couple of minutes after 3:00, Donna.18

(Court recessed at 2:52 p.m., until 3:10 p.m.)19

THE COURT: Have a seat, everyone.20

Okay, Mr. McCabe, you can proceed.21

MR. McCABE: Thank you, Your Honor.22

BY MR. McCABE:23

Q I think before the break we were talking about Exhibit24

3536 --25

ALLAIS - DIRECT0088

THE COURT: Correct.1

BY MR. McCABE:2

Q -- which was the summary chart. Do you have that? It's3

probably the last --4

THE COURT: It's on the -- 5

MR. McCABE: It's on the screen.6

THE COURT: -- screen, as well.7

THE WITNESS: Oh. Oh, that one. Okay.8

BY MR. McCABE:9

Q Could you just walk us through that chart again. I'm not10

sure we got a full explanation.11

A Oh. Yes. Across the top are listed the three12

implementations of Kar Trak that we've been discussing, and on13

the left column are I think each of the claims asserted14

against the Symbol products, and, again, the red check marks15

indicate that to the extent the Court decides that the Symbol16

products infringe, then these patents would have practiced all17

the elements of each of those checked claims.18

Q Now, you said patents. I think --19

A Well, I meant -- I meant installations.20

Q Thank you. Could you explain what your opinion is based21

on.22

A Well, my opinion for the Boston & Maine and the Duluth,23

Mesabi & Iron Range Railroad is largely based on Mr. Collins's24

testimony in which he indicated that the Kar Trak system was25

ALLAIS - DIRECT0089

unchanged as it went through these various installations.1

Q Is it your opinion that all of the claims checked on2

Exhibit 3536 under Boston & Maine read on the Boston & Maine3

installation?4

A Yes.5

Q Okay. Is it your opinion that all of the claims checked6

in Exhibit 3536 read on the New York City installation?7

A Yes.8

Q And is it your opinions that all of the claims checked9

under Duluth, Mesabi & Iron Range Railroad read on the Duluth,10

Mesabi, Iron Range Railroad installation?11

A Yes.12

Q Could you turn to Exhibits 2899A.13

A Did you say 28?14

Q 2899A. Could you explain what that exhibit is.15

A Yes. This is my claim chart for the various patents that16

are applicable to the Boston & Maine Railroad.17

MR. HOSIER: And, Your Honor, this again is a --18

this is the chart that didn't exist in the expert report, was19

not part of anything, and, frankly, I'm not sure why they use20

it. Because on their chart that they have on the monitor for21

the New York Central -- or New York City Transit Authority,22

they've got it checked all the way down anyway. So this23

purports to be, I guess, redundant, and therefore I don't24

understand it.25

ALLAIS - DIRECT0090

And secondly, there is nothing in the expert report1

to support it, and there's nothing by way of reasonable2

testimony to support it. We have 41-year-old testimony on3

Boston & Maine without a single document as to what physically4

was actually there. And the Mesabi, we've got a videotape5

that's got a three-page audio track, and we have nothing as to6

what was there. And that's 37 years old. I don't -- and I7

don't see the point of it.8

MR. McCABE: May I respond, Your Honor?9

THE COURT: Yes.10

MR. McCABE: First, in terms of whether it's11

redundant or not, if Counsel's conceding that New York City is12

a prior use that the claims read on, then it would be13

redundant. But I don't think Counsel is here to concede that.14

Secondly, I think Counsel points out exactly the15

problem with the laches issue here, that the evidence is so16

old. Because Mr. Lemelson waited 30, 40, whatever number of17

years to put these claims in. So it's not very easy to go18

back and get perhaps the level of documentary evidence that19

Counsel would like to hold us to because Mr. Lemelson waited20

so long.21

THE COURT: Well, the third part of the argument I22

think is that the 2899 series, A, B --23

MR. McCABE: Yes.24

THE COURT: -- and C, A, which relates to the Boston25

ALLAIS - DIRECT0091

& Maine Railroad, and C, which relates to the Duluth, Mesabi,1

and Iron Range Railroad 1965, are charts that were not2

previously produced, as I understand it, whereas the 2899B,3

relating to the New York City Transit Authority, was4

apparently produced --5

MR. McCABE: But that --6

THE COURT: -- and is not objected to.7

MR. McCABE: Could I comment on that, Your Honor?8

THE COURT: Yes.9

MR. McCABE: That's not exactly correct. The chart10

that was in the expert report in August had a column that11

included the New York City and the Duluth, Mesabi. We've12

simply broken that apart into two separate charts. The expert13

report also referenced the Boston --14

THE COURT: The content of it is otherwise the same,15

it's just formatted differently, or --16

MR. McCABE: Well, it's formatted differently, and17

the content would be changed a little bit in that --18

MR. HOSIER: That's the point.19

MR. McCABE: May I address that, Mr. Hosier?20

THE COURT: Well, hold on. Yeah. No. Go ahead.21

MR. McCABE: The content is -- might be a little22

different in that the New York City we have a printed document23

that we were quoting from; and we did not want to put things24

in quotes, in the Duluth, Mesabi, because -- it's the same25

ALLAIS - DIRECT0092

information, but that's how it changed.1

THE COURT: Well, look. The simplest thing to do,2

again, is to let the witness testify subject to striking. 3

I'll reserve receiving 2899A or 2899C until after cross-4

examination. I will receive 2899B, which I understand has5

previously been produced.6

(Plaintiff's Exhibit 2899B admitted)7

MR. HOSIER: Your Honor, I just want to note when I8

took the deposition, and I'm trying to rely on this for9

preparation for trial, I asked:10

"Did the videotape disclose to you anything about11

the structure and operation of the Kar Trak system12

in terms of the claim elements?13

"Answer: I did not explicitly rely on the videotape14

except as an anecdotal piece of history."15

Now I have the witness on the stand testifying16

precisely to the opposite about that videotape. And I think17

it's inappropriate when it's not in the expert report and I18

have that kind of testimony.19

THE COURT: Well, it may be. And if I agree with20

you, I won't receive the exhibit and I'll strike the testimony21

that goes to that. But --22

MR. McCABE: Your Honor, since the deposition of Dr.23

Allais was taken Mr. Collins was here and testified about24

Boston & Maine and the operation of that, and we're relying on25

ALLAIS - DIRECT0093

that testimony as part of our case. It was not possible --1

THE COURT: All right. Well, let's let the witness2

tell us what he's relying on. I think that would be the3

most --4

MR. HOSIER: Mr. Collins had testified by deposition5

in advance of the expert report being given.6

THE COURT: I know. And he's -- well, and he's also7

testified here at trial. But --8

MR. HOSIER: And he's been on the payroll for nine9

months, Mr. Collins.10

THE COURT: All right. Let's go ahead, Mr. McCabe. 11

Finish -- proceed with your examination of the witness here.12

MR. McCABE: Thank you.13

BY MR. McCABE:14

Q With respect to the Boston & Maine Railroad --15

A Yes.16

Q -- what is your opinion based on?17

A Well, my opinion is based on Mr. Collins's testimony that18

this installation was of the same device, i.e., the Kar Trak19

scanning system, as was documented in the New York Transit20

Authority.21

THE COURT: And you say based on Dr. -- I'm sorry --22

THE WITNESS: Based on Mr. Collins's testimony.23

THE COURT: -- Mr. Collins's testimony at trial?24

THE WITNESS: At trial, yes, that this was the --25

ALLAIS - DIRECT0094

THE COURT: All right. Had you reviewed his1

deposition testimony prior to preparing your report in August,2

the Exhibit 2895?3

THE WITNESS: Yes, I had reviewed his deposition,4

sir.5

THE COURT: All right. But you didn't -- or did you6

rely on it in preparing your expert report?7

THE WITNESS: Well, I did in general. But, as I8

recall, at trial Mr. Collins specifically stated that the9

Boston & Maine and the Duluth, Mesabi & Iron Range were the10

same system as was implemented in New York Transit Authority.11

MR. HOSIER: And the only thing I'd like to add,12

Your Honor, is I didn't take Mr. Collins's deposition. They13

took his deposition. I cross-examined.14

THE COURT: Okay. All right. Well, let's -- 15

MR. HOSIER: So --16

THE COURT: Let's move on and let Mr. McCabe finish17

his direct with this witness.18

MR. McCABE: Thank you.19

BY MR. McCABE:20

Q With respect to the New York City Transit Authority, did21

you rely on Exhibit 380? It should be in the blue book. I22

don't know if you have the blue book there.23

A Yes.24

Q Did you also rely on Mr. Collins's testimony?25

ALLAIS - DIRECT0095

A To the extent of elaborating on the system, it was1

helpful.2

MR. HOSIER: Your Honor, I'm sorry to keep popping3

up, but may I ask whether the Court's copy of Plaintiff's4

Trial Exhibit 380 has consecutive pages in it? Mine has 0735

and jumps to 075.6

THE COURT: Mine does, too.7

MR. McCABE: Mine does, too.8

MR. HOSIER: Well, it's very interesting, because9

the page that's omitted is the page on confidentiality, which10

I would like to show the Court. May I?11

THE COURT: Sure. Wasn't 380 received previously?12

MR. McCABE: Yes, Your Honor, it was. I think the13

copy in the book -- I can't explain what happened here.14

MR. HOSIER: I guess it's a --15

THE COURT: I thought we'd received it during the16

testimony of Mr. Collins, but --17

MR. McCABE: I believe that's correct, Your Honor.18

MR. HOSIER: Well, we did, Your Honor. The only19

thing is, now, when it's presented to the witness, page 074 is20

removed about which I examined Mr. Collins, and I find it --21

you know, another one of these transitions maybe from Word to22

Word Perfect. I can't understand why they've tampered with23

the Court's exhibit and given a different exhibit to this24

witness.25

ALLAIS - DIRECT0096

THE COURT: Hold on just a second. I've got the --1

MR. McCABE: I'd just like to state that we resent2

the implication.3

THE COURT: Okay. Well, we don't -- let's just --4

I'll tell you what.5

Anita -- I'm sorry. Donna, remove 380 from the6

book, the exhibit book, and we'll use the 380 that's in7

evidence that has the page 2 -- well, it's not really page 2,8

it's the second page, 000074, and just put that in front of9

the witness, and you can toss the other one. Okay.10

MR. McCABE: I apologize for the missing page, Your11

Honor.12

THE COURT: All right. Have you seen Exhibit 380 in13

the form with that second page, "Proposal For An Automatic14

Urban Transit Vehicle Identification System" before?15

THE WITNESS: Yes, I certainly have. And I did not16

proofread these exhibits to see if there were missing pages.17

THE COURT: Okay. All right. All right. Go ahead.18

BY MR. McCABE:19

Q Okay. Turning to the Duluth, Mesabi & Iron Range20

Railroad on your chart, what do you rely on -- what did you21

consider in forming your opinion with respect to that one?22

A Well, I considered Mr. Collins's testimony that that23

installation was the same as that in the New York Transit24

Authority.25

ALLAIS - DIRECT0097

Q Okay. Did you review the videotape?1

A I also saw that as evidence that it really existed.2

MR. McCABE: Well, I'd like to offer the claim3

charts.4

THE COURT: Well, I'm going to reserve receipt of5

those.6

MR. McCABE: I understand that.7

THE COURT: But I'll let the witness -- if you have8

something you wanted to elicit from the -- further from the9

witness about it, go ahead.10

MR. McCABE: No, we -- he's already given his11

opinion that he believes they read on it.12

THE COURT: All right. Well, your offer right now,13

I'll simply reserve ruling till after cross-examination, and14

I'll make a determination then.15

BY MR. McCABE:16

Q Okay. I'd like to change gears now. Yesterday, Dr.17

Allais, you testified that you invented [Interleaved 205 bar18

code symbology in 1972. Prior to that development was there a19

205 bar code symbology?20

A Yes, there was. And that was developed by Identicon21

Corporation some years earlier, I believe in 1968.22

Q Are you familiar with the concept of Delta Distance A23

Code?24

THE COURT: Say again?25

ALLAIS - DIRECT0098

MR. McCABE: Delta Distance A Code.1

THE COURT: All right.2

THE WITNESS: Yes. Delta Distance A and also Delta3

Distance B and C were proposed in an important paper by Paul4

McEnroe, who had been my colleague at IBM. And, to my5

knowledge, it was the first time that the problem of ink6

spread in printing was recognized and a structural7

characteristic of bar code symbology was recommended whereby8

the decoder would consider the leading edge of a bar to the9

leading edge of the next bar and the trailing edge of a bar to10

the trailing edge of the next bar as its measurements, which11

would be unaffected by ink spread. This was a tremendous12

contribution to the intellectual makeup of bar codes, and in13

fact UPC symbol was based on that, and the great majority of14

the subsequent symbologies have used that principle.15

Q Did you have any role or were you present in 1974 when16

bar code scanners were being used at the Marsh Supermarket in17

Troy, Ohio?18

A Well, I was -- physically visited that store during the19

startup process, because my company, Intermec, had sold these20

printers that I described yesterday, and they were a very21

important part of that, because we didn't have the markings on22

the products that we do now, so they had to print stickers and23

put on there to demonstrate the feasibility of scanning. So I24

was definitely there in 1974.25

ALLAIS - DIRECT0099

Q Are you familiar with Code 128 bar code symbology?1

A Oh, very much so.2

Q Who developed that, and when?3

A That was developed by Ted Williams, then of Computer4

Identics, as a fine contribution to the field.5

Q And approximately when was that?6

A It was about 1981.7

Q Are you familiar with the U.S. military's LOGMARS use of8

bar codes?9

A Oh, very much so. That was a critical event for10

Intermec, because we spent years showing them the virtues of11

Code 39, and when they adopted that in I believe about 1982,12

that was a tremendous event for the industry.13

Q Could you briefly tell us what LOGMARS is.14

A Well, it was logistics -- the first letter stands for15

logistics in automated marking and symbols. I forget the16

exact acronym, but you know how the military is. And it17

resulted in requiring all material shipped to the Department18

of Defense to have the military part number in Code 39 bar19

code. So that was a tremendously big event for the industry.20

Q Did the automotive industry group adopt Code 39, also?21

A Well, a year later, in 1983, the automotive industry,22

through the Automotive Industry Action Group, standardized on23

Code 39 in a variety of ways for marking inventory items,24

parts, actually, from parts suppliers to be shipped in to the25

ALLAIS - DIRECT00100

car factories.1

Q At some point did the National Retail Merchants2

Association adopt the UPC?3

A Yes. That was perhaps 1986, '87, something in that time4

frame. Previously they had standardized on optical character5

recognition, which was a -- a kind of a funny-looking font on6

the little tickets in a department store. Little bit hard for7

humans to read. But when UPC became a great success, they8

abandoned that and adopted the UPC symbol.9

Q Is optical character recognition a form of bar code?10

A No.11

Q Dr. Allais, would you please tell us the differences, if12

any, between a series of black and white stripes like, for13

example, what you might see in a crosswalk and a bar code14

symbol?15

A Well, a crosswalk doesn't encode any data. A bar code16

symbology is carefully designed not only to encode data, but17

to do it in a way that when it's decoded there's a very small18

probability of getting the wrong data. All of the good19

symbologies have redundancies in internal checking20

characteristics which make them very solid for carrying data. 21

Typically a bar code has wide and narrow bars and spaces in22

certain relationships. Some of them have multiple widths, et23

cetera, et cetera, but it's very different from just a cross-24

hatching of lines.25

ALLAIS - DIRECT00101

Q Briefly, how is a bar code decoded?1

A Well --2

Q Just high-level view.3

A Very briefly, by subjecting the counts of transitions4

between light and dark to mathematical algorithms executed by5

a computer.6

Q Do the Lemelson patents disclose the use of any bar or7

bar-like elements as a code?8

A No, it does not.9

MR. HOSIER: Objection. This is beyond the scope of10

the expert report. He's never interpreted the Lemelson11

patents.12

THE COURT: I think we went through this yesterday.13

MR. McCABE: Well, I went back and read the expert14

report, Your Honor, and it's certainly in there. Perhaps we15

can show it to the Court.16

THE COURT: Just refer me to the -- I've got a copy17

of the report now.18

MR. McCABE: I don't know if you have the correct19

report. That's the prosecution laches report.20

THE COURT: Oh. I'm sorry. Okay. What page of the21

report?22

MR. McCABE: It's on page 6, paragraph 28, Your23

Honor.24

THE COURT: Seems to me it is.25

ALLAIS - DIRECT00102

MR. HOSIER: Well, I agree it's -- that the words1

are there.2

THE COURT: All right. Well, the objection's3

overruled. The answer will stand.4

BY MR. McCABE:5

Q Let me re-ask the question. Do the Lemelson patents6

disclose the use of any bar or bar-like element as a code?7

A No.8

Q Do the Lemelson patents disclose the use of a succession9

of bars as a code?10

A No.11

Q Do the Lemelson patents disclose an arrangement of bars12

and spaces that have a relationship to one another to form a13

code?14

A No.15

Q Do the Lemelson patents disclose any predefined patterns16

and rules of bar code symbology?17

A No.18

Q Let me ask you more broadly. Do the Lemelson patents19

disclose any bars marks, production marks, alternating light20

and dark areas that are arranged in patterns so as to encode21

information?22

A No.23

Q Do the Lemelson patents disclose any algorithms for24

decoding bar codes, marks, or any other pattern?25

ALLAIS - DIRECT00103

A No.1

Q Do the Symbol bar code scanners measure or detect2

defects, scratches, marks, holes, or discolorations in the3

object being scanned?4

A No. Symbol bar code scanners do the best they can to5

ignore any kind of defects in the printing.6

Q In your -- well, do any of the Lemelson patents disclose7

any symbologies?8

A No, they do not.9

Q Do any of the Lemelson patents -- I'm talking about the10

ones in the suit -- teach any algorithms necessary for bar11

code reading?12

A No.13

Q In your opinion do the Lemelson patents in suit deserve14

any credit for the development of bar code as it's practiced15

today?16

A No. Because bar code today was developed quite17

independently of anything in those patents.18

Q Did you conduct a search of the United State Patent19

Office's electronic database for patents assigned to Symbol20

Technologies?21

A Yes, I did.22

Q Approximately how many patents did you find?23

A Well, it was five hundred and some-odd.24

Q Did you conduct a second search to determine how many of25

ALLAIS - DIRECT00104

those 500 or so patents assigned to Symbol had a Lemelson1

patent cited against them as prior art?2

MR. HOSIER: This is definitely beyond the scope of3

any expert report.4

MR. McCABE: I'm not going to ask him for an5

opinion. These are just facts.6

MR. HOSIER: Well, this is argument, and it's going7

to be introduced through somebody else. It's not in the8

expert report. I think Mr. McCabe -- none of this testimony9

is.10

THE COURT: None of which testimony?11

MR. HOSIER: None of this reference to looking at12

any Symbol patents and doing searches in the Patent Office and13

so on. Not even alluded to in the remotest way.14

THE COURT: If it's not a predicate to an opinion of15

his, what's the relevance whether he searched patents or --16

MR. McCABE: We just want to establish that of the17

500 or more Symbol patents, many of which relate to bar code18

and bar code scanning, the United States Patent Office --19

THE COURT: Symbol patents, you mean Lemelson --20

MR. McCABE: No. Symbol patents?21

THE COURT: Symbol. Okay. I'm sorry. Of the 50022

Symbol patents --23

MR. McCABE: -- that relate to bar codes, bar code24

scanning, bar code technology, the United States Patent Office25

ALLAIS - DIRECT00105

has not cited a single Lemelson patent as prior art against1

any of those.2

MR. HOSIER: You know, if they wanted to make this3

argument, they could have done it through their own Symbol4

witnesses.5

THE COURT: Yeah, I'll sustain the objection as to6

this witness testifying to that.7

MR. McCABE: Well, I hate to end on a sustained8

objection, but that's where we are.9

MR. HOSIER: I'll let you ask another question10

without objection.11

MR. McCABE: No, that's --12

THE COURT: Well, you just shortened -- you just13

shortened the time for cross-examination to two hours and14

fifty-one minutes, so -- that's what Mr. Hosier has, so --15

MR. McCABE: I have a list of exhibits that were16

referred to today, and I'm going to work with Mr. Hosier to17

make sure we're in agreement before I offer them.18

THE COURT: Sure. Great.19

All right, Mr. Hosier, why don't we go ahead and20

begin your cross, then.21

MR. HOSIER: You're working me pretty hard today,22

Judge. I was in a deposition at 8:00 o'clock this morning.23

THE COURT: And I hope you all got that wrapped up.24

MR. HOSIER: Yes.25

ALLAIS - DIRECT00106

THE COURT: Good. Well, at the rate we're going,1

you'll need to have Mr. Williamson here, I guess, certainly2

Thursday morning. So --3

MR. HOSIER: That would be our plan, I think, Your4

Honor.5

THE COURT: Good.6

MR. HOSIER: It'd be Thursday morning.7

MR. LISA: Thursday morning would be fine.8

THE COURT: Well, unless he's here -- it depends how9

long you've got in cross. We could even start him tomorrow10

afternoon, if he's here.11

MR. LISA: We could probably start some of the12

original stuff tomorrow. I mean -- we have a full day13

tomorrow, or half?14

THE COURT: No. Half day tomorrow.15

MR. LISA: Tomorrow afternoon?16

THE COURT: But let's get --17

MR. LISA: We'll have him available tomorrow18

afternoon.19

THE COURT: Yeah. Let's get started with cross.20

MR. HOSIER: We've gone from slow to maybe moving a21

little quicker, I hope.22

CROSS-EXAMINATION23

BY MR. HOSIER:24

Q Sir, you joined Intermec as a startup company in '68, as25

ALLAIS - DIRECT00107

you testified; correct?1

A Yes, that is correct.2

Q And for 14 years, from '73 to '87, you were its president3

and CEO; correct?4

A That would be the right interval.5

Q And during the entirety of that time you were president6

and CEO you were doing business with Symbol and other bar code7

equipment makers; correct?8

A Well, I think it's fair to say that the business that9

Intermec did with Symbol Technologies occurred somewhat on and10

off during that 14-year period.11

Q Well, actually, let me take that back. It would have had12

to start in about late '70s, when you bought the Laser Check?13

A That would have been our first actual piece of business14

with Symbol, yes.15

Q Intermec is -- and in fact you stayed with Intermec --16

you left in September 1988, but had a five-year consulting17

agreement with them and were therefore associated with the18

company until September 1993; correct?19

A In a formal sense. But that was really just an exit20

compensation package.21

Q But it was a formal consulting agreement, and you had an22

arrangement and consulting package and financial remuneration23

from them for five years?24

A That's correct.25

ALLAIS - DIRECT00108

Q And Intermec is one of the plaintiffs in this case; is it1

not?2

A I believe that's true.3

Q And you, while still on that consulting contract with4

Intermec, were retained by Ford and Motorola as an expert in5

the Ford case; correct?6

A That's correct.7

Q And from 1989 to the present you've been in the current8

business that now is known as Path Guide; right?9

A That's correct.10

Q And your business in Path Guide is consulting for and11

supplying equipment to bar code users?12

A That's correct.13

Q And you are a business partner of Symbol Technologies in14

that business; correct?15

A That would not be correct.16

Q You're not aware of a Symbol Technologies press release17

identifying Path Guide as a business partner of Symbol?18

A Maybe you could refresh my memory by showing me that19

press release.20

Q Defendant's Trial Exhibit 2220 I'll ask be shown to you.21

And while we're looking for that, let's see if we can22

make some progress on some other items.23

At Path Guide and for the last time period from '8924

through the present Symbol has been one of your suppliers, as25

ALLAIS - DIRECT00109

well; right?1

A Only occasionally through a reseller.2

Q But they have been a supplier?3

A Almost vanishingly small in that sense.4

Q Intermec and Zebra have been suppliers; correct?5

A Intermec and Zebra have been suppliers.6

Q Both of them are plaintiffs in this case; correct?7

A I believe that's correct.8

Q [PFC and Telzon have been suppliers to your business;9

correct?10

A Excuse me. What was the first company?11

Q PFC and Telzon.12

Q Almost vanishingly small.13

Q Both of them?14

A Well, Telzon maybe once in perhaps 1991 or '2, and PFC15

occasionally, but only for their verifier product line.16

Q And those are likewise plaintiffs in this case; correct?17

A I don't have personal knowledge of that, but I've been18

told that.19

Q Well, you know that Telzon has been acquired by Symbol;20

correct?21

A That's what the press release says, yes.22

Q And you've been an expert witness in a prior case for23

Symbol; is that right?24

A That's -- that's correct.25

ALLAIS - DIRECT00110

Q And that was the Opticon case?1

A That was the Opticon in the United Kingdom case.2

Q And in that case Mr. Collins was an expert witness for3

Opticon; is that right?4

A I believe that's correct.5

Q And Mr. Collins was offering testimony that the Kar Trak6

activity anticipated or rendered obvious Mr. Swartz's patent7

that we've been discussing here, Plaintiff's Exhibit 390, the8

hand-held scanner.9

A Well, I didn't hear his testimony, so I can't -- I have10

no comment on what he was offering.11

Q Well, you understood that was his role in the case, did12

you not?13

A Well, we could -- I don't recall today his exact14

structure of testimony, but I knew he was on the other side.15

Q Well, and Symbol, and you as their expert, were taking16

the position that the Kar Trak activity was different from17

what was done by Symbol, weren't you?18

A Well, there you're looking at --19

Q Yes or no?20

A Yes, in the sense of claim infringement down at the21

detailed level of a particular patent.22

Q All right. So you were --23

MR. McCABE: Your Honor, I'm going to object.24

THE COURT: Hold on one second.25

ALLAIS - DIRECT00111

Mr. McCabe.1

MR. McCABE: I object on relevance, and I think it's2

misleading. We're talking about now a Swartz patent that's3

not in suit here. The issue in this case is whether the4

Lemelson claims read on Kar Traks, whether the Lemelson claims5

read on the use of a Symbol product.6

THE COURT: All right. Mr. Hosier, what about that?7

MR. HOSIER: Well, number one, it's a speaking8

objection. Number two, the fact is the Swartz patent has been9

represented as being the LS100, the LS1000, and there's been10

representation that the all of the products of Symbol are the11

same for purposes of this case. And now the Kar Trak, when it12

was asserted against Symbol as being the same or very similar13

to the Symbol bar code scanner as represented in PX 390, the14

Swartz patent, and LS100 product and 1000 products, is totally15

different in that case.16

MR. McCABE: Your Honor --17

MR. HOSIER: So they made the argument there that18

they were distinct, different subject matters.19

MR. McCABE: Your Honor, the Swartz patent -- I20

don't have it in front of me, but my recollection is the21

claims are directed to a hand-held laser scanner, and they go22

on from there. They're completely different. For example,23

Claim 1, if I might read it, says --24

MR. HOSIER: If it's irrelevant --25

ALLAIS - DIRECT00112

MR. McCABE: "In a laser scanning system for reading1

bar code symbols a lightweight, easy-to-manipulate laser2

scanning head normally supportable only by a user throughout3

the reading of symbols comprising," and then there's a series4

of elements that it comprises. None of those elements are5

listed in the Lemelson patent. You don't hear any of that. 6

And the Kar Trak here is being used as a basis with respect to7

the Lemelson patents. It has nothing to do with hand-held8

laser scanners.9

MR. HOSIER: Sounds like tweedle-dee tweedle-dum to10

me, Your Honor. What it amounts to is in the Opticon case Kar11

Trak and Mr. Collins, as the person that was involved in that12

subject matter at that time frame, they are representing that13

what was done at Symbol would have been obvious in view of Kar14

Trak. What Symbol was taking by way of a position through15

this witness and others was that Symbol's technology was16

fundamentally different than Kar Trak, which is precisely the17

position we are taking, that it is fundamentally different18

than Kar Trak. Kar Trak has colored stripes and bars --19

THE COURT: All right. Look, we're going to spend20

more time talking about it than hearing what the witness has21

to say anyway. I'll overrule the objection. I'll let the22

witness respond to your question. Restate the question.23

BY MR. HOSIER:24

Q All right. Sir, you and Symbol were taking the position25

ALLAIS - DIRECT00113

that the Symbol technology in the Swartz patent, Plaintiff's1

Exhibit 390, was different from the Kar Trak technology that2

Mr. Collins was going to testify about in the lawsuit;3

correct?4

A Yes. To the extent that the Symbol scanner was a hand-5

held, trigger-operated, point-and-shoot device which was6

physically quite different and in its detailed elements and7

claim structure quite different.8

Q And you recall that Mr. Collins has testified by way of9

his deposition and at trial that they had laboratory10

activities that were Kar Trak in other than railroad-side11

form; correct?12

A I think I recall one very sketchy picture of such a13

device.14

Q Right. So in the lab at Sylvania they were trying to15

work with something that was a hand-held version of Kar Trak,16

weren't they?17

A About the size of a bread box.18

Q Okay. But that was hand-held version of Kar Trak, and19

that was what Mr. Collins on behalf of Opticon was saying20

anticipated the work of Symbol; right?21

A Well, that was a viewpoint.22

Q But that was Mr. Collins's viewpoint, wasn't it?23

A Well, that was what he was there to do.24

Q And you on behalf of Symbol were taking the opposite side25

ALLAIS - DIRECT00114

and saying that because Kar Trak involved equal-width color1

stripes and it decoded colors and not relative widths, these2

were fundamentally different technologies; isn't that true?3

A I don't recall the details of our argument from that case4

long ago, sir.5

Q Is that true?6

A I don't agree that --7

THE COURT: I think the witness just said he didn't8

recall, so --9

BY MR. HOSIER:10

Q Well, you understand that you were trying to point out in11

the Opticon Symbol case that there were distinctions between12

the way Kar Trak operated and Symbol's bar code scanners13

operated; isn't that true?14

A We were pointing out distinctions, but I do not recall15

the details of those distinctions and the arguments that we16

made.17

Q Well, and one of the distinctions is that with Symbol18

scanners they scan relative widths of bars and spaces;19

correct?20

A The decoding process for bar codes deals with --21

Q Can we have a yes or no?22

A -- widths of bars and spaces.23

Q So the answer's yes?24

A They do, yes.25

ALLAIS - DIRECT00115

Q And in the Kar Trak system you operate on equal-width1

bars; correct?2

A Well, only if you don't count two stripes together as a3

double-width bar.4

Q We'll get to that later.5

A Which is a clear enough way to look at it.6

Q I'll disprove that one later. But let's get on to my7

question. All of the stripes that you showed in the exhibit8

to the Court just a few minutes ago on the side of the boxcar9

for Kar Trak were the identical equal width, were they not?10

A Yes, until you put two together. That makes a double11

width.12

Q Did I ask that? Each bar -- if there's two white bars13

together, there are two distinct white bars, aren't there?14

A Well, there's two pieces of tape.15

Q Each equal width, aren't they?16

A Each of the physical pieces --17

Q Is an equal width?18

A -- are equal width.19

Q So every one, whether they're white, black, blue -- what20

was the other color?21

THE COURT: Orange.22

BY MR. HOSIER:23

Q -- blue and orange, are all equal width, are they not?24

A Well, there were no black stripes, but there were25

ALLAIS - DIRECT00116

absences of stripe.1

Q Okay. Absence of stripe, everything was equal width?2

A Well, the stripes that were reflective were the same3

width until you put two together.4

Q All right. And the distinction was they distinguished5

based on color, did they not?6

A They did except for the claims, where the claims can --7

Q I'm not asking about -- I'm talking about the teaching of8

the patent.9

A Specification has a preferred embodiment, but the rest of10

the invention could be used with a single color.11

Q We'll get to that, too. The only thing disclosed and the12

only thing you showed the Court about Kar Trak was different13

colors; isn't that true?14

A Well, I showed a figure from the -- from the patent that15

was illustrating orange and blue and black, yes.16

Q Can you answer my question yes or no, sir. Did the17

things that you showed the Court -- the only things you showed18

this Court about Kar Trak were equal-width, different-color19

stripes; true?20

A Well, except for my opinion that two equal stripes21

together make a double-width stripe.22

THE COURT: With that qualification, though, they're23

equal width?24

THE WITNESS: Well, the individual pieces on the --25

ALLAIS - DIRECT00117

in the frame are equal width.1

BY MR. HOSIER:2

Q So -- and Kar Trak distinguishes by -- on the basis of3

color, does it not?4

A Well, it distinguishes on the basis of color and timing5

to detect those double-width stripes.6

Q If two white are in a row, it detects one thing. If it7

detects a blue or an orange in a row, it detects something8

else; correct?9

A Well, it detects the color, and it detects the first10

position and second position corresponding to that color.11

Q We'll get to exactly how it works. But the fact is you12

were relying on precisely these kinds of distinctions we've13

just been discussing in your expert role on behalf of Symbol14

to distinguish the Kar Trak from the Symbol bar code scanner15

products, weren't you?16

A I don't recall the distinctions that we made or the17

arguments that we made.18

Q Well, the biggest and best distinctions were the fact19

that it operated on color and equal widths, rather than on20

black and white and relative widths. Aren't those the big21

distinctions?22

A I don't -- I don't recall what the arguments were that we23

made seven or eight years ago.24

Q And you can't recall any other distinctions other than25

ALLAIS - DIRECT00118

the ones I've pointed out to you. Fair to say?1

A Well, as I say, the handle, the trigger, the aim, the2

size, the structure were significant distinctions.3

Q And that's just how big --4

A Well -- 5

Q -- right? That's just the ergonomics?6

A That's a factor in it.7

Q Okay. Now let's move on.8

THE COURT: The witness has this exhibit that you9

passed up, the press release, 2220, if you wanted to --10

MR. HOSIER: Oh. I'm glad you brought that back to11

me, Your Honor.12

BY MR. HOSIER:13

Q Let me direct your attention to Defendant's Trial Exhibit14

2220. Do you have that before you, sir?15

A Yes, I do.16

Q And do you see it's a July 28, 1999, press release,17

Symbol Technologies?18

A I see the date.19

Q And do you see in the last paragraph of that press20

release it calls -- it states as -- and I quote, "Symbol21

business partner Applied Tactical System, a system integrator22

and software developer." Is that your company?23

A No. That's an independent company in Fairfield, New24

Jersey, that was run by a former Intermec distributer.25

ALLAIS - DIRECT00119

Q Oh. It bears the same name as your company?1

A Yes. When I founded my company there was thoughts of2

merging those two companies downstream. My company is Applied3

Tactical Systems of Washington, Inc. And in fact, rather than4

growing together, we grew apart.5

Q Okay. Suggest you contact your trademark lawyer.6

Now, you've also been an expert witness for the Uniform7

Product Council, have you not?8

A Uniform Code Council.9

Q Uniform Code Council.10

A That was sometime in the past, yes.11

Q And that was in an action brought by an independent12

inventor; is that right?13

A That's true.14

Q And you've served on, as you've mentioned, the GSC15

Committee of the Uniform Code Council?16

A Which I still do to this day.17

Q And that Code Council, that committee, is made up of the18

whole field of logistics as products flow from original19

manufacturers to distributors to retail; correct?20

A Well, the Code Council itself is comprised of21

manufacturers and retailers and wholesalers in that22

distribution chain.23

Q And these are all the major users of bar code technology?24

A Well, not the industrial users like Ford and General25

ALLAIS - DIRECT00120

Motors and -- you know, manufacturers. It's manufacturers of1

products sold at retail and the retailers that consume those.2

Q And the retailers you know to be among the many3

defendants in the litigations filed by Lemelson; correct?4

A That's what I've been told.5

Q So all of those were the people who you serve on that6

committee and serve with?7

A Well, the --8

Q Correct?9

A Those are the underlying companies --10

Q Yes or no?11

A -- that form the UCC. The members of the committee are12

individual engineers in the industry with technical knowledge,13

and we simply serve as a noncompensated technical advisory14

board to the UCC. We have no financial interest in the UCC.15

Q You've also been an expert witness in a patent16

infringement case for a company known as Accusort, another one17

of the plaintiffs here; correct?18

A That's correct.19

Q And you've been an expert for PFC in a prior infringement20

suit; correct?21

A That's correct.22

Q And they're also a plaintiff here?23

A I believe that's true.24

Q So you've worked with all of the plaintiffs here --25

ALLAIS - DIRECT00121

A Well, I don't think so. I --1

Q -- in your business relations?2

A There must be ones that we don't work -- is Tech Logics3

involved?4

Q I don't believe so, sir.5

A Well, possibly. You named Intermec, Zebra, Accusort,6

PFC -- 7

Q Telzon.8

A Well, remotely Telzon, yes.9

Q And you -- you know that Telzon has been acquired by10

Symbol, do you not?11

A Yes. You pointed that out.12

Q And in the prior litigation you were retained, as well,13

by General Motors until that case was stayed in 1983 -- or14

1993, excuse me.15

A Yes. I don't recall the date, but I was retained.16

Q And in the Ford Motorola case you were retained shortly17

after suit was filed in August of '92 and acted as their18

expert through the entirety of that litigation; correct?19

A Yes.20

Q And in the Ford litigation what was at issue were Symbol21

bar code scanners in Ford's manufacturing operations; correct?22

A That was true. There were also Intermec products at23

Motorola.24

Q And there were also Symbol products at Motorola?25

ALLAIS - DIRECT00122

A There may have been.1

Q And some of the Symbol products at issue in the Ford case2

are the same products that are at issue here?3

A Well, they've certainly been discussed. The 8500, I4

believe, was one of the products.5

Q And you studied the Symbol scanners for the Ford case;6

that correct?7

A Yes.8

Q And you were aware that Ford had filed a third-party9

complaint against Symbol in the Ford case?10

A I'm not aware of that -- any of those legal11

manipulations.12

Q And did you consult with Symbol people during the course13

of the Ford litigation?14

A There was a -- there was some information about how15

scanners operated during that litigation.16

Q And did you work with Mr. Bravman during the course of17

that case?18

A I don't -- I don't specifically recall whether I worked19

with Mr. Bravman or others at Symbol in that time frame.20

Q Symbol 3000 was also at issue in the Ford case and at21

issue here; correct?22

A If it's a matter of record. I don't personally remember23

that by product number.24

Q Now, your company installs bar code systems into various25

ALLAIS - DIRECT00123

facilities of its customers, does it not?1

A Yes. Primarily distribution warehouses.2

Q Is your business known as a VAR, value-added reseller?3

A It could be that. It could be a system integrator.4

Q Okay. One of the two, meaning you acquire things like5

Symbol bar code scanners, bar code scanners from other people,6

equipment from Zebra, another one of the plaintiffs here,7

package them all together, and then see that they're installed8

in an operating fashion at some customer; correct?9

A Yes. Together with a great deal of software that we have10

developed internally.11

Q And in fact customers of yours have received letters from12

Lemelson; correct?13

A I believe there were two such letters that I'm aware of.14

Q And those letters through your customers were brought to15

your attention that installations that you had made were16

asserted to be infringing Lemelson patents?17

A I don't remember the content of the letters, but the18

assertion of infringement was described in the letters.19

THE COURT: Approximately when do you recall these20

letters being received by your customers?21

THE WITNESS: I think this was perhaps two and a22

half, three years ago, something like that.23

THE COURT: 1999, 2000?24

THE WITNESS: Could be.25

ALLAIS - DIRECT00124

THE COURT: All right.1

THE WITNESS: Yeah. It was before my active2

involvement on the present case.3

THE COURT: All right.4

BY MR. HOSIER:5

Q So it's fair to say, sir, that with all that -- well, let6

me first ask a couple more questions.7

You've referred to on your direct examination to Jerry8

Swartz, Rich Bravman. I take it you're on a first-name basis9

with all of the Symbol executives and have been on that basis10

for 20 years or more. Fair to say?11

A I know Jerry Swartz very well. I know Rich Bravman. 12

There are many executives at Symbol that I have no present13

acquaintanceship with.14

Q All right. But the highest-level executives are actually15

personal friends. Fair to say?16

A Well, the two -- those two are.17

Q They're about as high as you get, aren't they, chairman/18

founder with Mr. Swartz, current president/CEO with Mr.19

Bravman?20

A It would seem so.21

Q Okay. And likewise you have close relationships with the22

most senior executives of the other plaintiffs that we've23

named here from a personal standpoint; correct?24

A Not -- not -- not really. I have relationships with25

ALLAIS - DIRECT00125

middle management at Intermec today, very little relationship1

with the senior executives, and no relationship with the top2

executives of the other companies, other than knowing Al Werz3

[phonetic] of Accusort for many years.4

Q All right. But from the standpoint of your involvement5

here, fair to say that it would be bad for business if the6

Lemelson patents were held valid and infringed and good for7

business if the patents were held invalid and not infringed. 8

Fair to say?9

A Well, I think for Path Guide's business it would not be a10

consequential issue. We or our customers might have to pay11

some licensing fees, but it would not be a material issue.12

Q You didn't mention any of these close relationships on13

your direct examination, did you?14

A I don't -- I don't have any financial ties or anything15

else with those relationships.16

Q Well, you indicated that you might have to pay some fees17

yourself through your company for licensing should these18

patents be held valid and infringed.19

A Well, we have no legal obligation to do that. It would20

be a matter of working that out customer by customer.21

Q How did you come to the conclusion you have no legal22

obligation to do that?23

A Well, we -- we don't execute contracts with our customers24

that indemnify them against patent infringement.25

ALLAIS - DIRECT00126

Q But you ship them goods and install them and put them in1

their places of business and tell them that they're able to2

use these pieces of equipment in their business in normal3

course; right?4

A Well, I hope so.5

Q Do you advise --6

A Yeah. Sure.7

Q -- these companies that they're -- that the ball's in8

their court on any issues of infringement when you make these9

installation?10

A Well, other -- other than these Lemelson letters, the11

issue has never come up.12

Q Do you tell these customers that the ball's in their13

court on any issues of infringement?14

A We don't tell them anything one way or the other.15

Q Now, sir, I think you've mentioned on direct examination16

that you're credited with development of five bar code17

symbologies.18

A Yes.19

Q You serve on committees in the industry, but those are20

all bar code symbology committees, are they not?21

A Well, the GSC is concerned with bar code, along with22

other technical activities, and my past committee work with23

AIM and others has been related to bar code.24

Q In fact, it's been with bar code symbologies25

ALLAIS - DIRECT00127

predominantly, has it not?1

A Well, a lot of it, yes. Yes. There's other -- other2

aspects than just symbology.3

Q In fact, the only patent you've received in the last 274

years is for a bar code symbology; correct?5

A I haven't counted backwards. If that's the Code 496

patent, then we certainly discussed that.7

Q Yes. And that was a patent obtained about 13, 14 years8

ago; correct?9

A Right.10

Q And the next earlier patent is 27 years earlier. Namely,11

1975 is your next earliest patent on bar code technology;12

right?13

A I -- if that's what the date says on the patent. I don't14

-- I don't have that memorized.15

Q And in fact, the only patents you have in the bar code16

field are three, namely, the one on the symbology about 12, 1417

years ago, and two patents, one in '74, one in '75; right?18

A Well, I have a patent on, surprisingly, printing colored19

bar code, which is back at some time during the 1970s. I20

don't recall the patent number, but that's one of the group. 21

I didn't discuss it here.22

Q Well, you got -- that's one of the two, isn't it?23

A No.24

Q Is it now -- okay. So you've got --25

ALLAIS - DIRECT00128

A That's another one that I didn't think was relevant.1

Q All right. But the next earliest patent that you have in 2

the field is 27 years ago, and that's the one that dealt with3

this wand and some circuit that you described on your direct.4

A There was the wand, there was the edge-finding circuit,5

there was another one on printing colored bar code, and there6

were some mechanical detail-type things.7

Q Now, you didn't tell the Court about the printed color8

bar code patent, did you?9

A Well, I didn't think it was that interesting, because it10

never got developed.11

Q And it happens to be colors, like Kar Trak?12

A Happened to be green and black, which was used by the NCR13

Company for a retail bar code symbol before the UPC symbol was14

announced.15

Q All right. But what you did never got developed?16

A Didn't get developed. It was just an idea that might17

have worked but didn't.18

Q Okay. And these things that you told the Court about was19

the wand and the circuit, and one was 27 years ago, and one20

was 28 years ago; correct?21

A If those dates are correct. As I say, I don't -- I don't22

have -- can't recall a specific date.23

Q Well, if you want to check, it's in your resume, which is24

the first exhibit in your exhibit book.25

ALLAIS - DIRECT00129

A I don't think it's material whether it's 27, 25, 30,1

whatever, but --2

Q All right. But that's it. That's the only patents you3

have in the field; right?4

A Well, that's -- yeah.5

Q And you understand this case isn't about symbology, don't6

you?7

A Well, I understand that the very core of decoding a bar8

code goes to the symbology.9

Q Sir, you understand that Mr. Lemelson doesn't purport,10

like you did in your patent of 12 or 14 years ago, to have11

invented some specific form of symbology; correct?12

A Well, that's certainly true.13

Q You understood that what Mr. Lemelson was inventing or14

saying he invented was a -- methods for reading information on15

objects by scanning them, capturing that information in analog16

form, transforming it to digital form, putting it into a17

computer, and so on; correct?18

A Well, I wouldn't go through all that paraphrase. I mean,19

I wouldn't describe it that way. I would describe it as a20

measurement and inspection device.21

Q Well, you understood that what the claims purport to22

cover is a method; right?23

A I believe that language is in the claims.24

Q And all of your work lo these 25, 27 years is focused on25

ALLAIS - DIRECT00130

these symbologies that you're credited with developing; right?1

A Well, not if you take my role in Intermec of supervising2

the development of extensive printing and scanning equipment.3

Q Okay. Since you say you looked at the Patent Office4

files, did you see that the Patent Office, when it was5

provided prior art, so on, it was also told point blank that6

Lemelson's claims were of a scope to embrace bar coding?7

A I did not research file history. I'm not -- not here to8

talk about file history.9

Q Oh. Did you -- you have seen that file histories of the10

patents, though, have you not?11

A I've been shown small excerpts of file history, but12

that's not -- not my role here to --13

Q So you've stayed away from looking at what were advised14

by -- Lemelson advised the Patent Office as to the scope of15

his claims; is that right?16

A Yes. I've not -- I'm not claiming to have researched any17

of that file history.18

Q So when you told the Court that Lemelson doesn't disclose19

anything about bar coding or anything of that sort, you did it20

without knowledge of the communications Mr. Lemelson's counsel21

had made to the Patent Office when presenting claims, telling22

the Patent Office point blank, these claims are of a scope to23

embrace bar coding --24

MR. McCABE: I'm going to object, Your --25

ALLAIS - DIRECT00131

BY MR. HOSIER:1

Q -- is that right?2

MR. McCABE: I'm going to object, Your Honor. I3

don't have the document that Mr. Hosier's referring to, nor4

does the witness. But my recollection is the Patent Office5

rejected a claim directed to bar coding.6

THE COURT: Well, whatever the Patent Office did,7

the witness can answer the question as to whether he's aware8

of the communications.9

MR. HOSIER: Your Honor, these speaking objections,10

which are also inaccurate and then engage me in having to --11

THE COURT: All right. All right. Well -- 12

MR. HOSIER: -- hold my -- bite my tongue --13

THE COURT: I understand. But there's no jury here. 14

Let's go ahead and let the witness answer the question.15

Did you -- were you cognizant of any such16

communications?17

THE WITNESS: I recall only what Mr. McCabe18

described as a rejection of bar code. But my earlier19

testimony about there's no bar code in the Lemelson patent was20

confined to a careful reading of the common specification.21

THE COURT: All right.22

BY MR. HOSIER:23

Q So now you're saying you did read something in the file24

history, that now that Mr. McCabe said something you remember25

ALLAIS - DIRECT00132

reading something?1

A I said I've seen excerpts from the file history --2

Q But you -- 3

A -- I have not researched the file history. I didn't say4

I never saw any of it.5

Q But you don't recall Lemelson saying, I have claims that6

are of a breadth to embrace bar coding, and telling the Patent7

Office that and presenting all of the information and the8

Patent Office then allowing those claims?9

A I don't recall seeing that.10

Q Okay. Sir, what is a bar code?11

A Did you say what is a bar code?12

Q What is a bar code?13

A Well, a bar code or, more correctly, a bar code symbology14

-- and let's talk about a one-dimensional bar code for15

simplicity -- is a combination of bars and spaces arranged in16

such a way as to encode information in a secure fashion so17

that it can be accurately decoded by some kind of scanning18

apparatus.19

Q That's not the way you define it in your own book, is it?20

A Well, you know, it was --21

Q Is it?22

A -- a contemporaneous definition. I'll be happy to read23

that -- read it out of the book, if you'd like to bring it to24

me.25

ALLAIS - DIRECT00133

Q Well, isn't in fact a bar code an array of marks and1

spaces in a predetermined pattern?2

A Well, that would be a starting description.3

Q That is in your view a fair description of bar code. A4

bar code is an array of marks and spaces in a predetermined5

fashion. Fair to say?6

A Well, if I said that, I said it. It's okay. It doesn't7

describe full extent of what a bar code is.8

Q I want your testimony now, sir. Is that a fair9

definition of a bar code, is an array of marks and spaces in a10

predetermined pattern?11

A It's a limited definition.12

Q It's an accurate definition?13

A As far as it goes it's accurate.14

Q And it's a definition that you recall us discussing in a15

deposition in this case; correct?16

A Well, we did talk about the book, so, yeah.17

Q You agreed -- do you recall that you agreed then that it18

is proper to call a bar code an array of marks and spaces in a19

predetermined pattern? Correct?20

A It's not improper. I'd probably agree to that.21

Q And in fact your own book carries such a definition, does22

it not?23

A Well, you've read that to us, so I guess it does.24

Q And in fact what your book had, to be perfectly complete25

ALLAIS - DIRECT00134

about it -- and I'll put it before you, Defendant's Exhibit1

192 -- well, I was just going to use the excerpt, but that's2

all right.3

MR. HOSIER: It's a little more than I intended,4

Your Honor. I was going to use just the excerpt.5

THE COURT: That's all right. What page?6

MR. HOSIER: It's page 2.7

THE COURT: 2?8

MR. McCABE: Counsel, what page?9

MR. HOSIER: 2.10

MR. McCABE: Thanks.11

BY MR. HOSIER:12

Q And before we move on, sir, can we agree that this is13

your book, 1989 edition; correct?14

A Yes.15

Q So as of 1989 in a book authored by you you defined a bar16

code as "an array of rectangular marks and spaces in a17

predetermined pattern"; correct?18

A I did that, yes.19

Q And in fact when we talked about it you then called the20

Shane patent, the so-called bull's-eye code a bar code, as21

well, did you not?22

A I did.23

Q And then you agreed that the word "rectangular" should24

really come out of the definition, since the bull's-eye code25

ALLAIS - DIRECT00135

is not a rectangular code, it's a series of concentric1

circles; right?2

A Well, yes. But a slice of it would look the same.3

Q So that when you cut a slice through it, it's just a4

line; right?5

A It's a line with alternating light and dark segments.6

Q And then you agreed that the proper definition for bar7

code to embrace things such as Shane, the bull's-eye, would be8

to call it an array of marks and spaces in a predetermined9

pattern; correct?10

A Is that in my deposition?11

Q Yes.12

A It would -- it might be helpful to have that page of the13

definition -- the deposition in context --14

Q Do you agree with that or not? Can we move on, or --15

A I'd like to see the deposition just to see if there's16

context there.17

Q Well, I'm trying to ask you whether it's true or not.18

THE COURT: No, no. Yeah. Let's just talk about19

what the state of -- restate the question.20

The question's not a quiz on what is contained in21

your deposition.22

MR. HOSIER: Right.23

THE COURT: Restate the fundamental question that24

you had.25

ALLAIS - DIRECT00136

BY MR. HOSIER:1

Q I think we've already agreed to it, and maybe I'm2

belaboring it. But to define a bar code as an array of marks3

and spaces in a predetermined pattern is a definition that you4

accept and agree to as correct?5

A Yes, as far as it goes.6

Q Okay. Now, I notice you use the word "marks" in that7

definition, don't you?8

A "Marks" have been used synonymously for "bars."9

Q And "marks and spaces" or "marks" have been used for "bar10

code" for a long time, haven't they?11

A I think we established that in deposition, yes.12

Q In fact, there's a Woodland patent that you refer to that13

talks about "marks"; right?14

A If -- if we discussed Woodland using that term, I could15

accept that.16

Q All right. You even call the Stites patent a bar coding17

patent, do you not?18

A Yes.19

Q And that's in front of you, sir, as Plaintiff's Trial20

Exhibit 384. You have that in your book?21

THE COURT: I think it's in the -- yeah, it's in22

that binder, I believe, one of them.23

THE WITNESS: Yeah.24

BY MR. HOSIER:25

ALLAIS - DIRECT00137

Q And the very title of that patent is called "Mark1

Sensing," is it not?2

A Yes.3

Q And the Stites patent filed in 1981 -- excuse me, 1961,4

nowhere in that document is the word or expression "bar code,"5

is there?6

A I believe we've been through that, and it's not in there7

as a -- as a phrase.8

Q All it uses is marks for an identification of what now9

and many years later have come to be known as bar codes;10

right?11

A Well, whenever the terminology started it was adopted.12

Q In fact, you never even heard of the term "bar code"13

until the early '70s; right?14

A I don't recall the date.15

Q But is that about right?16

A Probably about 1971.17

Q Okay. And you've pointed to various patents here that go18

before 1971 that use the terms "marks" for an indication of19

what is known as a "bar code" today; right?20

A There is "marks" in those patents. Clearly it's in21

Stites. And I don't -- I don't recall the terminology22

specifically in some of the others.23

Q Well, in fact the Shane patent that you just brought to24

the attention of the Court and is in your book here, and you25

ALLAIS - DIRECT00138

called it the Kroger system over my objection; you recall1

that?2

A I called it what, sir?3

Q You called it having something to do with the Kroger4

system, the RCA patent.5

A Oh. Yes.6

Q And you called that a bar coding patent, didn't you?7

A Yes. Again a bull's-eye.8

Q And it was the bull's-eye pattern as we've discussed;9

right?10

A Yes.11

Q And nowhere in that patent is the expression "bar code"12

used; correct?13

A Without going back and researching it -- I'm not a14

vocabularist, and I didn't research that, but it could well15

be.16

Q Well, he used similar expressions to "marks" in his17

patent, did he not?18

A Let's see. Do you recall which exhibit the Shane --19

Q Yes. It's Plaintiff's Trial Exhibit 1676.20

A See where he talks about black-and-white concentric21

rings. If you know where he says "marks," I'll be happy to22

look at that.23

Q Well, you see no use of the term "bar code" in that24

patent even though it was filed in 1970?25

ALLAIS - DIRECT00139

A Well, as I say, I can't testify one way or the other. I 1

haven't looked for "bar code" in here as a -- as a word.2

Q Well, you recall that I did ask you those same questions3

in your deposition about this same patent, do you not?4

A Again, I don't -- I don't -- I don't deny that it was in5

the deposition, but I don't recall, you know, what happened6

during the whole day of deposition or different days on7

different times.8

Q Now, the Shane patent was filed in --9

THE COURT: October 20, 1949.10

MR. HOSIER: Well, no, this -- that's Woodland, Your11

Honor.12

THE COURT: Oh. That's Woodland.13

MR. HOSIER: I'm going to get to that. I'm a14

little --15

THE COURT: Ah. Sorry. I was -- I thought it was16

-- okay.17

MR. HOSIER: I'm still sticking with Shane for the18

moment.19

THE COURT: I'm sorry. When was the Shane patent20

filed?21

MR. HOSIER: I was trying to get ahead of the game22

on the exhibits.23

BY MR. HOSIER:24

Q Shane, which was Plaintiff's Trial Exhibit 1676, that25

ALLAIS - DIRECT00140

patent, filed in 1968, and which you called a bar code, is1

fourteen years after Lemelson filed his '54 application,2

twelve years after he filed his '56 application, nine years3

after the '54 application became accessible to the public and4

eight years after the Lemelson '63 patent issued; isn't that5

correct?6

A Well, I -- it seems the date on the Shane patent is7

November 1970. I -- 8

Q Well, there's -- actually, down below the assignee name9

you'll see it's a continuation of an application filed in '68.10

A Well, thank you for pointing that out. Yes.11

Q Okay. Now, I think you made some comments about work12

going on like this independently and without knowledge of13

Lemelson, did you not?14

A I did.15

Q And in fact, as I just pointed out, that the Shane patent16

was actually filed fourteen years after Lemelson filed his '5417

case, twelve years after his '56 application, nine years after18

his '54 application became accessible to the public, and eight19

years after the '63 Lemelson patent issued. Now, the fact is20

you have no knowledge what Mr. Shane or the industry at large21

considered in developing their technologies, do you?22

A I never met Mr. Shane.23

Q And so the answer is you don't know what information was24

taken by these people and relied upon in developing the25

ALLAIS - DIRECT00141

technology later that came to be known as bar coding; correct?1

A I've got no firsthand knowledge of that.2

Q Well, let me direct your attention to the Woodland3

patent, Plaintiff's Exhibit 501. Now, Mr. Woodland -- that's4

a patent filed in '49; correct?5

A Yes, that's correct.6

Q And I think you've referred to Mr. Woodland as a father7

of bar coding?8

A I think he's actually been given a national award to that9

effect.10

Q And you understand that no reliance is placed on the11

Woodland patent here in terms of any defense of invalidity of12

the Lemelson patents; correct?13

A Yes. I only heard three invalidity patents presented by14

Mr. Horn.15

Q And you know that the Woodland patent was in front of the16

Patent Office at the time the Lemelson patents were granted,17

do you?18

A Well, it was clearly issued at that time.19

Q Well, from your work in the Ford case and your role20

there, you reviewed the file histories; correct?21

A To a degree.22

Q And you were aware that Woodland was among the prior art23

that was brought to the attention of the Patent Office during24

the Lemelson prosecution; correct?25

ALLAIS - DIRECT00142

A I don't -- I don't recall that specifically. But clearly1

it's here, and the dates speak for themselves.2

Q All right. And Mr. Woodland does not use the word "bar3

coding" anywhere in his patent to describe what you now call a4

bar code; correct?5

A I think we've been through that, yes.6

Q And he calls it "marks" and "markings," does he not?7

A I could spend time trying to look for "marks," but I'll8

take your word for it.9

Q Well, you do recall that from our prior deposition, that10

that's what you discovered, that he used "marks" and11

"markings"?12

A Well, I can -- I can -- I can agree to that.13

Q Okay. That's the very same expressions used by Mr.14

Lemelson in his patent, isn't it?15

A Well, he used the term "production mark."16

Q "Production markings," didn't he?17

A I think that's correct.18

Q Okay. So that was an expression, "marks," "markings," a19

common expression used to identify prior to the 1971-72 time20

frame what came to be known in the world as bar coding; right?21

A Well, it would be true of Woodland and true of Stites.22

Q And certainly Shane didn't use it. In fact, you haven't23

found --24

A I'm not sure whether Shane used "marking" or not.25

ALLAIS - DIRECT00143

Q Well, I can assure you that Shane did not use bar coding. 1

Agree with that?2

A Okay.3

Q And you don't know of a single thing prior to sometime in4

the early '70s when the expression "bar coding" was coined; is5

that right?6

A I've not researched what either Plessey or Identicon7

called their symbologies. But the first time we encountered8

Plessey they called their symbol a bar code, and that was9

being used some years prior to 1971.10

Q Your knowledge of the term being used goes to 1971;11

right?12

A My personal knowledge goes to 1971.13

Q And you haven't had anything in the literature that14

you've seen in this case, any of the KarTrak literature of Mr.15

Collins, any of these patents that you've looked at prior to16

that time frame that use bar coding; right?17

MR. McCABE: Objection, Your Honor.18

Are you asking whether they used the term "bar19

coding"?20

MR. HOSIER: Used the word "bar coding" --21

MR. McCABE: Okay. Okay.22

THE COURT: All right.23

MR. HOSIER: -- expression "bar coding."24

BY MR. HOSIER:25

ALLAIS - DIRECT00144

Q Correct?1

A That's -- that's probably correct in the specific -- in2

the specific intervening rights patents that we have talked3

about this morning.4

Q Okay. So terms such as "marks" and "markings" were used,5

but then it came to be known -- years later, you then refer to6

those things as bar codes; right?7

A Right.8

Q Now, Woodland you call, as you said, a bar coding patent;9

right?10

A Right.11

Q Plaintiff's Exhibit 501. He uses a photocell, does he12

not, to illuminate the marks and spaces?13

A I would have to go back and study Woodland, but I -- I14

think a photocell is likely used to receive the reflected15

light.16

Q Excuse me. You're correct. I stand corrected.17

So he uses an incandescent light to illuminate the marks18

and spaces?19

A I recall that that was his light source, yes.20

Q And then he uses a photocell to receive the reflected21

light as the object is moved past the -- the photocell;22

correct? Maybe let me try and do it a little more artfully.23

In the Woodland patent there is disclosed a conveyor with24

an object on the conveyor carrying markings, and those25

ALLAIS - DIRECT00145

markings are moved past the incandescent light. And when it's1

moved past the incandescent light, the reflected light is2

either bright, where it's reflected from white spaces, or very3

low, where the light is hitting the black marks; correct?4

A There is relative movement between the circular bar code5

being scanned and the photocell. If I look at Figure 11, it6

appears that the article is on a conveyor. I also see some7

screw mechanisms in Figures 12 and 13 supporting a lens8

carriage and so on. I would have to go back and restudy all9

of the relative movement involvements, the embodiments here in10

Woodland, to recall exactly how it worked and whether he11

described one way to do it or several ways.12

Q Well, in fact, that was one way he did describe to do it,13

correct, as I've just described it?14

A Without some intervening lens movement, I'm not -- I'm15

not sure of that. I think there was a side-to-side movement16

of the lens. I would have to go back and study this to agree17

to exactly how the photocell was illuminated from the -- from18

the image.19

Q Well, you can agree, sir, that you can have either the20

object moved by a fixed beam, or the beam move across the21

marks and spaces; right?22

A Well, yes. But in Woodland I don't recall whether he was23

actually moving a lens back and forth, causing a scanning24

action while the item was being brought over on a conveyor. I25

ALLAIS - DIRECT00146

believe that would be his preferred way. But, as I say, it's1

been a long time since I've read this patent.2

Q But you agree that just moving an object past a photocell3

and a light source can effect scanning that would read a bar4

code?5

A With proper imaging, that could certainly be done, as it6

was in [Hippolania.7

Q Okay. Same kind of thing?8

A Same kind of thing.9

Q And what Symbol does and a lot of bar code scanners now10

is they sweep the beam instead of moving the object by;11

correct?12

A That's correct of all of the Symbol products-in-suit,13

yes.14

Q And the object is just to effect relative movement15

between the source that is sensing the reflected light and the16

object that is carrying these marks and spaces; correct?17

A That was a little bit of a long sentence. I lost the18

first phrase.19

Q Well, both things just effect a relative movement between20

the light source and the object carrying the marks and spaces.21

A Both -- both what things?22

Q You can either move the beam, as Symbol does, or you can23

move the object past the beam; right?24

A With -- with the correct optical implementation that can25

ALLAIS - DIRECT00147

be done.1

Q The answer's yes; right?2

A Yes, with correct optics.3

Q Okay. Now, what you now call bar coding is really4

somewhat related to machine vision, is it not?5

A I don't see any relationship.6

Q Well, let's see if I can help you. In bar coding you put7

a known marking on an object and then seek to locate it.8

A You put a marking on an object that has a great deal of9

built-in structure that can be -- can be decoded.10

Q All right. So you want to put markings on an object that11

uniquely identify the object; correct?12

A That identify the object for whatever purpose such13

identification is to be done.14

Q And in machine vision you're looking at an object, and15

you don't know exactly what's there, but you try to interpret16

what is there?17

A Well, all of my knowledge of machine vision comes from18

Mr. Silver's excellent presentation. And beyond that I have19

no comments on the objectives or methods of machine vision.20

Q Okay. Now, scanning was done with something other than21

lasers before the existence of lasers; correct?22

A That's correct.23

Q And what kind of columnated light sources existed prior24

to the laser?25

ALLAIS - DIRECT00148

A Well, it would be a lensing system focusing, for example,1

through mirrors, as was done in the Stites patent. That's a2

good example of a non-laser scanning device.3

Q All right. And that would maintain a reasonably narrow4

focus over some distance; correct?5

A It would maintain an adequate focus of the light. Again,6

in Stites it was not the outgoing beam that was defining --7

the outgoing beam was not sharply focused. It was the8

returned light back to the orange-and-blue detectors that were9

sharply focused.10

Q Well, certainly there's something in terms of a11

columnated light source that was available in the '50s, '60s12

-- '40s, '50s, '60s that was much better than the household13

flashlight; correct?14

A Well, you'd have to get down to specifics. There's15

always a divergence problem and a depth of accuracy of focus16

of non-laser light sources.17

Q But your choice of having a beam for scanning for reading18

a marks and spaces wasn't one of choosing between a laser on19

the one hand and a household flashlight on the other, was it?20

A Well, the beams going out to illumine the object in the21

actual bar code scanners were -- were generally not sharply22

focused. In the white-light scanners it was the return light23

back to the detector that was focused and managed.24

Q Right. But there were also columnated light sources that25

ALLAIS - DIRECT00149

could be used and were used for scanning purposes prior to the1

invention of the laser; right?2

A Well, the bar code scanners, in my experience, don't --3

did not use highly columnated light sources. The Stites4

patent's probably about as good as they got.5

Q But that was a columnated light source?6

A A little bit columnated, yes.7

Q Much better than a household flashlight?8

A Well, I don't know how large the beam was in Stites. I9

wasn't physically there.10

Q And you know that the laser was not a development of the11

bar code industry; right?12

A That was developed independently. Or invented13

independently.14

Q And it's found wide applications in surgery for -- you15

know, and in welding and so on; correct?16

A There's many applications for lasers.17

Q And a laser is a radiation beam, is it not?18

A Yes.19

Q And certainly it's proper to call the laser the way it is20

moved in the Symbol bar code scanner such as shown in the21

Swartz patent, PX 390, as a flying spot scanner, is it not?22

A I think that terminology is debatable. And, you know, on23

the one hand Dr. Horn has his clear testimony about that, and24

I'm sure you folks have your clear testimony. I don't -- I25

ALLAIS - DIRECT00150

don't really have an opinion about whether that's correct to1

call a flying spot scanner.2

Q All your years in the industry you don't have any3

opinions on this whatsoever; is that right?4

A I'm not a vocabularist, and I never used a classic flying5

spot scanner in any of my engineering work.6

Q Well, did you see it called in the Symbol patents -- they7

call it a flying spot scanner, do they not?8

A Well, if I could read the patents, I think there was some9

testimony about that. I don't want to affirm or deny what's10

already testimony.11

Q You didn't look at that?12

A I did not study any Symbol patents in preparation for13

this case.14

Q I thought you had done some big search.15

A Oh. That's just on the Internet, just looking at 50016

patents and what was referenced against 'em.17

Q Well, you were here when Dr. Swartz testified, were you18

not?19

A I was.20

Q And you heard him say that the patents on which his name21

were applied and which represented embodiments of the Symbol22

products called it a flying spot scanner; correct?23

A Well, I think Jerry's testimony stands on its own, and24

I'm not -- I'm not the recorder to agree or not agree what was25

ALLAIS - DIRECT00151

already testified to.1

Q Well, let me just hand you Defendant's Trial Exhibit2

1102.3

MR. LISA: That's an excerpt, Mr. Hosier, of what4

was introduced yesterday.5

BY MR. HOSIER:6

Q That's just an excerpt of Defendant's Trial Exhibit 1102,7

which is another Lemelson patent that is not one of the ones8

in suit, sir. But I would direct your attention to column 9.9

A Is that the part you've thoughtfully colored in --10

Q Yes.11

A -- yellow and green?12

Q Yes. We're trying to make it -- life easy here,13

particularly for me, since it's late -- late in the day.14

Do you see the somewhat greenish color?15

A Yeah.16

Q Talks about "containing marks or reflective spots in the17

form of a code or codes," and then the same down -- that's at18

line 5 in column 9, and then there's the same down at19

column 35?20

A Yes, that -- that text appears to be here in this '24721

patent.22

Q Pardon, sir?23

THE COURT: He's acknowledged the text is there.24

THE WITNESS: Yes. Yes. I see that.25

ALLAIS - DIRECT00152

BY MR. HOSIER:1

Q Okay. Now let me direct your attention to Figures 5, 6,2

and 7. You see that that's what's being referred to right3

there, do you not?4

A I see the reference to Figure 7.5

Q Do you see also these markings shown in Figures 5 and 6?6

A Looks like what appears to be little -- little -- little7

tick marks in the thoughtfully highlighted areas.8

Q Okay. And do you see that in the opening column of the9

patent, column 1, first paragraph, that it refers to Mr.10

Lemelson's December 1954 application as a parent of this11

application as well?12

A Okay. I'm -- I'm not sure exactly where I'm supposed to13

look. Column 1?14

Q Column 1, first paragraph, last line and a half.15

A I see that, filed July 1954.16

Q No, no. Filed December 24, 1954.17

A Oh, I was reading another line. Yes.18

Q You recognize that as the Lemelson parent '54 application19

here; correct?20

A Well, if that's -- you can represent that to me. Whether21

it's the identical one, I don't have the numbers in my head.22

Q All right. And you recognize that this patent was filed23

in April '56 from the cover page?24

MR. McCABE: Your Honor, I'm going to object as25

ALLAIS - DIRECT00153

being, (a), beyond the scope of the direct examination, and,1

(b), as potentially sandbagging the witness with just an2

excerpt of the exhibit which he -- 3

THE COURT: I'm sorry. 4

MR. McCABE: There's no foundation. 5

THE COURT: It was an excerpt of what?6

MR. McCABE: The excerpt of the patent, just parts7

of it, and there's no foundation that this witness has ever8

even seen this patent before. I did not ask him about any9

Lemelson patents beyond the ones that are asserted against10

Symbol.11

MR. HOSIER: Well, but we're talking about bar codes12

and marks and spaces.13

THE COURT: All right. Overruled. We can pull out14

the entire document if there's another portion of it that15

needs to be -- 16

MR. HOSIER: I mean, if --17

THE COURT: -- reviewed, but, no, overruled. Go18

ahead. 19

MR. HOSIER: Okay. 20

THE COURT: The dates are as you say on there21

BY MR. HOSIER: 22

Q And do you see--23

THE COURT: -- and the witness has acknowledged that24

-- or testified, however, he doesn't, nor should he, retain25

ALLAIS - DIRECT00154

the numbers of the various patents, so he doesn't know which1

patent that is --2

MR. HOSIER: Right. Okay. 3

THE COURT: -- other than what it says.4

BY MR. HOSIER:5

Q But this use of this terminology, "marks" and so on, for6

"codes," was, again, consistent with the terminology used at7

the time to describe what you now call a bar code; correct?8

A Well, clearly there's -- there's marks disclosed here. 9

And whether, you know, his marks here would be called a bar10

code, I -- I would have to study the patent to see whether --11

whether that carryover was appropriate or not.12

Q Well, you agree that a laser is a radiation beam, do you13

not?14

A I believe we agreed to that. Laser produces a radiation15

beam.16

Q In fact, it's an acronym for what, again? If you could17

remind me.18

A Oh, here we go again.19

Q Light amplification --20

A Light amplification by stimulated -- okay, oh --21

stimulated emission of radiation. How's that?22

Q Good. And a laser is also an electro-optical scanning23

device, is it not, as used in the environment of the Symbol24

bar code scanners?25

ALLAIS - DIRECT00155

A Well, a laser produces a radiation beam. A laser by1

itself is not a scanning device.2

Q No. And that's why I qualified it to say that in the3

context of using a laser in the context of a Symbol bar code4

scanner it's proper to call that an electro-optical scanning5

device.6

A Well, you could call the whole scanner an electro-optical7

scanning device.8

Q Okay. That's correct terminology?9

A I don't see any problem with it.10

Q Okay. Sir, both before and after the availability of11

lasers in the early '70s there were used -- infrared and12

visible light sources were used to form scanning beams for use13

in various applications; correct?14

A You said infrared and visible?15

Q Yes.16

A Well, I know that visible scanning beams were used, as in17

Stites, and I know that infrared bar code reading devices were18

used, as in wand readers. I'm not aware of an infrared19

scanning beam to read bar code.20

Q All right. Bar code scanners have been constructed with21

both infrared and visible light sources which are not laser22

based since the early '70s; correct?23

MR. McCABE: I'm going to object as beyond the scope24

of the direct, Your Honor.25

ALLAIS - DIRECT00156

THE COURT: Overruled. If the witness can answer1

it.2

THE WITNESS: Where -- where are you quoting that3

from?4

BY MR. HOSIER:5

Q I'm just asking a question.6

A Well, could you repeat that sentence?7

Q Bar code scanners have been constructed with both8

infrared and visible light sources which are not laser based9

since the early 1970s.10

A I would -- I would agree to that, but the infrared11

scanners may or may not have produced a scanning beam. They12

may have been contact-type wands that are sometimes also13

called scanners. I just have no knowledge of a beam-type14

infrared scanner specifically.15

Q Are there infrared and visible light source scanners, to16

your understanding, still in use today?17

A There are certainly visible light wands in use today. 18

There are infrared and visible what's called slot scanners,19

which are different from the supermarket scanner, but there's20

a little slot that you run like a bar-coded employee badge21

through that will read the bar code. And I know those are22

made with both infrared and visible light sources.23

Q And right on through today -- to today?24

A Yes.25

ALLAIS - DIRECT00157

Q Even though there is the option to use a laser, as well?1

A Yes.2

Q All right, sir. I wish to be clear with regard to your3

direct testimony about what you did and what you did not do in4

connection with this assignment in this case. And, as I5

understand it, for purposes of this case you did not read the6

Lemelson patents-in-suit. Or is that not true?7

A Oh, I -- I did read the patent.8

Q But you didn't -- you read only very selected portions of9

the file history?10

A Minimal portions of the file history.11

Q And you don't recall what they are?12

A I -- I think the one that Mr. McCabe cited was one that I13

had -- I had seen.14

Q So you were selectively given parts of the file history15

by counsel?16

A No, I was given the whole file history. But since I'm17

running a business and doing a lot of other things and my18

assignment in the case was not to become a student of the file19

history, I did not choose to go through all of that.20

Q How did you determine what you looked at and what you21

didn't look at?22

A I don't recall.23

Q No idea?24

A Well, I -- I don't -- I don't recall what I did see and25

ALLAIS - DIRECT00158

what I didn't, because it wasn't part of my assignment to do1

that.2

Q Okay. You did not offer any opinions on the ordinary3

skill -- or, excuse me, you did not offer any opinions on the4

ordinary and accepted meaning of any words or terms used in5

the field, either now or throughout the times pertinent to6

this litigation; is that right?7

A Well, probably with the exception of things like bar code8

and bar code symbology and those things, which I've certainly9

offered my opinions on.10

Q But you didn't offer what were ordinary and accepted11

meanings of words. In fact, I think you called -- you said12

you were not a word expert, or what term did you use?13

A Not a vocabularist.14

Q That's the word. So you didn't purport to provide15

ordinary and accepted meaning for terms used in the industry16

during the course of your direct testimony?17

A That's correct.18

Q And, of course, you did not offer any opinions or19

testimony on the proper interpretation of the Lemelson patent20

claims?21

A That's correct.22

Q And you did not offer any opinions or testimony with23

respect to any of the Cognex bar code scanning products;24

correct?25

ALLAIS - DIRECT00159

A Oh, yes, that's correct.1

Q You confined your testimony entirely to Symbol products;2

correct?3

A That's true.4

Q And your testimony was not offered to rebut any positions5

taken or opinions given in the expert report of Dr. Brian6

Williamson; is that correct?7

A Well, I'm not sure of the legal context of "rebut" and so8

forth. I believe some of -- some of my --9

Q Challenge. How about challenge?10

A Well, in my -- in my noninfringement report, which was11

the first report that I was deposed on, I offered claim charts12

interpreted as I believed that the Lemelson Partnership had13

interpreted the claims. So I don't know whether that's called14

rebuttal or whether it's called something else, but I did do15

that.16

Q Well, you were purporting, when you interpreted the17

Lemelson claims, were you not, to accept Dr. Williamson's18

opinions, or not, on a claim interpretation?19

A I was to accept Dr. Williamson's claim constructions in20

that -- in that portion. But then there's this -- also this21

very lengthy infringement analysis provided by the Lemelson22

Partnership, and I was -- you know, that's a different -- a23

different animal.24

Q All right. You realize that when you say that the Symbol25

ALLAIS - DIRECT00160

bar code products do not infringe the Lemelson claims as1

interpreted by Lemelson, you are testifying in direct2

contradiction to the expert report of Dr. Hunt; correct?3

A Well, that would seem so.4

Q And so Dr. Hunt is looking at Dr. Williamson's claim5

construction, that is, Lemelson's claim construction; correct?6

A I believe that's his source.7

Q And you're looking at Lemelson's claim construction;8

correct?9

A Yes.10

Q You're both comparing them to Symbol products; correct?11

A Yes.12

Q And you're coming to opposite conclusions; correct?13

A Correct.14

Q And in fact you're not using Lemelson's claim15

construction when you do that, are you?16

A Well it's --17

Q You're modifying Lemelson's claim construction, aren't18

you? Isn't that true?19

A Lemelson's claim construction as drawn in italics in that20

-- the material that we reviewed, I have endeavored to, in21

that portion of my testimony, adopt that, and then to take22

additional information from the infringement analysis in order23

to try to make sense of it in terms of Symbol products. I've24

done the best that I can with the information provided by the25

ALLAIS - DIRECT00161

partnership to understand which claim elements do or do not1

read on the Symbol products and why.2

Q Well, did you -- you didn't really expect that Dr.3

Williamson was giving a claim construction for the Lemelson4

claims that didn't apply to any of the Symbol products, did5

you?6

A Well, the claim construction that -- you know, the7

italicized claim construction generally speaking, to my mind,8

was an expansion of what the claims would appear to be on9

their own and perhaps an elaboration. And I don't believe I10

contradicted any -- any of that Williamson material. But I11

took associations out of the infringement analysis and brought12

them in and said, well, if this step is that activity or13

signal in the Symbol products, then for this reason that step14

does not infringe.15

Q But you realize what you're doing is changing the16

Lemelson claim construction as set forth by Dr. Williamson and17

certainly the Lemelson claim construction as interpreted by18

Dr. Hunt when he applies those same claims to those same19

products; correct?20

A I recognize that I am taking a divergent opinion to that21

offered by Dr. Hunt, but I believe in the process of doing22

that I am not going against the written text of Dr.23

Williamson.24

Q Now, you recognize that -- you certainly recognize the25

ALLAIS - DIRECT00162

conflict with Dr. Hunt. Fair to say?1

A Well, I believe that we have divergent opinions about2

infringement, if that's what you mean by conflict.3

Q And your divergent opinions about infringement is based4

on the way you read the Lemelson claim construction versus how5

Dr. Williamson reads -- excuse me, Dr. Hunt reads the Lemelson6

claim construction; right?7

A I believe that's right.8

Q And you obviously recognize we wouldn't even be here if9

Dr. Williamson's claim construction didn't apply to the Symbol10

products, would we?11

A Well, that's the assertion that they apply, and I guess12

that's -- that's why you're here. I don't agree that they do13

apply to the Symbol products.14

MR. HOSIER: Would this be a convenient breaking15

point, Your Honor?16

THE COURT: Yeah. We're just about exactly, within17

a minute, of when I'd intended to. So we'll go ahead and18

break at this point. You've got an hour and a half left on19

your time for cross-examination. You think you'll need all of20

that, or --21

MR. HOSIER: Well, I'll see what I can do during the22

evening, but -- 23

THE COURT: Why don't we do --24

MR. HOSIER: -- he covered an awful lot of ground in25

ALLAIS - DIRECT00163

big chunks with these charts, and I -- 1

THE COURT: Well, you've got an hour and a half if2

you need it. But let's reconvene tomorrow, instead of 1:00 --3

Donna, let's try and do it at 12:30. Will that mess4

you all up if -- do you have something going at noon? You do5

have something going at noon. Okay. Well, we'll make it 1:006

o'clock. But we'll run late tomorrow.7

We have a change of plea at 4:30?8

THE CLERK: No, we changed that --9

THE COURT: No, we'll just trail it and take it10

probably at 5:00. You might let them know it'll be at 5:00.11

I want to be able to wrap this witness up, and if12

possible -- well, you'll have an hour and a half with this13

witness, then any redirect, recross, and then we can start14

Williamson.15

My recollection was you had Williamson for how many16

hours on direct you estimated? Was it two?17

MR. HOSIER: Well, yeah, I --18

MR. JENNER: I think -- I think the estimate they19

gave was hour and a half, maybe two, Your Honor.20

THE COURT: Two.21

MS. CURTIN: Yes.22

THE COURT: Yeah, I remember it was two, yeah.23

MS. CURTIN: Two was what you had suggested, Your24

Honor.25

ALLAIS - DIRECT00164

MR. HOSIER: Yeah. And I think -- we were trying1

to, frankly, shrink it greatly, and, frankly, Dr. Williamson2

has good days and bad days, is what his health condition is3

right now, so I guess how long we'd be would be a little part4

whether it's a good day or a bad day.5

THE COURT: Well, hopefully it'll be -- Thursday6

will be a good one. But if he can be here tomorrow afternoon,7

we might be able to get started with him.8

MR. HOSIER: No, no. I think that we would9

certainly try to get started with him.10

THE COURT: That would break it up a bit.11

MR. HOSIER: No. And I think that would be good for12

him, frankly.13

THE COURT: Yeah. Yeah. Okay.14

On Friday I have a naturalization at 3:30. 15

Unfortunately, we lost a very fine member of the bar16

yesterday, and his funeral is on Friday at 1:00 o'clock. I17

wanted to try and attend that funeral, if I can. And since we18

were going to have to break at 3:30 anyway, so I would want to19

try and wrap up Friday morning, if we could, even --20

MR. HOSIER: Oh, I don't think we're going to have21

any problem getting through Dr. Allais and Dr. Williamson.22

THE COURT: Well, let's just hope we can. There was23

another -- another person that we had. Yeah.24

MR. JENNER: Right.25

ALLAIS - DIRECT00165

MR. HERMAN: Well, we do have another issue, Your1

Honor. The witness we would call --2

THE COURT: After Williamson.3

MR. HERMAN: -- after Dr. Williamson is a fellow4

named Mr. Adelman, who is not at the moment here.5

THE COURT: Okay.6

MR. HERMAN: I was going to put him on a plane7

tomorrow to get him here. However, he's already been here for8

a week -- not a week, several days the last time. I would be9

reluctant to get him on a plane --10

THE COURT: Sure.11

MR. HERMAN: -- get him here on Thursday only to be12

told Friday at 1:00 o'clock that he's either going home13

started or not started.14

THE COURT: Yeah. Yeah.15

MR. HOSIER: But I -- I'm willing to do Mr. Adelman16

as soon as we return. I mean, I don't care which way they17

want to do it. I suspect --18

THE COURT: Well, let's convenience him by not19

dragging him out and so we make sure we finish Allais and20

Williamson, and then I suppose you don't have anybody that's21

really brief that could be -- that's locally -- or not -- not22

locally --23

MR. HOSIER: Well, I could perhaps -- well, I could24

perhaps bring down Donna Lemelson, Mr. Lemelson's widow. I25

ALLAIS - DIRECT00166

can put her on. I could do that if they want to give that a1

try.2

MR. JENNER: Your Honor, I know you want to run3

things the way you see fit. We would just as soon, if it4

didn't make a difference, not have another witness that didn't5

need to coming on in our case. If Your Honor wants to go6

ahead with Mrs. Lemelson, of course we'll do what Your Honor7

wants, but --8

THE COURT: Well, I'm just -- if we really do wrap9

up Williamson so that we're done on Thursday midday, I'm10

concerned we're going to have Thursday afternoon and Friday11

morning that are going to be lost.12

13

MR. HOSIER: I can --14

THE COURT: How long would Mrs. Lemelson be?15

MR. HOSIER: Two, two and a half hours. And I think16

it would be -- you know, be convenient to get it done and get17

it over with. I -- I frankly don't think much -- you know,18

it's their case, our case.19

THE COURT: Well, yeah. I'd like to get her --20

let's -- if we can have her available, let's do that. We'll21

play it by ear tomorrow so that -- she's flying from Northern22

Nevada?23

MR. HOSIER: Reno. She'd be flying -- she's in24

Incline Village.25

ALLAIS - DIRECT00167

THE COURT: Okay. So travelwise that's dependent1

upon the weather.2

MR. HOSIER: Right.3

THE COURT: That's a little more doable than4

wherever -- I'm assuming Mr. Adelman's from the east5

somewhere, isn't he? Yeah. Let's tell Mr. Adelman to just6

wait 'til the new year, and we'll get him then and save him7

another wasted trip out here, then. Okay?8

MR. HOSIER: Thank you, Your Honor.9

MR. JENNER: Your Honor, I probably ought to say10

that the person who's going to examine Mr. -- Dr. Williamson11

is not here. But I'm a little bit concerned that his12

direct --13

THE COURT: Will he be here tomorrow, or she?14

MR. JENNER: Oh, he'll certainly be here, yeah.15

THE COURT: Yeah.16

MR. JENNER: The problem that may come up, just so17

that Your Honor isn't surprised, once upon a time Dr.18

Williamson was the -- still is the author of a huge number of19

declarations and expert reports.20

THE COURT: Right.21

MR. JENNER: A lot of that has been shifted to Dr.22

Hunt, but we had been told to expect four or five hours of his23

direct. Now it's going to be shrunk. I'm not sure whether24

that's --25

ALLAIS - DIRECT00168

THE COURT: He's limited to scope of areas he's1

going to cover, as I understand it, from the earlier2

representations.3

MR. HOSIER: Right. And frankly --4

MR. JENNER: There may be some problem with the5

cross, and we may ask some indulgence from the Court,6

depending upon what it is he goes into and what is submitted7

in the way of charts. I think we need to see what he does --8

MR. HOSIER: He's not --9

MR. JENNER: -- but I just thought I ought to tell10

Your Honor now.11

MR. HOSIER: Well, he's not going into declarations12

and all that. Frankly, Your Honor, it would be our preference13

to have had him -- as you can imagine, he's been in our case14

since '92.15

THE COURT: Oh, I know.16

MR. HOSIER: And what's happened is, frankly, age17

has caught up with him.18

THE COURT: Right. No, I understand.19

MR. HOSIER: And age has caught up with his --20

THE COURT: We had -- we had motions that dealt with21

this and the use of Dr. Hunt who adopted views and so forth.22

MR. HOSIER: And we're --23

THE COURT: I'm not -- I'm not giving carte blanch24

to anybody. My view is we'll keep it to the same amount of25

ALLAIS - DIRECT00169

time you use in direct and into the areas that you talk about. 1

He may have declarations on this, that and the other thing2

that he's prepared over the last 20 years. That doesn't mean3

I'm going to allow anybody to go into it, because he's not --4

I'm talking about what his testimony is. I'm concerned with5

what his testimony is, what the evidence is in this case. And6

unless it's impeaching him on something he said here, then I'm7

not going to open it up to examination.8

Who's doing the examination of him?9

MR. JENNER: Mr. Cherney.10

THE COURT: Oh. Okay. Okay. All right. Well,11

let's reconvene tomorrow at 1:00, then, and we'll get Dr.12

Allais finished in an hour and a half, at least on his cross13

and whatever brief redirect and recross there is. All right?14

MS. CADISH: Your Honor, tomorrow perhaps at the15

close of Mr. Allais' testimony we could take quickly up the16

issue of Mr. Hoffman's potential to be a witness so we can17

take that up this week.18

THE COURT: Yeah. Yeah. Let's talk about that for19

a minute. Mr. Hoffman is going to be a witness on what20

subject again? Just refresh my --21

MR. HOSIER: I'll have Ms. Curtin, I think, address22

this.23

THE COURT: -- recollection. Ms. Curtin.24

MR. HOSIER: It looks like things have changed on25

ALLAIS - DIRECT00170

the other side's case, and maybe she can address some of these1

issues.2

MS. CURTIN: Your Honor, as we understand it, we had3

intended Mr. Hoffman's testimony to be directed mainly towards4

the issue of secondary indicia, if not obviousness. Having5

heard Dr. Horn's testimony, we didn't hear any opinions on6

obviousness, at all.7

The other thing we had intended to have Mr. Hoffman8

largely address was to anticipate, if you will, Dr. Carlton's9

opinions, which were also directed to secondary indicia,10

commercial success. And we're --11

THE COURT: Dr. who's testimony?12

MS. CURTIN: Dr. Carlton, who is their economist.13

THE COURT: Right.14

MS. CURTIN: And it's my understanding that -- I15

shouldn't say it's my understanding. It would be my belief16

that since there's no obviousness case, that it's also not17

necessary to respond to Dr. Carlton's opinion.18

MR. HOSIER: Dr. Carlton is not going to testify.19

MS. CURTIN: Right. Right.20

MS. CADISH: He's not going to testify in our case21

in chief.22

MS. CURTIN: Okay. That having --23

THE COURT: So Hoffman -- so Hoffman becomes24

unnecessary?25

ALLAIS - DIRECT00171

MS. CURTIN: Not exactly, but close, Your Honor.1

THE COURT: All right.2

MS. CURTIN: We have a very limited need to address3

the licensing issues in connection with our arguments that4

they support an inference that it is a pioneering invention. 5

That would be much, much, much scaled down from anything that6

-- that would have been necessary with regard to commercial7

success. He also, unfortunately, is going to be necessary to8

tie up a few of the loose ends on document issues that have9

arisen, and very briefly to address one other minor matter10

that was raised with -- in the testimony of Mr. Steiner, which11

was the suggestion that there had been a data dump, an12

inappropriate data dump to the Patent Office in connection13

with the later patents, arising out of prior art identified14

during the Ford litigation.15

I wouldn't expect that Mr. Hoffman's testimony all16

told on direct would exceed an hour and probably be17

significantly less than that.18

THE COURT: All right.19

MS. CADISH: Well, I guess, Your Honor, what I'd20

like to --21

THE COURT: Mr. Allais, you can step down. You22

don't need to stand by. Thanks.23

MS. CADISH: We'd like to understand exactly what it24

is he's going to say. I mean, if he's going to get on the25

ALLAIS - DIRECT00172

stand and say how many licenses and what the total amount paid1

is, that's obviously a lot less controversial than if he's2

going to try to get into his understanding of reasons why3

people --4

THE COURT: Why don't the two of you communicate5

further tonight about precisely what the scope will be. And6

then if you still feel a deposition is necessary, I'll allow7

that to be taken. We'll -- in this --8

MS. CADISH: Well, Your Honor, I'd really like to be9

heard before you decide that a deposition would be allowed,10

but we can confer on the scope of his testimony.11

THE COURT: Well, confer first, and I'll determine12

that and also when it has to be accomplished over the next13

couple of weeks. We do have this window of time. I realize14

it's not convenient for people, maybe, over the holidays, but15

at least before we get cranked back up.16

I think my clerk did tell you about the 16th of17

January we lost.18

Did you tell them that?19

THE CLERK: No, I haven't, Your Honor, no.20

We have one day of January --21

Negative?22

That's one day that we have lost. Matters have come23

up and I'm going to have to be in Reno on that date, so --24

that's Thursday, the 16th.25

ALLAIS - DIRECT00173

MS. CURTIN: Okay. Your Honor, also one -- while1

we're kind of dealing quickly with this issue of losing the2

obviousness case, do you still anticipate Mr. May coming to3

testify, or was that strictly also on the -- on the4

obviousness case?5

MR. JENNER: I don't know what we're going to do in6

a rebuttal case until we hear your case. I've just heard no7

Mr. Hoffman, and then I heard Mr. Hoffman --8

COURT RECORDER: Excuse me, Mr. Jenner. Could you9

swing that --10

MR. JENNER: I'm sorry. I don't know until we hear11

their case, including -- 12

THE COURT: But he's not testifying in your case in13

chief?14

MR. JENNER: Not in our case in chief. Carlton and15

May may -- too many mays. Carlton and Mr. May would come in16

in our rebuttal case if they testify. And I'm not prepared to17

state at this point whether or not we'll call them. I want to18

hear --19

THE COURT: We know we've got Adelman after Allais. 20

And is that it in your case in chief?21

MR. JENNER: Adelman is it.22

THE COURT: Okay. Okay. All right. All right. 23

All right. Well, talk about the situation as to Hoffman24

tonight, and first thing tomorrow we can address that, or at25

ALLAIS - DIRECT00174

some convenient time tomorrow. I really want to get Dr.1

Allais wrapped up and get started with Hoffman tomorrow, if we2

can. So we'll go at least to this time tomorrow.3

MR. HOSIER: You mean Williamson tomorrow.4

THE COURT: Williamson. I'm sorry. Williamson.5

MS. CURTIN: That's all right.6

THE COURT: Sorry.7

MR. HOSIER: Mr. Hoffman, unfortunately, is going to8

be down in Phoenix at our other hearing that I was supposed to9

be at.10

THE COURT: Okay. All right. He's free to go11

tomorrow, he doesn't have to be here.12

MR. HOFFMAN: That's Thursday, now.13

THE COURT: Or Thursday. All right.14

MR. HOSIER: Thursday, yes. I'm getting my days15

messed up.16

THE COURT: All right. All right. Thank you,17

everybody. Have a pleasant evening.18

(Court recessed at 5:10 p.m., until the following day,19

Wednesday, December 18, 2002, at 1:00 p.m.)20

* * * * * * * * * *21

22

ALLAIS - DIRECT00175

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

ALLAISDirect examination by Mr. McCabe (Continued)

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

3327 --3523 --3525 --3526 --3527 --

DEFENDANT'S EXHIBIT NO.

1102 Lemelson patent 247 --1122 Lemelson patent 109 --2186 Lemelson patent 833 --2188 Lemelson patent 481 --

ALLAIS - DIRECT00176

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

DAVID ALLAISDirect Examination by Mr. JennerCross-Examination by Mr. Hosier

* * *

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

2899B Chart Re New York City Transit Authority2900A Claim Chart Re Stites Patent2903A Claim Chart Re Shawn Patent

* * *

ALLAIS - DIRECT00177