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 06, 2002 . . . . . . . . . . . . . . . 8:45 a.m.And related cases and parties

COURT TRIAL - DAY 10

THE HONORABLE PHILIP M. PRO PRESIDINGCHIEF UNITED STATES DISTRICT COURT JUDGE

COURT RECORDER: TRANSCRIPTION BY:

ERICA DAVIS NORTHWEST TRANSCRIPTS, INC.U.S. District Court Las Vegas Division

P.O. Box 35257Las Vegas, Nevada 89133-5257(702) 658-9626

Proceedings recorded by electronic sound recording, transcript

002

produced by transcription service.APPEARANCES:

FOR THE PLAINTIFFS: JESSE J. JENNER, ESQ.STEVEN C. CHERNY, ESQ.CHARLES QUINN, ESQ.ALBERT E. FEY, ESQ.WILLIAM J. McCABE, ESQ.KENNETH B. HERMAN, ESQ.PABLO D. HENDLER, ESQ.JOHN P. HANISH, ESQ.KHUE V. HOANG, ESQ.Fish & Neave1251 Avenue of the AmericasNew York, New York 10020

ELISSA F. CADISH, ESQ.Hale, Lane, Peek, et al.2300 West Sahara Avenue, #800Las Vegas, Nevada 89102

FOR THE DEFENDANTS: GERALD HOSIER, ESQ.8904 Canyon Springs DriveLas Vegas, Nevada 89117

STEVEN G. LISA, ESQ.55 West Monroe, Suite 3300Chicago, Illinois 60603

VICTORIA GRUVER CURTIN, ESQ.LOUIS JAMES HOFFMAN, ESQ.14614 N. Kierland Blvd., 300Scottsdale, Arizona 85254

003

PROCEEDINGS BEGIN AT 8:45 A.M.1

THE COURT: Have a seat everybody.2

All right, Dr. Horn, come on back up, if you would.3

MR. HOSIER: Your Honor, good morning.4

THE COURT: Mr. Hosier.5

MR. HOSIER: Just briefly.6

We're anticipating another one of the patent experts7

and I just wanted to, one, renew the motion in limine, not to8

exclude Martin Adelman from taking the stand, but really9

limiting his testimony and limiting his testimony to the kinds10

of issues that are here in the prosecution laches, the11

reasonable delay, unexplained delay issues. Issues like fraud12

and so on are just inappropriate.13

I think, as we probably have seen from even14

yesterday, we're off into the law and even more there's going15

to be an excursion into the law --16

THE COURT: Well, let's do this. When we get -- I17

don't know that we're going to get to him today --18

MR. HOSIER: Oh, no, no.19

THE COURT: -- because I expect Dr. Horn's direct20

and cross is going to consume the day and probably next week.21

MR. HOSIER: No, I just wanted to hand up -- Judge22

Holland, in the related case down in --23

THE COURT: Alaska?24

MR. HOSIER: In Phoenix.25

004

THE COURT: Oh, in Phoenix. 1

MR. HOSIER: In Phoenix.2

THE COURT: Well, he's in Alaska, but yeah.3

MR. HOSIER: He's in Alaska, but in Phoenix he's4

been in charge of those cases. There, the group that Fish &5

Neave used to represent, now represented by other attorneys,6

have proposed, for a trial we have on February 3 there, an7

expert witness to testify on the law.8

THE COURT: Uh-huh.9

MR. HOSIER: Judge Holland just issued an opinion10

excluding that witness from testifying, which we just want to11

commend to the Court here.12

THE COURT: Okay.13

MR. HOSIER: And just hand that up.14

THE COURT: All right. Have you got a copy for Mr.15

Quinn there?16

MR. HOSIER: Yes. And that's all, just to alert the17

Court to the potential issue.18

THE COURT: All right. Well, I'll look at that over19

the weekend and be prepared to address it when the witness --20

MR. QUINN: Your Honor, at the risk of delaying21

things for another few seconds, we need clarification on what22

I thought your ruling was yesterday, that the Lemelson23

Foundation would identify their first three witnesses. We24

didn't get that identification, and I'm told this morning that25

005

apparently we're not going to, so if you could just clarify1

that.2

THE COURT: Other than Dorothy Lemelson and one3

other witness, whose name escapes me, there were three more.4

MR. QUINN: There's supposed to be two others after5

Mrs. Lemelson, Your Honor.6

THE COURT: Okay.7

MR. HOSIER: Well, Your Honor, I just spoke with Mr.8

Jenner yesterday and it seems now very clear that they're not9

going to get through their case until next Wednesday and10

probably early into the following Monday. I don't want to11

have witnesses that are going to drag over multiple days. I12

mean, we clearly have Dolly Lemelson coming, we have Dr.13

Grindon coming, we have Brian Williamson coming, we have Mr.14

Putnam coming. Exactly the order in which I put them I'll --15

THE COURT: But those are going to be the first16

four?17

MR. HOSIER: But maybe not in that order.18

THE COURT: No, I understand.19

MR. HOSIER: Yes.20

THE COURT: But they're going to be the first four. 21

Okay. 22

MR. HOSIER: Well, except if I run into scheduling23

problems, but, I mean, by next Wednesday -- I mean, we don't24

have very many. I think most all our case will be in in five,25

006

six days, except for one witness, or --1

THE COURT: Who's that?2

MR. HOSIER: It probably will be Dr. Hunt, which3

would take more time, and whether --4

THE COURT: And you definitely don't expect to call5

Hunt early?6

MR. HOSIER: Right.7

THE COURT: You expect to call him at the end?8

MR. HOSIER: Right.9

THE COURT: Okay.10

MR. HOSIER: So they basically got it. We're going11

to have most of the witnesses that week. If we have --12

THE COURT: All right. Well, get your -- you know13

those four. Get the order of them as early as you can in14

terms of who's going to go first, but I think that --15

MR. HOSIER: I mean, they're going to know it by --16

THE COURT: And what I'll do, Mr. Quinn, is I'll17

give you --18

MR. HOSIER: I mean, they're going to know it --19

THE COURT: I'll give you the weekend, that20

following weekend anyway. I wouldn't expect you to be21

prepared to deal with one of the individuals, other than the22

first couple that were mentioned, next Wednesday or something23

anyway.24

MR. QUINN: That's fine.25

007

THE COURT: And I'd simply put over any examination1

of those witnesses 'til the following Monday.2

MR. HOSIER: I mean, they had 27 witnesses didn't3

even want to give us the Wednesday before.4

THE COURT: No.5

MR. HOSIER: Some cut down. We got seven or so and6

they know it and they're complaining. This is what I have7

with New York lawyers all the time.8

MR. QUINN: Well, Your Honor, if --9

THE COURT: Well, no, I -- no, we don't --10

MR. JENNER: Just a minute, Your Honor.11

THE COURT: Hold on. Hold on. We don't -- we 12

don't --13

MR. QUINN: If I might, all Mr. Hosier had to do was14

tell us -- 15

THE COURT: Right. Right.16

MR. QUINN: -- that the first four were going to be17

Mrs. Lemelson, Grindon and --18

THE COURT: Right. We don't -- we don't need19

aspersions about lawyers from any locale. I think -- this is20

a case --21

MR. QUINN: And I just want the record to reflect,22

Your Honor, that I'm from New Jersey.23

MR. LISA: I was born there.24

THE COURT: All right, well, then --25

HORN - DIRECT008

MR. JENNER: Your Honor, I've been unusually silent1

about this kind of thing, but I would like these kinds of side2

comments to stop.3

THE COURT: Yeah. You know, --4

MR. JENNER: I don't think they contribute anything5

to the proceedings.6

THE COURT: No, no.7

MR. JENNER: And we've put up with this all through8

the trial.9

THE COURT: They don't. And, frankly, you know,10

there have been times when both sides have made statements11

about -- not each other so much, but clients back and forth,12

and that doesn't contribute anything to the dialogue. It's13

the kind of thing I expect sometimes from clients who feel14

strongly, passionately about things, who probably hate each15

other in some respects or resent each other in some respects,16

and sometimes with good reason, sometimes not, but not from17

counsel.18

So let's move on and let's just hear from Dr. Horn,19

and let him continue with his, and hopefully wrap up his20

direct examination as quickly as we can.21

MR. HOSIER: I get these shrill comments about my22

client being a liar and a cheat in the midst of examination.23

THE COURT: No, no. I know. I know. Look -- yeah.24

MR. HOSIER: I mean, it's -- for these people to25

HORN - DIRECT009

suggest this I think is ridiculous.1

THE COURT: Look, it doesn't -- I'm not impressed2

with comments about a client being a liar and a cheat either. 3

I'm not -- I've got cases all day long about people who are4

liars and cheats. I send them to prison all day long. I've5

got libel cases from a colorful local resident suing the6

junior senator from the State of New York and other people7

that are pending in front -- just remanded by the Circuit. I8

mean, I've got cases all over the place that involve9

allegations of libel or lying or cheating, and there you've10

got evidence to deal with, but let's move on and avoid the11

hyperbole.12

(Pause in the proceedings)13

THE COURT: Go ahead.14

MR. JENNER: Thank you, Your Honor. Thank you, Your15

Honor. I think I'm losing my voice.16

DR. BERTHOLD HORN, PLAINTIFF'S WITNESS, RESUMES THE STAND17

DIRECT EXAMINATION (Continued)18

BY MR. JENNER:19

Q I'd like to return briefly to the issue of a written20

description that came toward the end of your testimony21

yesterday and I'd like to ask you just a couple of more22

questions. I want you to make some additional assumptions of23

the kind that I asked you yesterday.24

I'd like to ask you first to assume that the claims of25

HORN - DIRECT0010

the patents are construed in a manner that would permit them1

to cover the use of image processing algorithms.2

A Okay.3

Q If the claims were to be construed in a manner that would4

cover image processing algorithms, in your opinion would a5

person of ordinary skill in the art in the 1956 to 1963 time6

frame have understood that Mr. Lemelson intended to disclose7

and claim such an invention?8

A No, because he doesn't describe any algorithms or9

programs that would be instantiation of algorithms. He10

doesn't even show a flow chart, which would be a way of11

indicating an algorithm without writing it down in a12

programming language.13

Q All right, the same question, Dr. Horn, as to image14

analysis algorithms as opposed to image processing algorithms,15

to the extent that there's a difference.16

If the claims of the patents-in-suit were to be construed17

in such a manner as to enable them to cover image analysis18

algorithms, in your opinion would a person of ordinary skill19

in the art in the 1956 to 1963 time frame have understood that20

Mr. Lemelson intended to disclose and claim such an invention?21

A My answer would be the same. There are no algorithms and22

no programs.23

THE COURT: Explain to me again, though, because it24

escapes me, the difference between image analysis and image25

HORN - DIRECT0011

processing as simply as you can.1

THE WITNESS: Certainly, Your Honor.2

Image processing is a set of techniques for3

producing a new image from an existing image. For example,4

you might sharpen it, crispen it or you might blur it or, you5

know, perform some of the manipulations that are done in photo6

shop or some superimposition of the image.7

THE COURT: Enhance it in some way?8

THE WITNESS: Enhance it.9

THE COURT: Okay.10

THE WITNESS: Whereas image analysis takes an image11

on its input and doesn't produce an image on its output, but12

produces some kind of summary result, such as the area of the13

object is 25 or the easel is not a widget of type A in this14

image.15

THE COURT: Thank you.16

Go ahead.17

MR. JENNER: I don't normally do this, but could I18

ask the Court's permission if it would be all right this19

morning if I utilize a cough drop?20

THE COURT: Oh, sure, yeah. No, go ahead. Go21

ahead.22

BY MR. JENNER:23

Q Now I want to ask you the same type of question regarding24

digital image processing.25

HORN - DIRECT0012

A Yes.1

Q I want you to assume that the claims are construed in a2

manner that would permit them to cover digital image3

processing. If the claims were to be construed in that4

manner, in your opinion would a person of ordinary skill in5

the art in the 1956 to 1963 time frame have understood that6

Mr. Lemelson intended to disclose and claim such an invention?7

A Again, the answer is no. For example, just to start off8

with, for digital image processing you need a digital image. 9

No digital image is created here. We're dealing with analog10

video waveforms.11

So, to reiterate, the digital image is an array of12

numbers representing brightnesses and they're sampled in the13

image on positions called picture cells or pixels and there's14

nothing like that disclosed here.15

Q The same thing with digital image analysis. If the16

claims were to be construed in a manner that would permit them17

to cover digital image analysis, in your opinion would a18

person of ordinary skill in the art in the 1956 to 1963 time19

frame have understood that Mr. Lemelson intended to disclose20

and claim such an invention?21

A My answer again would be that, no, he did not.22

Q All right, sir, now yesterday I asked you if there were23

any digital codes shown on the tapes of the environment other24

than the parallel location codes shown in Figure 1 and you25

HORN - DIRECT0013

told me last night that you wanted to add something to the1

answer that you gave.2

A Yes. I neglected to mention that there are other codes3

labeled PC', for example, which could be used to record the4

location in a serial manner rather than parallel. So rather5

than have the code spread across multiple tracks, you can6

write the binary digits of the code along one track.7

There are also additional uses of that code, for example,8

to indicate a tolerance range that could be used in additional9

analysis.10

Q Do those codes represent the amplitude of a video signal?11

A No, they do not.12

Q Now I asked you yesterday if there is any disclosure of13

circuitry to perform multiple subtractions, I guess, as I'm14

told, the way that I phrased it, and you said no. What did15

you understand by my reference to multiple subtractions?16

A I imagine that you intended to mean successive17

subtractions, so if, for example, the image has several18

inflections along one scan line, that will subtract the19

position of the second from the first, the third from the20

second, the fourth from the third and so on. That's the kind21

of subtraction I was thinking you were referring to.22

Q Yes, that is what I was intending to refer to, sequential23

subtractions.24

A Yes.25

HORN - DIRECT0014

Q And I was told that I used the term multiple and I wanted1

to make sure that we clarified any possible misunderstanding2

about that.3

Now I don't think I asked you specifically about the4

utilization of synchronization or sync codes on the magnetic5

medium. What are sync or synchronization codes?6

A Well, in the arrangements of multiple tracks on the7

magnetic tape that Lemelson says is basic to his invention,8

the very first track, C1, is one that carries a single pulse9

that tells you where the picture starts. And, obviously,10

that's very important because everything in the picture is11

going to be in reference to the position of that pulse, so12

that's usually called S1, the sync pulse.13

Q And is that shown, for example, in Figure 3?14

A Yes. On track C1, over on the left-hand part of the --15

Let's see if I can aim for the right spot here. It's over16

here, and I'll take my graphic away, so it's labeled here sync17

signal and it's on track C1. And, again, it's the beginning18

of the image and everything is in reference, measured in19

reference, to that sync pulse and the processing depends on20

starting with that pulse.21

Q All right, sir. Now I'd like to go back to where we left22

off yesterday and I'd like -- I had asked you some questions23

about the development of the machine vision art.24

Do you recall that?25

HORN - DIRECT0015

A Yes.1

Q Now I'd like you to give the Court some idea of the work2

that actually was done between about 1956 and the 1980s to3

make machine vision practical.4

And have you prepared a chart to help explain the actual5

development of the art?6

A Yes, I have.7

Q I would ask you to turn to Exhibit 3468 in the binder,8

which is a fold-out chart.9

A Yes.10

THE WITNESS: I might say this was a very painful11

chart to prepare because counsel kept on taking out lots of12

things that I wanted to add that I thought were very important13

to the development of machine vision.14

BY MR. JENNER:15

Q Well, what, in your opinion, does the chart, what's still16

left on the chart, represent?17

A It shows some of the major events in the development of18

machine vision going up from the mid-1950s to mid-1980s. It19

excludes work on character recognition and particle counting20

and so on before 1950, but it highlights some of the more21

important developments.22

Q Now, as you alluded to, does this chart include all the23

developments in machine vision during the three decades that24

you might consider to be pertinent to the development of the25

HORN - DIRECT0016

art?1

A No, it does not.2

Q Now what, if anything, is a common thread in the3

development represented on this chart?4

A The common thread is algorithms. Everything depends on5

the development of algorithms. Certainly, the hardware6

available improved during those years, but the same algorithms7

that were developed by, for example, Huff in 1962 are still8

used on modern hardware.9

So the key is the concept of a recipe for computation or10

algorithm.11

Q And the use of such algorithms on improving equipment?12

A Yes.13

Q For most of the entries on the chart there are references14

under the subject matter to one or more of plaintiff's trial15

exhibit numbers. Is there a correlation between those trial16

exhibits and the event listed on the chart?17

A Yes. In each case we've picked a paper or patent that18

represents that development.19

Q All right, I'd like to hand you a binder.20

(Pause in the proceedings)21

MR. JENNER: And this separate binder has been22

essentially prepared with a cover sheet or index which has23

been marked as Plaintiff's Exhibit 3414. That's what appears24

inside the first tab and the index is intended to bring25

HORN - DIRECT0017

together the various other plaintiff's exhibits that are1

included in the binder.2

BY MR. JENNER:3

Q Have you examined this collection of documents, Exhibit4

3414, to confirm that it includes the publications that are5

identified on the chart?6

A Yes.7

THE COURT: Did you include a translation of that8

first article? My German would not be good enough to --9

MR. JENNER: We did not.10

THE COURT: Okay.11

MR. JENNER: I think it's more intended to represent12

the scope of the art. What I'm going to do is to ask the13

witness -- In fact, I will ask the witness.14

BY MR. JENNER:15

Q Without spending too much time on particular terminology,16

can you just explain to the Court what some of the17

developments on the chart are and why you consider them18

important to the development of machine vision over the19

decades?20

A Okay, I'd first like to address Your Honor's question21

about the first article. I can't translate the whole article,22

but the title, at least, is "Lectures Over Content, Area and23

Perimeter." One of the topics in machine vision is to indeed24

determine the shape, area and perimeter of elementary shapes25

HORN - DIRECT0018

in the image area.1

Q Now this article is listed under the topic of morphology,2

so I take it this article has something to do with what's3

called morphology?4

A Yes. One of the important developments in machine vision5

was to acknowledge the two-dimensional nature of the image,6

that objects are not linear in the image, they represent some7

area, and that the shape is important and that automatic8

methods should be developed to determine that shape and to9

describe it.10

Q All right. With reference to the chart, can you11

summarize what you consider to be some of the important12

developments?13

A I'll just pick some, edge and curve detection. Starting14

in the 1960s, very early on, people had the notion that there15

must be a way of distinguishing an object from its background16

by comparing brightness values and very early on they also17

determined that that actually was quite difficult, that you18

could not determine a boundary between an object and the19

background just by comparing numbers on either side of the20

boundary. And one of the things they determined is that you21

can only tell there's an edge by looking at a considerable22

area and seeing, okay, one part of it is considerably brighter23

than another part of it and, in essence, collecting24

statistics, simple things like averages, the average of this25

HORN - DIRECT0019

area is larger than the average of that area, and then using1

that in further decision making, whereas just comparing two2

neighboring brightness values is completely unreliable.3

And it's a surprise because at first you think that that4

should work and it took several years for machine vision to5

reach that conclusion and to find a way around it.6

And I'll pick another one.7

Q Well, let me stop with that for a moment and just ask you8

if you can relate that development to the disclosure of the9

patents-in-suit.10

A Okay, sorry. I didn't make that clear.11

Finding inflections along a scan line in an analog video12

signal is exactly what I was talking about when I was saying13

comparing neighboring brightness values and that's exactly the14

thing that these people discovered didn't work and why they15

had to work for many years to find statistical techniques that16

are based on large image areas to find edges or inflections17

properly.18

Q All right, sir, would you please continue?19

A The next development on this list is the half transform,20

for which Huff received the patent quite early on, which is a21

little surprising because, of course, there was a time where22

algorithms were not patentable. You had to have a physical23

implementation to receive a patent and he did that.24

So what is it he did is he developed an algorithm for25

HORN - DIRECT0020

detecting lines and curves in images. And the reason, again,1

this is not trivial is that images are noisy. The numbers in2

the images are not the perfect numbers that you might at first3

expect and that to reliably find edges and straight lines and4

curved lines requires a collection of statistical information.5

And his method is called the transform method because he6

basically has a mathematical technique of mapping the image7

into another kind of representation and in that representation8

there will be strong peaks. So if there's a line at a certain9

angle and a certain position, in the transform there will be a10

strong peak at a certain position.11

And that's about as much of the technical detail I'd like12

to say on that one.13

Q And why is that something you consider important to the14

development of the art?15

A Well, first of all, it's one of the first patents16

covering more complex machine vision algorithms and then17

because, again, it emphasizes this idea that the detection,18

even of just edges and lines, is not a trivial matter. This19

man received the patent for coming up with a very good way of20

doing that and just finding inflections along a scan line is21

not the way to do it.22

Q Well, you anticipated my next question, which is is there23

anything in the patents-in-suit that in your opinion points24

the way towards what became the Huff Transform?25

HORN - DIRECT0021

Q Well, there's a related matter, which is, again, the1

detection of inflections, which is based simply on determining2

whether a signal is above or below a threshold and only takes3

into account local information so that, if there's any4

corruption of that information, as there always is due to5

noise, you can't be sure that you have an edge and so Huff6

solved that by collecting statistical information over large7

parts of the image.8

Q So are you saying that Huff solved the problem that was9

actually left remaining by the patents-in-suit?10

A Yes.11

Q All right, can you continue with the chart?12

A Well, I'll pick another one, blob analysis, which went13

through a series of developments ending up with a package14

supplied by SRI that was adopted initially by Automatix.15

Q Who is SRI?16

A SRI is the Stanford Research Institute. It's associated,17

of course, with Stanford University. It did a lot of work for18

the Department of Defense and was also critical in the early19

developments of machine vision.20

Now one of the reasons blob analysis is interesting --21

Let me first say what it is. The idea is that we can take22

certain image regions that correspond to images of objects and23

analyze the nature of those imageries. For example, we can24

determine their size, of course, their perimeter and, if25

HORN - DIRECT0022

they're elongated, we can determine how they rotated in the1

image. All of these are very important things for directing2

robotic equipment to, for example, pick a part off a conveyer3

belt.4

And one of the things that's interesting about blob5

analysis is that it works entirely without reference to a6

standard. It doesn't depend on having had a picture of the7

object ahead of time that's somehow stored and compared. In8

blob analysis you determine -- you find an object and you9

determine its orientation entirely based on the shapes in the10

image as opposed to doing some sort of comparison.11

Q Now is there anything in the patents-in-suit that is12

related to blob analysis?13

A You'll have to remind me what it is you're referring to.14

Q The development of blob analysis, is there anything in15

the patents-in-suit that discloses blob analysis?16

A No. And, in fact, precisely because of the point that17

the patents-in-suit involve comparison with a standard or at18

least use gating signals derived from a standard, it's very19

different. This is a technique that works on its own,20

straight from the images, without a standard image.21

THE COURT: We had earlier testimony concerning -- I22

believe it was something called connectivity algorithm, is23

that --24

THE WITNESS: Precisely, Your Honor.25

HORN - DIRECT0023

THE COURT: It's the same thing.1

THE WITNESS: That's exactly what this is about,2

yes.3

BY MR. JENNER:4

Q Now let me ask you, in that sense, does the work on the5

time line, Exhibit 3468, foreshadow the development of the6

algorithms that are used today by Cognex?7

A Yes. Certainly there have been tremendous advances and8

improvement by people like Bill Silver, but the roots of much9

of that work can be found in this earlier work, often in the10

research laboratories and so on.11

Q All right, sir. And, in that same vein, you recall12

yesterday I asked you whether current modern machine vision is13

simply a -- I think I called it smaller, faster, better14

version of what is disclosed in the Lemelson patents or is15

something entirely different and you gave an answer to that16

question.17

A Yes. It's something entirely different. And I think by18

pulling out a few of these examples, I hope to have made it19

clear just how it is different.20

Q All right. And let me ask you now the same question in21

relation to Cognex machine vision products and their use.22

Would you consider Cognex machine vision products and their23

use to be simply a faster, smaller, better version of what is24

disclosed in the Lemelson patents or is it something entirely25

HORN - DIRECT0024

different?1

A No, they're definitely entirely different in all of the2

ways that I've described so far and noting again that the3

disclosure in the Lemelson invention is very narrowly focused4

at two particular things that it can do, this point-by-point5

comparison and the measurement along a scan line and then, not6

to repeat myself, but it's based on certain assumptions which7

turn out not to be very good assumptions.8

Q All right, sir, going back to the chart, is there9

anything on the chart that actually reflects some of the work10

that you did?11

A Well, I left most of that out because I don't12

particularly enjoy blowing my own horn.13

Q Yes, but, at my insistence, did you include something? 14

A Yes. I believe -- Well, I believe, amongst other things,15

you've got something in here on the edge detection and the16

work we did at MIT on robotic guidance based on robots. That17

would be the machine vision guidance of robotic equipment and18

Winston is the person I worked with on what I called hand/eye19

systems where we're using a camera to determine the position20

and orientation of objects and then using that to control the21

movement of a manipulator arm to pick up those objects and to22

place them or combine them with other objects.23

Q Would you turn in the binder to tab 11? There is an24

article from the Massachusetts Institute of Technology,25

HORN - DIRECT0025

Artificial Intelligence Laboratory, entitled, "The1

Binford/Horn Line Finder."2

Are you the Horn of the Binford/Horn Line Finder?3

A Yes. This is an article I wrote to describe the image4

analysis in the hand/eye system that I just referred to, which5

was built in 1970. I was then forced to leave the country for6

a year and a half to work off the scholarship I had and, when7

I returned in July 1971, I wrote up the results we had in 19708

and then I added graphics to it in 1973. So that's this9

report.10

And this talks about our work on edge detection, which11

included the discovery that, well, gee, just comparing12

neighboring values of brightness in an image isn't going to13

work and this describes a method that uses a large area of the14

image to obtain statistical information to confirm that15

there's an edge in a particular position.16

Q Now as you said earlier that much of the development17

reflected here relates to the development of algorithms?18

A Yes, pretty much all of it here is -- the central theme19

is always algorithms.20

Q Could practical machine vision have emerged without the21

work summarized in this chart?22

A No.23

Q In your opinion, is any of the research and development24

set forth in the chart and reflected in this binder disclosed25

HORN - DIRECT0026

by the Lemelson patents-in-suit?1

A None of it is disclosed by the patents.2

Q In your opinion would machine vision technology be one3

bit different today if the Lemelson patents had never issued?4

A No.5

Q Why not?6

A Because --7

MR. LISA: Your Honor, that calls for speculation. 8

I mean, how can he -- I mean, gross speculation, frankly;9

would life be any different if they hadn't issued.10

THE COURT: Well, right, if the airplane hadn't been11

invented. I'm sure --12

MR. LISA: Or if perhaps Wright didn't invent it.13

THE COURT: No, no, I understood the question really14

to relate to any connection between Lemelson and what has15

developed, not if Lemelson had never existed would machine16

vision -- 17

MR. JENNER: The patents. This relates exactly to18

the technology and in the area of his expertise.19

THE COURT: Oh, I understand that. Restate the20

question just so I --21

MR. JENNER: Would machine vision technology be any22

different today if the patents had never issued.23

THE COURT: All right, I'll let the witness give his24

opinion on that.25

HORN - DIRECT0027

THE WITNESS: Well, in my opinion, it wouldn't and1

one of the reasons is that in all of my work I haven't come2

across any scholarly publication that referenced it or that3

was based on it and so -- and also, in my contacts with people4

in the field, I've never come across it until these suits5

arose.6

And so it has not had an influence on any of these7

areas, so my answer would be no.8

BY MR. JENNER:9

Q Do any of the developments that you have referred to over10

the 30-year period of time reflected in the chart derive from11

the disclosures of the Lemelson patents-in-suit?12

A No. And, in fact, many of them go in directions that13

resolve some of the problems of the kinds of techniques14

described in the patent.15

Q In your opinion, do the patents-in-suit deserve any16

credit for the development of machine vision as it's practiced17

today?18

A No.19

Q To the best of your knowledge, what are some of the most20

frequently cited publications in the machine vision field?21

A Well, now I can't avoid talking about myself. Probably22

the most cited paper is the one on optical flow that I wrote23

in 1978, which relates to finding movement in images and24

creating a vector field describing that movement. It has over25

HORN - DIRECT0028

a thousand references and is one of the reasons I received one1

of the awards I did.2

Q To your knowledge, how often have any of the Lemelson3

patents-in-suit been cited in this published literature?4

A Zero.5

Q So, in view of your experience over the decades reflected6

in the chart, your work in the art and your knowledge of the7

work done by others, is it appropriate for defendant to8

characterize the Lemelson patents as pioneering?9

A No.10

Q In fact, as you have alluded to, do you have an opinion11

as to whether or not anything useful could be made in12

accordance with the disclosure of the Lemelson patents?13

A I don't believe there's any way of building it, even if14

the parts of it could be found, or that it would work if15

somehow, magically, all of the problems with the parts were16

corrected or the fact that some of the parts just don't exist.17

Q All right.18

MR. JENNER: And on that note, Your Honor, I would19

like now to turn to the topic that we call non-enablement.20

THE COURT: All right.21

MR. LISA: Your Honor, so my silence is not taken to22

admit these -- as an admission that the documents are23

admissible, we certainly object to the articles being admitted24

for the truth of the matter stated. We have no objection to25

HORN - DIRECT0029

the expert's testimony, but the articles and things attached1

to this chart are pure hearsay.2

THE COURT: All right.3

MR. JENNER: All right. Well, in that case, Your4

Honor, -- well, I guess I ought to ask Your Honor for a ruling5

on that.6

THE COURT: Well, --7

MR. JENNER: I acknowledge that there is a hearsay8

rule provision regarding learned treatises and, if it's Your9

Honor view that these should not come in as indicative of the10

witness' testimony regarding the development of the art, then11

I would ask the witness a few more questions about a couple of12

topics that he hasn't mentioned and then offer the table of13

contents, which lists the publications, to go along with his14

testimony.15

I would go whichever way Your Honor prefers.16

THE COURT: Let me do this. I'll reserve ruling on17

receiving 3414 and the attachments thereto. They're each, I18

think, marked separately, even though they're tabbed. Well,19

no, maybe they're not.20

MR. JENNER: I believe they are.21

THE COURT: Well, they are.22

MR. JENNER: They are.23

THE COURT: They are. Yeah, they bear different24

markings.25

HORN - DIRECT0030

MR. JENNER: Right. They're all separately numbered1

so that, if there's a need, they --2

THE COURT: And they don't duplicate other things3

that have already been received then?4

MR. JENNER: That's correct.5

THE COURT: Okay.6

MR. LISA: Perhaps we could request if they have --7

if counsel has a translation of that first article that we8

could look at. I mean, --9

THE COURT: Well, you see, it's not something10

obviously that I'm going to be able to read. It's indicative11

of what the witness, in his expertise, testifies is relied12

upon in the development of particular technology, machine13

vision technology, over the years.14

MR. LISA: I certainly can't ask any questions off15

of it as I don't -- I can't read it or understand it.16

THE COURT: And I think the witness indicated he17

could not.18

Have you read a translation of that particular19

article or are you able to read it?20

THE WITNESS: I've read it. I haven't seen a21

translation of it.22

THE COURT: All right.23

MR. LISA: And I would add too, Your Honor, the fact24

that the witness relied on these does not make them admissible25

HORN - DIRECT0031

under Rule 703.1

THE COURT: No, I understand that. I understand2

that. Yeah, let me reserve ruling on that. I don't need any3

more testimony concerning them. I'll be able to make a4

ruling, but --5

MR. JENNER: All right. And, Your Honor, what I'd6

like to do contingently along with the chart is in the7

event --8

THE COURT: Oh, the chart I will receive.9

MR. JENNER: Yes, I understand that.10

THE COURT: Yeah.11

MR. JENNER: What I'd like to do also, as12

illustrative of the witness' testimony, in the event Your13

Honor does not receive the full binder, is offer separately14

Exhibit 3414.15

THE COURT: The table of contents.16

MR. JENNER: Which is the two-page index that lists17

the topics related on the chart and the fact that there are18

documents that are representative of those developments.19

THE COURT: Do you have a separate objection to the20

table of contents, Mr. Lisa?21

MR. LISA: Actually, I might, Your Honor, as it22

might be argumentive, the arguments of counsel and not the23

testimony of the witness. To have something as illustrative24

as a witness' testimony leaves it wide open as to what it's25

HORN - DIRECT0032

being introduced for. The witness testified whatever he1

testified to. If it's just a table of contents that repeats2

the -- you know, that repeats verbatim the titles, I have no3

problem with that, Your Honor.4

MR. JENNER: It does repeat verbatim the titles as5

far as I am aware.6

THE COURT: Yeah.7

MR. JENNER: And then it --8

THE COURT: That's what it appears to do.9

Well, first of all, I'll receive 3414, but, as to10

the attachments, let me reserve ruling on that.11

(Plaintiff's Exhibit No. 3414 admitted)12

BY MR. JENNER:13

Q Now, sir, in your review of the Lemelson patents-in-suit,14

did you come across any errors that in your opinion would have15

prevented the system disclosed by the patent from working?16

A Yes, I did. And they come in several categories,17

including use of devices which don't exist, errors in circuits18

and so on.19

Q All right. And did you prepare a chart that summarizes20

some of the errors that you found in the patent?21

A Yes.22

Q Would you turn to Exhibit 3469?23

A Yes.24

Q Can you identify 3469?25

HORN - DIRECT0033

A Yes. This is the chart of some of the problems I found.1

Q Does the chart include each and every error that you2

found in the patent?3

A No, it does not.4

Q Why not?5

A Well, in the interest of time, counsel and I agreed to6

reduce the number of items that we'd focus on just to7

illustrate the kinds of problems we're dealing with.8

Q Now I'm going to ask you to go through the chart with me9

and explain some of the errors that you found.10

First, is there any error you found that pervades the11

entire patent?12

A Yes. For example, the use of a multitrack analog13

videotape recorder, which did not exist and never did exist14

actually.15

Q And what about item 7, can't reliably detect inflections?16

A That's another one that is central because all of the17

processing is only off the gating and clipping, so the18

clippers are, of course, what are used to detect inflections19

and therefore, if you can't reliably detect inflections,20

everything is compromised.21

Q All right, let's go back to number 1, the multitrack22

analog videotape recorder. And by that are you referring to23

the recording member indicated by the number 10 in the various24

figures of the patent?25

HORN - DIRECT0034

A That's correct.1

Q Now did a wide-band multitrack analog video recording2

system exist in the 1956 to 1963 time frame?3

A There wasn't one. There were several experimental ones. 4

Obviously, everyone was very keen to be able to get away from5

live broadcast, so Bing Crosby, for example, worked very hard6

on this, as did several electronics companies, and RCA had an7

experimental device.8

The problem was finally solved later by Ampex, but,9

importantly, the Ampex device recorded only a single video10

track and, as we saw, Lemelson's system depends on an11

arrangement of signals on a multitrack tape, which, as he12

says, is basic to his invention.13

Q Well, would, in your opinion, the Ampex system have been14

capable of utilization in the embodiments of the Lemelson15

patents?16

A No, because it was a single-track device. It worked17

somewhat similar to today's VHS recorders in that it recorded18

the information across the length of the tape rather than --19

across the tape rather than along the tape. That's how it got20

a much longer line to record on essentially, in contrast to21

the other attempts, such as the RCA tape recorder.22

Q Did the single-track Ampex videotape recorder catch on23

commercially?24

A The Ampex recorder?25

HORN - DIRECT0035

Q Yes, the Ampex recorder.1

A Oh, it certainly did, and everyone else immediately took2

licenses to it, including RCA, and it was further developed to3

eventually become the kind of recorder we have today.4

Q Did the experimental work you referred to at the Bing5

Crosby Laboratories lead to anything commercial or practical?6

A No. It wasn't practical for a number of reasons. The7

Bing Crosby tapes used multiple tracks, but only because they8

couldn't record the video signal on a single track, so they9

split it up across ten tracks and they had a switch that would10

go between the ten tracks. The switch introduced a noise that11

was quite clearly visible in the picture as stripes and12

obviously, if you're going to try and make an accurate point-13

by-point comparison of images, you're going to be severely14

compromised by having superimposed stripes on the image that15

you're looking at.16

Q What happened to the experimental Bing Crosby multitrack17

recorder?18

A They abandoned it fairly early on and it was never heard19

from again.20

Q If I were a person of ordinary skill in the art in 195621

and I wanted to try to implement Mr. Lemelson's system, could22

I go down to the corner videotape recorder store and buy a23

Bing Crosby multitrack recorder?24

A No. And, in fact, you wouldn't even have found a working25

HORN - DIRECT0036

multitrack analog videotape recorder in research labs.1

Q What about the RCA multitrack experimental recorders, did2

anything ever come of that?3

A RCA used a different technique for splitting up --4

MR. LISA: Objection. Your Honor, I'm objecting as5

to the lack of foundation for some of his testimony. How does6

he know whether you could go down to the store and buy it in7

1956. He wasn't even there.8

THE COURT: Well, all right. I think the witness is9

not testifying that he was there in 1956 looking for such a10

store, but that based on his understanding of the technology11

at the time it didn't exist, so you couldn't.12

MR. LISA: But we have no foundation that he's even13

studied this issue for back then. There's nothing.14

THE COURT: Well, I'll let you go into that on15

cross-examination if you want to explore his -- what he was16

doing in 1956 or what he's studied about that period in17

history.18

But go ahead. I'll overrule the objection at this19

point.20

BY MR. JENNER:21

Q All right, the same as to the RCA experimental multitrack22

system that you referred to, what ever happened to that?23

A It was also abandoned and RCA took a license from Ampex24

as soon as Ampex solved the problem of recording on magnetic25

HORN - DIRECT0037

tape.1

Q Did anyone commercialize a multitrack analog video2

recording system of the kind that could have been used in3

implementing Mr. Lemelson's system to record the signal4

arrangement that he said was basic to his invention in column5

10 of the patent?6

A No, nobody did develop such a system.7

Q Are there multitrack audio systems -- audiotape systems?8

A Yes, certainly. Multitrack audio systems were developed9

and some of us are old enough to remember the old eight-track10

systems, for example, which, I guess, was in the seventies.11

Q How do the bandwidth of the multitrack audio systems12

compare to the multitrack video system that would be called13

for by the patent?14

A Audio requires 20,000 cycles per second bandwidth, video15

requires the order of 3 to 4 million, so there's about a16

factor of 100 or 200 difference in bandwidth required, which17

is a huge number in terms of what it takes on the tape to18

record a signal.19

Q Could the multitrack audiotape recorder of a roughly20

20,000 cycles per second bandwidth have been used in the21

embodiments of the Lemelson patent?22

A No.23

Q Why not?24

A Because Lemelson deals with television cameras producing25

HORN - DIRECT0038

analog video signals of high bandwidth that could not be1

recorded on audiotape.2

Q Aren't there tape recording systems today that record3

video on tape, like a VHS tape?4

A Yes, there are. And VHS, for example, as I mentioned, is5

somewhat similar to the Ampex design in that it has only one6

video track. It may have additional tracks for control or7

cuing or audio, but those would be lower bandwidth tracks. 8

There's only one high bandwidth track.9

Q So, by way of example, could a common VHS type of tape10

have been used or be used in order to implement the Lemelson11

system?12

A No, because it wouldn't have been able to store the13

signal arrangements he described with multiple high bandwidth14

tracks.15

Q Now you say that no multitrack videotape recording system16

was available. Did Mr. Lemelson explain, in his patents, how17

to make and use a multitrack video recorder capable of18

recording the video signals that he said were basic to his19

invention?20

A No. He just assumed there was such a thing and I believe21

he based that assumption on the publication of a research22

report on an experimental RCA device.23

Q Given the absence of any disclosure in the patent of how24

to make such a multitrack video recorder, do you have an25

HORN - DIRECT0039

opinion as to whether or not a person of ordinary skill in the1

art in 1956 or 1963 could have made and used a multitrack2

video recorder for recording the video signals without undue3

experimentation?4

A No. And one reason I say that is that major research5

labs, powerhouses like RCA, worked on this problem and they6

had often dozens of people, perhaps a dozen senior engineering7

people, working on these problems for years and they weren't8

able to successfully solve this problem.9

So it's not something someone could do without undue10

experimentation certainly.11

Q Now are you aware that the patents refer to the12

possibility of using something called a storage tube to store13

an analog video signal?14

A Yes.15

Q What was a storage tube in about 1956?16

A A storage tube was a vacuum device with a deflectable17

electron beam that would store an image and typically they18

were used to provide persistence to an image so that, if19

something was displayed, you would be able to view it for a20

while even though the original signal went away.21

Q Did the possibility of using a storage tube solve the22

problem of not having available a multitrack analog videotape23

recorder?24

A No, because the storage tube, at best, could store one25

HORN - DIRECT0040

analog video signal. It could not provide the basic1

arrangement of signals that Lemelson refers to on his2

multitrack tape.3

Q Such as the gating signals?4

A Such as the sync, gating and other control signals.5

Q Do you have an opinion as to whether or not Lemelson6

required the multitrack videotape recorder even with the use7

of a storage tube?8

A He required it. And, of course, he shows in the figure9

the use of a storage tube in conjunction with the multitrack10

tape.11

Q Are you aware that the defendant has suggested that a12

type of storage tube called a conversion storage tube could13

have been used to reduce the bandwidth of a conventional14

television video signal to audio levels?15

A Yes, I'm aware of that.16

Q Do you agree that this is suggested by the references in17

the patents to storage tubes?18

A No, it isn't, because Lemelson is referring to what's19

called the direct view storage tube, which allows you to view20

the image, as well as store the image, and there's no21

suggestion of what are called scan conversion tubes, which22

would allow you to convert between different bandwidths.23

An example of a scan conversion tube is the one used to24

convert a radar signal to something you can view on a screen.25

HORN - DIRECT0041

THE WITNESS: As you know, Your Honor, in a radar1

signal a pulse is sent out and returns are received and these2

are plotted on a tube in radio fashion and then, and I'm sure3

you've seen this in many movies, the line turns around the4

center.5

Now the time taken for the radar to scan the whole6

area around the radar could be several seconds and also7

there's this awkward radio scanning pattern, so for display,8

to say air traffic controllers, that image is converted in a9

conversion storage tube to one that can be displayed on a10

ordinary TV.11

And that was one use of conversion storage tubes, but12

these are not the kinds of tubes that Lemelson was referring13

to.14

BY MR. JENNER:15

Q Now is there passages in the patent that lead you to16

conclude that Lemelson was referring to viewing storage tubes17

and not a conversion storage tube?18

A Yes. He explicitly says a viewing-type storage tube, a19

direct view tube.20

Q Let me call your attention to column 10, the passage21

starting at line 63 and carrying over to column 11, line 8. 22

Is there anything in that passage that relates to this issue?23

A Yes. He says the duration and character of the PB124

signal, that's the analog video signal, is preferably such25

HORN - DIRECT0042

that it may be used when reproduced therefrom to modulate the1

right beam of a video picture or storage tube and then he2

refers to a co-pending application filed in 1957.3

Q All right. And also would you look at the top of column4

11 -- column 10 starting at line --5

THE COURT: 63?6

MR. JENNER: Thank you.7

THE WITNESS: Yes, this text. I don't know if you8

want me to read it all out, but it --9

MR. JENNER: No, just the pertinent part.10

THE WITNESS: Okay, he's basically saying that it's11

-- "Thereafter, the signal is reproduced at video frequency12

and used to modulate the picture-generating right beam of a13

video monitor screen."14

So it shows that there's no change of bandwidth or15

frequency here in the storage tube. It's simply a device for16

storing and, at the same time, displaying an image.17

BY MR. JENNER:18

Q Did you also find information in the prosecution history19

that relates to this?20

A Yes.21

Q Would you turn to Exhibit 4A?22

MR. JENNER: Your Honor, Exhibit 4A is an excerpt23

from the 1963 prosecution history, which is Exhibit 4, and24

it's part of an appeal brief that was filed by Mr. Lemelson.25

HORN - DIRECT0043

THE COURT: All right.1

BY MR. JENNER:2

Q Do you have that, Dr. Horn?3

A Yes.4

Q Would you turn over to page 388 and at the top of page5

388 do you see that there's a reference to a book entitled6

"Storage Tubes" by -- it says Kroll and Kazan. Do you see7

that?8

A Yes.9

Q What was that book?10

A That was a book at that time describing storage tubes,11

these vacuum tube devices for image storing and display.12

Q Now starting at the bottom of page 387, at the very end13

it says "Applicant" and then it goes to the top of the next14

page.15

"Applicant," meaning Mr. Lemelson, "has a copy of the16

text entitled 'Storage Tubes' by Kroll and Kazan, 1952, which17

is a well-known text defining various video storage tubes,18

most of which are of the direct viewing image-generating19

types."20

Do you see that?21

A Yes.22

Q And then, if you look in the next paragraph, about six23

lines from the end, do you see where Mr. Lemelson said, "To24

one skilled in the art of television, the term 'video storage25

HORN - DIRECT0044

tube' refers to a direct viewing storage tube."1

Do you see that?2

A Yes.3

Q How, if at all, does that bear on your opinion as to what4

kind of a storage tube is referred to in the patent?5

A This, again, confirms the notion that, when he's talking6

about storage tube, he's talking about this type of storage7

tube, mainly a direct view storage tube, not a scan conversion8

kind of a tube.9

Q Now in your opinion, based on the information in the10

patent and the prosecution history, would a person of ordinary11

skill in the art in 1956, 1963 -- well, 1963, have understood12

Mr. Lemelson to have been referring to the use of a conversion13

type of storage tube?14

A No.15

Q Now are you aware that there is a reference, near the end16

of the patent, to something called a slow scan type of camera?17

A Yes. There's a reference to -- a single reference to18

slow or fast scan camera.19

Q And let's find that. Would you turn to column 62, lines20

27 to 34, and in particular the sentence that starts on line21

27? It says, "For example, a system may be provided utilizing22

one or more slow and/or fast scan video cameras," and then it23

continues.24

Do you see that?25

HORN - DIRECT0045

A Yes, I see that.1

Q What do you understand slow scan video camera to refer2

to?3

A Well, it's not clear since this is the only reference to4

slow scan in the application and, since standard video was a5

standard, NTSC, well defined, known number of lines, number of6

frames per second and so on, there were some experimental7

devices that might be referred to as slow scan. We don't know8

exactly what he has in mind here, but it could be a reference9

to such an experimental device.10

Q Is there anything at all in the patent, the entirety of11

the patent, where it refers to or explains what is meant by a12

slow scan camera?13

A No. And, in fact, it's quite contrary to the notion of a14

slow scan camera because he repeatedly talks about television15

cameras, he talks about video signals of high bandwidth,16

analog video signals of high bandwidth, recording them on the17

tape and so on.18

Q Now you referred to some experimental work. Would you19

turn to Exhibit 1373? This is Defendant's Exhibit 1373, which20

is way in the back of the binder. It's the next to the last21

document in the binder. And this is the point where, in22

turning to that, you have to be careful or the whole binder23

falls apart.24

(Pause in the proceedings)25

HORN - DIRECT0046

Do you have Defendant's Exhibit 1373?1

A Yes.2

Q Can you identify this?3

A This is an article published in QST in 1958.4

Q What, if anything, does this article disclose about a5

slow scan video camera?6

A This is written by Capthorne MacDonald and it describes a7

particular device that he developed for essentially sending8

facsimile pictures over ham radio frequencies, which was9

something of interest to ham radio operators at the time that10

television became widely available. They tried to find ways11

of sending pictures, typically scanned photographs or film, to12

other ham radio operators.13

Q What was the nature of the so-called slow scan camera?14

A The slow scan camera was a flying spot scanner, in other15

words, an electron beam, deflectable electron beam device, as16

I described yesterday, where the film or film negative was17

placed in contact with the cathode ray tube and the whole18

thing was enclosed in a light-tight box and there was a19

photocell that would detect the light coming out from the20

other side of the film.21

Q In your opinion, would such a slow scan flying spot22

scanner have been usable in Mr. Lemelson's system to solve the23

problem of not having a multitrack analog video recorder?24

A No. And one reason is that, in order to achieve the low25

HORN - DIRECT0047

bandwidth so they could transmit these signals over ham radio,1

they had to dramatically compromise on the image quality,2

starting off simply with the number of lines and the number of3

resolution elements along a particular line.4

So the pictures they produced were not of a quality that5

would have been suitable for any kind of detection of6

inflections. And, you know, there's some samples in here,7

which, of course, have suffered a little bit from multiple8

xeroxing, but you can see that the number of lines is very9

small, only 120 lines, and the resolution isn't very good10

horizontally.11

They were also very poor in signal to noise quality. And12

there's a way of measuring that in electrical engineering13

called decibel and the quoted signal to noise ratio for these14

systems was the order of 20 decibels, modern broadcast15

television is the order of 40 and so the noise that you'd see,16

if you looked at one of these pictures, aside from the fact17

that it was very low resolution, would have been substantial.18

Q And what do you mean by noise?19

A Again, noise is the superposition of measurement errors20

and, in this particular case, a significant part of the error21

comes from the cathode ray tube because the faceplate is not22

uniform. There are little grains of phosphorescent material23

and, as the beam scans across the grains, different amounts of24

light are created. It's not perfectly constant.25

HORN - DIRECT0048

Q Also, would the fact that the flying spot scanner has to1

be enclosed in a shroud or a light-tight environment have had2

any effect on its utility in Mr. Lemelson's system?3

A Yes. Importantly here, the whole apparatus has to be4

enclosed in a light-tight enclosure, which isn't particularly5

practical if you're dealing with a factory environment or the6

kind of conveyer belt system we see in Figure 13.7

Q Is this article, Exhibit 1373, referred to in the8

Lemelson patents?9

A No.10

Q In your opinion, what is the likelihood that the person11

of ordinary skill in the art would have even come across this12

article?13

A It's very unlikely given the way we've defined the person14

of skill in the art as being someone with an electrical15

engineering degree and a background in television electronics16

and signal processing. This is the publication of the ham17

radio operators.18

Q Now there's another article I'd like you to take a look19

at and that's Defendant's Exhibit 166, which is one before the20

one you're looking at now.21

Can you identify what Defendant's Exhibit 166 is?22

A Yes. It's one article on an experiment in video23

telephone by Bell Labs.24

Q Did it have a name?25

HORN - DIRECT0049

A Yes, sorry, experimental picture phone.1

Q Was this known at one point as the AT&T picture phone?2

A Yes, I believe that's the term that was used at some3

point.4

Q All right. What, if anything, does it disclose about a5

slow scan camera?6

A Well, actually it doesn't disclose a slow scan camera. 7

It uses a standard vidicon, so there's no slow scan camera per8

se. It then uses a recording and reproduction mechanism to9

produce a diskatized image of -- I believe it's 60 or 80 lines10

with 40 dots in each line, so it's being sampled rather than11

being continuous so that you have a total of 2,400 dots for12

the whole image, which, again, is very low resolution and poor13

quality, even for telephone -- video telephone use and they14

abandoned this as far as I know.15

THE COURT: It's a little difficult to read, but is16

it your understanding this publication was dated in 1956? In17

other words, what time frame are we talking about?18

THE WITNESS: I believe so, yes.19

MR. JENNER: There's a copyright notice.20

THE COURT: Well, there is at the bottom. I can21

make out -- it looks like 1956.22

MR. JENNER: It looks like 1956.23

THE COURT: All right, go ahead.24

MR. JENNER: And the MacDonald article was 1958.25

HORN - DIRECT0050

THE COURT: Right. That was very apparent.1

MR. LISA: Your Honor, it says September 1956 at the2

bottom.3

THE COURT: September '56, okay.4

BY MR. JENNER:5

Q Would the information with the vidicon device of Exhibit6

166 have been usable in Mr. Lemelson's system to solve the7

problem of not having a multitrack analog video recorder?8

A No. The vidicon itself is just a standard vidicon and9

the rest of the apparatus produces a signal that isn't the10

standard video signal that would be required for Lemelson's11

system.12

Q Now are you aware that the language about slow scan that13

I called your attention to in column 62 was not added to the14

patent application, the common specification, until 1963? Are15

you aware of that?16

A Yes.17

Q So I ask you whether or not a person of ordinary skill in18

the art in 1963 would have been able to solve the problem of19

the unavailability of a multitrack analog video picture20

recorder by utilizing the information in either of these21

articles?22

A They would not have been able to.23

Q Does any machine vision system today use a multitrack24

analog video picture recording device?25

HORN - DIRECT0051

A No.1

Q Are you aware that defendant has suggested that a person2

of ordinary skill in the art would have resorted to a slow-3

speed flying spot scanner to provide a lower bandwidth signal4

that could be used with an audiotape recorder?5

A Yes.6

Q Do you agree with that approach?7

A No, because, throughout the patent specification,8

Lemelson talks about standard television video signals and he9

does talk about the use of vidicon, iconoscope or flying spot10

scanner, but, as we discussed yesterday, the flying spot11

scanners referred to were standard television ray devices. 12

They were designed to produce output for television broadcast,13

so they did not solve the bandwidth problem. They had exactly14

the same bandwidth as would the output of an ordinary15

television camera.16

Q Were there instances where someone in the art used a17

special flying spot scanner at a lower bandwidth?18

A Yes. There were some experiments, first of all, in the19

early days of television before the deflectable electron beam20

tubes were invented and there was some experiments, for21

example, in optical character recognition where people used22

flying spot scanners to scan pages with characters or numbers23

on them, particularly equipment hooked up to computers.24

Q Were those instances generally known to the person of25

HORN - DIRECT0052

ordinary skill in the art that relevant to the Lemelson1

patents?2

A Not in my view. These were specialized research3

efforts.4

Q Were they referred to in the patents-in-suit?5

A No.6

Q What's the likelihood, in your opinion, that a person of7

ordinary skill in the art even would have come across8

references to those instances?9

A Very low, because these would be in other areas. I mean,10

it's remotely possible that someone happens to have a hobby in11

another area and there would be some cross-current as a result12

of that, but the person of ordinary skill in the art couldn't13

be assumed to have strayed into other fields to learn these14

things.15

Q Now you noted that there were references in the patent to16

a magnetic drum or a magnetic disk?17

A Yes.18

Q What was a magnetic drum in about 1956?19

A The magnetic drums and disks were used for storage,20

digital storage, in computers. They started to replace some21

of the other storage methods that were less convenient, such22

as mercury tanks.23

Some of the early computer memory, it's hard to believe24

now, but had tubes of mercury and a loudspeaker on one end and25

HORN - DIRECT0053

a microphone on the other end and signals would travel through1

the mercury at the speed of sound and be received on the other2

end. And, essentially, the part of the signal that was inside3

the tube was the memory and it was read out serially on the4

other end.5

So people tried very hard to find better ways of storing6

signals, digital information, and the disks, magnetic disks,7

and drums were one of those experimental areas. A drum would8

be a cylinder coated on the outside with magnetic material and9

there was a read/write head that would record along a track10

circumferentially on that drum. A disk would be, similarly, a11

flat disk with a magnetic material coating on top, much as12

today's computer disks are.13

Q Were those normally used with digital or analog14

information signals?15

A They were used for digital computer storage, so they16

would store digital information and, by the way, relatively17

little of it initially because it was very difficult to pack a18

lot of information onto a certain length of track on the19

magnetic material.20

Q Was there, in 1956 or 1963, a multitrack magnetic disk or21

drum that could have been used to record the high bandwidth22

video picture signals of Mr. Lemelson's patent?23

A No. These were not for recording high bandwidth analog24

signals.25

HORN - DIRECT0054

Q Beyond the mere suggestion in the patent about magnetic1

drums or disks, does Mr. Lemelson ever actually explain in the2

patent where to get a multitrack magnetic drum or disk or how3

to make one?4

A No, he does not.5

Q What, if anything, do you conclude that a person of6

ordinary skill in the art would have understood as to the7

nature of the recording member, 10, that Mr. Lemelson intended8

for use in the embodiments of his patent?9

A Well, he uses flexible magnetic tape as his primary10

example and, since there was no explanation of how to use or11

get a drum or disk, I guess someone reading this would focus12

on magnetic tape.13

Q And based on the explanations that you have given, was14

any such multitrack magnetic tape recording device for15

recording the high bandwidth analog video picture signals16

available in 1956 or 1963?17

A No.18

Q So, in your opinion, do the Lemelson patents enable any19

method of recording and reproducing the analog video picture20

signals using a multitrack magnetic recording device?21

A No, they do not.22

Q Now I'd like to turn to the second item on Exhibit 346923

and that is the -- under the grouping components that didn't24

exist is the title "Progressive Code Subtracter."25

HORN - DIRECT0055

Do you see that one?1

A Yes.2

Q Why do you list that as an error?3

A Lemelson shows on the tape the progressive code that we4

discussed yesterday and yet he uses the subtracter circuit in5

Figure 1B dashed to subtract location codes. Now the6

subtracter circuit in Figure 1B dashed is suited for7

subtracting binary numbers, binary codes, not progressive8

codes and, if by mistake you enter progressive codes into that9

circuit, you will get a completely meaningless binary number10

out of it.11

Q All right, let's first take this a piece at a time. 12

First, if you'd just bring up 1B and would you point out in 1B13

where it shows progressive codes.14

A The location codes here are recorded on the upper tracks15

of the tape and on each track you'll see a widened rectangle,16

which indicates high, if you like, and an area in between17

which would indicate low, so each of these tracks is a 0/118

representation.19

And then, reading across the track at some position, the20

combination of those codes is the location code. The21

particular code used here is a progressive code.22

Q Now it's a progressive code on the tape of Figure 1B, but23

what kind of subtraction circuit is it in Figure 1B'?24

A It's a circuit designed for binary codes.25

HORN - DIRECT0056

Q And the circuit designed for binary codes of Figure 1B'1

used successfully progressive codes?2

A It can be used. It will produce a meaningless number on3

its output however.4

Q Well, if it produces a meaningless output on its output,5

is it good for anything?6

A No.7

Q All right. Was there a reason why a progressive code8

needed to be used on the tape?9

A Yes. In order to deal with misalignment of tape heads or10

any kind of skew of the tape, progressive code must be used11

rather than a binary code.12

Q All right. And have you prepared a chart to try to13

explain why that is so?14

A Yes, I did.15

Q Would you turn to Exhibit 3470?16

(Pause in the proceedings)17

Would you explain first what is shown in the top part of18

3470?19

A The top shows use of a binary code and first let me20

explain the axes here.21

Horizontally, running from left to right, is time, so22

we're looking at the signal reproduced from a magnetic tape as23

a function of time, as time progresses, and it starts on the24

left at a location that I've identified as 15.25

HORN - DIRECT0057

Q So 15 would be one of the progressive code locations on -1

- sorry, one of the code locations possible on a tape?2

A Yes.3

Q And this is a binary numbering system though?4

A Right. And the binary representation for that is 011115

and, of course, we can see that because 1 plus 2 plus 4 plus 86

is 15.7

And what happens in the upper part of the diagram is8

that, when we get to the right-hand side, we're looking at a9

code of 16, so the notion is that we've just made a transition10

from a part of the tape that's labeled 15 to a part of the11

tape that's labeled 16.12

Q And what happens when the system of 1B tries to read the13

code off the tape?14

A The problem is that it will get the correct code 15 when15

it happens to read it right at the left-hand edge of the16

diagram. It will get the correct code 16 if it happens to17

read it exactly at the right-hand edge as indicated.18

Now, if it reads in between, for example, at the line19

marked 7, then, because the tracks are not perfectly aligned,20

some of them will have switched to the new number and some21

won't.22

Q Is that likely to happen in practice?23

A In this case it's guaranteed to happen.24

Q Why?25

HORN - DIRECT0058

A Because we need to have a very large number of location1

codes on the tape packed very closely together and the2

alignment of heads is a difficult process that's hard to push3

past maybe a thousandth of an inch. I mean, that's a very4

small distance between the heads. And a thousandth of an5

inch, as we'll show later, is a very large distance in terms6

of where we are on the scan line. So the codes are coming7

very, very rapidly and even the tiniest displacement of the8

heads will ensure that they aren't going to be switching at9

exactly the same time.10

And so we can get all kinds of in-between codes. We can11

get huge codes, like 21, and very small ones, like 5, just for12

illustrative purposes.13

Q And the 21, using 21 as an example, does the fact that if14

you read between 15 and 16 with a binary code that you might15

get a 21, does that have something to do with the nature of16

the binary code?17

A Yes. The reason we see this problem is that in the18

binary code several tracks can change at the same time. So in19

this sample we -- example we chose 15 and 16 as particularly20

good to illustrate this point because, if you look on the21

right, the number 16 in binary is 10000, so all of the tracks22

here change simultaneously -- well, they should in any case. 23

The top track's changing from a zero to a 1 and the others are24

changing from a 1 to a zero.25

HORN - DIRECT0059

Q Now how does the utilization of a progressive code in the1

system of Figure 1B help to solve this problem of2

misalignment?3

A If we look in the bottom half of the illustration, we see4

the same transition now with a progressive code. And there5

are different kinds of progressive code, but they all share6

the characteristic that only one track changes at a time. So7

here we see that the progressive code for 15 happens to be8

01000 and the progressive code for 16, on the right, is 11000,9

so only one of the tracks changes.10

And now, if we read somewhere in between the part of the11

tape that's labeled 15 and the part of the tape that's labeled12

16, we will, at worst, get a number that's off by one, that13

is, we might be reading 15 where we should get 16 or we might14

read 16 where we should read 15, whereas, as Your Honor saw in15

the other example, we can get just about any kind of error16

rather than just a simple error of plus or minus one.17

MR. JENNER: Now could we switch?18

BY MR. JENNER:19

Q We have an animation to show what happens when you use20

Figures 1B and 1B', to have a binary subtracter subtract the21

progressive code.22

If we start with Figure 1B.23

A Yes. So here on the tape again is the progressive code,24

which, if we looked at it carefully, we see only changes one25

HORN - DIRECT0060

track at a time. Then here's a blowup of that showing five1

tracks in cyan or some such color, indicating the code. We've2

divided the tape up into unit length, as stated by Lemelson,3

and there's a different code in every unit length. If we cut4

across any one of these lines, we get a different code.5

And now we're showing the code running past the tape --6

excuse me, the tape running past the tape heads. The tape7

heads are here -- oops, there. And the output eventually will8

appear in circuit 1B'. Notice also the appearance of a gating9

signal down here, which defines the area we're going to look10

at, as well as two marks that are shown in light color that11

indicate inflections. One is approximately at 9 or 10,12

somewhere here, and the other one is approximately at 17 and13

18. So these are intended to represent the edges of an object14

and we're trying to measure the distance between them.15

Now, as the tape runs along, nothing happens until we get16

to the gated area. Then within the gated area we'll hit that17

inflection and that will send a pulse through the pulse18

transformer up here that will open these gates and allow the19

code, shown in yellow, to flow upward into the computing20

circuit -- into the computing circuit CO which is shown on the21

right as a blowup.22

And we see there that it's read out the code 10000, and23

I'll draw a circle around that, so that code is now loaded24

into the shift register, SR1, so it remembers that code.25

HORN - DIRECT0061

Now the tape moves on until it comes to the second1

inflection and again here, when it finds the second inflection2

down here, a pulse is sent through the pulse transformer,3

which opens these gates, and the signal -- the code now is put4

into the shift register 2 and the circuitry for deciding which5

of the two we're not showing here for the moment. And this6

time the code is 00100, and the idea is that we'll find the7

dimension of the object by subtracting those two numbers.8

So the first thing that happens is that one of the9

numbers is put through what's called a complementer, which10

basically changes its sign, so, if it was 21, it now becomes11

minus 21, and, of course, now if we added, that's equivalent12

to subtracting.13

Q And what happens when we add the processed progressive14

codes -- I should say subtract the processed progressive codes15

in the binary subtracter?16

A We come out with a binary number which, you know, if17

interpreted as a binary number, is minus 12, which makes no18

sense. It says that the dimension is negative, that the right19

edge happened before the left edge, and, of course, this20

absurd answer is simply a reflection of the fact that we used21

the wrong codes. We have progressive codes on the tape, and22

we're using a circuit that's designed for binary codes.23

Q So will -- when you use progressive codes with a binary24

subtracter, does that result in an error?25

HORN - DIRECT0062

A Yes.1

Q What if you use binary codes on the tape in order to be2

able to work with the binary subtracter? You indicated that3

the binary codes offer the likelihood of a -- of an erroneous4

reading as you showed in the chart of Exhibit 3470, correct?5

A Yes. And while Lemelson shows progressive code in the6

figures, he actually tells you that for the binary subtraction7

to work, you need to -- the code on the tape needs to be a8

binary code, those are his words.9

Q But you've said that if you use a binary code on the10

tape, and due to the problem of misalignment, you are likely11

to read a wrong code. In going from 15 to 16, for example,12

you could read a 7 or a 5 or a 21, depending upon the13

instantaneous reading of the tape; correct?14

A Yes, as we saw in Exhibit 3470, with the binary code we15

have this problem of misalignment or tape skew.16

Q In your opinion, how often would an error occur in17

reading the code from the tape if it was a binary code on the18

tape?19

A In this case it would happen practically all the time20

simply because the codes are so close together.21

Q Now, was there any technique known in 1956 to solve this22

problem by converting progressive codes to binary codes?23

A Well, certainly not something that Mr. Lemelson suggests.24

Q Nothing in the patent?25

HORN - DIRECT0063

A That's correct. 1

Q Are you aware of a document, a patent, that suggests a2

solution to this?3

A Yes. Progressive codes were used widely in what were4

then called analog to digital converters, and since computer5

circuits for arithmetic used a different code, there was a6

strong incentive to find ways of converting between them, and7

a series of efforts were made in that regard. And there's a8

particular patent by Carbrey that illustrates one such method.9

Q And would you turn to Defendant's Exhibit 1803 at the10

back of the binder? And can you identify Exhibit 1803?11

A Yes. This is the Carbrey patent, 2,571,680.12

Q When did it issue?13

A It issued October 16, 1951.14

Q Who was it assigned to? Can you find that on the first15

text page after the figures?16

A Bell Telephone Lab.17

Q So, the owner of the patent was Bell Telephone18

Laboratories?19

A Yes.20

Q In your opinion, what is the likelihood, first of all,21

that a person of ordinary skill in the art would have found22

this patent?23

A Very unlikely. It's in a completely different area from24

the one that the person of ordinary skill in the art would25

HORN - DIRECT0064

have been familiar with.1

MR. LISA: Your Honor, I'm objecting to this2

testimony as beyond the scope of this witness's expert report. 3

In fact, these patents were called to the attention of this4

witness in Lemelson's reports. There was an extensive5

rebuttal report, a supplemental rebuttal report, and this6

witness ignored and said not one word about this patent, and7

so I move to strike the answer and have it excluded. The time8

for them to make their comments about the patent was months9

ago when these expert reports were provided, and we did not10

have an opportunity to cross-examine him on that part of his11

report.12

THE COURT: All right. Mr. Jenner?13

(Pause in the proceedings)14

MR. LISA: Perhaps they can just show us in the15

report where it is 'cause we happened to notice it was16

missing.17

THE COURT: All right. 18

MR. JENNER: All right. I'm informed by co-counsel19

that, as we understand it, this is not something that was in20

their expert reports. We found this patent on our own, they21

apparently found it, and we saw it on their exhibit list, so22

it's not in anybody's expert report. It was simply something23

that has turned up independently in connection with24

preparation for trial, I guess.25

HORN - DIRECT0065

MR. LISA: I will represent to the Court, Your1

Honor, that that patent is cited in Dr. Grindon's report.2

THE COURT: All right. Well, let's take our break3

and you all can look at the report and find it. We'll take a4

15-minute recess, grab the doctor's report and show it to5

counsel.6

(Court recessed at 10:19 a.m. until 10:35 a.m.)7

THE COURT: All right. Let's go ahead and proceed8

here.9

MR. JENNER: Your Honor?10

THE COURT: Yeah. Did you --11

MR. JENNER: First of all --12

THE COURT: -- look it up?13

MR. JENNER: -- counsel is correct. This Carbrey14

patent was referenced on page 11 of the Grindon rebuttal15

report, so there's no doubt about that.16

THE COURT: Okay. 17

MR. JENNER: We overlooked that reference.18

THE COURT: All right. 19

MR. JENNER: We found it separately. They've listed20

it in their exhibits. We have brought it forth. As far as21

I'm concerned, if the ruling is that we shouldn't refer to it22

further, we won't refer to it further.23

THE COURT: All right. Well, let's go ahead and24

move on then and I'll sustain your objection. All right. 25

HORN - DIRECT0066

DIRECT EXAMINATION (Continued)1

BY MR. JENNER: 2

Q Now, Dr. Horn, let's suppose that a person could3

construct a device in accordance with the teachings of the4

Lemelson patent and went ahead and operated Figures 1B and 1B'5

using a progressive code on the tape and a binary subtracter,6

resulting in the error that you have spoken of.7

A Yes.8

Q First of all, do you have an opinion as to whether or not9

it would have been apparent to the person of ordinary skill in10

the art what the source of the problem was?11

A No, not at all, because he's following the directions12

laid out in the specification and now he's getting some13

erroneous result. One of the challenges of engineering design14

is to connect a problem with the part that -- the guilty part,15

if you like, the aspect of the overall system that produces16

that problem. So I think in this case, for example, it17

wouldn't have been clear that it had that particular cause;18

there could have been many other reasons why you get the wrong19

answer.20

Q But in your opinion would it have required some amount of21

research or experimentation even to identify what the source22

of the problem was?23

A Yes.24

Q Okay. First, I told Your Honor that the animation that25

HORN - DIRECT0067

we showed before of --1

THE COURT: Right.2

BY MR. JENNER: 3

Q -- Figures 1B and 1B' producing the minus 12 number is4

Exhibit 3254B.5

THE COURT: Thank you.6

BY MR. JENNER: 7

Q Now, just to be clear, is there any suggestion in the8

patent, the Lemelson patents, of either the recognition of the9

problems you've referred to, that is that if you use a binary10

code, you get erroneous readings, if you use a progressive11

code it doesn't work? Is there any recognition in the patent12

of the problem?13

A No. And as I mentioned, there's a contradiction between14

the figures and the text on that part.15

Q And given that there's no recognition of the problem,16

does it follow that there's no solution given for the problem?17

A Well, there's certainly no solution proposed.18

Q Now let's go on to the third problem that you list on19

your chart, Exhibit 3469, of components that didn't exist, and20

that is a shaft encoder with sufficient resolution. Now, what21

do you mean by that one?22

A One of the methods for creating location codes as an23

alternative to the one that we discussed with a multi-track24

tape, was to use a shaft encoder that would -- we briefly25

HORN - DIRECT0068

viewed earlier that has a disk that goes around with a shaft. 1

The shaft could be connected to a roller that has a tape2

moving on it, and Lemelson explicitly mentions one such shaft3

encoder made by the Electronic Corporation of America which4

was typical of the shaft encoders of that time. 5

And, Your Honor, I used these myself in robotics6

equipment where we needed to find the joint angles of robot7

arms.8

Q All right. So let's bring that, but first of all, is9

this the shaft encoder and encoder disk that you referred to10

yesterday in connection with describing how portions of the11

patent work?12

A Yes.13

Q All right. And would you turn to the bottom of column 3714

of the patent so that we can get the context for this. There15

is a reference in lines 60 through 65 to a shaft encoder of a16

particular type produced by the Electronic Corporation of17

America; do you see it?18

A Yes. Type 30913.19

Q Now would you turn to Exhibit 2479?20

(Pause in the proceedings)21

A Yes.22

Q Can you identify Exhibit 2479?23

A Yes. This is an article describing that particular shaft24

encoder. The article is a kind of review of various kinds of25

HORN - DIRECT0069

shaft encoder and it specifically talks about the particular1

one mentioned in Lemelson's specification.2

Q And does it actually show the shaft encoder in one of the3

figures?4

A Yes. In page 1112, Figure 9.7 is one such illustration. 5

It's also shown in Figure 9.6 and I believe also on the first6

page under the heading "Shaft Position Encoders," again,7

illustrating this particular device.8

Q Now this, in turn, is the illustration, the one on page9

1112 of Exhibit 2479 that you used as the basis for the10

illustration of the shaft encoder that you showed the Court11

yesterday?12

A Yes. Someone helped clean up the text which wasn't very13

readable in the copy.14

Q All right. And this shaft encoder illustration in turn15

is at Exhibit 3471?16

A Yes.17

Q Now what was the shaft encoder supposed to do insofar as18

the generation of location codes is concerned?19

A It was a form of analog to digital converter that would20

convert the mechanical -- the rotary motion of the arm into a21

binary code.22

Q And I believe you illustrated with figures at Exhibits23

3472 and 3473 how the shaft encoder disks would work with a24

progressive code or a binary code; correct?25

HORN - DIRECT0070

A Yes. Again, for the example of just five binary bits1

which, of course, isn't nearly enough, but to fit it on a2

simple graphics, we just used five.3

Q All right. Now I'm not going to ask you to go again4

through how it works, we've covered that. What I want to ask5

you is, in your opinion, would the shaft encoder arrangement6

have worked in Lemelson's system?7

A No, and the main reason is that it's way too slow. It's8

another example of something we'll see later of electro-9

mechanical parts that are just too slow to co-act with video. 10

We saw that video is a very high-speed, high-band-width11

phenomenon.12

Q Can you elaborate on why it is that the slowness of the13

shaft encoder in relation to the video signals would be a14

problem? Why is that?15

A In order to make measurements within the scan line, we16

have to divide the scan line into many different units, each17

having a code. Now a scan line takes only one fifteen18

thousandths of a second, so the time available is very short. 19

The whole scan line goes past in sixty millionths of a second,20

and so we have to be able to make measurements within that21

scan line of, let's say, a hundredth of a scan line or the22

five hundredths of a scan line. 23

So, the interval available for each code is very short,24

and this device has a number of features that prevent that25

HORN - DIRECT0071

from being possible. One is that when you flash the tube, the1

readout flash source on the right, it will stay on for six2

micro-seconds.3

Q Now how do you know that, first of all?4

A It says that explicitly in the article.5

Q So, if I turn back to the article, which unfortunately6

I've lost, 2479, can you point out where it refers to the7

flash length of six micro-seconds?8

(Pause in the proceedings)9

A This is on page -- page 1113 in the top -- in the left10

column, the fourth paragraph, where it says, "Owing to the11

short flash duration, six micro-seconds, accurate readouts can12

be obtained at angular velocities up to 1200 RPM." Now in13

their use, obviously they thought this was a big deal that you14

could get something as short as six micro-seconds, but for15

this purpose it's not nearly adequate.16

Q And when you say for this purpose, you're referring to17

use in the Lemelson patents?18

A Yes.19

Q Now, are there other reasons why the shaft encoder won't20

work in terms of speed?21

A Yes. The other reason is that you can't flash it very22

often. After a flash tube is triggered, there's a refractory23

period where it's not possible to re-trigger it, and this24

limits the number of times per second that you can get a25

HORN - DIRECT0072

readout.1

Also, you have to be careful not to overheat a device,2

and what they say here in the third paragraph is a maximum3

rate of readout of 600 times per second.4

Now, Your Honor, a picture goes past in a thirtieth of a5

second, so this means at best you can get 20 flashes during6

one picture. So that means at best you can measure somehow 207

points within the whole picture. And, of course, the picture8

has 525 scan lines, so that means there's no way to get more9

than one measurement on a scan line. In fact, if you -- if10

you make a measurement on this scan line, you have to wait 2611

scan lines before you can trigger the tube again. And the12

whole thing is based on measuring the distance between13

inflection on a scan line and the next inflection on the scan14

line.15

Q Now, what is the effect of that in terms of being able to16

generate the location codes fast enough with a shaft encoder?17

A It means that it wouldn't work, you wouldn't be able to18

produce them fast enough.19

Q Now do you have an illustration to try to help explain20

the effect of these time periods?21

A Yes, I do.22

Q 3474? Would you turn to that.23

A Yes.24

Q And I guess 3475 as well. Could you explain what 347425

HORN - DIRECT0073

and 3475 are intended to show?1

MR. JENNER: And they're also up on the monitor,2

Your Honor.3

THE WITNESS: If I may, I'd like to start with 3475?4

BY MR. JENNER: 5

Q Okay. 6

A So this shows the rest of the scan line period of 647

microseconds, this is the standard, of which 10 microseconds8

is actually used to get back from the right-hand end of the9

line to the next line. So, actually the time available for10

the rest of the scan is 54 microseconds. And here we see a11

flash of six microseconds. 12

Now the code better not change during that time. So the13

codes have to be spaced far enough apart that you don't have14

more than one code every six microseconds. So, I guess,15

dividing it means you can't get more than nine of them in a16

scan line. So that would -- that alone would restrict you to17

making a measurement no more -- with no more accuracy than one18

part in nine across the whole scan line. And, of course, the19

object might occupy only a small part of that scan line, so20

the problem is actually even worse.21

Then if we go back to 3474, we see that in addition we22

can't actually flash very often, and according to the23

publication, it's limited to 600 flashes per second -- there's24

a typo there, I'm afraid. It should be 600 flashes per25

HORN - DIRECT0074

second. There are 30 frames a second, and so there would be1

one flash every 26 lines, again, as I indicated, meaning you2

couldn't make measurements within one line. And the whole3

thing is based on measuring the distance between inflections4

within the scan line.5

Q Now what is the overall consequence of these limitations6

on the shaft encoder?7

A Well, first of all, it means you can't use the shaft8

encoder for creating location codes, and then, given the other9

problems we described with the other way of creating location10

codes, it means there's nothing that allows you to do any of11

these measurements.12

Q In your opinion, given the problems you have described13

with the binary and progressive codes that are shown in the14

Figure 1B, 1B' embodiment and the problems that are shown with15

the alternative of creating location codes with a shaft16

encoder, is there anything left in the patent that would17

enable you to use Figures 1B, 1B'?18

A Well, an alternative would be to use an oscillator, and19

to just count the cycles of the oscillator and use that as a20

location code. And the problem with that is that that would21

assume that the tape is running at perfectly constant speed. 22

And it's well known with even audio tapes that that's not23

possible. And when you buy a quality one, they'll give you24

specifications on what are called W-O-W flutter and jitter,25

HORN - DIRECT0075

which are different ways of measuring the fluctuations in the1

speed.2

Now for audio, these fluctuations are obviously annoying3

to the listener, but people can deal with relatively large4

variations in the speed of the tape. But even -- but in video5

work, obviously the problem is much worse because any6

fluctuation in the tape speed is going to affect the7

measurement. And the way this really shows up is that8

measurements using such an oscillator would be based on the9

sync pulse. 10

If Your Honor remembers on channel C1, there's pulse S1,11

which is where everything starts, it's the beginning. And so12

the counting starts there and has to go through all of the13

lines before it gets to a particular place.14

Now if there's even an error of one part in 1000 or one15

part in 10,000 of the speed of the tape, the place you end up16

with when you're, say, halfway down the video frame could be a17

significant distance to the left or to the right on a scan18

line. And so this third possible method of using -- of19

generating location code is also fatally flawed.20

Q So what, in your opinion, is the effect of these various21

problems on the ability of a person of ordinary skill in the22

art to use Lemelson's Figure 1B, 1B' methodology for making23

location and lineal measurements?24

A Well, it's not possible to use them, and that's pretty25

HORN - DIRECT0076

important since this is one of the main teachings of the1

patent.2

Q Are you saying it just doesn't work?3

A It just doesn't work.4

Q All right. Let's go on to the fourth error on your list5

under the subject of "Components that didn't exist," and that6

one is a useful method for moving a camera using a7

manipulator. Here are you referring to the Figure 168

embodiment that shows a camera on some kind of a manipulator9

arm?10

A Yes.11

MR. JENNER: Could we bring up 16?12

BY MR. JENNER: 13

Q Now first of all, what's the nature of the problem that14

you're referring to here?15

A Well, first of all, I should say that at that time there16

was no problem moving one of these devices such as the17

manipulator arm up here through a fixed set of predetermined18

positions, sort of like playing back a tape. You might take19

the arm manually through a certain sequence of motions and it20

would just record the joint angles for each motion. So, that21

was definitely possible.22

Q Now let me -- let me just make sure that's clear from my23

point of view. Are you saying that it was okay to have the24

arm make the same sequence of motion every time?25

HORN - DIRECT0077

A Yes.1

Q Is that what you mean by predetermined?2

A Yes.3

Q Okay. Then what's the problem?4

A Now the problem is that if there's any suggestion of5

changing that movement to, for example, in response to some6

kind of signal that says, oops, the object is two inches to7

the right, so repeat that motion, but now go two inches to the8

right, that surprisingly is very difficult. And the reason is9

that the arm kinematics of such a device involve complicated10

equations and --11

Q Stop -- stop there for a minute and could you explain for12

the record what you mean by kinematics?13

A Yes. The idea is that there's a business end of the14

device called the end defector down here, and the purpose is15

to put that end defector in a desired position in space, such16

as on the conveyor belt in a certain position, or at a certain17

point above the object to take a picture of it. But actually,18

you can't directly control that position. What you can19

control is the angle of this rotary joint, the angle of this20

rotary joint, and then also the rotation about this axis as21

shown by the little arrow going around, and there may be22

additional axes. 23

So, the part that's of interest to me is that there's a24

complicated relationship between the angles you can control25

HORN - DIRECT0078

and the thing you want to control, which is where the end of1

the device is.2

Q Now, first of all, if prepositioning is indeed required3

so that the arm makes the same movement all the time with4

respect to a prepositioned object, can the arm do that?5

A Yes.6

Q But if prepositioning is not required so that the arm is7

to be caused to move in different ways each time an object is8

presented to it, what's the consequence?9

A The consequence is that you would need to have solved10

what I call the kinematic equations, which are things with,11

you know, trigonometric functions like signs and co-signs, and12

that was not accomplished until later, and it can, in fact,13

only be accomplished for certain designs, that is, the14

mechanical engineer that designs that arm needs to know about15

this problem and design it in a particular way to arrange for16

the joints to work just the right way so the equations can be17

solved.18

Q Does Mr. Lemelson explain in the patents how to solve19

these problems of the kinematic equations?20

A No, he does not.21

Q Does he even acknowledge in the patent that this is a22

problem that exists?23

A No.24

Q How long did it take until someone solved these kinematic25

HORN - DIRECT0079

equations that you're referring to?1

A Well, Your Honor, I'm very familiar with this because I2

solved one of the first kinematic equations. I had an arm3

designed for me by Victor Shineman [phonetic], who later got4

his Ph.D. at Stanford for that work, and I solved the5

equations for that arm in the early seventies.6

Q Did you publish a report on your solution to the7

kinematic equations?8

A Yes.9

Q Roughly, when did you publish the report?10

A Oh, I was afraid you were going to ask me. Probably '7411

or '76, somewhere around there.12

Q But it was when you were at MIT?13

A Yes.14

Q In your opinion, could a person of ordinary skill in the15

art in 1963 have solved the problem of providing kinematic16

equations for Mr. Lemelson's manipulator arm?17

A No. I think most people would have been unaware that18

there was even an issue.19

Q But in terms of the skill of the person of ordinary skill20

in the art, could he have solved the problem if he had21

recognized that there was an issue?22

A No.23

Q What, in your opinion, then, is the consequence of the24

inability to solve the problem of the kinematic equations for25

HORN - DIRECT0080

the manipulator arm in 1963?1

A That there was no useful way of moving the manipulator2

arm other than in a completely fixed and predetermined way.3

Q Let's go to the fifth issue under components that didn't4

exist, and that is "Electro-mechanical components that can co-5

act with a video signal." And I take it we had a precursor of6

this before with the shaft encoder?7

A Yes.8

Q Just generally, what do you mean by the overall heading9

"Electro-mechanical components that can co-act with video10

signal"?11

A Video signals are high-band width and pass by very12

quickly. The whole image passes in a thirtieth of a second. 13

A single scan line passes in fifteen thousandths of a second. 14

Mechanical devices, when designed well, can react fast in15

terms of -- in human terms, but not fast enough to keep up16

with these. So, use of things like pole and ratchet17

mechanisms, relays, servo motors, and the shaft encoder and so18

on are beyond the capabilities of keeping up with the video19

signal.20

Q Now can you give an example of how this comes up in the21

patent beyond the shaft encoder?22

A Yes, for example, the clipping level of the supposed23

clipper is adjusted using a servo motor.24

Q Now where is that? That's in --25

HORN - DIRECT0081

A In Figures 10 -- 10 and 11.1

Q All right. 2

MR. JENNER: Let's see if we can get that up on the3

monitor. Figure 10 is Number 76?4

MR. LISA: And that number again, Jesse, please?5

MR. JENNER: It's Exhibit 3487 is Figure 10, 3488 is6

Figure 11. 7

BY MR. JENNER: 8

Q Would you rather have Figure 10 or 11?9

A Let's start with 11.10

Q 11. So, that's 3488, and it's 77 on your --11

A So --12

Q Would you explain what the problem is in connection with13

Figure 11?14

A Well, first let me say that this is what Lemelson15

considers a clipping circuit, and we'll get later to why this16

isn't a clipping circuit. And he here wants to adjust the17

threshold so that, if you remember, the purpose of the18

clipping circuit is to decide whether the analog video signal19

is below a threshold or above a threshold. 20

And here we're trying to provide for the possibility of21

adjusting that threshold so that, say, for example, in one22

part of the image you have a dark object and a light object in23

another part, so you'd like to use a different level for the24

two. And what he's showing is what's called a potentiometer,25

HORN - DIRECT0082

the sort of semicircular object here which is --1

Q What's a potentiometer?2

A It's a resistive wire just wound up in a -- in a -- on a3

spool, and there's a wiper that moves along it such that the4

resistance will vary depending on how far you have to go5

through the wire until you reach the wiper.6

Q So it's a variable resistor?7

A It's a variable resistor with low resistance if the wiper8

is near the beginning and high resistance if it's near the9

end.10

Q Okay. 11

A Then the wiper is moved by a servo motor down here12

operating through a set of gears, and the signals for the13

servo motor come off additional tracks on the tape beyond the14

ones we've already discussed. The -- these tracks control15

that servo motor by turning it on and turning it off and so16

on. So the notion is that by operating the motor for a17

certain period, it will turn through a certain angle, which18

would produce a change in resistance. 19

And this is much too slow to be useful because if it was20

going to adjust the threshold within one image, a thirtieth of21

a second, it would have to make this motor-driven device move22

and come to a correct position within a thirtieth of a second,23

which is completely impractical, particularly given the24

presence of the reduction gear.25

HORN - DIRECT0083

Q All right. So having the example of the shaft encoder1

and the servo-motor-driven potentiometer, in your opinion what2

is the consequence of Mr. Lemelson's reliance on electro-3

mechanical components to co-act with his video magnetic4

recording medium?5

A Well, they wouldn't work fast enough, and so any use of6

those components makes it impossible to perform the necessary7

functions.8

Q Now your last item under "Components that didn't exist"9

is x-ray and other scanners. And I take it there is some10

references in the patent to some other scanners that we11

haven't talked about yet; correct?12

A Yes. Lemelson just mentions, without explanation, the13

possibility of using x-ray scanners, ultrasonic scanners,14

maybe atomic radiation, and so on.15

Q All right. Let's point out where that is. Would you16

look first at column 63, line 45 and following in the17

paragraph little (e)?18

A Yes. And do you see that it refers to other scanners of19

the same or different characteristics on the area under20

change, such as radar, ultrasonic, infrared, x-ray, et cetera?21

A Yes.22

Q Okay. And would you also look at column 56, lines 45 to23

50?24

A Yes.25

HORN - DIRECT0084

Q And there it says the scanning device CAM may comprise a1

deflection control beam scanning video camera, which we've2

certainly heard about, as described, or any suitable radiation3

scanning means, such as one utilizing x-rays, infrared4

radiation, sonic or other forms of radiation. Do you see5

that?6

A Yes.7

Q Were there, first of all, radar scanners in 1956 that8

could be used in place of Lemelson's video camera?9

A No.10

Q Why not?11

A They -- there were no devices for producing analog video12

from radar signals. If I may say, off this list there's one13

interesting exception, which is infrared, in that, depending14

on how we interpret that, it could be near infrared or far15

infrared. Far infrared is heat radiation as the radiation our16

bodies give off, and that's certainly not dealt with anywhere17

here. However, near infrared is very similar to visible18

light, and, in fact, vidicons can be adjusted or -- using a19

different faceplate, in essence, to be sensitive to near20

infrared. 21

And if you take picture with near infrared, you get22

pictures which are very similar to visible light, so there's23

nothing really new.24

Q What about radar? What's the problem with radar?25

HORN - DIRECT0085

A Well, there's no way of scanning with a radar beam in the1

sense of scanning as exposed here.2

Q What about ultrasonic? Was there an ultrasonic scanner3

that could have been used in Lemelson's system in 1956 or4

1963?5

A No. There were devices for getting echoes using6

ultrasonic signals, but there were no scanners of ultrasonic.7

Q Were ultrasonic scanners developed at a later date?8

A Well, devices that are called scanners, and, again, we9

have this generalization of a term from its original meaning10

to a more general meaning, which do not scan, but use11

something called synthetic aperture and tanner technology to12

achieve an image, and we've all seen pictures of the insides13

of people's bodies achieved that way, but they do not scan14

with an ultrasonic beam, they produce a radio frequency signal15

that goes off in many directions and is received by a set of16

ultrasonic receivers, and a complicated mathematical operation17

reconstructs the image of the inside of the object. So18

they're not scanners in the sense we've described here.19

Q Is there any explanation of how you would use anything20

like that in the patent?21

A No.22

Q Was anything like that available in the 1956, '63 time23

frame?24

A No. These were developed only very recently.25

HORN - DIRECT0086

Q What about x-ray scanners? Could an x-ray scanner have1

been used in Lemelson's system in 1956 or 1963?2

A Well, no, and in fact if you knew of a way of deflecting3

x-rays, you would be a famous man, because a lot of people4

would like to know how to do that both for astronomy and, for5

example, we discussed CAT scanning earlier, where,6

unfortunately, we're resorting to crude techniques because 7

x-rays come out of a tube and they go where they want to go. 8

You can't deflect them or scan with them.9

Q So what overall in your opinion do you make of these two10

references in the back of the patent to x-ray, ultrasound,11

radar types of scanners?12

A They're not very helpful because there's no explanation13

of how any of that would work. And as I discussed, it14

wouldn't work.15

Q And in fact, was anything like that available?16

A No.17

Q All right. I'd like to go on now to the group of18

problems that you list under "Functional problems." What do19

you mean by that?20

A These are problems with the way the invention is supposed21

to operate and some of them relate back to the assumptions22

that I mentioned at the beginning that underlie the operation23

of the invention.24

Q This what you were talking about yesterday as fundamental25

HORN - DIRECT0087

-- fundamental conceptual problems that would prevent the1

system from working even if you could get all the components?2

A Yes.3

Q The first item you have under functional problems is4

"Can't reliably detect inflections." What do you mean by5

that?6

A I mean that the inflections, which, after all, are the7

bases of everything, the video signal is never analyzed8

without being passed through gating and clipping, so we're9

always dealing with inflections, that these inflections can't10

be found reliably due to a number of effects such as noise and11

small changes in lighting, small changes in the sensitivity of12

the detector, and so on.13

Q All right. Noise sensitivity, is illumination another14

factor?15

A Yes.16

Q Distortion?17

A Yes.18

Q Let's talk about the vidicon, first of all. What was the19

overall quality of a vidicon signal like in the 1950s?20

A It was pretty poor. When I started, we still had some21

vidicon cameras that we had pretty much abandoned in favor of22

image dissectors. The -- again, a measurement of the -- one23

measurement of quality is what's called signal-to-noise ratio,24

and at that time, it was the order of 26 dbs or sometimes25

HORN - DIRECT0088

later, perhaps, 36 dbs.1

And I should explain, Your Honor, that the difference --2

it's a exponentially rising scale, sort of like the Richter3

scale. If you go from 7 to 8 that doesn't mean it's, you4

know, just a little bit more, it means there's a big jump. 5

So --6

Q When you talked this morning about a difference between7

20 decibels and 40 decibels, what actual order of magnitude8

difference was that?9

A That's a huge difference. That's a factor of a hundred. 10

In other words, a picture that has a 20 db signal to noise11

ratio is a hundred times as noisy as a picture that has a 4012

db ratio.13

Q All right. So, vidicons were noisy?14

A Vidicons were noisy. They suffered from deflection15

inaccuracies, distortions, they suffered from blooming where16

if you had a bright area, it would tend to spread out. They17

suffered from flare, which is a phenomenon where light18

deposited in one part of the image would affect other parts of19

the image. And the reason that's important is because even if20

you gate and you select out a particular part of the image,21

you're not free of effects from other parts of the image.22

This was one of the big surprises I had when I first used23

imaging devices. I would try and measure accurately the24

brightness in one area of the image, and I couldn't correlate25

HORN - DIRECT0089

the results, it kept on changing, until I realized that if1

there was anther object somewhere else in the field of view,2

it would make a difference to the measurement. And that's3

called flare.4

And I guess I've talked about blooming, distortion,5

flare. The faceplate was not uniformly sensitive. The way6

the faceplate was created was to deposit some semiconductor7

material and metals in a vacuum, and you can never assure that8

all parts of the surface are covered with the same amount of9

sensitive material, so quite often there would be a10

significant variation and a droop, and on the cameras we had11

in the 1960s sometimes there would be a 50 percent variation12

in sensitivity from one part of the surface to another, which13

wouldn't affect its use in television because people aren't14

very sensitive to overall slow changes in brightness, but it15

would, of course, have a devastating effect on anything that's16

trying to measure inflections.17

Q Would a flying spot scanner in the 1950s have been any18

more reliable or useful than a vidicon?19

A No. The -- it would have suffered from the same --20

essentially the same problem because we're dealing with the21

same technology of electron beams deflected in a vacuum tube22

subject to the same distortions, and so on. And in addition,23

as I mentioned a couple of times, the phosphorescent surface24

was not uniform, it was grainy, and would introduce additional25

HORN - DIRECT0090

noise. So the signal-to-noise ratio from flying spot scanners1

was generally worse than it was in Vidicons.2

Q Now, let's stay with noise for a minute. Can you give3

some examples of how noise can be created in the real world?4

A Well, first of all, any time you make a measurement5

there's some small variation in that measurement. If you6

repeat the measurement, it will not be exactly the same. 7

And in the case of the camera, this is particularly8

important because the signal is very, very small, and the9

noise in a signal isn't significant if you have a very strong10

signal, just as if your radio station is nearby, you can't11

really tell that there's any sort of superimposed noise. If12

the signal is weak, such as a distant radio station, all of13

these fluctuations, lightening storms a few hundred miles14

away, power supply surges, will all become apparent and15

contribute to the noise. 16

So in the factory environment, for example, there would17

be motors starting up that cause fluctuations on the power18

supply, and so on. So there are all kinds of sorts of sources19

of noise, but the most important is to realize that any20

measurement is going to involve noise and that measurement of21

very small signals, such as the ones in the vidicon tube, are22

going to be more subject to noise.23

MR. JENNER: Now, Your Honor, could the witness just24

for 30 seconds make a drawing at the easel to show the effect25

HORN - DIRECT0091

of noise on a signal?1

THE COURT: Sure. What's that most recent number?2

MR. JENNER: 3522.3

THE WITNESS: I think we're all going to get pretty4

tired of this figure because I'll be repeating it--5

THE RECORDER: Just a moment.6

THE COURT: Oh, she needs to get a microphone over7

to you first, Dr. Horn, but I think we know where you're going8

to start.9

THE WITNESS: Yes. Well, suppose that we have an10

ideal signal somehow that we're expecting a transition from11

one area to another, that should look something like this. If12

we measure this signal there will be some errors in the13

measurements, and the magnitude of the error may not be14

significant if we're dealing with a large signal, but it will15

be significant with a small signal, such as the video signal. 16

And we're going to end up with some wave form of this type.17

BY MR. JENNER: 18

Q And that's due to noise?19

A And that's due to noise. Now the exact way this will20

look will depend on issues such as the band widths of the21

noise and the band width of the signal, so don't hold me to22

each of the little waves. But general speaking, that's what23

noise does.24

Q All right. And what might be the effect on measuring25

HORN - DIRECT0092

inflections of noise like that?1

A Well, there are a number of possibilities. First of all,2

suppose that our threshold is here, it's shown by the red3

line, then you'll note that the place that the analog signal4

crosses the red line is changed a little bit. And next time5

we measure it, the blue signal with the noise is going to look6

different, and the way this transition has changed will be7

different, too. So, every time we measure what's supposedly8

the same signal, we'll get a slightly different answer.9

Q And what would be the effect of that, if any, on trying10

to make a comparison of inflections in analog and video11

picture signals?12

A It would mean that you will always see a difference.13

Q You will always see a difference?14

A You will always see a difference. So if, for example,15

the blue line was the standard, now we measure another signal,16

the inflection will occur in a slightly different place.17

Q And is that true even if, in fact, it's the same object?18

A Yes.19

Q All right. What happens if you have a higher threshold?20

A Well, let's in green indicate a threshold at this level. 21

Now you'll notice that because of the noise going up and down,22

the wave form actually goes above the threshold and then comes23

back down through the threshold and then rises again. So24

instead of having a single transition from low to high, one25

HORN - DIRECT0093

inflection, we have a transition from low to high, high to1

low, low to high, we've got three inflections, so the result2

is that measurement of a dimension will be corrupted.3

Suppose, for example, that this was the left edge of an4

object and somewhere along here we would find the right edge,5

and the dimension we're measuring is between the left and the6

right edge.7

Q About a foot and a half, your hands indicate?8

A Yes.9

Q Okay. 10

A So the idea is an inflection comes along, we find its11

location code, another inflection comes along, we find its12

location code, then we subtract. 13

Now in this case we find that there are three14

inflections, and so the system doesn't know where these15

inflections come from, it just says, okay, here's one16

inflection, here's another inflection, let me subtract them,17

and obviously it's now going to say the object is only that18

wide. So that's another illustration of the effect of noise.19

Q All right. Thank you. Now do you actually have an20

exhibit made from one of defendant's exhibits that shows the21

effect of noise?22

A Yes.23

Q Could you turn to 3477. Would you explain what 3477 is?24

A 3477 is, first of all, at the top an image from one of25

HORN - DIRECT0094

defendant's exhibits.1

MR. JENNER: Let me explain there for a moment, Your2

Honor, 'cause you haven't seen this yet, and I don't know3

whether you will or not, but we've been provided through the4

normal process with the animation exhibits from defendant when5

we exchanged.6

THE COURT: All right. 7

MR. JENNER: And this is taken from one of those8

exhibits which we were provided with.9

THE COURT: All right. 10

BY MR. JENNER: 11

Q Dr. Horn, go ahead.12

A So there's an image of a gauge and over here we've13

enlarged it, enlarged a section of it, again focusing on the14

scan line because everything here operates on scan lines.15

So the red line going across the middle through the16

numbers 20 and 80 is the particular scan line we picked out17

for this. Shown below it --18

Q Just to be clear about that, this could be the usual 525-19

line raster scan of a TV image?20

A Yes.21

Q And you've picked out just one line across the portion of22

the gauge that you want to look at?23

A Yes.24

Q Okay. 25

HORN - DIRECT0095

A And then in the row below that, here, we see the actual1

analog video signal along that scan line, and you may be able2

to distinguish some of the features, for example, where it3

scans across the line the number 20, we see three peaks here4

corresponding to the white areas of the number 2, and two5

white areas from the number 0.6

And another feature I'll just point out, is this area7

here which corresponds to scanning across the needle of the8

gauge. And the needle might be of interest because the system9

might be trying to determine whether the needle is in a10

certain position or some other position.11

So, this is the analog video signal. Then the curve12

below it is the output of what I call a thresholder.13

Q Would that be -- would that bear any relationship to a14

clipper?15

A Yes. This corresponds to the clipper in the16

specification except that the clipper doesn't do the right17

thing. So, I've hypothesized here that we've replaced it with18

something that does produce a two-level signal.19

Q All right. 20

A And it's easy to see that the thresholder output has only21

two levels, low and high, and that one of those levels22

corresponds to when the analog wave form is below a threshold,23

and the other level corresponds to when it's above a24

threshold.25

HORN - DIRECT0096

Now the exact results you get will, of course, depend on1

how you pick the threshold, and so I want to first of all say2

that I tried this with many different thresholds and I get the3

same general results. And, of course, this points out also4

the difficulty of picking a fixed threshold, that is, it's --5

I've arbitrarily, for this illustration, just put it right in6

the middle between black and white. But in order to get good7

results, someone might want to adapt that somehow to adjust8

it.9

Q Now, would you turn to the second page of 3477 and tell10

me if this illustrates the effect of noise, since that's what11

it seems to say?12

A Yes.13

Q Could you explain what the second page of this exhibit14

shows about the effect of noise?15

A Yes. I want to first just point out that the first two16

curves are simply reproduced from the figure we had before, so17

that's -- and that's going to be common to the illustrations. 18

Then below that we have added a small amount of noise to the19

signal indicated as .02, meaning 2 percent noise, which is a20

relatively small level of noise.21

Q And just to be a little bit more precise about that, how22

does 2 percent noise level compare to things that might happen23

in the real world?24

A That's on the order of the kind of noise you might see in25

HORN - DIRECT0097

the vidicon.1

Q Okay. 2

A And now we take this analog video signal that I've3

indicated in red and we threshold that and we obtain an analog4

video signal -- excuse me, a two level signal that5

superficially looks very similar to the one we find up here. 6

Now if we treat the -- this signal here as the standard,7

that's our picture of what the object is supposed to look like8

and we compare it with the tests down here, then we do find9

that there are places where they don't agree. And the10

important thing is that even if they don't agree in one place,11

the system will say that the parts are not identical. 12

And so we find that in this case they actually don't13

agree in quite a number of places, and some of those are due14

to the slight movement of inflections that I indicated at the15

board. Some of them, on the other hand, are due to this16

phenomenon of crossings multiple times. 17

So, for example, in this area -- oops -- in this area18

down here, the what looks like a fat bar is actually three19

separate bars due to the fact that -- due to noise, the20

multiple crossings.21

Q Now just for explanatory purposes, what does the XOR in22

the lower right mean?23

A XOR is a logical operation, it's short for exclusive or. 24

So usually when we say or, we mean inclusive, that is, you say25

HORN - DIRECT0098

A or B, that might mean A or B, but if both A and B are true,1

that's also okay, where exclusive or is A or B but not both A2

and B. And the reason that's relevant here is because this is3

the operation intended in the circuit in Figure 3. And so4

we're just reproducing what the circuit in Figure 3 is trying5

to accomplish. And so the output of the circuit in Figure 36

would include these isolated spots of errors.7

Q So are all those peaks on the bottom line of this8

illustration places where there would be inflections caused by9

noise?10

A Yes. And now keep in mind that this is going to happen11

on every line. So the opportunity for an alarm signal saying12

these two objects are not the same are enormous, and the13

likelihood of finding them the same is essentially zero.14

Q Now, could you fix this by using a different threshold?15

A Well, actually I tried this with 20 different thresholds16

going all the way from near the bottom to near the top, and I17

get different results for every threshold, but they all have a18

certain number of errors.19

I've also experimented with lower noise levels, for20

example, 1 percent noise, and I get fewer errors, but21

importantly again, even a single error is enough to say that22

the parts are not the same.23

Q Have you had personal experience with these effects of24

noise?25

HORN - DIRECT0099

A Certainly. When I started at MIT, I used a vidicon and1

an image dissector tube and we had extensive problems because2

of this noise, and we had to develop algorithms to cope with3

them, or, if you like, to ameliorate the effects of noise.4

Q Is there any discussion in the patent about how to deal5

with and solve the problems of noise?6

A Lemelson uses the word "noise" in one place, but7

apparently with a different meaning. It's where he's8

explaining that part of a signal has to be free of noise,9

meaning there are no other inflections there. And that, I10

think, implies simply that he didn't want other objects of11

varying -- varying properties in that part of the image12

because he didn't want to be disturbed by them, which is13

different from the noise term that we're using here.14

Q So, is there any discussion or explanation or solution of15

the problem that you have discussed about noise?16

A No.17

Q What about illumination? Why, if it was, why was18

illumination a problem?19

A Illumination was important because the measurements in20

the image are the product of the reflectance of the surface21

and the amount of light falling on it. So, something could22

appear at a low voltage level in the signal because either it23

didn't reflect much light or because not much light was24

falling on it. So, if you change the lighting, all of the25

HORN - DIRECT00100

signals change correspondingly. If you double the amount of1

lighting, the signals go up by a factor of 2. And so that2

correspondingly would displace inflections or cause some3

inflections to disappear.4

Q Have you also had personal experience with illumination5

problems?6

A Yes. For example, at one point we decided to install a7

generator, power generator, to separate ourselves from the8

vagaries of Cambridge Electric in our work at MIT. We finally9

decided this was a futile attempt and instead to develop10

algorithms that were not sensitive to overall brightness11

fluctuations12

Q Did Mr. Lemelson discuss anywhere in the patent the13

problem of illumination?14

A No. In fact, he thinks that ambient lighting is15

appropriate or adequate.16

Q Is that something he discussed in the prosecution17

history?18

A Yes.19

Q Would you turn to Exhibit 3B? And I'll call your20

attention to page 211.21

MR. JENNER: This, Your Honor, is from the 195622

application in Exhibit 3.23

THE COURT: All right.24

// 25

HORN - DIRECT00101

BY MR. JENNER: 1

Q And on page 211, would you read down through about the2

eighth or ninth line to where a sentence ends with "ambient3

light or conventional illumination"? Do you see that?4

A Yes.5

"Applicant system employs a scanning cathode ray beam6

which is deflection controlled to selectively scan an7

image field portion of which field ordinarily vary in8

light contrast under ambient light or conventional9

illumination."10

Q Now what, if anything, does that indicate to you about11

the circumstances under which Mr. Lemelson envisioned12

operation of his system?13

A Well, ambient light, as I said earlier, would refer to14

just the light that's ordinarily around a room, such as light15

streaming in from the windows or overhead light, and so he16

wasn't contemplating any special lighting such as, for17

example, putting the lights right up against the camera or18

using a ring light around the camera or any kind of special19

lighting arrangement.20

Q In your opinion, if all the other problems of the system21

could be fixed and went away, could the system operate under22

ambient illumination?23

A No, because the variations in lighting would introduce24

corresponding variations in the analog video signal, which25

HORN - DIRECT00102

would cause displacements of the inflections, and, once again,1

everything is based on the inflections being in the right2

place.3

Q Now did you make a graphic again from that same gauge4

exhibit to show the effect of illumination?5

A Yes.6

Q And that's in 3477, once again.7

A It's the last one --8

Q Yeah. It's the fourth page of 3477. Would you explain9

what this shows in relation to illumination?10

A Again, the first two lines I just reproduced from where11

we started. It's just the analog video of the gauge and its12

threshold as a result. Then what I did is to artificially13

create a signal that would occur if the lighting was reduced14

by 5 percent. 15

Now, Your Honor, incandescent light bulbs are very16

sensitive to voltage fluctuations. A 1 percent change in17

voltage produces a 3 1/2 percent change in brightness, so the18

5 percent change in brightness I postulated here is quite19

common. It corresponds to changings, let's say, from a 110-20

volt supply to a 111 1/2, and, believe me, the fluctuations in21

power supplies are much larger than that.22

Q For example, is that a fluctuation that would be23

realistic in terms of a factory environment?24

A In the factory environment, you might find larger25

HORN - DIRECT00103

fluctuations because every time some large machine starts up,1

there's a drop in the supply voltage.2

Q Okay. 3

A So then I took this -- now these two signals, the4

modified one and the original one superficially look5

essentially the same, but if you inspect them closely, you'll6

find that these peaks, for example, here, are a little bit7

lower than the peaks in the original.8

I then took this reduced lighting scan line, if you like,9

and put it through the threshold circuit to obtain the10

threshold that result here, which, again, superficially looks11

very much like the standard threshold that result up there,12

but if we carefully compare them point by point as Lemelson13

does, through the circuit, for example, of Figure 3, which I14

here call an XOR circuit, we find that they don't match in a15

considerable number of places.16

And, again, I did this with many -- with many different17

variations of threshold and I get the same kind of results.18

Q All right. Now could you turn to 3478? This is a still19

picture taken from one of the demonstrations that I think Mr.20

Schuessler made when he testified about Symbol Technology21

products. What does this illustration show, if anything,22

about the effects of illumination variations?23

A There's a object with bar code on it that has different24

properties in the background. You can see a lower area that25

HORN - DIRECT00104

is -- that is relatively bright over here, and then to the1

left of it an area where the reflectance in the background is2

not as bright. 3

In the scan down here we see that the signal isn't at all4

what you might expect if you're scanning a bar code. You5

would expect to see just the perfect wave going between black6

and white with little rectangular patterns, sort of like the7

threshold or signals I've shown, when, in fact, the real8

signal looks like the one down here, and you have to somehow9

be able to make sense out of this even though the signal in10

this part is of substantially different character from the11

signal in the left part simply because of variations in12

brightness.13

Q Now what, if anything, does this indicate about the14

possibility of using Mr. Lemelson's fixed thresholding or15

fixed clippers to be able to threshold a signal such as shown16

in Exhibit 3478?17

A Well, it certainly wouldn't be useful, as we see. If we18

pick the threshold as shown by a dotted line around about19

here, then all of the transitions in the left area are20

actually above the threshold, and there will never be any21

inflections found there. Conversely, in the right part of the22

image, only in rare places does the signal rise up to the23

threshold. So, many of the transitions will be missed, and24

the ones that are found are going to be very sensitive to25

HORN - DIRECT00105

small changes in lighting.1

Q What, if anything, does this show, in your opinion, about2

the effect of illumination on the ability to use thresholding?3

A It means it's going to be impossible to use thresholding4

in the presence of variations in illumination.5

Q All right. Another problem you referred to as a6

fundamental problem was distortion. How would distortion have7

appeared in a system like Mr. Lemelson's?8

A Distortion would have displaced image elements. The --9

what distortion does is essentially warp what's in the image,10

it stretches it in places and compresses it in other places,11

thereby displacing positions of inflections.12

Now, if I may say, in the case that the distortion is13

fixed, it's not so much of an issue as long as the object is14

prepositioned. In other words, if you're comparing a standard15

against a test and both the standard and the test are warped16

in some way, they may still -- they may still have a chance of17

being compared. The difficulty comes in if either the object18

is not prepositioned, now you're going to a different part of19

the image which is distorted in a different way, or if -- or20

if there's a change in the distortion.21

Now vidicons had an adjustment called electronic focus,22

so unlike an ordinary camera where focusing just means moving23

the lens, with a television camera there's two adjustments;24

one is a mechanical motion of the lens which, of course, has25

HORN - DIRECT00106

to be correct, and the other one is an internal adjustment1

that's dependent on the voltage. So there's a potentiometer2

you can adjust to adjust the voltage.3

One of the effects of adjusting that voltage is to change4

the distortion. In fact, the whole image rotates slightly as5

you adjust that knob.6

Q Did you have personal experience with distortion?7

A Yes. With our vidicons, we had precisely this kind of8

problem, and it's a problem to this day in electro-optical9

equipment.10

Q In fact, if you turn to Exhibit 84, which is an article11

from 1980 by Mr. Reinhold who testified earlier, Mr. Reinhold12

and a Mr. Vandanbrugh [phonetic] about automatics; do you have13

that?14

A Yes.15

Q Would you turn over to the bottom of page 24. And in the16

last paragraph where he's talking about the camera system, you17

see that he says toward the bottom:18

"For many purposes such vidicon-based cameras are19

perfectly adequate. Where precisely repeatable20

measurements are necessary, however, vidicons have some21

drawbacks. Because they scan a photosensitive surface22

with an electronically deflected electron beam vidicons23

are sensitive to small changes in the deflection signals24

causing a distortion of the picture."25

HORN - DIRECT00107

So he's talking about distortion which he then goes on to1

say, "Can cause as much as a 10 percent error," which he is2

saying in 1980. Is that consistent with your experience?3

A Yes. And it's also consistent with the specifications of4

the picture tubes that were used by EMR as in specifications5

that Wilder prepared. And it's also consistent with my own6

experience of both vidicons and image dissectors as shown in7

one of my artificial intelligence lab reports from the8

sixties.9

Q What, if any, effect, in your opinion, would distortion10

of this kind have had on the ability of a person of ordinary11

skill in the art to be able to make and use a system such as12

Mr. Lemelson describes in 1956 or 1963?13

A Well, supposing all of the other defects could somehow be14

fixed, then it would have meant that you would not have been15

able to make accurate measurements.16

Q All right. And one last aspect of the inability to17

reliably detect inflections, does displacement have an effect18

here?19

A Yes. Even the tiniest displacements will produce20

movement of the inflections that correspond to the21

displacement.22

Q And, again, do you have a graphic that shows this?23

A Yes. I think it's part of the one we looked at earlier.24

Q 3477?25

HORN - DIRECT00108

A I guess it's the second to last page in that exhibit.1

Q This is the page that on the right hand says, shifted2

.001?3

A Yes.4

Q And what does that mean?5

A That indicates that a very tiny amount of motion has6

occurred in the image, .001 meaning a thousandth of the width7

of the image, so that's very small. And that motion could8

have arisen from, for example, a change in the electronics of9

the vidicon, aging of the vidicon, supply variations or,10

conversely, in a very different context, a very tiny motion of11

the object, some error in prepositioning.12

Again, the top two lines are just a repeat of the same13

old thing from the very first graphic. Then the third row14

shows the picture signal shifted by a thousandth of the width15

of the image. And, of course, there's no visual difference16

between these two because the change is so microscopic.17

Similarly, when we threshold this shifted signal to18

obtain this signal, it looks just like that one, and it should19

because it's the same -- exact same wave form, there's no20

change in noise or anything.21

Now when we compare the two, using the circuits of Figure22

3, or as I indicated here XOR, there are a large number of23

places where they don't match. In fact, every single24

transition is moved a tiny bit, and so there will be a25

HORN - DIRECT00109

mismatch at that position.1

And again, to reiterate, a single mismatch means that the2

object -- the test object is not identical to the standard3

object.4

Q Now, would using gates the way Mr. Lemelson suggests to5

use gates in the various figures of his patent, solve all6

these various problems you've referred to about measuring7

inflections?8

A No, because as we saw, these problems due to distortion,9

change in lighting, noise and shift in image position affect10

potentially all of the inflections. So all that gating does11

is reduce the number of places where you have an error, but12

you'll still have an error.13

Q In your opinion, would a person of ordinary skill in the14

art in 1956 or 1963 have been able to solve the various15

problems of noise, illumination, distortion, and displacement16

in order to be able to make reliable detections and17

measurements with inflections?18

A No. First of all, they wouldn't have been really aware19

of these problems, and, secondly, there is no incremental way20

of going from what Lemelson describes to a solution. In other21

words, machine vision systems can handle all of these22

variations quite easily, but that's because they operate in a23

fundamentally different way. There's no way to put a little24

fix in here and a little fix in there to go from what's25

HORN - DIRECT00110

described here to something that solves these problems.1

Q In view of that, is Mr. Lemelson's system predicated on2

the use of clippers at fixed threshold levels and gates3

something that can produce a practical solution by measuring4

inflections in analog video picture signals?5

A No. In fact, the -- in machine vision, thresholds are --6

fixed thresholds are not used because they just don't work.7

Q All right. Now I'd like to turn to the next item under8

"Functional problems." This item is "Cameras don't have9

trigger inputs, can't be synchronized to tape." What do you10

mean by that?11

A The television cameras we're talking about are12

integrating devices in the sense that light falls on them, a13

charge is built up, and then you read it out. Now, the14

important thing is that the charge you read out is the product15

of the brightness and the time. I other words, if you wait16

longer, you get a larger signal. And what this means is you17

have to read it out at a fixed rate, so every thirtieth of a18

second. If say --19

Q Is that what TV cameras do?20

A That's what TV cameras do, and that's why they do it.21

Q They read out at a fixed rate?22

A Yes.23

Q And that rate is?24

A A thirtieth of -- 30 frames a second.25

HORN - DIRECT00111

Q All right. 1

A Now if you waited longer, the signal would rise in2

proportion. If you took the picture earlier, if you scanned3

it earlier, it would correspondingly be a lower voltage level.4

Q So that's kind of an illumination problem? If you read5

it too soon or read it too late, the amount of brightness will6

be greater or lesser?7

A It has exactly the same effect that the signal you get is8

directly proportional to illumination, and also directly9

proportional to the scan interval time.10

Q All right. Why is that a problem in the context of11

cameras not having trigger inputs?12

Q The problem is that the system requires synchronization13

of what's on the tape with the camera. 14

If Your Honor recollects, on track C1 there's a sync15

signal that says the picture starts here. Now imagine the16

tape is running and the sync signal comes along, the intent17

here is to then immediately start reading out the camera and18

recording the video signal there. But the camera may be right19

in the middle of its one thirtieth period of charge20

integration, and if you read it out at that point, the signal21

will be only half of what it should be. So there needs to be22

a way of synchronizing the two so that when the tape comes to23

that point as one, the camera happens also to be at the point24

as one, and that's the part that can't happen.25

HORN - DIRECT00112

Q Can't happen?1

A It can't happen because the camera is free running. It2

has its own internal deflection generators, and it has a3

single output that just is the video signal.4

Q And I take it the effect of reading out the signal too5

soon could be illustrated by the same figure you showed the6

Court before, the 5 percent illumination reduction; it would7

have the same general effect?8

A The same general effect except much larger.9

Q All right. So we don't have to do that again.10

In your opinion, what is the consequence of the inability11

to synchronize Lemelson's camera with the magnetic recording12

medium?13

A Well, it pretty much makes it impossible to use because14

it's all based on recording these video signals on the tape in15

synchrony in the signal arrangement he describes, and then16

reading it out to analyze it.17

Q Okay. Let's move to the next item on the list, number 9,18

"Signals recorded on different tracks can't be aligned19

properly." What do you mean by that one?20

A For the system to operate, the various tracks have to be21

aligned precisely. For example, if you're going to compare22

the standard and the test track, they have to obviously be23

reproduced in exactly the synchronous time correspondence. 24

And, as I mentioned earlier, the possible accuracy of25

HORN - DIRECT00113

alignment of heads on the tape is much coarser than what would1

be required for this purpose.2

Q Does Mr. Lemelson in the patent recognize the problem of3

-- of the inability to align the tracks properly?4

A No, he doesn't mention it.5

Q And I take it if it's not mentioned, there's no solution6

discussed either?7

A Right.8

Q Could the disclosed embodiments and ideas of Mr. Lemelson9

have been made and used without solving this problem?10

A No. This is a critical part of the problem.11

Q Would a person of ordinary skill in the art in 1956 or12

1963 have known how to solve this problem?13

A No. There was no technology for dealing with it.14

Q Go on to the next issue, number 10, "Gating signals won't15

be recorded in the appropriate place." What does that mean?16

A An important part of the signal in arrangement that17

Lemelson says is basic to his invention is that there be18

precisely aligned gating signals that identify the regions19

that you're going to actually analyze.20

Q Those are the gates that are shown in figures like 3 and21

4 and such?22

A Yes. And, now, one of the issues of using such a system23

would be how do you record those? We already discussed how to24

record the analog video, but now we're dealing with how to25

HORN - DIRECT00114

record and put these gating signals in just the right place. 1

And Lemelson does have a suggestion for doing that, but it's2

one that happens not to work.3

Q Let me call your attention to column 40, line 58 of the4

patent and ask if this passage starting at line 58 or in the5

paragraph starting at line fifty -- I'm sorry, I'm in the6

wrong place -- yes, column 40, line 58 has anything to do --7

A Yes, it's right at the bottom of the column where he's8

talking about enlarging the optical system. 9

Q I'm on the wrong line.10

A So if the business the --11

Q Okay. Well, it starts -- starts around line 66 or 67. 12

What does that have to do with this?13

A He proposes here to create gating signals that are larger14

than the regions he wants to analyze by simply magnifying the15

image.16

Q And what do you mean by magnifying the image?17

A Well, he doesn't make it clear. He says the optical18

system of the scanning device may be enlarged a necessary19

degree. I'm not sure what that means. The only way I can20

interpret it is that we're using a lens of different focal21

lengths so that we get an enlarged picture.22

Q What happens if you do that?23

A Certainly the regions are enlarged as he intended, the24

problem is that they're also moved sideways. As you can25

HORN - DIRECT00115

imagine if you take a picture and you enlarge it, everything1

moves radially outward from the center point, so not only do2

things get larger, but they're also shifted corresponding to3

their position in the image.4

Q Did you have -- did you make an illustration to show5

this?6

A Yes.7

Q Would you turn to Exhibit 3479 in the binder? What does8

3479 show?9

A This is an illustration based on Figure 8' -- no, well,10

one of the figures. And it shows different regions, AB and11

AC, and let's suppose we're trying to create gating signals to12

analyze the region AB down here. One way we could do that is13

simply scan across region AB as shown by the red line and to14

note the inflections and to base the gating signal on the15

magnetic tape on the position of those inflections. And so we16

just, for illustrative purposes, put the picture next to a17

piece of the magnetic tape.18

Now those gating signals wouldn't work because they're19

right on the edge of the object, and so they're too narrow;20

you need to make them slightly larger so that you're sure that21

the inflection actually is within that region. 22

So, can we go to the next illustration, the next part of23

this? Okay. 24

So, the way I understand his proposal to enlarge the25

HORN - DIRECT00116

optical system, we are going to enlarge the image by enlarging1

the focal length of the lens. And the indication here with2

arrows is that when you do that, everything moves outward from3

the center of the image. The arrows indicate the directions4

of motion. 5

And so in the next illustration we see what would happen,6

namely, sure enough the area AB is now larger, that's the7

desired effect. Unfortunately, it's also moved away from the8

center so that now if we write the gating signals down onto9

the tape, they will be wider, but displaced sideways and10

completely useless for analyzing the object AB.11

Q Now does Mr. Lemelson show any recognition in the patient12

that this is a problem?13

A No.14

Q Does he show any other technique for correctly locating15

gating signals?16

A He briefly mentions another technique based on a pulse17

generator. Now a pulse generator is a device you can dial in18

numbers or dial in positions and say, okay, I want a pulse at19

this position of that length, but somehow it means that you20

have to have some process that will take the physical21

situation and create those width and positions.22

Q Let me call your attention to column 39 at line 54 and23

ask you what, if anything, this has to do with the creation of24

gating signals?25

HORN - DIRECT00117

A Well, this is a method for creating the gating signals1

directly from the -- let me make sure this is the section --2

directly from the signal itself. And this is where we3

started, saying that if we just put the gates right where the4

edges of the object are, that isn't going to work.5

Q All right. S, this is the root of the problem where you6

can't just precisely align the gate with the portion of the7

image you want to deal with?8

A Yes.9

Q All right. So, you've described methods of creating10

gating signals and explained that they would not actually11

work. In your opinion, would a person of ordinary skill in12

the art in 1956 or 1963 have been able to correct either13

method from making the gating signals without undue14

experimentation?15

A No.16

Q Why not?17

A There's no clue of how to go from here to there. I don't18

even know how you would approach it based on this basic idea19

of enlarging the optical system. There's no way to fix that.20

Q Let's move to the next --21

THE COURT: Well, before we go to circuit problems,22

let's go ahead, it's noon, so we'll take our luncheon recess. 23

We'll be in recess until 1:30 and reconvene then on the24

balance of it.25

HORN - DIRECT00118

(Court recessed at 11:57 a.m. until 1:42 p.m.)1

THE COURT: Come on back up, Doctor, if you would.2

Counsel, before we get started, my clerk was going3

over the exhibits. Each day she tries to do her minutes and4

include in there the exhibits which are received. And she was5

telling me everybody's been really good about working with her6

and making sure that she gets the accurate ones. But it7

occurred to me, after listening to her, that maybe one thing8

that might help would be at the end of each day if you all9

could collaborate a bit and then the next day just provide her10

with a list of those exhibits that the parties agree were to11

be received.12

For example, we've had exhibit books where maybe not13

every exhibit was talked about, but the clear intent and14

understanding of the parties was they would all come in,15

copies of patents and so forth, and others where there's16

objection to them. And maybe you could just give her both of17

those, and that way I'd be able to parse out and deal with18

those that are objected to, as opposed to those as to which19

there is no objection. Then our minutes could accurately20

reflect that.21

Is there anything else? You think that that would22

cover it? Okay. Just wanted to pass that on before we --23

MR. LISA: One small housekeeping matter, Your24

Honor.25

HORN - DIRECT00119

THE COURT: Yeah. Mr. Lisa.1

MR. LISA: Mr. Silver very nicely advised us that2

our wireless network pops up every now and then on some of3

their computers.4

THE COURT: Oh.5

MR. LISA: And for the same reasons that we wouldn't6

walk over and go through their files in the courtroom, we'd7

hope that Your Honor would admonish lawyers to respect our8

files and not -- not peruse them.9

THE COURT: Oh, yeah. Certainly. I'm sure nobody10

-- nobody would, and vice --11

MR. LISA: And there's no accusation being made.12

THE COURT: No, no.13

MR. LISA: I think Mr. Silver very nicely just14

advised us.15

MR. JENNER: No need to admonish.16

THE COURT: Great. All right. Let's go ahead and17

proceed, then with -- we were up to circuit problems, logic18

circuits are not properly clocked on -- I can't read the19

exhibit number any longer, but it's on the selected enablement20

issues.21

THE WITNESS: It's 3469.22

MR. JENNER: 3469. But before -- before I go there,23

Your Honor, I've got a couple of examination housekeeping24

matters I want to take the witness over.25

HORN - DIRECT00120

THE COURT: Sure. Okay.1

DIRECT EXAMINATION (Continued)2

BY MR. JENNER:3

Q Dr. Horn, I notice in going through my materials that I4

forgot to ask you yesterday about references in the patent to5

one other item that I wanted to cover, and that's an item6

called photoelectric scanning.7

A Yes. 8

Q I would like to have you look at the references to9

photoelectric scanning, and I'll ask you about that.10

First, would you turn to column 6, line 25. Actually,11

the paragraph starts at line 23.12

A Yes.13

Q There's a reference there, "Various automatic measurement14

and comparison scanning techniques are provided herein whereby15

a picture signal derived from photoelectric or video scanning16

an image field or part of a field is recorded on a magnetic17

recording member, et cetera." Do you see that?18

A Yes. I read that to be synonymous. In other words, it's19

saying photoelectric is video scanning. Which makes sense,20

since photoelectric means something to do with photons and21

something to do with electrons, converting photons to22

electrons.23

Q Is that "something" a photoelectric device that would24

scan an image field?25

HORN - DIRECT00121

A Yes.1

Q Okay.2

THE COURT: So while it's stated in the disjunctive,3

it's really talking about the -- you read photoelectric or4

video scanning to basically be synonymous, then?5

THE WITNESS: Yes.6

THE COURT: Okay.7

BY MR. JENNER:8

Q Further down in the same column there's a sentence that9

starts in line 44, "For many of the functions described," and10

then it goes on and talks about how "a picture signal may be11

passed directly from a video storage tube or other12

photoelectric scanning device to the reproduction amplifier,"13

and so on. Do you see that?14

A Yes. And I read that as being alternatives of using a15

video storage tube or some other kind of photoelectric16

scanning device, such as television camera.17

Q All right. And what would be the nature of the output of18

that device?19

A High bandwidth analog video signal, standard television20

signal.21

Q The other occurrence is in column 24. And it's the22

paragraph that starts on line 48, "Figure 3 shows."23

A Yes.24

Q And then there's a reference in that sentence to,25

HORN - DIRECT00122

"scanning signal recordings, which are signals derived from1

photoelectric scanning of moving objects or video beam2

scanning of image fields."3

What, in your opinion, does photoelectric scanning mean4

in that context?5

A Well, I'm not really sure, because there's no reference6

to scanning of moving objects in the application. The objects7

are always in the fixed and predetermined position. 8

Furthermore, if you move the object while you're scanning it,9

you'll get a smeared image, which will be useless for purposes10

of measurement or comparison. So I really don't know exactly11

what this might be referring to.12

Q All right. Insofar as how you interpret this13

photoelectric scanning device, how, if at all, do the14

statements made in the prosecution history affect your views15

as to what that means?16

A Well, Lemelson throughout says that he's dealing with17

television cameras and signals derived from them producing18

analog video signals of high bandwidth so -- or flying spot19

scanners, all of which are deflectable electron beam devices. 20

And so if this is a reference to such a device, I'm not sure21

quite how to interpret it because of the moving object part.22

Q There has been a suggestion that this could be referring23

to a light source and photocell for receiving the light from a24

light source. Do you have an opinion as to whether this could25

HORN - DIRECT00123

be a reference to that kind of device?1

A Well, no. That wouldn't make a lot of sense, because the2

whole specification is about a camera, an imaging device,3

television camera, something with a lens in it that creates an4

areal image, not something that simply samples a single point,5

like a photocell.6

Q Does the information in the patent and in the prosecution7

history about full-frame scanning of an image field have any8

bearing on your views?9

A Yes. That again affirms the notion that we're dealing10

with full-frame scanning and an image that's actually being11

scanned, as opposed to a device that merely detects where the,12

for example, light beam is interrupted.13

Q Is there any other information that you are aware of in14

the patent that relates to whether there is any different15

device that you would refer to as a photoelectric scanning16

device?17

A There's nothing else in the patent that might suggest18

other than my interpretation.19

Q All right. You don't have any other information on that?20

A Right.21

Q This morning I asked you about the effects of22

illumination, and I referred to an exhibit, which is 3478,23

which is the still that was taken from a video presented by24

one of the witnesses from Symbol. Do you remember that?25

HORN - DIRECT00124

A Yes.1

Q During the lunchtime break you pointed out to me that the2

effect in this Exhibit 3478 is due to more than just3

illumination, which is what I had asked you about. Would you4

explain what you mean by that.5

A Yes. The brightness in the image is proportional to the6

product of reflectance and illumination so that variations in7

illumination have similar -- well, actually the same effect as8

variation in the reflectance.9

When I looked at this picture I realized that the10

variations here are due to the fact that inside this11

cylindrical container of jewelry cleaner there's a whitish12

deposit at the right end which provides a different background13

reflectance from the other part, which is a clear liquid,14

which presents a darker background. And in this case that's15

what accounts for the difference in the signal on the right.16

But, by the way, the -- apparently the scan is from the17

right to the left, which is -- which helps perhaps unconfuse18

some of us; because the left part of the -- the left part of19

the graph on the right corresponds to the right part of the20

scan on the object.21

But again, to repeat, the effect of variations in22

background reflectance are essentially the same as the effects23

of changes in lighting. So the problems I described that24

result from lighting changes would similarly come about from25

HORN - DIRECT00125

changes in background reflectance.1

Q How did you characterize it, that it's a product of2

reflectance and illumination?3

A Yes.4

Q And the effects are -- are similar, you say?5

A Yes.6

Q Okay. Now, this morning, when I asked you about gating7

signals, we got to a point where I called your attention to8

the bottom of column 39. And there is more material that goes9

on after the bottom of column 39, I guess from line 65 and10

following into column 40, about -- more information about11

creating gating signals. Do you have that?12

A Yes. I believe I got so carried away answering your13

question about the text at the bottom of column 39 I neglected14

to pay attention to the part at the top of column 40. So let15

me explain that method for producing gating signals.16

The notion is that one could produce a cutout, something17

like a cardboard rectangle with areas that are chopped out,18

and place that carefully with relation to the camera and scan19

that and determine the gating zones based on those cutouts.20

Q Is that what's referred to in the first line on21

column 40?22

A Yes. "Said mask or map is correctly positioned in the23

scanning field of said beam scanning means," yes.24

Now the practicality of this is I believe nonexistent. I25

HORN - DIRECT00126

mean, if I imagine, for example, that this is my field of view1

and I'd like to permanently eliminate Mr. Quinn here, I'd have2

to cut out a rectangle -- sorry, Charlie -- cut out a3

rectangle, and the problem would be twofold. First of all,4

how do I create this cardboard mask? I can -- I can put it5

down here and cut it out, but how do I get it to reflect the6

actual shape that I have there? And the second problem is,7

how do I then take that cardboard mask and align it in the --8

exactly the right position with respect to the camera? So I9

don't consider this a practical method for obtaining gating10

signals, either.11

Q All right. You mean literally cardboard, or just some 12

material that a mask is made from?13

A Well, it could be some other flat material, plastic14

perhaps.15

Q All right. So in your opinion this is not a practical16

method for creating gating signals, either?17

A That's correct.18

Q Is there any explanation given in the patent about how to19

go about doing this, to solve the two problems you refer to?20

A Well, it mostly just describes this notion of creating21

that cutout and positioning it with respect to the camera, but22

it doesn't actually explain how to create the cutout or how to23

position it accurately with respect to the camera.24

Q Is there any information in the patent that in your25

HORN - DIRECT00127

opinion would enable a person of ordinary skill in the art in1

1956 or 1963 to know how to do this, to make these masks or2

maps using cutouts?3

A No.4

Q Now, this morning I also asked you whether the use of5

gating signals would remove the problems of noise,6

illumination, displacement, and distortion. And you told me7

you wanted to clarify your opinion about this. Would you do8

so now.9

A Yes. This morning I showed what happens with inflections10

as the result of changes in illumination, noise, distortion,11

and image motion. And I wanted to point out that gating12

signals can reduce those problems in certain cases by dealing13

with small variations in the positions of inflections. They14

cannot, however, deal with missing inflections or inflections15

that shouldn't be there. And, as we saw, we have all three of16

those effects.17

Furthermore, many of the circuits are also sensitive to18

very accurate positioning of the inflections, including19

Figure 3, which is the one I kept on referring to.20

And then finally I'd like to point out that the way I21

read the patent, Lemelson's intent with the width of these22

gating regions was a way of dealing with manufacturing23

variations. For example, in Figure 8', where he shows the24

cutout area AC -- where he shows the cutout area AC, in the25

HORN - DIRECT00128

text he explains that the reason the gating signal has to be1

wider than the area itself is to allow for small manufacturing2

variations in the position of that cutout or hole. So it's3

not intended to deal with positioning errors. It's there to4

deal with manufacturing variations.5

And just roughly speaking, if one were to -- wanted to6

deal with both of those, then the zone would again have to be7

enlarged. And that's not what we're seeing in the description8

of the patent. He uses that to deal with manufacturing9

variations.10

Q So what, then, is your opinion overall as to the ability11

of gating signals to be used to solve the problems you raised12

regarding noise, illumination, distortion, and displacement?13

A They can't solve the problem. They will affect some of14

the figures in different ways from other figures.15

Q All right. Let's turn back to 3469, the list of selected16

enablement issues that we've been going through. And we had17

hit the point at the lunch break of circuit problems.18

Now, first, what do you mean by circuit problems in this19

context?20

A These are more concrete problems at the circuit level. 21

Lemelson shows circuits like clippers and what he calls22

Schmitt circuits. So we're getting down to the nitty-gritty23

of implementation detail.24

Q Are these all of the --25

HORN - DIRECT00129

THE COURT: Problems at the circuit level generally1

are, but I'm thinking of a different circuit, I think.2

THE WITNESS: Oh. I see. No, I hadn't thought of3

that ambiguity in terminology.4

THE COURT: Yeah. It's a -- that's a lawyer joke.5

BY MR. JENNER:6

Q Are these all of the circuit problems that you have7

encountered in the patent?8

A No. There are many more. In order to keep this to a9

finite time, jointly with counsel we selected these.10

Q There are some people who may think we've already11

exceeded a finite time. So let's go through these three.12

First of all, Number 11 is, "Logic circuits are not13

properly clocked." What do you mean by that?14

A In order for logic circuits to operate correctly, they15

should look at the inputs only at certain times. If you16

remember, Your Honor, logic circuits work with bi-level17

signals. Now, no signal can change instantaneously from one18

level to another, so there's a brief moment where it's making19

a transition.20

Now, if the logic circuit is looking at the signal while21

it's making the transition, either the output is wrong, or22

actually it won't be a correct bi-level signal.23

THE COURT: It's going to miss it.24

THE WITNESS: It's going to miss it.25

HORN - DIRECT00130

And so typically logic circuits will use a clock1

which essentially says you're only allowed to look at the2

inputs here, there, and there, and then make sure that the3

inputs are stable, that when you look they're not busy4

changing.5

And this is particularly important with respect to6

storage units such as what Lemelson calls flip-flops. They're7

particularly sensitive to this problem of looking at the wrong8

time.9

BY MR. JENNER:10

Q Now, can you point out in an exemplary figure how this is11

a problem. Is this a problem at Figure 3?12

A Yes.13

Q All right.14

A I was going to look at what I call the XOR circuit in15

Figure 3, which is the combination of logic gates AN12. So16

it's this part of the circuit. And the intent of this circuit17

is to compare two gated clip signals to look for any18

differences.19

And one of the problems with this circuit is that the and20

and or gates are real physical circuits. They don't operate21

instantaneously. Their output changes a little bit after the22

inputs change. And what's more, they don't have an23

instantaneous rise. The wave goes from low to high in the24

smooth way.25

HORN - DIRECT00131

Now, one of the things that happens is that the output1

from the or circuit, the one that's shown as a blue rectangle,2

is guaranteed to have a slightly different timing from the3

output of the and circuit AN12 shown as a triangle, and4

they're combined in the not circuit N. And the result is that5

it's the same as if one of the two signals had been slightly6

shifted in time. And again, that means that the inflections7

don't match exactly. So it's as if the images don't match,8

simply because there's a circuit timing issue.9

Now, as it turns out, this could be patched over by10

adding a little bit of delay so that the two paths just kind11

of match up. And engineers will tell you that you can't ever12

really do that. But even if you did, it would mean that on13

the other end -- so now we're dealing with the rising wave14

form, and we match it up there on the trailing, on the falling15

part of the wave form. You'd actually have increased the16

severity of the problem. So that's a very simple example of17

this kind of timing problem which we teach our engineering18

students right up front you solve by going to clocked19

circuits.20

Q Did Lemelson show any recognition in the patents of this21

timing or clocking problem?22

A He did -- he did in some places insert small delays,23

which I believe were intended to cope with this problem. As I24

indicated, those delays don't work for two reasons. The one25

HORN - DIRECT00132

is you -- even with a delay you can never guarantee that1

things match up exactly. And even if they match today, with2

aging of components, power supply variations, the phase of the3

moon, whatever, they won't match indefinitely.4

And the other reason is that even if you get them to5

match for one particular wave form, such as the rising of the6

wave form, they will not match for the falling wave form. So7

you can't really deal with this with delay circuits.8

Q Insofar as clocking of logic circuits might be a solution9

to the problem, is there any showing in the patent of clocking10

of the logic circuits?11

A There's no clocking of logic circuits shown.12

Q Is this the kind of problem that a person of ordinary13

skill in the art could have solved in 1956 without undue14

experimentation?15

A Well, our second-year students at MIT in the year 200216

probably could, but not a person of ordinary skill in the art17

in the 1950s or 1960s.18

Q Did you have any personal experience that affects your19

opinion about this?20

A Yes. This is one of the first problems one runs into21

when experimenting with logic circuits. And if you haven't22

taken the course before, which is -- was the case in my case,23

you're puzzled by it, you don't know what's going on until you24

finally discover there is this transition timing problem.25

HORN - DIRECT00133

Q All right. The next item under circuit problems is that,1

"The clipper doesn't work." What do you mean by that?2

A Well, this is actually a combination of three thoughts. 3

One is that the clipper -- a clipper does not perform the4

action that we require. The second part is that the clipper5

shown as a circuit is not a clipper. And the third part is6

that the circuit shown does not perform a useful function.7

Q All right. Could you take those one at a time and8

explain what you mean.9

A Okay. Let's look at Figures 10 and 11, which are the10

clippers. And I don't want to draw that graph again that I've11

been drawing five times, so I'll just refer to it.12

What the clipper does, a real clipper, such as the diode,13

triode, pentode clipper, video clipper that Lemelson refers14

to, is to allow a signal to follow an input up to a certain15

point and then to stay at that level or, conversely, to stay16

at a certain level until the signal rises above it. But in17

either case it's producing an analog voltage output. That is18

then fed into a log circuit.19

And that's the problem. The logic circuit only wants two20

levels, high/low, true/false, 0/1. And so a clipper is not21

the appropriate circuit component to perform the function22

that's required here. So that's point one.23

Point two is that this clipper circuit as a circuit --24

Q Doctor, before -- before you do that --25

HORN - DIRECT00134

MR. LISA: Objection, Your Honor. I'm -- I have an1

objection. And this is another instance in which we have a2

brand-new opinion being stated by an expert. Dr. Horn has3

taken contrary positions in his expert report as to what a4

clipper is and what Mr. Lemelson supposedly described. In5

fact, there are pages and pages about this in the expert6

report, and this is a brand-new opinion never before stated by7

this expert.8

THE COURT: You say the witness has taken -- or has9

testified or reported differently than he is now as to the10

clipping function or what a clipper does?11

MR. LISA: If you'd like to flip the chart back, I12

can explain what the -- what Dr. Horn has explained in his13

prior depositions and expert reports. And upon seeing, I14

guess, now rebuttals and doing some homework, he's decided to15

change his opinion.16

THE COURT: Well, let me just ask. Is the opinion17

you're offering now, the testimony you're offering now18

different in any way, in your judgment, from what you had19

previously either testified to at deposition or included in20

your reports?21

THE WITNESS: No, Your Honor. I think the confusion22

may have arisen from the fact that since none of this makes23

any sense with a clipper, I've used Lemelson's term "clipper"24

as the circuit component that is at that point in the circuit. 25

HORN - DIRECT00135

And there's a -- I mean, I don't know what Mr. Lisa's1

referring to, but I can imagine one possibility is that if I2

use the term "clipper" to refer to a thresholding circuit that3

performs the conversion to bi-level.4

THE COURT: All right. Well, I'll tell you what. 5

On this I'm going to overrule your objection. I'll let you6

go, you know, obviously into that. And if he's inconsistent,7

based on your cross-examination, then that'll have whatever8

impact it has.9

MR. LISA: Thank you, Your Honor.10

THE COURT: All right. Go ahead, Mr. Jenner.11

BY MR. JENNER:12

Q All right. Before you leave the first point --13

THE COURT: That's it, yeah. What's the number on14

that one?15

MR. JENNER: This is -- if this is the right one,16

this is 3511.17

BY MR. JENNER:18

Q Is this the circuit which you didn't want to have redraw19

that you're referring to?20

A Yes. These are the wave forms I was referring to.21

Q All right. And what is it about these that's22

pertinent --23

THE COURT: And let me just say, you see, Mr. Lisa,24

when -- referring back to 3511, when the witness was just25

HORN - DIRECT00136

explaining just before your objection what he was talking1

about, I was picturing what we've got up there, what he'd2

drawn previously, and it didn't sound inconsistent with that3

to me.4

MR. LISA: Your Honor, the description of those two5

circuits is what Lemelson has said from the beginning were6

meanings of clippers. And in fact we have presented to Dr.7

Horn that the manner in which Lemelson describes and uses the8

clipper is the top figure.9

Now, what Dr. Horn has said from the beginning is10

that that's not true, that wasn't the definition of a11

clipper --12

THE COURT: Okay.13

MR. LISA: -- a clipper was only what you see on the14

bottom of that figure.15

THE COURT: All right. Well, then I'll let you16

impeach him wherever he's said that. But let's go ahead.17

MR. LISA: I can even cite the paragraph through his18

expert report, if you'd like.19

MR. JENNER: That sounds like cross to me.20

THE COURT: Well, it will be, obviously. And21

appropriate cross if there's an inconsistency. But -- 22

BY MR. JENNER:23

Q All right. Dr. Horn, could you go ahead and just relate24

these figures to the first point you were making.25

HORN - DIRECT00137

A In either case, the clipper or the inverted clipper, the1

output is an analog wave form that's moving around at2

different voltage levels, and it's not confined to just two3

levels, so independent of whether the top or the bottom4

interpretation is taken.5

Q Now, is this what Lemelson's clipper does, or what a real6

clipper does, or what?7

A Well, when you say "Lemelson's clipper," which one are8

you referring to? Because in the text he repeatedly refers to9

standard circuit components, such as diode clippers, triode10

clippers, pentode clippers, video clippers. And that's the11

operation of such a clipping circuit.12

Q So when you say "that," the illustration in 3511 is the13

wave form of a standard clipping circuit --14

A Yes.15

Q -- is that right?16

A That's right.17

Q Okay. But that's not what Lemelson's clipper does?18

A That's not what his circuit in Figure 10 and Figure 1119

does.20

Q And does that go to one of your remaining points?21

A Yes.22

Q Okay. Please.23

A So the circuits in Figure 10 and Figure 11 have what's24

called capacitive coupling on the inputs and, in the case of25

HORN - DIRECT00138

Figure 10, on the output, as well.1

Q What does that mean, capacitive coupling? What does that2

refer to?3

A That means that a steady signal will not continue4

through. So one of the possibilities is that if the input is5

slowly varying and rising, there will be no effect on the6

output. And you can see how that is going to mean that using7

a fixed threshold is impossible, because you don't really know8

exactly at what level you are. So if there's a slow rise in9

the input signal, it will be lost because of the capacitor,10

and therefore there's no clipping at a fixed threshold11

possible.12

Q What is the capacitor of the capacitive coupling? What's13

the device that's shown in the figure there that's a14

capacitor?15

A It's the double line on the -- on the left over here. 16

Sorry I didn't indicate that before.17

Q The pair of parallel lines?18

A Yes.19

Q Okay. And there's one at the input and one at the20

output?21

A Yes.22

Q All right. And once again, what is the effect of this23

capacitive coupling in the circuits shown by Mr. Lemelson?24

A It prevents clipping at a fixed threshold.25

HORN - DIRECT00139

Q And what's the consequence of that?1

A Well, that goes against the whole idea of using a clipper2

with a fixed threshold. It's a different circuit, if you3

like.4

But beyond that, he's using a vacuum tube here. And5

vacuum tubes require negative grid bias to operate. That6

means the grid, which is the circuit element with the little7

dashed line, has to be kept at a negative voltage for the8

circuit to operate correctly. The 6J6 in particular requires9

a -8-volt grid bias. And instead, it's connected directly to10

ground. The effect of that is that there will be a large11

current flowing in this tube, and I would imagine that the12

anode would start to glow red. I don't know if it would13

actually burn out or something, but it's certainly not to its14

health. And it also means that it won't perform any useful15

function, because it's just saturated, meaning there's a16

steady current in the anode circuit and therefore no variation17

in the output.18

Q Now, you've described a lot of what you characterize as19

problems here with this. But what I'd like is for you to20

explain what's the effect here of the ability of the clipper,21

whatever it is, to interface with the logic circuits that come22

after it.23

A Well, it's not producing a bi-level output, for a start,24

because of the capacitive coupling. And beyond that, it's25

HORN - DIRECT00140

actually not producing an output, because the tube is running1

in a saturated mode. It's not amplifying or doing anything.2

In addition, the resistor, which is variously referred to3

as RG, R8, or R9, I guess here it's the resistor over here,4

RG, is purported to be a way of adjusting the threshold of the5

clipper and the whole idea is that we'll pick a particular6

threshold where parts of the image are below that and parts7

are above. But this circuit component doesn't perform any8

such function. It simply changes the resistance from the grid9

to the ground. It's in no way adjusting a threshold.10

If I were to conjecture how to fix this circuit, well,11

getting rid of all of this and starting over would be a good12

way. But short of that, I mean, the minimum you'd have to do13

is, instead of having a variable resistor, is have a variable14

voltage source that adjusts the grid bias.15

Q In your opinion would a person of ordinary skill in the16

art in 1956 have been able to recognize and cure these17

problems so as to enable the clipper to have an output that18

would be able to interface with the logic circuits?19

A No. I think they would have found it doesn't work, and20

they might have had a very hard time finding the circuit21

component that could be blamed for it not working.22

And then upon further inspection they would have found23

that there's an inconsistency between the figures and the24

description in the text of use of a well-known device, a diode25

HORN - DIRECT00141

clipper, triode clipper, pentode clipper, video clipper. 1

Those are all well-known terms.2

Q Would this be something that could be fixed without undue3

experimentation in the 1956 to 1963 time frame?4

A Well, no. Because if you go back to just ignoring this5

and putting in a standard component, it's not going to work. 6

If you put this in, it doesn't work. It wouldn't have been7

something that had an obvious solution.8

Q Did you have any -- you said 6J6. It looks like 6J5.9

A 6J5, yes.10

Q Did you have any personal experience with a 6J5 tube that11

leads you to any of your conclusions?12

A Yes. I experimented with electronics before I went to13

university, and I was lucky to find a supply of World War II14

leftover equipment, and the 6J5 was a widely used tube that --15

for audio amplifiers, for example.16

Q All right.17

A And I probably burnt out a couple of them in my time.18

Q All right. Would you turn to the last item under19

"Circuit Problems." And this is, "Multi-threshold clippers20

produce no useful output." What are you referring to there?21

A There's a part at the very end of the specification where22

Lemelson proposes using more than one clipper.23

MR. LISA: Objection, Your Honor. Another situation24

where this witness's testimony is way beyond his expert25

HORN - DIRECT00142

report. There was not a word about this in his expert report. 1

And this has been brought to his attention now nearly a year2

ago in Lemelson's expert reports. I move to exclude.3

THE COURT: Mr. Jenner.4

MR. JENNER: I'm advised that this is true.5

THE COURT: All right. All right. I'll sustain the6

objection, then.7

BY MR. JENNER:8

Q Okay. In that case, we'll leave this item out and go on.9

That's the end of the items on Exhibit 3469, so I'd now10

like to turn, Dr. Horn, to the issue of non-infringement.11

And just to clarify what's going to happen here, you are12

going to express positions with respect to patent claims13

asserted against the use of machine vision systems only;14

correct?15

A Yes.16

Q And you will not be expressing non-infringement opinions17

regarding patent claims asserted against the use of the Symbol18

Technologies bar code equipment?19

A That's correct.20

Q Those will be dealt with later by Dr. Allais; correct?21

A Yes.22

Q Okay. Now, I'd like to turn to Exhibit 3467. Do you23

have that?24

A Yes, I've got it.25

HORN - DIRECT00143

Q Can you identify what Exhibit 3467 is.1

A It's a table of non-infringement comments going claim2

element by claim element in reference to Cognex products and3

the '626 patent.4

Q Now, this continues on through only the independent5

claims that are asserted against the use of Cognex equipment,6

not the dependent claims; correct?7

A Yes. I understand that if an accused product does not8

infringe the independent claims, it by definition doesn't --9

can't infringe the dependent claims.10

Q All right. Now, are your non-infringement opinions based11

on the claim interpretations that you testified about earlier?12

A Yes, they are.13

MR. JENNER: All right. I'm going to ask Mr. Serra14

-- could you just put up, unless it's already up there, the15

small chart. Do I have it? Okay.16

BY MR. JENNER:17

Q Are those the claim constructions of Exhibit 3429?18

A Yes.19

Q And are those the claim interpretations on which you rely20

for the formulations of the non-infringement opinions that21

you've arrived at?22

A Yes.23

Q Now, what I'd like to do to see if we can expedite this24

is ask you if you would go through one claim as exemplary,25

HORN - DIRECT00144

taking the first claim, which is Claim 8 of the '626 patent,1

and explain your non-infringement opinions with respect to2

this claim.3

MR. JENNER: And, this, Your Honor, goes to what I4

hope will be what we're able to do, which is to set forth a5

pattern here, kind of common usage, and then agree that we6

will put in the charts, rather than go through them one by7

one.8

THE COURT: All right.9

BY MR. JENNER:10

Q Dr. Horn, could you proceed with Claim 8 of the '62611

patent.12

A Yes. Claim 8 starts off with:13

"A method of converting analog information to digital14

form comprising the steps of:15

"(a) generating a variable electrical analog16

signal derived from scanning a varying process and17

being representative of physical variations in scan18

said process."19

And this relates to the scanning term that we defined and20

the variations term.21

Now, the scanning term includes the requirement for22

prepositioning, and Cognex products do not require an object23

to be stationary or prepositioned.24

The scanning limitation also requires use of a electron25

HORN - DIRECT00145

beam scanning device. The CCDs and CMOS sensors used by1

Cognex are not such devices. There's no beam used to scan the2

image of an object.3

The scanning limitation also involves generating a4

continuous analog video signal. And the CCD and CMOS sensors5

do not generate a continuously variable analog signal. The6

staircase signal output by these devices is continuous in7

voltage level, which corresponds to brightness, but is not8

continuous in time or space, because each pixel in the array9

is discrete.10

In fact, in many of their products there's no television11

picture signal. The digital image is created directly from12

the bucket brigade output of the CCD that we saw before.13

Also, the surface inspection product from the SISD14

Division of Cognex use a CCD sensor with a single row of15

pixels, which would correspond to line scanning, not full-16

frame scanning. And the term "scanning," the way we've17

interpreted it, includes full-frame scanning, a full raster18

scan.19

Q Well, just to pause, as far as the first limitation of20

Claim 8 is concerned, these distinctions between the accused21

-- I should say the use of the accused Cognex products and the22

first limitation of Claim 8 are based on the interpretation23

that you have found for the scanning limitation as set forth24

on 3429; correct?25

HORN - DIRECT00146

A That's correct.1

Q All right. Would you continue with limitation (b).2

A Claim element (b):3

"analyzing a selected portion of said analog signal to4

the exclusion of other portions of said analog signal."5

And this goes to the analyzing term as it's defined on6

the chart, referring to analog signals being recorded in sync7

on -- along with gating signals on separate tracks of multi-8

track magnetic tape. And then these signals are passed9

through gates and they're clipped and compared synchronously10

by logic circuits to determine the presence and absence of11

inflections.12

And so Cognex systems don't do those things. Cognex13

systems do not analyze a linear recording of continuous analog14

video signals of a test object, since they deal directly with15

digital images. They do not gate a predetermined length of16

the signal to the exclusion of other areas along a scan line. 17

They do not clip the gated signal at a predetermined level;18

they use gray levels. They do not use logic circuits to make19

point-by-point determination of whether an expected inflection20

occurs within the gated length of the signal, or, in the case21

of flaw detection, whether an unexpected inflection occurs in22

the gated length of the signal.23

And what they're doing is very different from this very24

specific thing that the Lemelson prescription tells us to do.25

HORN - DIRECT00147

Q Why don't you pause there --1

THE COURT: Mr. Jenner, with regard to Claim 8, and2

I'm assuming the ensuing ones, the witness is pretty much3

reciting the comments that are contained, with some4

preliminary testimony. Would it not be just as viable to, as5

he's acknowledged that he's set forth his comments, to receive6

those? If there's some specific matter you want to draw out7

concerning any one of them, do that. Then if Mr. Lisa on8

cross-examination takes issue, as I'm sure he may, with some9

of those comments, address that and then pick it up in10

redirect. It just seems to me to be a lot faster.11

MR. JENNER: That's what we had in mind, and that's12

why I suggested yesterday that we were hoping we could agree13

on a process of expediting this by getting some sort of14

underpinning and then just submitting the charts.15

THE COURT: Right. I sure don't want to have to --16

all of us sit here while he -- while the witness basically17

recites --18

MR. JENNER: Nor do we.19

THE COURT: -- what is in the 31 or so pages of20

reports. So let's take -- let's take that approach, and if21

there's something critical that you want to pull out of any22

one of the claims -- asserted claims, go ahead and do it. But23

I'm sure Mr. Lisa will be ready to raise issues he has24

regarding any one of the comments, and go from there.25

HORN - DIRECT00148

MR. JENNER: All right. Judge, what I would do is1

ask the witness, and I was about to do this, with regard to2

limitation (b), the analyzing limitation --3

BY MR. JENNER:4

Q You've just said what it is that the Cognex products5

don't do or how they're not used in accordance. Can you just6

explain the difference. What is it that the Cognex systems do7

do that makes their use different?8

A Well, the Cognex systems find, identify, and inspect9

image areas, and they do it using digital images that are read10

directly, they do it using algorithms that represent11

mathematical and statistical techniques, they collect12

statistical information to reach a decision. And, as it says13

here on the second page, there's a summary, "Cognex systems14

analyze two-dimensional digital gray scale images, not clipped15

signals. They do not analyze analog signals from a16

preselected length of the scan line. They don't gate.17

"To the extent that Cognex systems use two-dimensional18

regions of interest that is larger than object of interest but19

smaller than the entire digital gray scale image, it is to20

promote computational speed and efficiency. It's not a21

requirement."22

Q All right. One thing that you didn't mention in23

particular, the analyzing limitation as you've construed it24

calls for the use of the synchronous recording of the various25

HORN - DIRECT00149

signals on a multi-track magnetic recording medium. Do the1

Cognex products in their use meet that part of the analyzing2

limitation as construed?3

A No, they don't.4

MR. JENNER: All right. Your Honor, I would at this5

point submit the charts as --6

THE COURT: All right.7

MR. JENNER: -- essentially the witness's non-8

infringement conclusions based on the claim construction9

process that we went through yesterday.10

THE COURT: All right. Well, I'll receive 3467 with11

that understanding, and then we can take it up on cross and12

redirect to the extent it needs to be refined or further13

analyzed.14

(Plaintiff's Exhibit 3467 admitted)15

BY MR. JENNER:16

Q Okay. Now, at this point I would move on to the issue of17

the invalidity of the asserted claims of two of the patents,18

the '626 and '918 patents, over specific prior art.19

Dr. Horn, at my request have you compared the asserted20

claims of the '626 and '918 patents with certain prior art21

patents?22

A Yes.23

Q And in particular did you consider three prior art24

patents called Anderson '915, Shepard '481, and25

HORN - DIRECT00150

Rochester '535?1

A Yes, I did.2

Q Okay. I'd like to start with the Anderson patent by3

having you give a brief explanation of the relevance of the4

Anderson patent. And in order to assist with that --5

MR. JENNER: First of all, Your Honor, the Anderson6

patent in full --7

THE COURT: 3506 --8

MR. JENNER: Is 2936.9

THE COURT: Oh. 2936. Okay.10

MR. JENNER: And just to jump ahead, the Shepard11

patent is 2939. The Rochester patent will be 3313.12

BY MR. JENNER:13

Q Starting with the Anderson patent, would you give a14

description of what you consider to be relevant aspects of the15

Anderson patent.16

A Yes, certainly. The Anderson patent describes a method17

for using a electron beam camera to measure the width of an18

ingot running underneath the camera. So shown in Figure 1 of19

Anderson's patent, first of all at the top is the camera. 20

There's a lens here and a iconoscope tube up here, such as the21

one mentioned by Lemelson. The signal from the electron beam22

scanner is read out here and passed through this amplifier.23

Q Let me ask you to stop there for a minute. Where is the24

image that is being looked at? Is the image on the face plate25

HORN - DIRECT00151

of the iconoscope, or is it down at the bottom of the pink1

area?2

A The image is on the face plate of the iconoscope in this3

area.4

Q And what is that an image of?5

A It's an image of the object found at the bottom, which6

is, again, an ingot.7

Q Okay. So continue. What happens with the image on the8

face plate?9

A It is scanned and a analog video signal is produced. So10

this shows the scanning of the image of the ingot. And Your11

Honor will notice that across the ingot there's a kind of wavy12

line of more or less the same height. That corresponds to the13

reflectivity of the ingot itself. Then next to it the line is14

lower, indicating some background next to the ingot. But15

also, outside that area are some sharp peaks. And these16

represent the kind of other signals, background stuff on the17

floor of the factory, which, for example Lemelson's gating18

system is aimed at removing. And we actually see the same19

gating idea here in this system.20

So if you could continue with the animation.21

This signal -- this is a line scan that is removed from22

the -- this is one line out of a scan that's amplified and23

brought over to this point in the circuit on the right.24

Q Let's pause there for a minute. You used the term "line25

HORN - DIRECT00152

scan." Are you saying that this iconoscope is a line scanning1

device?2

A That's why I corrected myself. It's a iconoscope with3

full-frame scan, which is looking for convenience at one line4

of the scan.5

Q All right.6

A Now, in order to gate that signal, a slightly different7

approach is taken where a trigger circuit up above adds a8

signal to the analog video from the iconoscope.9

And these are drawings from the patent. This is10

Figure 2. And what's it's showing is details of the signal11

with the noise pulses on the right and on the left and the12

actual image of the ingot in the middle.13

And now what happens is a gating signal is added to14

essentially lift the part of the signal that we actually want15

to pay attention to, namely, the ingot, and it then passes16

through a clipping circuit, which, as we described, has a17

threshold and passes the signal above the threshold and cuts18

off everything below.19

So at this point we have an indication of where the ingot20

is, and that signal now in the next step is used to gate an21

oscillator. In other words, there's a device producing22

regular oscillations only when the -- when the signal from the23

clipping circuit is high.24

Finally, the output from the oscillator is counted, and,25

HORN - DIRECT00153

not surprisingly, the number of cycles corresponds to the1

width of the ingot. And that's basic operation of this2

device.3

Q Okay. Now, did you prepare charts for the Anderson4

patent in comparison with the claims of the -- I think it's5

the '626 patent?6

A Yes.7

THE COURT: Is that 3506A?8

MR. JENNER: You're ahead of me, Your Honor. That's9

right. Flip through here fast enough. Yes, 3506A.10

BY MR. JENNER:11

Q Is that the -- is this the chart comparing the claims of12

the Anderson patent that are asserted against Cognex -- sorry,13

the claims of the Lemelson '626 patent that are asserted14

against Cognex with the Anderson '915 patent?15

A Yes.16

MR. JENNER: And I've been handed a note I should17

remind Your Honor the animation that we just used for this18

purpose is part of Plaintiff's Exhibit 3254D.19

THE COURT: All right.20

BY MR. JENNER:21

Q Now, does the chart 3506A reflect your opinion regarding22

the anticipation of the '626 patent claims by the Anderson23

patent?24

A Yes, it does.25

HORN - DIRECT00154

Q All right. Could you explain how you apply the Anderson1

patent to the Lemelson '626 patent claims.2

A The Claim 8 of '626 reads:3

"A method of converting analog information to digital4

form comprising the steps of...."5

And the system in Anderson described in Figure 16

certainly converts analog information into digital form, the7

digital result being that number that indicates how wide the8

ingot is.9

Element (a) says:10

"generating a variable electrical analog signal derived11

from scanning a varying process and being representative12

of physical variation in said process."13

And in Anderson the beam from the iconoscope labeled 2 in14

Figure 1 scans the image of an item such as ingot 1, and then15

produces a variable electrical signal. And the signal, of16

course, is representative of physical variations in the ingot.17

Claim element (b):18

"analyzing selected portion of said analog signal to the19

exclusion of other portions of said analog signal."20

And this, of course, relates to the gating process that21

we just saw. The photosensor 5, that is the front of the22

iconoscope, generates various pulses representing background23

as well as the ingot, so that the part of the pulse in the24

middle represents the ingot. And then we have the noise25

HORN - DIRECT00155

pulses or background pulses to the left and the right. The1

clipping circuit 16, as a result of the addition of the gating2

signal, now will only transmit pulses that represent the3

ingot. The long pulses -- the author calls the part of the4

wave form that corresponds to the ingot a long pulse, and that5

is analyzed to the exclusion of other portions of the signal.6

Then in element (c):7

"converting the selected portion of said analog signal to8

at least one binary digital code which is representative9

of a quantitative value of the variable of the selected10

portion of said electrical signal."11

The long pulses 28, in other words, the part that12

represents the ingot, are converted to binary digital code13

representative of a quantitative value, i.e., we're counting14

the cycles out of the oscillator to determine the width of the15

ingot. And those are quantitative values corresponding to the16

variations of selected portions of the variable signal and so17

on.18

Element (d):19

"processing said at least one binary digital code to20

generate further signals which are indicative of21

information contained in the original said variable22

analog signal."23

The binary -- oh. Excuse me. I misspoke. I jumped24

ahead. The binary digital codes in (c) are the outputs of the25

HORN - DIRECT00156

clipper, which basically indicate where we're on the ingot and1

where we're not on the ingot.2

It's in part (d) where we're dealing with the cycle3

counter. The binary digital codes are processed by the gated4

oscillator, and the cycle counter 19, which generates signals5

that indicate the width of ingot 1.6

So there's a match element for element for Claim 8.7

Q Now, let me be clear about this. In the invalidity8

context are you applying your claim constructions, or are you9

applying what you understand to be Lemelson's claim10

constructions?11

A Lemelson's claim constructions.12

MR. JENNER: Okay. Now, Your Honor, we have the13

same process here where I would ask the witness to give you a14

summary of what the Rochester and Shepard patents are about so15

you'll have a record of what they are. But then the charts16

basically are a statement of how the witness applies17

Lemelson's -- his understanding of Lemelson's claim18

constructions to the prior art.19

THE COURT: Go ahead. You can briefly summarize the20

other, the Shepard and Rochester --21

BY MR. JENNER:22

Q All right. Let's -- let's turn to the Rochester --23

THE COURT: 2939?24

MR. JENNER: The Rochester patent -- let's see,25

HORN - DIRECT00157

which is Exhibit 3313.1

THE COURT: Oh. Rochester's not 29 -- that was2

Shepard, 2939.3

MR. JENNER: Right. Shepard I'll come to. 4

Rochester is 3313, and the charts for Rochester are 3506B.5

MR. LISA: Is that B, as in boy?6

MR. JENNER: B, as in boy.7

And 3506D.8

BY MR. JENNER:9

Q And what I'd like to have you do is -- as a predicate, is10

just give a general description of what it is about the11

Rochester patent that you find pertinent.12

A Rochester describes a system for optical character13

recognition based on a electron beam deflectable scanning14

device. Rochester was one of a number of authors at IBM, and15

they actually took apart an IBM typewriter in order to insert16

this apparatus into the -- into the typewriter so it could17

view the printed, in this case, set of digits on the platen,18

on the paper that was in the typewriter.19

In the figure we see the electron beam deflectable20

scanning device over here with sweep generators that cause the21

line scan and the raster scan of the whole image. There's a22

lens 72 that focuses the face plate of the electron beam23

scanner onto the piece of paper. Light is reflected from the24

paper and picked up in the photo tubes down here. And that25

HORN - DIRECT00158

analog video signal is then analyzed.1

And it starts off by going through amplifiers and2

limiters, amplifier because it's a very weak signal, and the3

limiter is another term for clipper or a device for4

essentially trying to determine whether a part of the paper is5

inked or not inked, and the circuit down here called black-6

and-white circuit makes that decision. Its output is one or7

the other, depending on the signal from the -- the analog8

signal from the device.9

Now, there's a great deal of additional circuitry10

involved with actually recognizing the different digit shapes. 11

And they're represented here by the shape rule circuits and12

they are compared against stored memory information on the13

shapes of various -- various digits in this case, finally14

leading to something they call the Christmas-tree-shaped15

decoder.16

The way this works is that it looks at one characteristic17

of the image and says, well, given this characteristic -- for18

example, it might have a included area like the interior of19

the digit 9. And it'll say, well, given that I know that it20

has an included area, it can be a 9 or a 6 or maybe a 4,21

depending on how you write the 4. And so now it has reduced22

the number of possibilities. It says it's not just 0, 1 up to23

9, but it's only a small number of possibilities.24

And then it makes a further decision. It says, okay, now25

HORN - DIRECT00159

we know that it's a 6 or 9 or a 4, let's look at another1

characteristic of the shape and pin it down even further. And2

it's called a Christmas tree because it says, if you're3

switching out to the number of possibilities and once having4

arrived there you switch out again, so the whole thing kind of5

branches out in a tree-like fashion, something we'd Tree6

Search today.7

Finally, the result of all of this activity is sent to8

some output device, such as a card punch. So the idea would9

be you could put a piece of paper with numbers into the10

device, and it would read it and then punch out cards that had11

the corresponding information on it.12

Q All right, sir. And can you confirm that Exhibits --13

maybe you already did this, but that Exhibits 3506B and 3506D14

are the charts which summarize the way in which you have15

applied the Rochester patent against what you understand to be16

Lemelson's interpretation of the '626 and '918 patent claims?17

A Yes, that's correct.18

Q Now, there is one more prior art reference that you have19

considered, and that's the Shepard '481 patent.20

A Yes.21

MR. JENNER: Can we get that up?22

We don't have an animation of that, but we have some23

stills.24

//25

HORN - DIRECT00160

BY MR. JENNER:1

Q Can you explain in summary what Shepard discloses that2

you consider to be pertinent to your invalidity chart.3

A It's again a electron-beam-based scanner up here. And in4

this case it's aimed at character recognition, rather than5

digit recognition. The -- a flat surface over here has the6

characters on it. The light from the scanner is focused on it7

using a set of lenses in here.8

The light reflected from the surface is then picked up by9

a photocell and amplified and processed.10

Do we have that Figure 1 in a larger scale, 'cause I11

can't really read it. Okay. Thank you.12

So once again we have the electron beam scanning device,13

we have the analog video signal being amplified, and then14

there's something called a quantizer here.15

I need to change glasses. Excuse me.16

The quantizer turns it into a bi-level signal. The17

output of the quantizer is then sent to an inverter, the idea18

being that this way we have a signal that indicates whether19

there's ink there, and we have a separate -- on a different20

wire a signal that indicates there's no ink.21

These are then passed through gating circuits to limit22

attention to particular parts of the field.23

And I'm sorry to do this to you, Matt, but could we have24

Figure 2.25

HORN - DIRECT00161

Figure 2 indicates that we're not looking at everything,1

we're only looking at certain points on the scan lines. For2

example, here we have 1A and 1B. So of that scan line we're3

only looking at two points. And similarly for the other scan4

line. So that's the purpose of the gating signal.5

And if you could go back to Figure 1, I'll just point out6

some of the other features of this device. There's what's7

called a permanent memory, which is interesting, because it's8

basically a plug board, and it shows what people then thought9

a memory is. And the way you tell this device how to10

recognize these characters is basically to wire up in a very11

tedious manual way the plug board.12

There's also a temporary memory over here for storage of13

character information and for partial recognition information. 14

So this device will look for particular arrangements of black15

areas and -- he calls them shapes, and each shape will trigger16

a particular circuit and say, okay, I've seen a long vertical17

line in this character, or, I've seen three horizontal lines18

in this character. And then the decision on what character it19

is is based on that. For example, with three horizontal lines20

it could be an 8, if we're talking about digit, or it could be21

a 3 and so on. And so the final output is at the bottom22

output and storage.23

So we see the same elements again, scanning with24

deflectable electron beams, analog video signals, quantizing25

HORN - DIRECT00162

or clipping, and then gating, and finally analysis by logic1

circuits, 'cause that's what all of these recognition pulse2

counter circuits and so on are, the comparator circuits, and3

finally some output of a binary code representing that4

character.5

Q Now, in Exhibit 3506C have you applied the relevant6

portions of the Shepard '481 patent to the asserted claims of7

the Lemelson '626 patent?8

A Yes.9

Q And again, did you use Lemelson -- what you understand to10

be Lemelson's claim construction for that purpose?11

A That's correct.12

MR. JENNER: Your Honor, I guess what I would do is13

offer 3506A through E now as the setting out in writing of the14

witness's opinions as to how these references get applied to15

the claims.16

THE COURT: Very well. I'll receive those. Through17

E, that's right. Yeah.18

(Plaintiff's Exhibits 3506A through 3506E admitted)19

MR. JENNER: All right. At this point, Your Honor,20

we'll move on to the last -- I hope the last subject we have21

for Dr. Horn. And that is the issue of prosecution laches, or22

at least that aspect of prosecution laches to which this23

witness's testimony is relevant.24

//25

HORN - DIRECT00163

BY MR. JENNER:1

Q Dr. Horn, are you aware that there is another issue in2

this case called prosecution laches?3

A Yes.4

Q And one potential part of that issue is whether or not5

there is what are called intervening rights as to the various6

patent claims.7

A Yes.8

Q Now, I'm going to focus with you only on patent claims9

asserted against Cognex. And once again, Dr. Allais will deal10

with patent claims asserted against Symbol; is that correct?11

A Yes.12

Q Now, are you aware that Cognex employees have testified13

about Cognex products that plaintiffs assert to be intervening14

rights?15

A Yes, I've read the transcript.16

Q All right. I'm not going to ask you about those, since17

they have been covered by the Cognex witnesses. Instead, what18

I want to do is to focus on the three other entities that we19

assert to be intervening rights. And those are Automatix20

products, an EMR product, and a Stut patent.21

A Yes.22

Q Are you with me?23

A Yes.24

Q Okay. Let's start with first the Automatix products. 25

HORN - DIRECT00164

Did you familiarize yourself with the Automatix Partracker,1

Seamtracker, and printed circuit board assembly products that2

are at issue?3

A Yes.4

Q Generally what did you do to familiarize yourself with5

those products?6

A I read the deposition of Reinhold -- Reynolds? -- I7

always get them mixed up -- and the transcripts presented8

here. I read the product literature. I was intimately9

familiar with Automatix, first of all as an investor, and then10

in connection with consulting with Acuity, which was the11

successor corporation of Automatix.12

Q All right. And --13

THE COURT: Excuse me. You say the transcript of is14

it Arnold Reinhold? Is that who you --15

THE WITNESS: For Automatix, yes.16

THE COURT: All right.17

MR. JENNER: And I emphasize, Your Honor, that the18

flow of this is that the charts that were prepared and had to19

be submitted with the witness's expert report were prepared20

before trial, obviously.21

THE COURT: Yes.22

MR. JENNER: What he has seen is the Reinhold23

deposition testimony and the product literature with it. The24

charts that will come next are not based on the trial25

HORN - DIRECT00165

testimony, because they were prepared before trial.1

THE COURT: Sure.2

BY MR. JENNER:3

Q Now, also are you familiar with the EMR comp gauge4

product at issue in this case?5

A Yes.6

Q And what generally did you do to familiarize yourself7

with the EMR product?8

A Again, I looked at publications of Mr. Wilder, I read the9

transcript of his trial presentation, and I looked at product10

literature. I was already familiar with EMR from my time at11

-- early days at MIT. Schlumberger owned EMR. I consulted at12

one time for Schlumberger. We at one time used image13

dissector camera tubes produced by EMR.14

Q Did you also see any of the deposition of a Mr. Reynolds?15

A Yes.16

Q Okay. And these charts, once again, for EMR were also17

prepared before trial and submitted with your expert report;18

correct?19

A Yes.20

Q Finally, could you look at Exhibit 1388 in the binder of21

exhibits. And can you identify Exhibit 1388.22

A Yes. This is the Stut patent assigned to Siemans.23

Q Now, the Court has not heard anything about the Stut24

patent, so I'm going to ask you in a minute just to give a25

HORN - DIRECT00166

summary of what is disclosed by Stut that you consider1

relevant.2

But first, at our request and as the result of your3

review, did you participate in the preparation of some claim4

charts comparing various Lemelson patent claims with the5

Automatix and the EMR products and the Stut patent?6

A Yes, I did.7

Q And were those charts submitted as an attachment to your8

expert report on prosecution laches?9

A Yes.10

Q They were given to the other side before trial?11

A Yes.12

Q Would you turn to Exhibit 3508. And would you just turn13

through the components of Exhibit 3508, and I'll ask you if14

you can confirm that these are abbreviated versions of the15

charts that were provided to defendant.16

MR. JENNER: And, Your Honor, what I mean by17

abbreviated is that the expert report -- at the time of the18

expert report there were additional intervening rights that we19

had identified and were included in these charts, the20

originals of them, and we have simply cut this down for21

purposes of limiting the proof at trial. These versions of22

the charts are limited to Automatix, EMR, and the Stut patent.23

THE COURT: All right.24

MR. JENNER: But they otherwise correspond to what25

HORN - DIRECT00167

we provided defendant.1

BY MR. JENNER:2

Q Can you confirm that, Dr. Horn?3

A Yes, that's right.4

Q And one more predicate. If you could look at Exhibit5

3481, can you confirm that this is a chart that you helped6

prepare which identifies the claims of the Lemelson patents7

against which the Automatix products are applied as an8

intervening right?9

A Yes. This summarizes the other charts.10

Q Did you prepare this with counsel?11

A Yes.12

Q And would you look at 3482. Can you confirm that this is13

a chart that you prepared with counsel, summarizing the14

Lemelson patent claims against which you applied the EMR comp15

gauge product?16

A Yes.17

Q And finally, if you would look at 3483. Can you confirm18

that this is a summary chart that you prepared with counsel19

that compares the asserted -- the claims of the Lemelson20

patents against which the Stut patent is applied as an21

intervening right?22

A Yes, that's it.23

Q Okay. Now, once again, are these claim charts based on24

your claim constructions, or on Lemelson's claim25

HORN - DIRECT00168

constructions?1

A Lemelson's claim construction.2

Q As you understand them?3

A Yes.4

Q Okay. I'd ask you now if you would turn to the Stut5

patent and summarize for the Court the relevant operation of6

the Stut patent that you used as a basis for the creation of7

the claim charts.8

MR. JENNER: We may actually have to resort to the9

Elmo, Your Honor.10

THE COURT: All right. Well, if it's in the exhibit11

book, I've got the book. Just tell me -- the Stut patent is12

1388.13

MR. JENNER: Yes. What I was hoping was that we14

have some vehicle for the witness to be able to highlight. 15

But I guess --16

BY MR. JENNER:17

Q Can you explain the relevant aspects of Stut without18

having to highlight on the screen here?19

A Yes, I believe I can just refer to the numbered items.20

Q Okay.21

A The purpose of this device is to control the growth of a22

silicon bar that is melted. Part of the purification of23

silicon before it's used for manufacturing semiconductors is24

to -- is a single molten-zoned refinement. Think of the25

HORN - DIRECT00169

silicon bar as a vertical cylinder, and we're applying heat to1

it using a coil, a radio frequency coil, a little bit like a2

microwave oven, and the coil slowly moves upward. And so3

there's a part of the bar that is molten and recrystallizes at4

the bottom and is continuously -- more of it's molten at the5

top and it recrystallizes at the bottom.6

Q Dr. Horn, if I can interrupt, if it would be helpful to7

use a laser pointer and the chart.8

A Okay.9

Q I don't know if that helps or hurts, but anyway it's up10

on the screen.11

A Hmm. Well, first we need to get the laser pointer to12

work. Oh. Okay. All right. Got it.13

So this is the silicon bar, and this is the molten zone. 14

And horizontally here we see the coils that are melting it.15

Now, the problem this addresses is how to get this lower16

part of the zone of the bar, which is the solidified part, to17

remain at a constant diameter. And the adjustment, the18

feedback that's possible is by controlling the lower end of19

the bar using a ratchet mechanism -- excuse me, a pinion --20

rack-and-pinion mechanism driven by a motor. And so the21

purpose of the whole system for analyzing the video data is to22

provide feedback so that the bar will crystallize with the23

same width.24

Beyond the video camera, standard video camera, there are25

HORN - DIRECT00170

two circuit components for analyzing the data. There's this1

upper part here, the purpose of which is to determine where we2

are on the bar. And the way this works is that the molten3

section is brighter than the solid section and actually4

there's a gradient from one end of the molten section to the5

other.6

Q What do you mean by a gradient?7

A That is, it gets brighter towards one end so it starts8

rising -- it's a function of how much heat is applied.9

Q There's a change in brightness?10

A There's a change in brightness from one end to the other,11

and then there's a sudden drop of brightness at the place12

where it solidifies. So the purpose of the upper part of the13

circuits is to look for the place where that drop occurs. The14

purpose of the lower part of the circuit is to determine the15

diameter at just that point. And if the diameter is too16

small, then obviously you want to not pull it as fast as you17

have. If the diameter's too large, you start pulling it down18

more rapidly.19

Q Can you just -- because this is a little bit complicated. 20

Could you just focus first on where the scanning part of this21

is.22

A Okay. The scanning part -- oh. Excuse me. Okay. The23

scanning part is done by this video camera. There's a lens24

which produces an image in the video camera, there's an25

HORN - DIRECT00171

amplifier that produces an amplified analog video signal, and1

the analog video signal is then processed by this circuit and2

the circuit down here.3

Q When you say "processed," is "processed" a synonym for4

analyzed?5

A Yes. And in fact we'll see the analog here to the6

Lemelson specification components. Here's a -- what they call7

a limit amplifier. And the purpose of this is to convert the8

signal to two levels. Either it's below the brightness9

threshold level or above. That signal then controls a gate,10

and there's an oscillator down here indicated by the wiggly11

wave form. The gate then allows the oscillations to proceed12

to a counter, but only during the period that the gate is up. 13

So the pulses are counted here, which give us the width of the14

bar at a particular place. So there's full-frame scanning,15

but the final width result is based on the -- a particular16

scan line, and the particular scan line is picked out by this17

part of the circuit. And then there's the possibility of18

output from the circuit to an indicator 23, and there's the19

possibility of feedback down to the servo that's controlling20

the rate at which the bar is being pulled, in the terminology.21

So again, it has the elements of clipping, gating, making22

a measurement between two -- full-frame scanning, electron23

beam scanning, and all of those things.24

MR. JENNER: Now, Your Honor, the witness is25

HORN - DIRECT00172

prepared to go through a description of Automatix and EMR, but1

that testimony has also already come in through the other2

witnesses --3

THE COURT: Right.4

MR. JENNER: -- and he has applied it in the charts. 5

So again, what I would do at this point is to offer the charts6

that have been identified as the witness's opinions regarding7

the intervening rights aspect of this.8

THE COURT: Collectively under 3508?9

MR. JENNER: Yes, sir.10

THE COURT: Yeah. I'll receive --11

MR. JENNER: And the three charts that are just12

check-off charts that show which claims are applied against13

which intervening device.14

THE COURT: Oh. The check-off charts earlier. Yes. 15

I'm sorry.16

MR. JENNER: Those, as well.17

THE COURT: Yeah, and those, as well.18

MR. JENNER: That and 3508.19

THE COURT: All right.20

(Plaintiff's Exhibit 3508 admitted)21

MR. JENNER: Now, could I have a moment, Your Honor,22

just to consult with counsel about a note?23

THE COURT: Why don't we take --24

MR. JENNER: We're getting close to the end here.25

HORN - DIRECT00173

THE COURT: Yeah, let's take -- take 10 minutes and1

give you a chance to do that and make sure that you've got2

everything covered before we proceed further, then, because3

it's been a long session with this witness, and I'm sure Mr.4

Lisa will have some -- some time with him. All right.5

MR. JENNER: Thank you.6

(Court recessed at 3:04 p.m., until 3:18 p.m.)7

THE COURT: All right. Go ahead, Mr. Jenner.8

MR. JENNER: Your Honor, cocounsel reminds me that I9

should inform Your Honor that there will be testimony given by10

Mr. Allais regarding certain intervening rights asserted11

against two of the patents, the '918 patent and the '07312

patent that Cognex will rely on. And we saw no point in13

putting the same evidence in through this witness.14

THE COURT: All right. All right. 15

MR. JENNER: Just so that you're aware of that.16

THE COURT: Great.17

BY MR. JENNER:18

Q Now, Dr. Horn, during examination of Mr. Silver of Cognex19

there was some testimony, some examination, I should say,20

regarding an assertion or a belief that Mr. Silver supposedly21

had that you were biased against Mr. Lemelson. Have you heard22

about that?23

A Yes. I saw that in the transcript.24

Q Are you biased against Mr. Lemelson?25

HORN - DIRECT00174

A No.1

Q About when were you first contacted about possibly being2

an expert in this case?3

A The spring of 2001.4

Q As of the time that you were contacted in the spring of5

2001 were you then biased against Mr. Lemelson?6

A No.7

THE COURT: I think it revolved around either8

efforts or at least some overture to someone at MIT to9

disassociate from Lemelson or cease the -- a particular prize10

that was awarded. Are you aware of what that's about?11

THE WITNESS: Yes, vaguely, from the transcript.12

THE COURT: All right. Had you ever been solicited13

to provide input on that subject?14

THE WITNESS: No. I don't frequent those higher15

circles at the institution. We did hear about Lemelson16

sometime in the late '90s, and it was an occasional subject of17

conversation, lunchtime, with students and faculty members18

sitting around.19

But I was never approached about -- I was never20

approached by an outside agency such as Cognex to do anything21

at MIT to somehow hinder the association between Lemelson and22

MIT, and I never personally on my own approached let's say the23

president of the university or such to indicate something of24

that nature.25

HORN - DIRECT00175

THE COURT: How about -- do members of the faculty1

-- is there an opportunity through either faculty or anything2

else that would allow for the faculty at MIT to take a3

position one way or the other about such a matter?4

THE WITNESS: Well, I'd imagine that if I, you know,5

discussed this with a department chairman, that might have6

some influence on the dean and that might have some influence7

on someone else. But as a matter of fact I did not discuss it8

with a department chairman.9

THE COURT: All right. Okay.10

MR. JENNER: That's where I'm going, Your Honor.11

BY MR. JENNER:12

Q Let me just make sure I cover this ground. It was13

suggested that by -- that Mr. Silver had thought he might14

contact you about approaching people at MIT to disassociate15

MIT from Mr. Lemelson. Did Mr. Silver in fact ever approach16

you to do that?17

A No, he did not. And I was a little surprised at that18

question, because this came up in my deposition. I was asked19

about it, and plainly said no.20

Q All right. Did anybody else from Cognex approach you21

with a view toward having you somehow intervene with the22

president of MIT or anybody else connected with MIT so as to23

cause MIT to split itself apart from Mr. Lemelson? Did24

anybody approach you about that?25

HORN - DIRECT00176

A No, nobody approached me.1

Q Have you ever done that? Have you ever approached2

anybody at MIT for the purpose of trying to cause MIT to3

disassociate itself from Mr. Lemelson?4

A No, I have not.5

Q Apart from the Lemelson Prize and the discussions that6

you just mentioned over lunch with students and faculty and7

such, what, if anything, did you know about Mr. Lemelson when8

you were first contacted by our firm about this case?9

A Very little. I knew that there was some patent issue10

relating to machine vision.11

Q All right. Had you had some contact in the past12

regarding the subject matter of Mr. Lemelson and litigation13

involving his patents?14

A There was a contact from someone at General Motors15

Research in the early '90s, asking me essentially to find the16

early reports about the MIT Artificial Intelligence17

Laboratory, presumably as a -- as a part of a search for prior18

art. But it wasn't something I did as a paid consultant or19

something. He just asked as a favor to look through our old20

publications.21

Q Did you do that?22

A Yes.23

Q Did you become a consultant to General Motors in its24

litigation?25

HORN - DIRECT00177

A No. I was a consultant for General Motors many years1

before, and that's how the contact arose; I knew the people2

there. But I was certainly not paid for collecting -- in3

fact, they could have got them from anyone else at the lab.4

Q Just to be clear, when you were a consultant for General5

Motors many years before, did that have anything to do with6

Lemelson?7

A No, absolutely not.8

Q When you were approached by our firm did you immediately9

agree to serve as an expert for plaintiffs in this case?10

A No, I did not. I don't remember the exact sequence, but11

I made sure to review at least one of the patents before12

committing myself.13

Q At what point did you agree to serve as an expert?14

A Well, I read the patent and decided that there probably15

was a good reason for the cause that I was enlisted in, in16

that I didn't really see how this could be the basis of17

machine vision.18

MR. JENNER: All right, sir. Thank you.19

Your Honor, I have no further questions.20

THE COURT: All right. Thank you.21

Mr. Lisa.22

While Mr. Lisa's gathering his -- what patent was23

that you reviewed, just out of curiosity?24

THE WITNESS: Sorry? What -- 25

HORN - CROSS00178

THE COURT: Which patent did you review before1

you --2

THE WITNESS: The '029.3

THE COURT: The '029. Okay.4

I've got matters at 4:00, so we can only take up to5

that point. But that'll at least get you started. If there's6

an area, a discrete area that you feel you can --7

MR. LISA: We'll pick up right where we left off, I8

think, Your Honor.9

THE COURT: Okay. Fine. That makes a good deal of10

sense and keep my notes in order.11

CROSS-EXAMINATION12

BY MR. LISA:13

Q Now, sir, you just told the Judge that you were not14

biased against Mr. Lemelson; correct?15

A Yes.16

Q Okay. In fact, you had heard of the MIT association with17

Mr. Lemelson in the mid- to late 1990s; correct?18

A That's probably true.19

Q All right. And at that time, long before being contacted20

by Cognex --21

A I wasn't contacted by Cognex.22

Q That's what I just said. Long before being contacted by23

Cognex you had formed the opinion that the relationship24

between MIT and Mr. Lemelson was a bad relationship and that25

HORN - CROSS00179

you were not in favor of it; right?1

A Well, let me again clarify. First, I was not contacted2

by Cognex, I was --3

Q Sir, I just -- I asked a very simple question.4

THE COURT: No, but you did preface it with "before5

you were contacted by Cognex." His testimony was that he was6

contacted by Fish & Neave, not Cognex.7

MR. LISA: I thought I did preface it by saying,8

"Long before you were contacted by Cognex."9

THE COURT: Right. You did.10

MR. LISA: In the late --11

THE COURT: I think that was what he was having12

difficulty with -- 13

BY MR. LISA:14

Q Well, let's -- I'll state it again.15

THE COURT: -- because he -- it can't be long before16

he was contacted by Cognex if he was -- that's pregnant with17

the idea that he was sometime contacted by --18

MR. LISA: All right. I got it. Withdrawn. I got19

it. Withdrawn.20

BY MR. LISA:21

Q In the late 1990s, when you heard of the MIT relationship22

with Mr. Lemelson, you determined you weren't in favor of it23

at that time; right, sir?24

A I don't know about that.25

HORN - CROSS00180

Q Well, why don't we turn to your deposition, page 29, and1

I'll hand you -- we have Defendant's Trial Exhibit 1668.2

A Could you point me to a particular reference?3

Q Page 29.4

A Of the June 14th?5

Q That's correct. It's Exhibit 1668. That's your June6

14th, 2002, deposition. And specifically at page 29, line 9.7

"Did you ever become" -- "Question: Did you ever become8

involved in any effort to have MIT disassociate itself9

from Mr. Lemelson?10

"Answer: I did not involve myself in such an effort,11

though that's what I would have verbalized. I was not in12

favor of it.13

"Question: Why not?14

"Answer: Because from my understanding at the time15

Lemelson used the patent system in an unfair way which16

allowed him to extract license fees from people who had17

been using inventions without knowing that he had patent18

applications in process that dated far back, and I didn't19

think this was a fair way of using the patent system.20

"Question: You said, `my understanding at the time.' 21

What was the time that you were referring to?22

"Answer: It must have been the late 1990s."23

Were you asked those questions, sir, and did you give24

those answers?25

HORN - CROSS00181

A That's correct.1

Q So in fact, sir, in the late 1990s, when you heard of the2

MIT relationship with Mr. Lemelson, you decided you weren't in3

favor of it; right?4

A Well, it says what it says. I wasn't in favor of it. 5

And you're equating that with saying I have a bias.6

Q Well, let's go further. You actually stated that you had7

formed an understanding that Mr. -- that what Mr. Lemelson did8

was an unfair thing; right?9

A That's correct.10

Q All right. And you formed that opinion back in the late11

1990s; right?12

A Keeping in mind this was before I'd done anything more13

than talk with colleagues.14

Q That's right, sir. You had not looked at a patent yet,15

had you?16

A That's correct. So -- 17

Q You'd not looked at a file history yet, had you, sir?18

A That's correct.19

Q You had not looked at any of the legal standards applying20

to patents for claim construction; right?21

A Yes.22

Q You'd not looked at any infringement issues; correct?23

A Yes.24

Q You didn't know whether Mr. Lemelson had a patent that25

HORN - CROSS00182

issued in 1963; right?1

A That's probably true.2

Q You didn't know whether prominent members of the3

industry, such as Cognex or Automatix, were receiving4

infringement notices from Mr. Lemelson? You weren't aware of5

that; right?6

A I certainly didn't know that.7

Q All right. Yet at that time, unaware of any facts, you8

formed an opinion and an understanding that what Mr. Lemelson9

did was unfair and not proper; right?10

A Yes.11

Q Now, how many graduate students have you reviewed their12

theses of, or dissertations?13

A I've been advisor on 20 Ph.D.s and reader on 40, and --14

Q Would you approve your graduate students, sir, forming15

opinions and conclusions without doing investigations?16

A Keep in mind that these were informal conclusions sitting17

around a room having lunch with students, not influencing18

anything in the world and not based on a great deal of19

information.20

Q Well --21

A Obviously, when I later read the details, I would have22

formed an opinion based on that.23

Q All right. You completely forgot your predisposition;24

right?25

HORN - CROSS00183

A If I had found evidence to the contrary of the1

predisposition, I would.2

Q All right. Now, what you did back in the late 1990s was3

to express your dissatisfaction and your opposition to the4

Lemelson-MIT Prize Program with your colleagues in your group;5

right?6

A Students and such coming together for lunch.7

Q All right. And that would have included Professor8

Grimson; right?9

A That's possible. I didn't actually go to lunch very10

often in those days.11

Q But you expressed your dissatisfaction of the Lemelson-12

MIT Prize Program and to your associate in the AI group,13

Professor Grimson; right?14

A That's likely. I don't have a specific recollection.15

Q And that's the same Professor Grimson who you reviewed16

his Ph.D. thesis for; right?17

A Yes.18

Q All right. And you're certainly aware that Professor19

Grimson then was hired by Fish & Neave in the Ford and20

Motorola litigations; right?21

A Actually I only learned that when I was approached by22

Fish & Neave in 2001.23

Q All right. But you did learn that; right?24

A Yes.25

HORN - CROSS00184

Q In fact, Professor Grimson appeared briefly in this case1

for a while as an expert; right?2

A I believe in the beginning, yes.3

Q All right. And you've reviewed some of his expert4

declarations submitted to the Court on a summary judgment5

motion relating to your prepositioning issue; right?6

A That's correct.7

Q All right. And after the decision on that case, you8

replaced Professor Grimson on that issue, too; right?9

A I'm not sure that's a good characterization of what10

happened.11

Q Now, a number of your students are employed by Cognex,12

correct, your ex-students?13

A Well, probably. I know of at least two.14

Q You know of at least four that have been; right?15

A Well, I know of a couple more who were briefly employed16

by Cognex.17

Q All right. Well, Bill Silver is one that you -- was a18

student of yours; right?19

A Yes. Many, many years ago.20

Q All right. And you reviewed his Masters thesis in the21

1980 time period; right?22

A That's probably right.23

Q All right. And how about Marilyn Matz?24

A Well, she was a graduate student in our lab. She didn't25

HORN - CROSS00185

complete her thesis work.1

Q But she was a cofounder with Bill Silver at Cognex, as2

well; right?3

A That's what I understand.4

Q All right. And there were several other students,5

including David Michaels and Jean Pierre Schott [phonetic], of6

yours who have gone to Cognex, as well; right?7

A Who I believe are no longer there. But, yes.8

Q Are there any others you're aware of, of your students,9

that have been employed at Cognex?10

A I don't know of any, but I wouldn't be surprised if there11

were some.12

Q All right. Now, in addition to having decided that you13

didn't like what Mr. Lemelson did before looking at anything,14

there was also a time when the MIT relationship with Mr.15

Lemelson actually cost your AI group; right?16

A Sorry? I'm not aware of any cost to the AI group.17

Q Did there come a time that you're aware of that the AI18

group with Professor Grimson --19

Let me back up. Let me ask a question. What's your20

relationship to MIT AI group?21

A MIT has a dual hierarchy. There's a teaching hierarchy22

of departments, and there's a hierarchy of interdepartmental23

labs. So I am in the Electrical Engineering & Computer24

Science Department, and I'm also in the MIT AI Laboratory.25

HORN - CROSS00186

Q Okay. And what is Professor Grimson's position at the1

MIT AI group?2

A He's also in the MIT AI Laboratory.3

Q What do you actually do in the laboratory, sir? What's4

your role?5

A Research.6

Q All right. And as far as hierarchy in that lab, what's7

your relative position?8

A Well, we don't really have a structured hierarchy. There9

is a lab director who currently is Rodney Brooks.10

Q And do you report to anybody in that group?11

A I don't report to anybody, but if Rodney Brooks doesn't12

allocate space for my research activities, I have a problem.13

Q And how many people report to you?14

A Report? I'm not sure students would consider that term15

appropriate.16

Q How many people work with you or under you?17

A How many --18

Q Under your direction?19

A Well, I have an assistant I share with several other20

people. It's expensive to have permanent staff, so we21

actually don't generally have permanent staff.22

Q Okay. Are you able to give us a number, sir, roughly?23

A Me, personally, permanent staff? Zero.24

Q No, students that work with you, sir.25

HORN - CROSS00187

A Students who work with me, well, I cut that number when I1

went on sabbatical at Berkeley, but it's around six.2

Q Has it been any higher than that at any time?3

A Oh, it's varied widely from one to 20, I suppose.4

Q And that's at the AI lab?5

A I don't work only with students in the AI lab, often6

about half of the students would be from other laboratories.7

Q All right. Now, did there come a time when the MIT8

Museum and the AI lab asked Cognex to sponsor an exhibit? Are9

you aware of that?10

A I have no idea.11

Q None whatsoever?12

A That's correct.13

Q All right. And do you have any knowledge as to whether14

that request was turned down by Mr. Shillman because of the15

relationship that MIT had with Mr. Lemelson?16

MR. JENNER: Objection, I think the witness just17

said he had no idea of this.18

THE COURT: Sustained.19

BY MR. LISA:20

Q Let's look at Exhibit 144 and see if I can perhaps21

refresh your recollection. Now in May of 2000, sir, was22

Professor Grimson working with you or a colleague of yours at23

the AI lab?24

A He wasn't working with me, but he is in the AI lab.25

HORN - CROSS00188

Q All right. And of course you knew him at this time;1

right?2

A May I just be given a minute to read this?3

Q I'll ask just a few prefatory questions first.4

A Okay.5

Q You knew him at -- around May of 2000 you knew Professor6

Grimson; right?7

A Certainly.8

Q And you talked with him on occasion at that time; right?9

A At times.10

Q And in fact you talked to him around that time about11

Lemelson; right? On occasion?12

A I don't recollect that.13

Q You deny that, sir?14

A I'm not denying it. I have no recollection of it.15

Q All right. And do you know whether -- did Professor16

Grimson ever communicate to you his distress over hearing that17

MIT's relationship with Lemelson continues to cost the AI lab? 18

He never expressed that to you?19

A I've never heard him express that opinion to me.20

Q All right. And do you know whether -- did Professor21

Grimson ever pass on any views of Cognex employees, such as22

Bill Silver, of what they considered Mr. Lemelson's23

relationship with MIT to be?24

A No, he did not.25

HORN - CROSS00189

Q Never heard a word?1

A No.2

Q All right. Well, I'll ask you to read the Defendant's3

Trial Exhibit 144, which is an e-mail from Bill Silver, about4

the fourth paragraph down. It says, "Bill, Thanks." You can5

see right above it's an e-mail from Eric Grimson. Do you see6

that, sent Wednesday, May 10th, 2000?7

THE COURT: Well, if you just want to use it to8

refresh his recollection, I don't think -- I just read it9

while you were querying the witness, and it doesn't say10

anything about this witness. It's a communication between11

Grimson and Silver following up out of the traffic and12

includes Grimson's overture or request to Silver, "Do you mind13

if I passed you on to senior MIT people?"14

That would not really impeach this witness, because15

it does not indicate communication between Grimson and16

himself. Now, you can ask him if it refreshes his17

recollection; but we really shouldn't read it into the record,18

because it's not in evidence.19

Having read that, does that -- do you recall having20

read that any instance in which Eric Grimson passed along to21

you the sentiments of Bill Silver concerning Lemelson?22

THE WITNESS: No, he did not, Your Honor.23

THE COURT: All right.24

//25

HORN - CROSS00190

BY MR. LISA:1

Q Sir, do you have -- do you know if your views of Mr.2

Lemelson have ever been communicated to Cognex?3

A I don't think so.4

Q Do you know whether in the 1998 time period your dislike5

of Mr. Lemelson or the MIT association with Mr. Lemelson --6

A You're mischaracterizing my position.7

Q So you have no idea how Cognex could have formed such an8

opinion that you had of Mr. Lemelson or could have --9

A What was the --10

MR. JENNER: Objection. Indefinite. What opinion?11

BY MR. LISA: 12

Q Well, sir, you have --13

THE COURT: Well, I think if we go back -- and this14

is in evidence, I know. I don't remember the -- you're15

talking about the Silver e-mail --16

MR. LISA: Exhibit 141.17

THE COURT: -- in which he expressed his view that18

Dr. Horn and perhaps others, I don't remember all of the19

details, held certain views, felt the same way, were fellow20

travelers on this issue, that type of thing.21

MR. LISA: It's Defendant's Exhibit 141, Your Honor.22

THE COURT: 141, okay.23

MR. LISA: Right. And -- 24

THE COURT: And that's in evidence. I'll let you25

HORN - CROSS00191

show that to the witness --1

MR. LISA: Thank you.2

THE COURT: -- and you can ask him about it, if --3

you know, if that refreshes his recollection or --4

MR. LISA: Thank you, Your Honor.5

BY MR. LISA:6

Q Sir, have you ever seen this document before?7

A No. I've seen it referred to in the transcript of the8

proceedings here.9

Q Well, what I'd refer you to is the paragraph beginning10

"Bob." And it says,11

"Bob, many respected professor at MIT don't like Lemelson12

any better than we do. Two names that come to mind13

immediately are Horn and Grimson, and they could probably14

point us to many others. Should we involve these guys in15

getting MIT to stop dealing with Lemelson?"16

Do you see that?17

A Yes.18

Q All right. Sir, does that refresh your recollection that19

your views may have been expressed to Cognex, your views of20

Mr. Lemelson?21

A No, it doesn't. I've never seen this communication, and22

I didn't know about it.23

Q You have no idea how Cognex could have ever formed such a24

conclusion about your opinions regarding Mr. Lemelson?25

HORN - CROSS00192

A Well, specifically Bill Silver, whom I haven't1

communicated with more than a handful of times since he was a2

graduate student at MIT, I don't know how he formed this3

opinion.4

Q Yet you do agree that you had discussions with your5

colleagues at the AI lab in the late 1990s regarding your6

dislike of Mr. Lemelson's association with MIT; right?7

A Yes; as long as we don't exaggerate the importance. 8

We're talking about people sitting around the room at lunch9

and chatting.10

Q And who were those -- now is it in fact true, sir, that11

at that time you did not like what Mr. Lemelson did -- 12

A Oh, I think --13

Q -- his patents?14

A -- I think what I said in the deposition describes how I15

must have felt at that time.16

Q And is it also true, sir, that at that time you were not17

in favor of the MIT relationship with Mr. Lemelson? By that18

time I mean the late 1990s.19

A I'm not even sure I was very much aware of it, but that's20

a possibility.21

Q Well, your testimony that we read before said -- your22

statement was, "I was not in favor of it at that time." Do23

you recall that?24

A Yes.25

HORN - CROSS00193

Q All right. So I'm asking, is that correct, sir, at that1

time you were not in favor of the MIT-Lemelson relationship?2

A Yes.3

Q And it's your testimony that, notwithstanding your4

opinion of what Mr. Lemelson did and your dislike of the MIT-5

Lemelson relationship, you're not biased in this case?6

A I'm not biased.7

Q Now, it is true that you are not an expert on patents;8

right?9

A That's correct.10

Q All right. And you're not an expert on patent11

prosecution; right?12

A That's also true.13

Q And you're not an expert on what goes on in the Patent14

Office; right?15

A That's right.16

Q All right. And this is the first case in which you've17

ever offered or formed opinions on claim construction, right,18

as an expert?19

A That's correct.20

Q It's a big one; right? Lots of claims?21

A I understand it's big.22

Q Now, you remember that you were deposed in June of this23

year, is that what that document states; right?24

A Yes, that's correct.25

HORN - CROSS00194

Q And prior to that time you had prepared -- actually,1

let's back up. You'd reviewed all the patents by then; right?2

A Yes.3

Q You had reviewed the file histories by then; right?4

A Yes.5

Q You were here I believe it was yesterday when Mr. Fey6

stacked the file histories over here. Do you recall that?7

A Yes, I saw that.8

Q And did you review any of the prior art that was cited in9

those file histories?10

A Any of the prior art in the file histories? I reviewed11

some of it.12

Q And how did you select what to review and what not to13

review?14

A Well, obviously if there's part of the file history that15

seemed relevant to an opinion, for example, on what a claim16

means then that might be something to look at. Whereas some17

other aspect of the file history wouldn't be.18

Q So you made a selection process of what appeared to be19

relevant to the claims at issue? Is that a fair thing to say?20

A Well, that's an example of how I might have selected a21

particular piece of prior art.22

Q How did you exclude art, then, sir, that was cited?23

A Well, the art that was not selected is the art that was24

excluded.25

HORN - CROSS00195

Q On what basis, I'm asking, did you decide not to look at1

prior art that was cited in the Patent Office?2

THE COURT: I understood the witness to say that he3

selected prior art to review that in his opinion was helpful4

or necessary to an understanding and that which he did not5

choose to select was by definition excluded because he6

selected what he selected, what he didn't select he didn't. 7

Am I missing -- 8

THE WITNESS: That's correct.9

THE COURT: Okay.10

BY MR. LISA:11

Q And you were -- you were able to do that without much12

difficulty?13

A Well, I wouldn't say without much difficulty.14

Q How long did it take you to make that selection process15

on the prior art, sir?16

A I cannot tell you in terms of hours or days.17

Q Did you review Dr. Williamson's claim construction that18

had been provided pursuant to the Court's directions earlier19

in the case?20

A Yes.21

Q And did you review the claim support charts that had been22

provided by Dr. Williamson pursuant to the Court's directions23

earlier in the case?24

A Yes.25

HORN - CROSS00196

Q And then did you review or spend time looking at the1

Cognex systems that were at issue in the case?2

A Yes.3

Q And then you prepared expert reports; is that right?4

A Yes.5

Q And if I understand correctly, you had an expert report6

that was addressed to invalidity and unenforceability;7

correct?8

A Yes.9

Q And that expert report applied some 40 references against10

the 80 claims at suit; is that right?11

A That's right.12

Q And if I remember correctly, those expert reports also13

apply four volumes of double patenting analysis. Do you14

remember that?15

A Yes.16

Q And do you recall how big the stack was of written17

material relating to all those expert reports that you wrote,18

the first ones on invalidity and unenforceability?19

A You mean the material I looked at, or --20

Q No, the material you wrote, sir.21

A Oh. Well, it's quite a lot.22

Q Yeah, it's --23

A And -- yeah.24

Q This look about right to you?25

HORN - CROSS00197

A I'll take your word for it.1

THE COURT: You're pointing to the three binders and2

then the other stack or just the three?3

MR. LISA: The other stack is plaintiff's stack,4

sir. I'm not --5

THE COURT: Oh, all right. The three binders of6

material then?7

COURT RECORDER: You walked away from the8

microphone.9

(Off-record colloquy)10

BY MR. LISA: 11

Q And there were literally several hundred claim charts12

that you prepared with the assistance of counsel relating to13

issues of prior art and validity and invalidity based on14

double patenting; correct?15

A That's correct.16

Q Then you also reviewed the patents for the issue of17

inoperability to determine what areas of the patents worked in18

your opinion and didn't work; right?19

A Yes.20

Q And you prepared a substantial written report on that, as21

well; correct?22

A That's correct.23

Q All right. And at the same time that you submitted those24

expert reports, Lemelson's experts submitted expert reports on25

HORN - CROSS00198

claim construction and infringement. Do you recall that?1

A Well, we all know how much paper went back and forth.2

Q Well, do you recall Lemelson's experts, particularly Dr.3

Williamson and Dr. Hunt, submitting expert reports on claim4

construction and infringement?5

A Yes.6

Q And specifically Dr. Hunt provided claim infringement7

charts that were separated for the Cognex 3000, 4000, and 50008

products; right? And the 8000 product. Do you recall that?9

A No, I don't recall that. I'll have to take your word for10

it.11

Q You don't recall there being separate infringement12

analyses by Dr. Hunt on the In-Sight products, the Isys13

products, the Web inspection products, and the 3-, 4-, 5-, and14

8000 products?15

A It sounds familiar. But, as you point out yourself, the16

amount of material is substantial, and there's been quite a17

time lapse.18

Q And you remember that volume from Dr. Williamson and Dr.19

Hunt was large as well; correct?20

A Yeah. I remember Dr. Williamson's report being large.21

THE COURT: With regard to time lapse, refresh my22

recollection. When was the -- when were you first approached23

by the law firm of Fish & Neave to consider becoming involved24

in this particular case?25

HORN - CROSS00199

THE WITNESS: Your Honor, it was spring of 2001,1

either April or May, 'round about there.2

THE COURT: All right. And when did you actually3

accept and then begin your analysis, your review?4

THE WITNESS: About a week or two after that,5

approximately.6

THE COURT: So we're still talking about at least7

the summer of 2001, over a year and a half ago, about, when8

you were --9

THE WITNESS: Yes, I started --10

THE COURT: -- engaged in the process?11

THE WITNESS: Sorry, Your Honor. Yes, I started12

before the summer.13

THE COURT: All right.14

BY MR. LISA:15

Q And then after reviewing Lemelson's expert reports you16

studied those and prepared your own rebuttal reports; correct?17

A That's correct.18

Q And that was a rebuttal report addressed to claim19

construction; correct?20

A Yes.21

Q And to Dr. Hunt's infringement analyses; correct?22

A Yes.23

Q All right. Can you tell the Court how much time you24

spent doing all that work, sir?25

HORN - CROSS00200

A I haven't got an accurate count but it's approximately1

500 hours.2

Q Sir, at the time you finished those report you'd spent3

220 hours, between 200 and 250, and you estimated 220 to 2304

at your deposition, to prepare the expert reports, review5

Lemelson's expert reports, and prepare your rebuttal reports;6

correct, sir?7

A Well, the discrepancy is because I didn't get the time8

period you're talking about.9

Q Am I correct, sir, that by the time you were deposed in10

June, which was after all those reports were filed, you told11

Mr. Hosier that it was 220 to 230 hours; right?12

A Well, we went around estimating the number, and it ended13

up somewhere around about there, because I didn't have14

accurate records to consult at the time.15

Q Well, you estimated 200 to 250 and then by dividing your16

billings by your hourly rate you got to 220 to 230; correct?17

A I don't recollect, but I can't doubt -- I don't doubt18

you.19

Q Well, let's look at your deposition, then. Do you agree20

that -- do you recall this, sir, or do you want me to --21

A Well, I said I don't doubt you. I mean, you wouldn't --22

Q All right.23

A -- quote the number if it wasn't there.24

Q All right. Now, how many Cognex -- how much time did you25

HORN - CROSS00201

spend looking at Cognex systems in preparing your reports1

before you were deposed in June?2

A Are you saying physical systems or --3

Q Yes, sir.4

A -- descriptions of systems?5

Q No. Looking physically at an operating Cognex system.6

A Several hours. I can't tell you exactly.7

Q Well, back -- what you said in your deposition, it was8

roughly a half hour that you viewed an operating demo at9

Cognex at one meeting with Mr. Silver. Do you recall that?10

A I don't remember the details, I saw the demo we have over11

here and I saw the barbecue bottle demo and possibly something12

else.13

Q All right. And you said at your deposition that that was14

about a half hour right, sir?15

A I'm surprised, but if that's what I said. I mean, the16

demonstration doesn't take that long; right?17

Q Well, let's look at page 61 of your deposition, sir.18

THE COURT: The June volume?19

MR. LISA: Yes, Exhibit 1668.20

BY MR. LISA:21

Q Page 61, line 19.22

"Question: The only time you recall specifically seeing23

a Cognex product in operation was during this half-hour24

demonstration at Cognex sometime last year; correct?25

HORN - CROSS00202

"Answer: Yes." 1

Were you asked that question, sir, did you give that2

answer?3

A Yes.4

Q Thank you. Now, in Dr. Hunt's infringement analysis he5

provided explanations of how he understood the customers of6

Cognex to actually use the Cognex systems. Do you recall7

that?8

A yes.9

Q And those were in sections of Dr. Hunt's expert report10

relating to how the third parties and end users actually11

operated the Cognex systems; right?12

A I'm not sure about that.13

Q You don't recall reading that?14

A Well, no, I don't specifically recall at the moment.15

Q Okay. What you do recall, though, is that you didn't16

undertake to look at any end-user or third-party use of a17

Cognex system prior to forming your opinions in this case;18

correct, sir?19

A I didn't visit any third-party users. Did Dr. Hunt?20

Q Sir, I'm asking you the questions right now. You can ask21

Dr. Hunt his questions later.22

A Excuse me.23

Q All right. Now, sir, you haven't provided any response24

at all to the infringement contentions of Lemelson should the25

HORN - CROSS00203

Court accept Dr. Williamson's claim construction; correct?1

A I believe that's correct.2

Q So that we're clear --3

MR. JENNER: Objection, Your Honor, this is a --4

this really calls for to some extent a legal conclusion. 5

There is a noninfringement position that he has provided.6

MR. LISA: I --7

MR. JENNER: There may be a misunderstanding here in8

terms of legal jargon.9

MR. LISA: Your Honor, I heard on direct that his10

noninfringement position was based on his claim construction. 11

I didn't hear one word over two and a half days about whether12

or not Cognex products don't infringe if you accept Mr. --13

THE COURT: All right. Well, the witness's answer14

will stand. He's already -- he's already given it. You all15

could argue what -- in fact, this would probably be a good16

point at which to break. I see everybody's here on the 4:0017

o'clock matter.18

So, we'll be in recess until 8:30 Monday morning. 19

And again, except for the brief matters that I've got now in20

some criminal cases, everything else will be fine. You can21

take what you need but otherwise everything else can remain,22

and the court'll be locked up. 23

All right. Have a good weekend.24

MR. JENNER: Thank you, Your Honor.25

00204

MR. LISA: Thank you, Your Honor.1

MR. McCABE: Oh, Your Honor.2

THE COURT: Yes.3

MR. McCABE: Could we take just a minute for a4

housekeeping matter?5

THE COURT: Sure.6

MR. McCABE: We've been trying to schedule the7

deposition of Mr. Witherspoon, who is the other side's patent8

law expert. We originally proposed it for Thanksgiving week. 9

We were told that that wasn't possible. We've been trying to10

schedule it for next week when we have time off.11

THE COURT: Yeah.12

MR. McCABE: I can do it Thursday, I can do it13

Friday afternoon, I can do it Saturday, and I can do it14

Sunday. I am now told that the only time the man is available15

or the man and counsel are available is Friday morning, the16

time when I have a meeting which has been scheduled with three17

other law firms and two clients.18

THE COURT: All right.19

MR. McCABE: And I don't think that's fair or right.20

THE COURT: All right.21

MR. HOSIER: Well, it's -- the problem is -- as I've22

explained to counsel, we have likewise a problem. Mr. Hoffman23

has a four-year-old daughter with a very special birthday24

situation. He has to leave in the afternoon. He can do it in25

00205

the morning. We can do it Friday morning. We can't get the1

witness in order to --2

THE COURT: Who's going to be involved in the3

deposition?4

MR. HOSIER: Mr. Hoffman and me.5

THE COURT: All right.6

MR. HOSIER: And then --7

THE COURT: What about Tuesday morning? Because8

we're not going to be in court Tuesday morning.9

MR. HOSIER: Well, we can't -- we don't have the10

witness available.11

THE COURT: Where's he?12

MR. HOSIER: He's in Washington, D.C. --13

THE COURT: And when was he --14

MR. HOSIER: -- and he's got commitments and we15

haven't even talked --16

THE COURT: Well, was he going to be coming out17

here, or were you going to D.C.?18

MR. HOSIER: No, he's -- we're bringing him for19

their convenience --20

THE COURT: Okay.21

MR. HOSIER: -- physically here, well in advance of22

the testimony. And as I understand it there's a telephone23

conference with some clients that doesn't want to interrupt24

that --25

00206

THE COURT: All right.1

MR. McCABE: Your Honor, that's not accurate at all. 2

It's with three -- 3

THE COURT: Well, what about -- what about -- and he4

can't be here -- when is the man coming in to Las Vegas, then,5

from -- 6

MR. HOSIER: I'm not sure. I think it's Wednesday7

or so. But we've got to spend some time with him in view of8

everything that's gone on in the case.9

THE COURT: Right.10

MR. HOSIER: Our first available time is Friday11

morning, and Mr. Hoffman has to leave Friday afternoon and12

also has a couple of other things on Saturday as well as13

his --14

THE COURT: Right.15

MR. HOSIER: -- daughter's birthday.16

THE COURT: Okay.17

MR. HOSIER: I'm then handling Mr. Niro's deposition18

Saturday afternoon. So we -- and I'm preparing -- he's coming19

in Friday night, and I'm going to work with him, you know,20

bring him up to speed Saturday morning and cutting it down to21

an absolute bone-bare threshold.22

THE COURT: And this matter you've got on Friday23

morning is -- does not relate to this case. It's -- 24

MR. McCABE: It does not --25

00207

MR. HOSIER: No.1

MR. McCABE: -- Your Honor. This is a lawsuit which2

I have basically put on hold while I'm here. It involves3

three defendants. It's a meeting which was set up for my4

convenience because we don't have court on Friday. It's been5

arranged with counsel from three different law firms who are6

meeting to talk to me and at least two of the clients, and7

they kind of expect me to be there. I have told Mr. Hosier8

this going back to when we tried to arrange this earlier in9

the week. We were offered Witherspoon on Sunday. That10

disappeared. We were offered Witherspoon Saturday afternoon. 11

That disappeared. We were offered Witherspoon on Thursday. 12

That disappeared. Your Honor, it's incredible to me that --13

MR. HOSIER: All they have --14

MR. McCABE: -- in the three hours I need, which Mr.15

Hosier knows about, they -- that's the only three hours the16

man's not available.17

MR. HOSIER: That's -- and -- that's a18

mischaracterization, and we've been trying to work out this19

time as best we could. And, frankly, it's the only time that20

we can physically fit in. I don't see why a meeting with21

another client on another matter that isn't compelled by22

people in the midst of litigation, a trial and the pressure23

that we have here, can't go to Friday afternoon. What in the24

world's wrong with Friday afternoon with these people?25

00208

MR. McCABE: Your Honor, the answer to that is easy,1

and Mr. Hosier knows it.2

MR. HOSIER: No, he doesn't.3

MR. McCABE: This is a telephone conference in which4

I'm going to participate, set up for me --5

MR. HOSIER: That's the problem.6

MR. McCABE: -- with people on the East Coast.7

THE COURT: Okay.8

MR. McCABE: And so what's being suggested here is9

that they hang around till Friday night.10

THE COURT: Friday night, yeah. Well, you know,11

it's -- at the same time I'm not going to Scotch Mr. Hoffman's12

situation. He has to travel, as well. So that means it's not13

going to happen on Friday, doesn't it? And that means14

probably there's no need to bring the man out.15

MR. HOSIER: The difficulty is most of our case is16

going to -- the reason initially --17

THE COURT: We'll still be in this case, in18

plaintiff's case, and we only have two and a half days of19

trial next week and I don't know how long Mr. Lisa's going --20

MR. HOSIER: No, no. Sunday is the -- is a week21

from now. We're not talking this Sunday.22

THE COURT: Right. No, I understand, you're talking23

about -- I'm looking at the calendar. You're talking about24

the 13th, 14th, and 15th, right in that time frame.25

00209

MR. HOSIER: Right. The big problem is then we1

start the 16th with our case and he --2

THE COURT: The 16th you may be starting your case,3

may not quite be to that point, but --4

MR. HOSIER: The point is that he's very likely to5

be going on that week, and we're going to be in trial all that6

week, all day.7

THE COURT: Well, I'll take a break during that week8

to allow you to get the deposition in. What I'll do is during9

that week I'll simply take a break.10

MR. HOSIER: Okay.11

THE COURT: I may already have, let's take a look. 12

Donna, on Tuesday the 17th and Wednesday the 18th we're only13

in court from 1:00 to 4:00 and 1:00 to 4:00. According to14

that schedule, we've got two mornings there.15

MR. HOSIER: Well, and they've agreed that it's16

about a half day. I guess we could --17

MR. McCABE: Yeah, Your Honor, I --18

MR. HOSIER: -- try and work that in.19

THE COURT: If you have -- and if you need to, I'll20

take the afternoon off on one of those days so you can get21

that done.22

MR. HOSIER: Okay. That's fine.23

THE COURT: So on the 17th or the 18th. You visit 24

-- that way you don't have to bring the guy in --25

00210

MR. HOSIER: Right. Thanks, Your Honor.1

THE COURT: -- next week, late. You can bring him2

in Sunday or Monday or whatever, get him ready, figure it out,3

talk about it, and if you can't do it on one of those mornings4

I'll take one of those afternoons off.5

MR. HOSIER: That's fine.6

THE COURT: God knows we got -- I got plenty else to7

do and --8

MR. HOFFMAN: Your Honor, I've committed -- to work9

with him on this. And, by the way, I do appreciate your10

understanding of my situation.11

MR. HOSIER: And there's just one problem we have,12

is we have also a summary judgment motion hearing in front of13

Judge Holland in Phoenix.14

THE COURT: On which date?15

MR. HOFFMAN: The 19th, it's a Thursday afternoon.16

MR. HOSIER: The 19th, which is -- we were kind of17

counting on that day to --18

THE COURT: Thursday the 19th?19

MR. HOSIER: As long as we're talking about20

problems.21

THE COURT: Well, and that's in Phoenix Thursday22

afternoon, huh?23

MR. HOFFMAN: And, Your Honor, we asked Judge24

Holland if there was any way to --25

00211

THE COURT: Are all of you going down for that, is1

that -- 2

MR. HOSIER: No, no, no, no. We -- we're going to3

see what we can do about that. But the problem is that we're4

getting pretty well squeezed. I was hoping to be at that5

hearing. It may not be possible for me to be at that hearing,6

because I may be putting a witness on.7

THE COURT: Okay. Well, somebody I'm sure can cover8

you on the summary -- I assume, on the summary judgment.9

MR. HOSIER: Yeah, we've got a pretrial conference,10

oral argument.11

THE COURT: What about on behalf of -- are you12

involved in that?13

MR. JENNER: We're not in that -- we're not in that14

case.15

THE COURT: Oh, okay. Well, it's not an issue. 16

Okay. It's yours. Well, you know --17

MR. HOSIER: We've got a little bit of a crunch, but18

that's part of the --19

THE COURT: Yeah. Well, let's take care of the20

problem on the witness in this case right now, and either the21

17th or the 18th in the morning or in the afternoon.22

MR. HOSIER: Well, the 17th -- what about the 17th? 23

What day of the week is that?24

THE COURT: Well, you all talk about it and look at25

00212

your schedule. Okay?1

(Court recessed at 4:04 p.m. until Monday,2

December 9, 2002 at 8:30 a.m.)3

* * * * *4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

00213

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

BERTHOLD K. HORN, Ph.D.Direct Examination (Continued) by Mr. Jenner 9Cross-Examination by Mr. Lisa

* * *

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

3414 Index to Dr. Horn's chart 323467 Dr. Horn's Non-infringement Conclusions3506A-E Comparisons of Prior Art Patents to Lemelson's

Claim Construction3508 Charts and Opinions re Intervening Rights

* * *

00214

CERTIFICATION

I (WE) CERTIFY THAT THE FOREGOING IS A CORRECT TRANSCRIPT FROMTHE ELECTRONIC SOUND RECORDING OF THE PROCEEDINGS IN THEABOVE-ENTITLED MATTER.

NORTHWEST TRANSCRIPTS, INC.NEVADA DIVISIONP.O. BOX 35257

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GAYLE M. LUTZ FEDERALLY CERTIFIED MANAGER/OWNER

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D. Lohmuller/L. Lizar/F. Hoyt/K. McCrea 12/06/02 TRANSCRIBER DATE