JJK INDUSTRIES v. KPLUS INC. 713 Industries v. KPlus Inc., 447 F...JJK INDUSTRIES v. KPLUS INC. 715 Cite as 447 F.Supp.2d 713 (S.D.Tex. 2006) issued patents; once the interference

713JJK INDUSTRIES v. KPLUS INC.Cite as 447 F.Supp.2d 713 (S.D.Tex. 2006)

WL 61480, 2005 U.S. Dist. LEXIS 376,Civil Action No. 04–1107 (N.D.Ill. Jan. 7,2005) (crediting as ‘‘partial disclosures ofprior misrepresentations and omissions’’the company’s issuance of a press releaseannouncing a lawsuit, a SEC and DOJinvestigation against the defendants).

E & Y argues, however, that ‘‘[t]heloan covenant violations disclosed in Sei-tel’s May 3 announcement were not theresult of Seitel’s decision to defer revenue,but the result of an actual real-dollar de-crease in revenues (and increase in inter-est expense) as of March 31, 2002.’’ (In-strument No. 156, at 19). In support ofthis argument, E & Y contends that ‘‘Sei-tel’s real revenues declined by 40 percentover the comparable quarter,’’ and ‘‘[b]e-cause Plaintiff cannot articulate any basisfor attributing that 40 percent decline inrevenues to the restatement, he cannotplead that the restatement caused the lossfor which he sues, and his claims must bedismissed for failure to plead reliance andloss causation.’’ (Id.). Defendants fact-based argument disputes the allegations inthe Complaint and, therefore, requires afact-specific inquiry at the summary judg-ment or trial stage. But such an argu-ment is not appropriately made at thisstage on a Rule 12(b)(6) motion to dismiss.See Baker, 75 F.3d at 196 (explaining thatin determining whether a dismissal is war-ranted pursuant to Rule 12(b)(6), the courtaccepts as true all allegations contained inthe plaintiff’s complaint, and views thefacts in a light most favorable to the plain-tiff). See also Lentell v. Merrill Lynch &Co., 396 F.3d 161, 172–73, 175 (2d Cir.2005); Barrie, 397 F.3d at 257–58 (notingthat the court ‘‘must assume the truth ofthe allegations pleaded with particularityin the compliant,’’ and ‘‘[t]he strong-infer-ence pleading standard does not license[the court] to resolve disputed facts at thisstage of the case.’’). Accordingly, theCourt rejects Defendant E & Y’s argu-

ment that Plaintiff has not sufficiently pledloss causation and reliance.

IV.

IT IS HEREBY ORDERED that De-fendant’s Motion to Dismiss the SecondConsolidated Amended Class Action Com-plaint Against Ernst & Young Only (In-strument No. 156), is DENIED.

The Clerk shall enter this Order andprovide a copy to all parties.

,

JJK INDUSTRIES

v.

KPLUS INC., et al.

Civil Action No. H–02–2259.

United States District Court,S.D. Texas,

Houston Division.

Aug. 30, 2006.

Background: Assignee of patent for bat-tery-powered electric vibrator devicebrought action against senior party com-petitor, alleging interference with assign-ee’s patent. Assignee moved for partialsummary judgment on its interferenceclaim, and sought adjudication as to validi-ty of claims in competitor’s patent.

Holdings: The District Court, Gilmore, J.,held that:

(1) interference count proposed by assign-ee was sufficiently broad to encompasscommon subject matter of claims inboth parties’ patents;

(2) interference-in-fact existed betweenpatents; and

714 447 FEDERAL SUPPLEMENT, 2d SERIES

(3) genuine issue of material fact existedas to when plaintiff conceived of pat-ented invention.

Motion denied.

1. Patents O106(1)Two or more patents ‘‘interfere,’’

which is a term of art in patent law, whenthey claim the same subject matter.

See publication Words and Phras-es for other judicial constructionsand definitions.

2. Patents O106(1)Although interference actions most of-

ten arise before the Patent and TrademarkOffice (PTO), District Court has subjectmatter jurisdiction over some interferenceactions pursuant to statute. 35 U.S.C.A.§ 291.

3. Patents O127Interfering patents occur when the

Patent and Trademark Office (PTO) mis-takenly issues two patents for the sameinvention, and in these rare instances, pat-ent owners have opportunity, pursuant tostatute, to have federal court correct themistake. 35 U.S.C.A. § 291.

4. Patents O127In order to provoke an interference in

district court pursuant to statute, the in-terfering patents must have the same orsubstantially the same subject matter insimilar form as that required by the Pat-ent and Trademark Office (PTO). 35U.S.C.A. §§ 135, 291.

5. Patents O127A district court has no jurisdiction

under statute providing for interferenceaction between two patents unless interfer-ence is established; thus, the first step inany such interference proceeding is theevaluation of whether an interference-in-fact exists. 35 U.S.C.A. § 291; 37 C.F.R.§ 1.601(f, j, n)(2004).

6. Patents O127In order for an interference-in-fact to

exist, under two-way test for determiningwhether competing inventions in interfer-ence proceeding are the same patentableinvention, first invention must anticipate ormake obvious second invention, and secondinvention must anticipate or make obviousthe first invention, thereby meeting bothprongs of the ‘‘two-way’’ test. 35 U.S.C.A.§ 291; 37 C.F.R. § 1.601(n)(2004).

7. Patents O106(2)The ‘‘count’’ in a patent interference

proceeding defines the interfering subjectmatter and corresponds to a patentableinvention; the count may be identical to asingle claim at issue or may be broaderthan the particular claims at issue. 37C.F.R. §§ 1.601(f), 1.606(2004).


8. Patents O106(2)Although an interference count is usu-

ally defined by the patent examiner, aninterference count may be proposed by anapplicant or patent holder wishing to de-clare an interference. 37 C.F.R. §§ 1.601,1.606(2004).

9. Patents O127As with a count in the administrative

interference process before the Patent andTrademark Office (PTO), the descriptionof interfering subject matter in a judicialinterference proceeding must be broadenough to encompass the common subjectmatter of the claims in both patents. 35U.S.C.A. § 291.

10. Patents O127Interfering patents are patents that

claim the same subject matter, and it isthus correct, and necessary, in a judicialinterference proceeding, to compareclaims, not disclosures, when comparing


issued patents; once the interferencecount is defined, the court then identifiesthe claims of the interfering patents thatcorrespond to the interference count. 35U.S.C.A. § 291.

11. Patents O127Determination of whether an interfer-

ence-in-fact exists, in a judicial patent in-terference proceeding, and the ancillaryquestion of whether interfering subjectmatter exists, is a question of jurisdictionfor the court to decide, and not the jury.35 U.S.C.A. § 291.

12. Patents O106(2)Some alteration or ‘‘morphing’’ of pat-

ent claims may be necessary in order tocreate a proposed interference count broadenough to encompass the common subjectmatter of the claims in both of the compet-ing patents.

13. Patents O127Interference count proposed by plain-

tiff patent assignee in interference actionagainst competitor, alleging interferencebetween parties’ patents for battery-pow-ered electric vibrator devices, was suffi-ciently broad to encompass common sub-ject matter of claims in both assignee’s andcompetitor’s patents. 35 U.S.C.A. § 291.

14. Patents O127Competitor’s patent claiming battery-

powered electric vibrator device anticipat-ed, or rendered obvious, each of limita-tions of relevant claim in patent of plaintiffassignee, and claim in assignee’s patentanticipated or rendered obvious each limi-tation of competitor’s patent, such that in-terference-in-fact existed between patents.37 C.F.R. § 1.601(j, n)(2004).

15. Patents O101(8)Limitation in patent claiming battery-

powered electric vibrator device that re-ferred to ‘‘means for retaining the post onsuch pierced portion of the body’’ was ex-pressed in means-plus-function language,

and did not recite definite structure insupport of its function, so limitation wassubject to requirements of patent statute’smeans-plus-function provision. 35U.S.C.A. § 112, par. 6.

16. Patents O101(8)

First step in construing means-plus-function limitation in a patent is a determi-nation of the function of the means-plus-function limitation; next step is to deter-mine the corresponding structure de-scribed in the specification and equivalentsthereof. 35 U.S.C.A. § 112, par. 6.

17. Patents O101(8)

Structure disclosed in the specificationis ‘‘corresponding structure,’’ for purposeof construing means-plus-function limita-tion in patent claim, only if the specifica-tion or prosecution history clearly links orassociates that structure to the functionrecited in the claim. 35 U.S.C.A. § 112,par. 6.


18. Patents O111

Where party urging patentability inan interference proceeding does not sepa-rately address the patentability of eachclaim corresponding to a count, the Boardof Patent Appeals and Interferences hasreason to treat all claims together; in suchcases, all claims corresponding to thecount stand or fall together. 37 C.F.R.§ 1.606(2004).

19. Patents O127

In judicial interference proceeding, al-though plaintiff identified single claim inits patent as corresponding to interferencecount, court would designate other claimsin patent as corresponding to interferencecount, absent contention by plaintiff thatany of such claims was separately patenta-ble over the interference count, and all


such claims would stand or fall together.35 U.S.C.A. § 291.

20. Patents O127Statement of plaintiff in judicial pat-

ent interference proceeding that defen-dants’ patent claims ‘‘corresponded sub-stantially’’ to claims in plaintiff’s patent didnot alone create issue of material fact thatwould preclude summary judgment forplaintiff on interference claim, notwith-standing doctrine of claim differentiation,whereby difference in meaning and scopeof claims was presumed when differentwords or phrases were used in separateclaims, given that claims of patents in aninterference proceeding did not have to beidentical. 35 U.S.C.A. § 291.

21. Patents O90(5)When two parties are both asserting

that they were the first inventor of a par-ticular device, priority of invention goes tothe first party to reduce an invention topractice, unless the other party can showthat it was the first to conceive the inven-tion and that it exercised reasonable dili-gence in later reducing that invention topractice. 35 U.S.C.A. § 102(g).

22. Patents O90(1)Priority of invention and its issues of

conception and reduction to practice arequestions of law predicated on subsidiaryfactual findings. 35 U.S.C.A. § 102(g).

23. Patents O106(3), 127Junior patent applicants in an admin-

istrative interference proceeding must es-tablish prior invention by a preponderanceof the evidence, and the burden is thesame in an interference proceeding in dis-trict court. 35 U.S.C.A. § 291.

24. Patents O90(1), 91(3)In order to establish prior conception

in an interference proceeding, the juniorparty must do more than show he or sheimagined or desired the limitations defin-ing the subject matter of the count; rath-

er, ‘‘conception’’ is the formulation of adefinite and permanent idea of the com-plete and operative invention as it is there-after to be applied in practice and mustinclude every feature or limitation of theclaimed invention.


25. Patents O90(1)For purpose of establishing priority of

invention, conception of invention is com-plete only when the idea is so clearly de-fined in the inventor’s mind that only ordi-nary skill would be necessary to reducethe invention to practice, without extensiveresearch or experimentation.

26. Patents O91(3)Because conception of an invention is

a mental act, courts determining priorityof invention require corroborating evi-dence of a contemporaneous disclosurethat would enable one skilled in the art tomake the invention; thus, although reduc-tion to practice is not an element of con-ception, a junior party claiming prior con-ception cannot meet its burden of proofmerely by showing that the subject matterof the count was desired or spoken of byits inventors.

27. Patents O127Genuine issue of material fact as to

when junior party conceived of patentedinvention consisting of battery-poweredelectric vibrator device precluded partialsummary judgment for junior party on itsinterference claim against senior party,which held allegedly interfering patent.35 U.S.C.A. § 291.

28. Patents O91(2)District court would disregard letter

allegedly written by co-inventor of battery-powered electric vibrator device claimed inplaintiff’s patent, which described idea forinvention to president of plaintiff’s general


partner, as evidence of priority of inven-tion in judicial interference proceeding, ab-sent any showing by plaintiff that it exer-cised reasonable diligence, from time ofletter, in later reducing the invention topractice. 35 U.S.C.A. § 291.

Patents O328(2)

6,382,815, 6,419,649. Cited.

Charles John Rogers, Thomas L. War-den, Conley Rose PC, Houston, TX, MikalC. Watts, Watts Law Firm LLP, San An-tonio, TX, for JJK Industries.

Craig Welscher, Attorney at Law, Er-nest W. Boyd, Jr., Eric Michael Adams,Mehaffy & Weber PC, James Collins Fer-rell, Robert G. Taylor II PC, Houston, TX,F. Stephen Schmid, Attorney at Law, SanFrancisco, CA, Jeffrey Scott Schubert,Erik Joseph Osterrieder, Schubert Oster-rieder et al, Austin, TX, for KPlus Inc.,Eric Klein, Silver Moon Concepts Inc., Sil-ver Moon Concepts LLC., Michael Gouda.

David N. Glassman, Attorney at Law,Herbert L. Allen, Allen Dyer et al, Orlan-do, FL, for Silver Moon Concepts Inc.,Silver Moon Concepts LLC, Michael Gou-da.

AMENDED ORDER *

GILMORE, District Judge.

Pending before the Court is PlaintiffJJK Industries, L.P. (‘‘JJK’’)’s Motion forPartial Summary Judgment on its CountIII Interfering Patents Claim Under 35U.S.C. § 291 (Instrument No. 114), filedon June 1, 2004.

I.

Pursuant to Section 291, Plaintiff JJKasks this Court to adjudge the question ofvalidity of Claims 1, 2, 3, and 4 of Defen-dant Eric A. Klein (‘‘Klein’’)’s UnitedStates Patent No. 6,419,649 (‘‘the 8649 pat-ent’’), which Plaintiff JJK asserts inter-feres with Claims 1, 2, 3, 4, 5, 8, 9, 12, 13,and 16 of JJK’s United States Patent No.6,382,815 (‘‘the 8815 patent’’).

Plaintiff JJK is the assignee of the 8815patent, entitled ‘‘Energized Body Jewel-ry.’’ JJK filed an application for the 8815patent on May 16, 2000. The UnitedStates Patent and Trademark Office (the‘‘PTO’’) issued the 8815 patent on May 7,2002. Jeffrey D. Klearman (‘‘Klearman’’)and William R. Wilkinson (‘‘Wilkinson’’)are the listed inventors of the 8815 patent.(Instrument No. 116, Exh 1). H. DavidShockley (‘‘Shockley’’) is the President ofJJK’s general partner, BNC Management,LLC (‘‘BNC’’).

Defendant Klein is the inventor of the8649 patent, entitled ‘‘Erotic StimulationDevice.’’ Klein filed an application for the8649 patent on April 5, 2000, and the PTOissued the patent on July 16, 2002. SilverMoon Concepts, LLC (successor by merg-er to Silver Moon Concepts, Inc.) (‘‘SilverMoon’’) is the exclusive distributor ofKlein’s products. Michael Gouda (‘‘Gou-da’’) is the president of Silver Moon. De-spite the earlier filing date of DefendantKlien’s patent application, the PTO issuedPlaintiff JJK’s patent two months prior toissuing Defendant Klein’s patent.

Claims 1, 2, 3, and 4 of the 8649 patentstate:

1. A vibratory erotic stimulator, com-prising:

* This Order was amended to correct minorcitation and typographical errors prior to

publication.


a vibrator device comprising a battery-powered electric vibration generator,and a moisture resistant housing encas-ing said electric vibration generator,a post of diameter suitable to be assem-bled through a pierced portion of thehuman body, the post having one endconnected to the housing of the vibratordevice,a battery housing containing a battery,the battery housing being connected tothe post, with means providing electricalconnection from the battery to the elec-tric vibration generator so as to provideelectrical power for the electric vibrationgenerator, andmeans for retaining the post on suchpierced portion of the body.2. The device of claim 1, wherein saidone end of the post is secured directly tothe vibrator housing, and the post hav-ing an opposite end secured to the bat-tery housing, so that the vibrator hous-ing and battery housing are at opposedpositions on the post so as to be atopposite sides of such pierced portion ofthe body when worn thereon, andwherein said means providing electricalconnection comprises electrical conduc-tor means in the post connecting powerfrom the battery through the post to theelectric vibration generator, said meansfor retaining the post comprising theopposed location of the vibrator housingand the battery housing at opposite endsof the post.3. The device of claim 1, wherein theelectric vibration generator comprises apager motor, less than about 6 mm indiameter.4. The device of claim 1, installed on ahuman tongue with the post passingthrough a pierced hole in the tongue.

8649 patent, col. 6, l. 64 to col. 7, l. 11.Claims 1–5, 8–9, 12–13 and 16 of the 8815patent state:

1. An apparatus comprising:

an elongated post with a first end and asecond end;a housing body connected to the secondend of the post; andthe housing body enclosing a vibrator;and wherein the vibrator is an electro-magnetic motor with an eccentric rotor;andthe retainer bridges an electrical con-nection between the electric powersource and the electromagnetic motor.2. An apparatus comprising:an elongated post with a first end and asecond end;a housing body connected to the secondend of the post; andthe housing body enclosing a vibrator;and wherein the vibrator is an electro-magnetic motor with an eccentric rotor;andthe retainer encloses an electrical powersource.3. An apparatus according to claim 2 inwhich:the retainer bridges an electrical con-nection between the electric powersource and the electromagnetic motor.4. An apparatus according to claim 2 inwhich:the electrical power source is a batteryhaving a positive pole and a negativepole; andthe electromagnetic motor has a positivelead wire and a negative lead wire.5. An apparatus according to claim 4with:the retainer having a first end and sec-ond end; anda battery cap attached to the first end ofthe retainer.8. An apparatus according to claim 2with:the retainer enclosing a secondary elec-tric power source.


9. An apparatus according to claim 8 inwhich:the retainer bridges an electrical con-nection between the electric powersources and the electromagnetic motor.12. An apparatus according to claim 2further comprising:an elastomeric band for attaching theapparatus to one’s body.13. An apparatus according to claim 8further comprising:an elastomeric ban for attaching the ap-paratus to one’s body.16. An apparatus comprising:an elongated post with a first end and asecond end;a retainer connected to the first end ofthe post;a housing body connected to the secondend of the post; andthe housing body enclosing a vibrator;and whereinthe vibrator is an electromagnetic motorwith an eccentric rotor;the housing body encloses an electricpower source;the electric power source is a batteryhaving a positive pole and a negativepole;the electromagnetic motor has a positivelead wire and a negative lead wire;the housing body has a first end and asecond end;a battery cap attaches to the first end ofthe housing body; anda motor cap attaches to the second endof the housing body.the retainer encloses an electrical powersource.

8815 patent, col. 7, l. 41 to col. 9, l. 19.Both the 8649 and the 8815 patents involvebattery-powered electric vibrator devicesthat are connected to one end of a two-ended post.

Plaintiff JJK argues that Claim 1 ofKlein’s 8649 patent defines the same pat-

entable invention as Claim 2 of JJK’s 8815patent. In order to identify the commonsubject matter in the interfering claims,Plaintiff JJK submitted a proposed Inter-ference Count. The term ‘‘InterferenceCount’’ is a term of art used in proceed-ings alleging interference with a patentlawfully issued by the United States Pat-ent and Trademark Office. An ‘‘Interfer-ence Count’’ defines the common subjectmatter of the claims alleged to be interfer-ing, and is used to determine whether twopatent claims define the same patentableinvention. Plaintiff JJK proposed the fol-lowing Interference Count:

1. An apparatus comprising:

a housing enclosing a vibrator

a post;

the post having one end connected to thevibrator housing;

an electric power source to power thevibrator, the vibrator comprising anelectromagnetic motor; and

means for attaching the post to one’sbody.

(Instrument No. 114, at 16).

Plaintiff JJK argues that JJK’s inven-tors were the first to conceive, and thefirst to reduce to practice, the disputedinvention as defined by them in the Pro-posed Interference Count. In support ofits argument, Plaintiff has submitted a No-vember 4, 1990 letter from co-inventorWilkinson to Shockley, in which Wilkinsondescribes his idea for an oral vibrator.Wilkinson suggests that they ‘‘could pack-age a [vibrator motor] in a small bulletshaped housing and screw a small batterypack to the end.’’ Wilkinson further sug-gests that ‘‘[y]ou could hold in [sic, ‘it’] onyour tongue with a rubber band and voi-la—super lover.’’ (Instrument No. 114,Exh 8 at 5). Defendant Klein contests theauthenticity of the November 4, 1990 let-ter. (Instrument No. 134, at 8–10).


Plaintiff has also submitted a February26, 1999 letter from Wilkinson to Shockley,in which Wilkinson illustrates and de-scribes to Shockley the conceived design ofthe invention, also stating that ‘‘the unitthe jeweler made worked great.’’ (Instru-ment No. 114, Exh 9). Plaintiff assertsthat the ‘‘unit the jeweler made’’ repre-sents the first prototype of the inventionand that the February 26, 1999 letter illus-trates the design for a second workingprototype of the invention. (InstrumentNo. 114, Exh 14). Plaintiff further assertsthat the second working prototype wasbuilt for its intended purpose, according toWilkinson’s February 26, 1999 letter, anddelivered to Shockley on March 8, 1999.(Instrument No. 10, 11 & 14).

Plaintiff JJK argues that the earliestdate for which Klein has any documentaryevidence to establish his conception of theinvention is April 11, 1999—through en-tries in Defendant Klein’s Notebook No.1,dated April 11, 1999. (Instrument No.114, Exh 23). Plaintiff asserts that Defen-dant Klein’s witnesses, Ricky L. King(‘‘King’’) and David R. Steele (‘‘Steele’’),have confirmed that Klein’s disclosure tothem prior to April 11, 1999, did not in-clude any specifics regarding the structureof the invention. Specifically, Plaintiff as-serts that King testified in oral depositionthat, during the time period prior to April11, 1999, Klein’s disclosure of his inventionto King ‘‘was just in general terms’’ anddid not include any specifics regarding thestructure of the invention that Klein wasdiscussing with King. (Instrument No. 114at 20, Exh 27 at 49–50). Plaintiff furtherasserts that Steele testified in oral deposi-tion that Klein just generally shared theidea with him, but did not provide anyspecifics about the structure of the inven-tion. (Instrument No. 114, Exh 28 at 63).

On June 24, 2004, Defendant Klein fileda Response in Opposition to Plaintiff JJKIndustries, L.P.’s Motion for Partial Sum-

mary Judgment on its Count III Interfer-ing Patents Claim Under 35 U.S.C. § 291.(Instrument No. 134). Defendant Kleinargues that Plaintiff’s proposed interfer-ence count is erroneous, and that interfer-ing subject matter does not exist. Specif-ically, Defendant Klein asserts that thedifferent words used in the allegedly in-terfering claims creates a presumption ofa different meaning for the words. De-fendant also asserts that Plaintiff failed toanalyze Defendant’s ‘‘means-plus-claim’’(‘‘means for retaining the post’’) by refer-ence to other parts of Defendants’ patent.Defendant finally contends that Plaintiff’s‘‘morphing’’ of the claims in order to de-fine the interference count was improperunder the Manual of Patent Examiningand Procedure. (Instrument No. 134, at3–8).

With regard to priority of invention, De-fendant argues that Plaintiff’s ‘‘sole evi-dence of prior conception’’ is the 1990 let-ter from Wilkinson to Shockley, and thatthe 1990 letter was ‘‘concocted by threeinterested parties, namely Wilkinson,Shockley, and Rogers, each of who own adirect or indirect equity interest in Plain-tiff JJK Industries, L.P.’’ Accordingly, De-fendant asserts that the alleged 1990 let-ter is insufficient corroboration evidence ofJJK’s prior conception. (Instrument No.134, at 8–10). Finally, Defendant arguesthat Plaintiff never points to any evidenceof testing or test results to show that thesecond working prototype would work forits intended purpose, as is required forproving reduction to practice. (Instru-ment No. 134, at 10). On August 6, 2004,Plaintiff JJK filed a Reply in Support ofits Motion for Partial Summary Judgmenton its Count III Interfering Patents ClaimUnder 35 U.S.C. Section 291. (Instru-ment No. 147). Plaintiff JJK argues that‘‘[b]ecause this Court’s subject matter ju-risdiction over Plaintiff JJK’s Count IIIinterfering patents claim under Section


291 depends upon the existence of an in-terference-in-fact, Defendants’ assertionthat there is no interference should betreated as a Rule 12(b)(1) challenge to thisCourt’s jurisdiction.’’ Plaintiff next ar-gues that an application of the ‘‘two-waytest’’ demonstrates that an interference-in-fact does exist, including DefendantKlein’s ‘‘means-plus-claim.’’ Plaintiff fur-ther argues that Wilkinson’s November 4,1990 letter is the documentary corrobora-tion of Wilkinson’s oral testimony regard-ing his early conception of the invention,and not the other way around. Plaintiffcontends that even if the 1990 letter were‘‘concocted,’’ as alleged by Defendant, thatJJK has evidence of its reduction to prac-tice of the invention as early as March 8,1999, with the construction of a secondworking prototype. Plaintiff finally ar-gues that its construction of the secondworking prototype on March 8, 1999, isprior to the earliest date, April 11, 1999,for which the Defendant Klein has anydocumentary evidence to establish his dateof conception.

II.Summary judgment is appropriate if no

genuine issue of material fact exists andthe moving party is entitled to judgmentas a matter of law. Fed.R.Civ.P. 56. Afact is ‘‘material’’ if its resolution in favorof one party might affect the outcome ofthe suit under governing law. Andersonv. Liberty Lobby, Inc., 477 U.S. 242, 248,106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).‘‘Factual disputes that are irrelevant orunnecessary will not be counted.’’Anderson, 477 U.S. at 248, 106 S.Ct. 2505.An issue is ‘‘genuine’’ if the evidence issufficient for a reasonable jury to return averdict for the nonmoving party.Anderson, 477 U.S. at 248, 106 S.Ct. 2505.If the evidence rebutting the motion forsummary judgment is only colorable or notsignificantly probative, summary judgmentshould be granted. Anderson, 477 U.S. at

249–50, 106 S.Ct. 2505; see Lewis v. Glen-del Drilling Co., 898 F.2d 1083, 1088 (5thCir.1990), cert. denied, 502 U.S. 857, 112S.Ct. 171, 116 L.Ed.2d 134 (1991).

Under Fed.R.Civ.P. 56(c), the movingparty bears the initial burden of ‘‘inform-ing the district court of the basis for itsmotion, and identifying those portions of[the record] which it believes demonstratethe absence of a genuine issue for trial.’’Matsushita Elec. Ind. Co. v. Zenith RadioCorp., 475 U.S. 574, 586–87, 106 S.Ct. 1348,89 L.Ed.2d 538 (1986); Leonard v. DixieWell Serv. & Supply, Inc., 828 F.2d 291,294 (5th Cir.1987).

Where the moving party has met itsRule 56(c) burden, the nonmovant ‘‘mustdo more than simply show that there issome metaphysical doubt as to the materi-al facts TTT [T]he nonmoving party mustcome forward with ‘specific facts showingthat there is a genuine issue for trial.’ ’’Matsushita, 475 U.S. at 586–87, 106 S.Ct.1348 (quoting Fed.R.Civ.P. 56(e)) (empha-sis in original); Celotex Corp. v. Catrett,477 U.S. 317, 322–23, 106 S.Ct. 2548, 91L.Ed.2d 265 (1986); Leonard, 828 F.2d at294. To sustain the burden, the nonmov-ing party must produce evidence admissi-ble at trial. Anderson, 477 U.S. at 255,106 S.Ct. 2505; Thomas v. Price, 975 F.2d231, 235 (5th Cir.1992) (‘‘To avoid a sum-mary judgment, the nonmoving party mustadduce admissible evidence which createsa fact issueTTTT’’).

The Court reviews the facts in the lightmost favorable to the nonmovant anddraws all reasonable inferences in favor ofthe nonmovant. See Brown v. BungeCorp., 207 F.3d 776, 781 (5th Cir.2000).‘‘The mere existence of a scintilla of evi-dence in support of the plaintiff’s positionwill be insufficient; there must be evi-dence on which the jury could reasonablyfind for the plaintiff.’’ See Anderson, 477U.S. at 255, 106 S.Ct. 2505.


Summary judgment is as appropriate ina patent case as in any other case, whereno genuine issue of material fact exists,and the moving party is entitled to judg-ment as a matter of law. See Avia GroupInt’l, Inc. v. L.A. Gear California, Inc.,853 F.2d 1557, 1561 (Fed.Cir.1988) (‘‘[T]hiscourt has repeatedly emphasized that‘summary judgment is as appropriate in apatent case as in any other.’ ’’).

III.

A.[1] Pursuant to 35 U.S.C. § 291, Plain-

tiff JJK asks this Court to adjudge thequestion of validity of Claims 1, 2, 3, and 4of Defendant Eric A. Klein (‘‘Klein’’)’sUnited States Patent No. 6,419,649 (‘‘the8649 patent’’), which Plaintiff JJK assertsinterferes with Claims 1, 2, 3, 4, 5, 8, 9, 12,13, and 16 of JJK’s United States PatentNo. 6,382,815 (‘‘the 8815 patent’’). ‘‘Two ormore patents ‘interfere’—a term of art inpatent law-when they claim the same sub-ject matter.’’ Albert v. Kevex Corp., 729F.2d 757, 759 n. 1 (Fed.Cir.1984).

[2, 3] Although interference actionsmost often arise before the PTO, thisCourt has subject matter jurisdiction overinterference actions under 35 U.S.C.§ 291. See Albert, 729 F.2d at 760–65. 35U.S.C. § 291, entitled ‘‘Interfering Pat-ents,’’ provides a cause of action to onepatent owner against another patent own-er when the inventions claimed by theirrespective patents interfere with one an-

other. Interfering patents occur when thePTO mistakenly issues two patents for thesame invention.1 In the rare instance inwhich the PTO makes such a mistake,Section 291 provides the patent owners theopportunity to have a Federal court cor-rect the mistake. See Slip Track Sys.,Inc. v. Metal–Lite, Inc., 304 F.3d 1256,1263 (Fed.Cir.2002) (‘‘This case, however isone of a handful where the interference isbetween issued patents and arises in dis-trict court TTTT’’); see also Albert, 729F.2d at 758 (‘‘The third count was a type ofaction now rarely seen, and ‘interferingpatents’ suit predicated on 35 USC§ 291.’’).2 According to the Manual of Pat-ent Examining Procedure, ‘‘[a]t present,fewer than one percent of all applicationsbecome involved in interferences.’’ MPEP§ 2301.01 Introduction, at 2300–2, col. 2.Presumably, an even smaller percentage ofpatents become involved in interfering pat-ent proceedings.

[4, 5] ‘‘In order to provoke an interfer-ence in district court under § 291, theinterfering patents must have the same orsubstantially the same subject matter insimilar form as that required by the PTOpursuant to 35 U.S.C. § 135.’’ Slip Track,304 F.3d at 1264. See also Medichem S.A.v. Rolabo S.L., 353 F.3d 928, 934 (Fed.Cir.2003) (‘‘Though the PTO regulations do notbind a district court, a district court de-fines ‘the same or substantially the samesubject matter’ in the same manner aswould the PTO under its own regulations

1. According to the Manuel of Patent Examin-ing Procedure, ‘‘[t]he United States Patentand Trademark Office (USPTO) does not havejurisdiction to conduct interferences whichinvolve only patents, i.e., which do not involveat least one pending application. Jurisdictionover those proceedings is conferred on theFederal courts by 35 U.S.C. 291.’’ MPEP§ 2301.01 Introduction, at 2300–2, col. 2.

2. The Federal Circuit in Slip Track noted that‘‘The 1952 Patent Act amended interference

law to significantly diminish the likelihood ofinterfering patents being issued, causing com-mentator and principal drafter of the 1952Patent Act’’, P.J. Federico to opine that ‘‘theTTT occasion for interfering patents will nolonger arise, and there will be little or no usefor section 291.’’ Slip Track, 304 F.3d at1264, n. 2 (citing P.J. Federico, ‘‘Commentaryon the New Patent Act’’ 35 U.S.C.A. 1, 57(West 1954)).


TTTT’’). A district court ‘‘has no jurisdic-tion under § 291 unless interference is es-tablished.’’ Albert, 729 F.2d at 760–61.‘‘Thus, the first step in any interferenceproceeding under § 291 is the evaluationof whether an interference-in-fact exists.’’Medichem, 353 F.3d at 934.

According to the regulations outlininginterference proceedings in the PTO, ‘‘aninterference-in-fact exists when at leastone claim of a party that is designated tocorrespond to a count and at least oneclaim of an opponent that is designated tocorrespond to the count define the samepatentable invention.’’ 37 C.F.R.§ 1.601(j) (2004). The terms ‘‘count’’ and‘‘same patentable invention’’ are defined byseparate subsections of the same regula-tion. 37 C.F.R. § 1.601(f) & (n) (2004).

[6] The test for determining the ‘‘samepatentable invention’’ is referred to as the‘‘two-way test.’’ Eli Lilly & Co. v. Bd. ofReg. of the Univ. of Wash., 334 F.3d 1264(2003). As has been explained by theBoard of Patent Appeals & Interferences:

Invention ‘‘A’’ is the same patentableinvention as an invention ‘‘B’’ when in-vention ‘‘A’’ is the same as (35 U.S.C.102) or is obvious (35 U.S.C. 103) in viewof invention ‘‘B’’ assuming invention ‘‘B’’is prior art with respect to invention‘‘A’’. Invention ‘‘A’’ is a separate patent-able invention with respect to invention‘‘B’’ when invention ‘‘A’’ is new (35U.S.C. 102) and non-obvious (35 U.S.C.103) in view of invention ‘‘B’’ assuminginvention ‘‘B’’ is prior art with respect toinvention ‘‘A’’.

37 C.F.R. § 1.601(n) (2004). In otherwords, ‘‘[i]n order for an interference-in-fact to exist, invention A must anticipate ormake obvious invention B, and invention Bmust anticipate or make obvious inventionA’’, thereby meeting both prongs of the‘‘two-way’’ test. Noelle v. Lederman, 355F.3d 1343, 1351 (Fed.Cir.2004) (citing EliLilly, 334 F.3d at 1268; Winter v. Fujita,

53 U.S.P.Q.2d 1234, 1243, 1999 WL1327616 (Bd.Pat.App. & Interf. Nov. 16,1999)).

[7] ‘‘The count defines the interferingsubject matter and corresponds to a pat-entable invention. The count may be iden-tical to a single claim at issue or may bebroader than the particular claims at is-sue.’’ Slip Track, 304 F.3d at 1263; 37C.F.R. § 1.601(f) (2004). According to theregulations outlining interference proceed-ings in the PTO:

Before an interference is declared be-tween an application and an unexpiredpatent, an examiner must determinethat there is interfering subject matterclaimed in the application and the patentwhich is patentable to the applicant sub-ject to a judgment in the interference.The interfering subject matter will bedefined by one or more counts. Theapplication must contain, or be amendedto contain, at least one claim that ispatentable over the prior art and corre-sponds to each count. The claim in theapplication need not be, and most oftenwill not be, identical to a claim in thepatent. All claims in the application andpatent which define the same patentableinvention as a count shall be designatedto correspond to the count.

37 C.F.R. § 1.606 (2004); Manual of Pat-ent Examining and Procedure (‘‘MPEP’’)§ 2306 Interference Between Applications,2300–6, col. 2.

The court in Slip Track noted that theFederal Circuit ‘‘has not yet had the occa-sion to determine whether district courtshandling interfering patent suits under§ 291 must define [the] interfering subjectmatter in a way similar to a count.’’ Id. at1264. However, the Federal Circuit hasheld that ‘‘given interfering patents, a sin-gle description of the interfering subjectmatter is necessary for a determination ofpriority.’’ Id. In Slip Track, the Federal


Circuit did not reach the issue of whethera ‘‘count’’ was necessary in a § 291 inter-fering patents proceeding, because therewas no dispute that the patents in thatcase interfered. The parties in Slip Trackonly disputed whether one limitation waspart of the interfering subject matter. Id.at 1265. Thus, Slip Track does not pro-vide clear guidance as to whether thisDistrict Court must define the interferingsubject matter in a way similar to a countin this case.

[8] Usually an interference count is de-fined by the patent examiner. See 37C.F.R. § 1.606 (2004), infra. However, aninterference count may be ‘‘proposed’’ byan applicant or patent holder wishing todeclare an interference. Under the oldinterference rules, a party had to establishthat he had the right to make an interfer-ence count. 37 C.F.R. § 1.205(a) (1984)(superceded). Under the new interferencerules (37 C.F.R. § 1.601 (2004) et seq.) ‘‘anapplicant may initiate an interference witha patent by proposing a count, presentinga claim corresponding to the proposedcount, explaining why each such claim cor-responds to the proposed count and apply-ing the terms of the claim to the disclosureof the application.’’ 3–10 Chisum on Pat-ents § 10.09(2)(c)(iv) (quoting Grose v.Plank, 15 U.S.P.Q.2d 1338, 1342 (Bd.Pat.App. & Interf.1990)). See also 37 C.F.R.§ 1.601.7 (2004); MPEP § 2307 ApplicantRequests Interference With a Patent, at2300–13, col.2.

[9, 10] ‘‘As with a count in the adminis-trative interference process before thePTO, the description of interfering subjectmatter must be broad enough to encom-pass the common subject matter of theclaims in both patents.’’ Slip Track, 304F.3d at 1265. ‘‘[I]nterfering patents arepatents that claim the same subject mat-ter, and it is thus correct, and necessary,to compare claims, not disclosures, when

comparing issued patents under section291.’’ Id. (internal citations omitted).

Once the interference count is defined,the Court then identifies the claims of theinterfering patents that ‘‘correspond’’ tothe interference count. According to theregulations outlining interference proceed-ings in the PTO:

Any claim of an application or patentthat is designated to correspond to acount is a claim involved in the interfer-ence within the meaning of 35 U.S.C.135(a). A claim of a patent or applica-tion that is designated to correspond toa count and is identical to the count issaid to correspond exactly to the count.A claim of a patent or application that isdesignated to correspond to a count butis not identical to the count is said tocorrespond substantially to the count.When a count is broader in scope thanall claims which correspond to the count,the count is a phantom count.

37 C.F.R. § 1.601(f) (2004); MPEP§ 2301.02 Definitions, at 2300–4, col. 2.

1.

In the present case, Plaintiff JJK sub-mitted a proposed Interference Count asfollows:

1. An apparatus comprising:a housing enclosing a vibrator;a post;the post having one end connected to thevibrator housing;an electric power source to power thevibrator, the vibrator comprising anelectromagnetic motor; andmeans for attaching the post to one’sbody.


[11] Defendant argues that Plaintiff’sproposed Interference Count is erroneous,and that genuine issues of material factexist as to the identification of interfering


subject matter. However, a district court‘‘has no jurisdiction under § 291 unlessinterference is established.’’ Thus, the de-termination of whether an interference infact exists and the ancillary question ofwhether interfering subject matter existsis a question of jurisdiction for the Courtto decide, and not the jury. See e.g., Wil-liamson v. Tucker, 645 F.2d 404, 413 (5thCir.1981) (‘‘Jurisdictional issues are for thecourt—not the jury—to decide, whetherthey hinge on factual or legal determina-tions. The unique power of district courtsto make factual findings which are decisiveof jurisdiction is, therefore, not disputed.This means that the district court is notlimited to an inquiry into undisputedfacts.’’) (emphasis added).

Defendant further argues that the Plain-tiff’s ‘‘morphing’’ of the patent claims inorder to create the proposed interferencecount was flawed and suspect, because theManual of Patent Examining and Proce-dure does not mention ‘‘morphing’’ in itschapter on interference procedures con-ducted by the PTO. (Instrument No. 134,at 7). Defendant specifically refers to thesection of Plaintiff’s Motion, in whichPlaintiff explains how to define an interfer-ence count, stating:

the process of defining the interferencecount can be described as taking theinterfering claims in the patents in dis-pute, and morphing them together toform an interference count that lookslike a patent claim. The interferencecount will function like a patent claim forthe purpose of determining the questionof priority of inventionTTTT Whenmorphing the interfering claims togeth-er to form the interference count, one

must make sure to remove any claimlimitations that are not found in both ofthe interfering claims.


[12] Under the PTO regulations, how-ever, a party need not provide an explana-tion of how they derived a proposed inter-ference count. ‘‘Rather, under § 1.607, anapplicant may initiate an interference witha patent by proposing a count, presentinga claim corresponding to the proposedcount, explaining why each such claim cor-responds to the proposed count and apply-ing the terms of the claim to the disclosureof the application.’’ Grose v. Plank, 15U.S.P.Q.2d 1338, 1342 (Bd.Pat.App. & In-terf.1990); 37 C.F.R. § 1.607 (2004). Fur-thermore, ‘‘the description of interferingsubject matter [i.e., the interference count]must be broad enough to encompass thecommon subject matter of the claims inboth patentsTTTT’’ Slip Track, 304 F.3d at1265. Thus, some alteration or ‘‘morph-ing’’ of patent claims may be necessary inorder to create a proposed interferencecount broad enough to encompass the com-mon subject matter of the claims. Accord-ingly, the Court accepts Plaintiff JJK’sexplanation of how they derived a pro-posed interference count in this case.3

[13] Under 37 C.F.R. § 1.607(a)(3) &(4), a person seeking to have an interfer-ence declared must ‘‘identify[ ] at least oneclaim in the patent corresponding to theproposed count’’, and ‘‘explain[ ] why eachsuch claim corresponds to the proposedcount.’’ 37 C.F.R. § 1.607(a)(3) & (4)(2004). Accordingly, Plaintiff JJK ex-plains that Claim 1 of Defendant Klein’s

3. A review of the applicable interference rulesand Manual of Patent Examining Proceduredoes not provide much guidance on how todefine an interference count. Although thePTO apparently believes that defining an in-terference count is a matter of common sense,

it is not clear what process a prospectivePlaintiff should use in deriving a proposedinterference count, nor is it clear what pro-cess a court should use to consider the validi-ty of a proposed interference count.


8649 patent corresponds to the Interfer-ence Count as follows:

The ‘‘housing encasing said electric vi-bration generator’’ of Claim 1 of Klein’s8649 patent corresponds to the ‘‘housingenclosing a vibrator’’ in the InterferenceCount.The ‘‘post’’ of Claim 1 of Klein’s 8649patent corresponds to the ‘‘post’’ in theInterference Count.The ‘‘post having one end connected tothe housing of the vibrator’’ of Claim 1of Klein’s 8649 patent corresponds to the‘‘post having one end connected to thevibrator housing’’ in the InterferenceCount.The ‘‘battery’’ of Claim 1 of Klein’s 8649patent corresponds to the ‘‘electric pow-er source to power the vibrator’’ in theInterference Count.The ‘‘vibrator device comprising a bat-tery-powered electric vibration genera-tor’’ of Claim 1 of Klein’s 8649 patentcorresponds to the ‘‘vibrator comprisingan electromagnetic motor’’ in the Inter-ference Count.The ‘‘means for retaining the post onsuch pierced portion of the body’’ ofClaim 1 of Klein’s 8649 patent corre-sponds to the ‘‘means for attaching thepost to one’s body’’ in the InterferenceCount.

(Instrument No. 114, Exh 5).Plaintiff further explains that Claim 2 of

JJK’s 8815 patent corresponds to the In-terference Count as follows:

The ‘‘housing body enclosing a vibrator’’of Claim 2 of JJK’s 8815 patent corre-sponds to the ‘‘housing enclosing a vi-brator’’ in the Interference Count.The ‘‘post’’ of Claim 2 of JJK’s 8815patent corresponds to the ‘‘post’’ in theInterference Count.The ‘‘housing body connected to the sec-ond end of the post’’ and the ‘‘housingbody enclosing a vibrator’’ of Claim 2 ofJJK’s 8815 patent corresponds to the

‘‘post having one end connected to thevibrator housing’’ in the InterferenceCount.The ‘‘electric power source’’ of Claim 2of JJK’s 8815 patent corresponds to the‘‘electric power source to power the vi-brator’’ in the Interference Count.The ‘‘vibrator [being] an electromagneticmotor’’ of Claim 2 of JJK’s 8815 patentcorresponds to the ‘‘vibrator comprisingan electromagnetic motor’’ in the Inter-ference Count.The ‘‘retainer connected to the first endof the post’’ of Claim 2 of JJK’s 8815patent corresponds to the ‘‘means of at-taching the pose to one’s body’’ in theInterference Count.

(Instrument No. 114, Exh 6). The Courtfinds merit in Plaintiff’s explanation anddetermines that the Interference Count(i.e., description of interfering subject mat-ter) is ‘‘broad enough to encompass thecommon subject matter of the claims inboth patents TTTT’’ Slip Track, 304 F.3d at1265. As such, the Court adopts Plaintiff’sproposed Interference Count for the pur-pose of determining whether an interfer-ence-in-fact exists between Claim 1 ofKlein’s 8649 patent and Claim 2 of JJK’s8815 patent.

2.

[14] According to the regulations out-lining interference proceedings in thePTO, ‘‘an interference-in-fact exists whenat least one claim of a party that is desig-nated to correspond to a count and at leastone claim of an opponent that is designat-ed to correspond to the count define thesame patentable invention.’’ 37 C.F.R.§ 1.601(j) (2004). As explained, supra, theCourt determines that Claim 1 of Klein’s8649 patent and Claim 2 of JJK’s 8815patent both correspond to the InterferenceCount. The test for determining the‘‘same patentable invention’’ is referred to


as the ‘‘two-way test’’. Eli Lilly, 334 F.3dat 1268; 37 C.F.R. § 1.601(n) (2004). Inorder for an interference-in-fact to exist,invention A must anticipate or make obvi-ous invention B, and invention B mustanticipate or make obvious invention A,‘‘thereby meeting both prongs of the ‘two-way’ test.’’ Id.

Under the two-way test, the Court findsthat Claim 1 of Klein’s 8649 patent antici-pates or renders obvious each of the limi-tations of Claim 2 of JJK’s 8815 patent asfollows:

The ‘‘post having one end’’ of Claim 1 ofKlein’s 8649 patent anticipates or ren-ders obvious the ‘‘elongated post with afirst end and a second end’’ of Claim 2 ofJJK’s 8815 patent.The ‘‘means for retaining the post’’ ofClaim 1 of Klein’s 8649 patent antici-pates or renders obvious the ‘‘retainerconnected to the first end of the post’’ ofClaim 2 of JJK’s 8815 patent.The ‘‘housing encasing [an] electric vi-bration generator’’ and the ‘‘post havingone end connected to the housing of thevibrator device’’ of Claim 1 of Klein’s8649 patent anticipates or renders obvi-ous the ‘‘housing body connected to thesecond end of the post’’ of Claim 2 ofJJK’s 8815 patent.The ‘‘housing encasing [an] electric vi-bration generator’’ of Claim 1 of Klein’s8649 patent anticipates or renders obvi-ous the ‘‘the housing body enclosing avibrator’’ of Claim 2 of JJK’s 8815 pat-ent.The ‘‘battery-powered electric vibrationgenerator’’ of Claim 1 of Klein’s 8649patent anticipates or renders obviousthe ‘‘vibrator [being] an electromagneticmotor with an eccentric rotor’’ of Claim2 of JJK’s 8815 patent.The ‘‘battery housing containing a bat-tery’’ of Claim 1 of Klein’s 8649 patentanticipates or renders obvious the ‘‘re-

tainer enclos[ing] an electric powersource.’’

(Instrument No. 114, Exh 4 at 2).The Court further finds that Claim 2 ofJJK’s 8815 patent anticipates or rendersobvious each of the limitations of Claim1 of Klein’s 8649 patent as follows:The ‘‘vibrator [being] an electromagneticmotor’’ of Claim 2 of JJK’s 8815 patentanticipates or renders obvious the ‘‘vi-brator device comprising a battery-pow-ered electric vibration generator’’ ofClaim 1 of Klein’s 8649 patent.The ‘‘housing body enclosing a vibrator’’of Claim 2 of JJK’s 8815 patent antici-pates or renders obvious the ‘‘moistureresistant housing encasing said electricvibration generator’’ of Claim 1 ofKlein’s 8649 patent.The ‘‘elongated post’’ of Claim 2 of JJK’s8815 patent anticipates or renders obvi-ous the ‘‘post of diameter suitable to beassembled through a pierced portion ofthe human body’’ of Claim 1 of Klein’s8649 patent.The ‘‘housing body enclosing a vibrator’’and the ‘‘housing body connected to thesecond end of the post’’ of Claim 2 ofJJK’s 8815 patent anticipates or rendersobvious the ‘‘post having one end con-nected to the housing of the vibratordevice’’ of Claim 1 of Klein’s 8649 patent.The ‘‘retainer enclos[ing] an electricpower source’’ of Claim 2 of JJK’s 8815patent anticipates or renders obviousthe ‘‘battery housing containing a bat-tery’’ of Claim 1 of Klein’s 8649 patent.The ‘‘retainer enclos[ing] an electricpower source’’ and the ‘‘retainer con-nected to the first end of the post’’ ofClaim 2 of JJK’s 8815 patent anticipatesor renders obvious the ‘‘battery housingbeing connected to the post’’ of Claim 1of Klein’s 8649 patent.The ‘‘retainer enclos[ing] an electricpower source’’ of Claim 2 of JJK’s 8815


patent anticipates or renders obviousthe ‘‘means providing electrical connec-tion from the battery to the electricvibration generator so as to provideelectrical power for the electric vibrationgenerator’’ of Claim 1 of Klein’s 8649patent.The ‘‘retainer connected to the first endof the post’’ of Claim 2 of JJK’s 8815patent anticipates or renders obviousthe ‘‘means for retaining the post onsuch pierced portion of the body’’ ofClaim 1 of Klein’s 8649 patent.

(Instrument No. 114, Exh 4 at 3).Defendant argues that Plaintiff failed to

analyze Defendant’s ‘‘means-plus-claim’’(‘‘means for retaining the post’’) by refer-ence to other parts of Defendants’ patent.(Instrument No. 134, at 5). The means-plus-function doctrine provides that ‘‘anelement in a claim for a combination maybe expressed as a means or step for per-forming a specified function without therecital or structure, material, or acts insupport thereof.’’ 35 U.S.C. § 112, para.6; Medtronic, Inc. v. Advanced Cardiovas-cular Sys., Inc., 248 F.3d 1303, 1309 (Fed.Cir.2001). ‘‘Claim drafters conventionallyuse the preface ‘means for’ (or ‘step for’)when they intend to invoke section 112(6)TTT’’ Greenberg v. Ethicon Endo–Surgery,Inc., 91 F.3d 1580, 1583 (Fed.Cir.1996).

[15–17] Here, the limitation in questionis ‘‘means for retaining the post on suchpierced portion of the body.’’ 8649 patent,col. 7, l. 9–10 (Claim 1). ‘‘Because thislimitation is expressed in ‘means plus func-tion’ language and because it does notrecite definite structure in support of itsfunction, it is subject to the requirementsof 35 U.S.C. § 112, para. 6 (1994).’’ Med-tronic, 248 F.3d at 1311 (quoting BraunMed., Inc. v. Abbott Labs., 124 F.3d 1419,1424 (Fed.Cir.1997)). ‘‘The first step inconstruing such a limitation is a determi-nation of the function of the means-plus-function limitation. The next step is to

determine the corresponding structure de-scribed in the specification and equivalentsthereof.’’ Id. (internal citations omitted).‘‘Structure disclosed in the specification is‘corresponding’ structure only if the speci-fication or prosecution history clearly linksor associates that structure to the functionrecited in the claim.’’ Id. (quoting Braun,124 F.3d at 1424).

Here, the claimed function is ‘‘to retainthe claimed post on a pierced portion ofthe body.’’ The corresponding structuredescribed in the specification is performedby ‘‘retainers mounted at either end’’ ofthe post. (Instrument No. 114, Ex. 2).Drawing figures 1 and 2, and the corre-sponding text in the 8649 patent disclosethese ‘‘retainers’’ as a ‘‘vibrator housing’’(identified with reference number 11) anda ‘‘battery holder’’ (identified with refer-ence number 12), which are mounted ateither end of the ‘‘post’’ and ‘‘act as retain-ers.’’ (See Id. at Figs. 1 & 2, and col. 4, l.24–25) (‘‘Vibrator housing 11 and batteryholder 12, mounted at either end of post18, act as retainers.’’). Similarly, with ref-erence to Defendants’ dependent patentclaim 2, Defendant claims, ‘‘said means forretaining the post comprise[es] the op-posed location of the vibrator housing andthe battery at opposite ends of the post.’’(See Id. Claim 2, col. 8, l. 6–8).

Upon review of the applicable claimsand specifications, the Court determinesthat the ‘‘means for retaining the post on apierced portion of the body’’ of Claim 1 ofKlein’s 8649 patent, and ‘‘said means forretaining the post comprise the opposedlocation of the vibrator housing and thebattery at opposite ends of the post’’ ofClaim 2 of Klein’s 8649 patent, anticipatesor renders obvious ‘‘a housing body con-nected to the second end of the post’’ and‘‘the retainer encloses an electrical powersource’’ of Claim 2 of JJK’s 8815 patent.The Court further determines that ‘‘a


housing body connected to the second endof the post’’ and ‘‘the retainer encloses anelectrical power source’’ of Claim 2 ofJJK’s 8815 patent anticipates or rendersobvious ‘‘means for retaining the post on apierced portion of the body’’ of Claim 1 ofKlein’s 8649 patent, and ‘‘said means forretaining the post comprise the opposedlocation of the vibrator housing and thebattery at opposite ends of the post’’ ofClaim 2 of Klein’s 8649 patent. Thus, theCourt finds that an interference-in-fact ex-ists between Claim 1 of Klein’s 8649 patentand Claim 2 of JJK’s 8815 patent.

3.

[18] ‘‘When an interference is declaredbetween a patent and an application, thePTO rules require that ‘[a]ll claims in theapplication and patent which define thesame patentable invention as a count shallbe designated to correspond to thecount.’ ’’ In re Van Geuns, 988 F.2d 1181,1185 (Fed.Cir.1993) (quoting 37 C.F.R.§ 1.606). A party to an interference ac-tion may contest the patentability of aclaim under the ‘‘two-way test,’’ supra, byreference to 35 U.S.C. § 102 or 35 U.S.C.§ 103. Eli Lilly, 334 F.3d at 1265. Here,the parties do not contest the patentabilityof claims under 35 U.S.C. § 102. Under35 U.S.C. § 103:

A patent may not be obtained thoughthe invention is not identically disclosedor described as set forth in section 102of this title [35 U.S.C. § 102], if thedifferences between the subject mattersought to be patented and the prior artare such that the subject matter as awhole would have been obvious at thetime the invention was made to a personhaving ordinary skill in the art to whichsaid subject matter pertains.

35 U.S.C. § 103(a) (2004). ‘‘However,where the party urging patentability doesnot separately address the patentability ofeach claim corresponding to a count, theBoard has reason to treat all claims to-

gether.’’ Rowe v. Dror, 112 F.3d 473, 477–78 (Fed.Cir.1997). ‘‘In such cases, allclaims corresponding to the count stand orfall together.’’ Id. (citing In re King, 801F.2d 1324, 1325 (Fed.Cir.1986)) (dependentclaims stand or fall with independentclaims unless argued separately).

[19] Plaintiff asserts that Claim 2 ofJJK’s 8815 Patent corresponds to the In-terference Count as shown above. As forthe remaining Claims 1, 3, 4, 5, 8, 9, 12, 13and 16 of JJK’s 8815 Patent, JJK does notcontend that any of the claims is separate-ly patentable over the Interference Count.Therefore, these claims shall be designatedas corresponding to the InterferenceCount and shall stand or fall together.See Rowe, 112 F.3d at 478. Plaintiff fur-ther asserts that Claim 1 of Klein’s 8649patent corresponds to the InterferenceCount as shown above. With regard tothe remaining Claims 2, 3 and 4 of Klein’s8649 Patent, Plaintiff asserts that theseclaims ‘‘correspond[ ] to the InterferenceCount because, considering the Interfer-ence Count as prior art, [the additionallimitations listed in each claim] would notrender the claim patentable over the Inter-ference Count under 35 U.S.C. § 103.’’Plaintiff further argues that ‘‘[c]onsideringthe Interference Count as prior art, itwould have been obvious for one of ordi-nary skill in the art’’ to construct theadditional limitations in these claims. (In-strument No. 114, Exh 5 at 3–4). TheCourt finds merit in Plaintiff’s assertion ofobviousness under 35 U.S.C. § 103 anddesignates Claims 2, 3 and 4 of Klein’s 8649patent as corresponding to the Interfer-ence Count.

[20] Defendant asserts that ‘‘in identi-fying the interfering subject matter, Plain-tiff states that Defendants’ patent claims1–4 ‘correspond substantially’ to Plaintiff’spatent claims 1–5, 8, 9, 12, 13 and 16,’’ andthat ‘‘[t]his statement alone is a general


issue of material fact precluding summaryjudgment.’’ (Instrument No. 134, at 3).Defendant further argues that ‘‘Defen-dants and Plaintiff use different words inthe claims identified to allegedly containinterfering subject matter.’’ In support oftheir argument, Defendants assert that un-der the doctrine of claim differentiation,‘‘[t]here is presumed to be a difference inmeaning and scope when different wordsor phrases are used in separate claims.’’(Instrument No. 134, at 4) (quoting ToroCo. v. White Consol. Industries, Inc., 199F.3d 1295, 1302 (Fed.Cir.1999)). However,in an interference proceeding, the claimsof the patents need not be identical.Rather, ‘‘[i]n order to provoke an interfer-ence in district court under § 291, theinterfering patents [need only] have thesame or substantially the same subjectmatter as that required by the PTO pursu-ant to 35 U.S.C. § 135.’’ Slip Track, 304F.3d at 1263 (emphasis added). The regu-lations outlining interference proceedingsprovide an explanation for this particularpurpose, noting that ‘‘[a] claim of a patentor application that is designated to corre-spond to a count but is not identical to thecount is said to correspond substantiallyto the count.’’ 37 C.F.R. § 1.601(f) (2004)(emphasis added). Thus, Plaintiff’s asser-tion that Defendants’ patent claims ‘‘corre-spond substantially’’ to Plaintiff’s patentclaims, in and of itself, does not create agenuine issue of material fact.

B.[21, 22] Once the Court has completed

its ‘‘interference-in-fact’’ analysis throughapplication of the ‘‘two-way test,’’ and de-termined that the two patents at issue dointerfere with each other, the Court thendetermines the final question of ‘‘priorityof invention.’’ When two parties are bothasserting that they were the first inventorof a particular device, ‘‘priority of inven-tion ‘goes to the first party to reduce aninvention to practice unless the other party

can show that it was the first to conceivethe invention and that it exercised reason-able diligence in later reducing that inven-tion to practice.’ ’’ Mahurkar v. C.R. Bard,Inc., 79 F.3d 1572, 1577 (Fed.Cir.1996)(quoting Price v. Symsek, 988 F.2d 1187,1190 (Fed.Cir.1993)); see also 35 U.S.C.§ 102(g) (2000). Priority and its issues ofconception and reduction to practice arequestions of law predicated on subsidiaryfactual findings. Cooper v. Goldfarb, 154F.3d 1321, 1327 (Fed.Cir.1998).

1.

[23] Junior applicants in an adminis-trative proceeding must establish priorinvention by a preponderance of the evi-dence and the burden is the same in dis-trict court. Slip Track, 304 F.3d at 1262(citing Environ Prods., Inc. v. Furon Co.,215 F.3d 1261, 1265 (Fed.Cir.2000)). ‘‘Asenior party is the party with the earliesteffective filing date as to all counts or, ifthere is no party with the earliest effec-tive filing date as to all counts, the partywith the earliest filing date. A juniorparty is any other party.’’ MPEP§ 2301.02(m) Definitions, at 2300–5, col.1 Defendant Klein filed his applicationthat issued as the 8649 patent on April 5,2000. (Instrument No. 114, Exh 2).Plaintiff JJK filed its application that is-sued as the 8815 patent on May 16, 2000(Instrument No. 114, Exh 1). BecauseKlein’s filing date is one month prior toJJK’s filing date, Plaintiff JJK has theburden of establishing prior invention bya preponderance of the evidence for itsinterfering patents claim. (InstrumentNo. 114, at 15).

[24–26] In order to establish prior con-ception in an interference proceeding, thejunior party must do more than show he orshe imagined or desired the limitationsdefining the subject matter of the count.Rexam Indus. Corp. v. Eastman Kodak


Co., 30 Fed.Appx. 983, 985 (Fed.Cir.2002).‘‘Conception is the formulation of a definiteand permanent idea of the complete andoperative invention as it is hereafter to beapplied in practice. Conception must in-clude every feature or limitation of theclaimed invention.’’ Slip Track, 304 F.3dat 1262–63. ‘‘Conception is complete onlywhen the idea is so clearly defined in theinventor’s mind that only ordinary skillwould be necessary to reduce the inventionto practice, without extensive research orexperimentation. Because it is a mentalact, courts require corroborating evidenceof a contemporaneous disclosure thatwould enable one skilled in the art to makethe invention.’’ Rexam, 30 Fed.Appx. at986 (quoting Burroughs Wellcome Co. v.Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed.Cir.1994)). ‘‘Thus, although reduction topractice is not an element of conception, ajunior party claiming prior conception can-not meet its burden of proof merely byshowing that the subject matter of thecount was desired or spoken of by itsinventors.’’ Id.

[27] As evidence of prior conception,Plaintiff’s intend to introduce the oral tes-timony of co-inventors Wilkinson andKlearman. As evidence of corroboration,Plaintiff JJK has submitted a November 4,1990 letter from Wilkinson to Shockley, inwhich Wilkinson describes his idea for anoral vibrator. In the letter, Wilkinsonsuggests that ‘‘you could package a [vi-brator motor] in a small bullet shapedhousing and screw a small battery pack tothe end. Hearing aids and wristwatchesrun on tiny batteries that have the samevoltage.’’ (Instrument No. 114, Exh 8).Wilkinson further suggests that ‘‘[y]oucould hold in [sic, ‘it’] on your tongue witha rubber band and voila—super lover.’’(Id.). Plaintiff argues that Wilkinson’sNovember 4, 1990 letter corresponds tothe Interference Count as follows:

The ‘‘small bullet shaped housing’’ that‘‘you could package one of these motorsin’’ of Wilkinson’s November 4, 1990 let-ter corresponds to the ‘‘housing enclos-ing a vibrator’’ in the InterferenceCount.The ‘‘end’’ portion of the ‘‘small bulletshaped housing,’’ to which the ‘‘smallbatter pack’’ is screwed, of Wilkinson’sNovember 4, 1990 letter corresponds tothe ‘‘post’’ in the Interference Count.The integral ‘‘end’’ portion of the smallbullet shaped housing of Wilkinson’s No-vember 4, 1990 letter corresponds to the‘‘post having one end connected to thevibrator housing’’ in the InterferenceCount.The ‘‘tiny batteries’’ that ‘‘hearing aidsand wristwatches run on’’ of Wilkinson’sNovember 4, 1990 letter corresponds tothe ‘‘electric power source to power thevibrator’’ in the Interference Count.The ‘‘vibrator motors in pagers’’ of Wil-kinson’s November 4, 1990 letter corre-sponds to the ‘‘vibrator comprising anelectromagnetic motor’’ in the Interfer-ence Count.The ‘‘rubber band’’ with which ‘‘youcould hold in [sic, ‘it’] on your tongue’’ ofWilkinson’s November 4, 1990 letter cor-responds to the ‘‘means for attaching thepost to one’s body’’ in the InterferenceCount.

(Instrument No. 114, Exh 7 at 2).

Defendant questions the authenticity ofthe November 4, 1990 letter. Defendantasserts that Plaintiff’s ink expert, ErichSpeckin (‘‘Speckin’’), was not able to con-firm that the letter dated November 4,1990, was actually written in 1990. Insupport of this argument, Defendant sub-mits a letter from Speckin (created some-time after the commencement of this ac-tion in 2002), in which Speckin states that‘‘[b]ased on the testing that was conducted,no indication exists that the document [i.e.,


1990 letter] was written within the lastthree years.’’ (Instrument No. 134, Exh1). Although this statement does not con-clusively show that the letter was writtenin 1990, contrary to Defendant’s assertion,Speckin further concluded that ‘‘[his] anal-ysis of the document and the results ob-tained are consistent with the November 4,1990 date shown on the document.’’ (In-strument No. 134, Exh 1). Thus, Spec-kin’s letter actually supports, rather thanquestions, the authenticity of the Novem-ber 4, 1990 letter.

[28] Defendant further argues that the1990 letter was ‘‘concocted by three inter-ested parties, namely Wilkinson, Shockley,and Rogers, each of whom own a directand indirect equity interest in PlaintiffJJK Industries, L.P.’’ As such, Defendantargues that the 1990 letter is insufficientcorroboration evidence of prior conception.The Court finds that regardless of whetherthe 1990 letter is authentic, it is not in andof itself sufficient to establish priority ofinvention, which requires both conceptionand reasonable diligence in later reducingthe invention to practice. See Mahurkar,79 F.3d at 1577. In the present case,Plaintiffs have presented no evidence ofany efforts to reduce the invention to prac-tice in the entire 8.5 years between theNovember 8, 1990 letter, where Wilkinsonallegedly conceived of the invention and,February 26, 1999, when Wilkinson alleg-edly presented a sketch of a ‘‘second work-ing prototype’’ of the invention. TheCourt finds that the 1990 letter shall bedisregarded as evidence of priority of in-vention because Plaintiffs have failed toshow that they exercised reasonable dili-gence, from that time, in later reducingthe invention to practice.

The only other evidence that Plaintiffoffers in support of its argument of priorconception is in dispute. Plaintiff JJK hassubmitted a February 26, 1999 letter fromWilkinson to Shockley, in which Wilkinson

illustrates and describes to Shockley theconceived design of the invention. TheFebruary 26, 1999 letter states, ‘‘[t]he unitthe jeweler made worked great. It is stilla little to ‘arts and crafts’ to take the nextstep and start manufacturing. Here’s myoriginal conception a more manufacturablelayout.’’ The 1999 letter provides a sche-matic drawing of Wilkinson’s conception,labeling the respective parts—‘‘MOTOR—MOTOR HOUSING—POST—INSULAT-ED WIRE—MATCHING THREADS—BATTERY HOUSING—MYLAR WASH-ER—BATTERY—PRESS FIT CAP.’’Wilkinson’s 1999 letter finally notes, ‘‘[e]i-ther Brown or Gate could easily make this.Who ever is most available.’’ (InstrumentNo. 114, Exh 10).

Jeffrey D. Klearman (‘‘Klearman’’), a co-inventor of JJK’s 8815 patent, asserts in adeclaration that the ‘‘unit the jewelermade’’ represents the first prototype of theinvention and that the February 26, 1999letter illustrated the design for a secondworking prototype of the invention. (In-strument No. 114, Exh 14). Plaintiff as-serts that the second working prototypewas built for its intended purpose, accord-ing to Wilkinson’s February, 26, 1999 let-ter, and delivered to Shockley on March, 8,1999. (Instrument No. 10, 11 & 14).Plaintiff has also provided a photocopy ofthe second working prototype (a tangibleitem), the original of which is in the pos-session of Plaintiff JJK’s counsel. (Instru-ment No. 11). Accordingly, Plaintiff ar-gues that the second working prototypeillustrated in the drawing dated February26, 1999, and built on March 8, 1999, corre-sponds to the Interference Count as fol-lows:

The ‘‘MOTOR HOUSING’’ enclosing a‘‘MOTOR’’ in JJK’s second working pro-totype corresponds to the ‘‘housing en-closing a vibrator’’ in the InterferenceCount.


The ‘‘POST’’ in JJK’s second workingprototype corresponds to the ‘‘post’’ inthe Interference Count.The ‘‘POST’’ with an end connected tothe ‘‘MOTOR HOUSING’’ in JJK’s sec-ond working prototype corresponds to‘‘the post having one end connected tothe vibrator housing’’ in the InterferenceCount.The ‘‘BATTERY’’ in JJK’s second work-ing prototype corresponds to the ‘‘elec-tric power source to power the vibrator’’in the Interference Count.The electromagnetic ‘‘MOTOR’’ in JJK’ssecond working prototype correspondsto the ‘‘vibrator comprising an electro-magnetic motor’’ in the InterferenceCount.The ‘‘BATTERY HOUSING’’ attachedto the ‘‘POST’’ in JJK’s second workingprototype corresponds to the ‘‘vibratorcomprising an electromagnetic motor’’ inthe Interference Count.

(Instrument No. 114, Exh 7 at 3).Interestingly, however, Plaintiff’s Feb-

ruary 26, 1999 letter and alleged March 8,1999 reduction to practice of a ‘‘secondworking prototype’’ do not coincide withtestimony and evidence presented at a pre-liminary injunction hearing held beforethis Court on January 16, 2003. At thepreliminary injunction hearing, Plaintiff in-troduced into evidence a document thatPlaintiff’s witness, Wilkinson, identified asa sketch used for making the ‘‘first proto-type’’ of the invention. (Instrument No.161, Exh 12). Plaintiff’s witness, Wilkin-son, identified the sketch of the ‘‘first pro-totype’’ as ‘‘Exhibit 44.’’ (Instrument No.161, Exh 11). In the Exhibit List present-ed by Plaintiff at this Court’s request,Plaintiff identifies ‘‘Exhibit 44,’’ i.e. the‘‘first prototype’’ as being dated May 3,1999.4 (Instrument No. 161, Exh 12).

Thus, Plaintiff’s testimonial and documen-tary evidence identifies one date, May 3,1999, as a sketch used to create a ‘‘firstprototype,’’ and identifies another date,February 26, 1999, as a sketch used tocreate a ‘‘second working prototype’’ in thepresent Motion for Summary Judgment.These dates do not correspond.

In Plaintiff’s Motion for Summary Judg-ment, Plaintiff concedes that ‘‘[t]he earliestdate for which Klein has any documentaryevidence to establish his conception of theinvention is April 11, 1999.’’ (InstrumentNo. 114, at 24). Defendant Klein’s concep-tion of the invention is established throughdrawings and entries in Defendant Klein’sNotebook No.1, dated April 11, 1999. (In-strument No. 114, Exh 23). Plaintiff doesnot contest the authenticity or validity ofDefendant Klein’s Notebook. Plaintiffconveniently concedes Defendant Klein’sApril 11, 1999 conception when presentingevidence in its Motion of a February 26,1999 conception letter and March 8, 1999creation of a ‘‘second working prototype.’’However, Plaintiff also conveniently forgotto mention that it had previously present-ed testimonial evidence, under oath, thatone of its inventors had created a sketch ofa ‘‘first prototype’’ of the invention, whichwas dated May 3, 1999. Plaintiff’s owntestimonial and documentary evidence thatfirst asserts a May 3, 1999 date for a ‘‘firstprototype,’’ and then asserts a March 8,1999 date for a ‘‘second working proto-type,’’ in and of itself creates a genuineissue of material fact as to when Plaintiffconceived of the invention. Thus, theCourt finds that Plaintiff has failed to es-tablish prior conception by a preponder-ance of the evidence.

2.

The Court determines that the dubiousnature of Plaintiff’s proffered evidence of

4. Because the document identified as ‘‘Exhib-it 44’’ was cut off at the bottom and the textcould not be viewed in its entirety, this Court

admitted the document ‘‘subject to plaintiff’sproduction of [the] complete document’’.


prior conception casts doubt on Plaintiff’sproposed evidence of prior reduction topractice. Because material issues of factexist as to the date of Plaintiff’s allegedconception and creation of a ‘‘second work-ing prototype,’’ the Court does not addressPlaintiff’s argument of prior reduction topractice. Accordingly, Plaintiff’s Motion forPartial Summary Judgment on its CountIII Interfering Patents Claim Under 35U.S.C. § 291 (Instrument No. 114) is DE-NIED.

IV.Plaintiff JJK Industries, L.P.’s Motion

for Partial Summary Judgment on itsCount III Interfering Patents Claim Un-der 35 U.S.C. § 291 (Instrument No. 114)is DENIED.

The Clerk shall enter this Order andprovide a copy to all parties.

,

UNITED STATES of America

v.

Joseph HIRKO.

Criminal No. H–03–93.

United States District Court,S.D. Texas,

Houston Division.

Aug. 31, 2006.Background: Defendants were indictedfor conspiracy to commit wire fraud andsecurities fraud. Defendant moved for dis-missal on grounds of collateral estoppel.Holdings: The District Court, Gilmore, J.,held that:(1) government was not precluded from

retrying defendant;(2) government was not barred from intro-

ducing evidence going to presentcharges; and

(3) defendant’s motion was non-frivolous.

Motion denied.

1. Judgment O751

Collateral estoppel will completely barsubsequent prosecution if one of facts nec-essarily determined in former trial is es-sential element of subsequent prosecution.U.S.C.A. Const.Amend. 5.

2. Judgment O751While subsequent prosecution may

proceed, collateral estoppel will bar intro-duction or argumentation of facts neces-sarily decided in prior proceeding.U.S.C.A. Const.Amend. 5.

3. Judgment O713(1), 725(1)Under collateral estoppel doctrine,

facts necessarily established in first trialmay not be used in second trial either asultimate or as evidentiary facts. U.S.C.A.Const.Amend. 5.

4. Judgment O713(2)When fact is not necessarily deter-

mined in former trial, possibility that itmay have been does not prevent re-exami-nation of that issue. U.S.C.A. Const.Amend. 5.

5. Judgment O725(1), 956(1)First step in resolving claim of collat-

eral estoppel is to determine which factswere ‘‘necessarily decided’’ in first trial; atthis stage, defendant bears burden of dem-onstrating that issue he seeks to foreclosewas so decided. U.S.C.A. Const.Amend. 5.

6. Judgment O751In making determination of what jury

‘‘necessarily decided’’ in first trial for col-lateral estoppel purposes, court must ex-amine allegations of indictment, testimony,court’s instructions to jury, and jury’s ver-dict to consider what makes jury’s verdictcoherent. U.S.C.A. Const.Amend. 5.

Documents

JJK INDUSTRIES v. KPLUS INC. 713 Industries v. KPlus Inc., 447 F...JJK INDUSTRIES v. KPLUS INC. 715 Cite as 447 F.Supp.2d 713 (S.D.Tex. 2006) issued patents; once the interference