001

United States District CourtDistrict of NevadaLas Vegas, Nevada

SYMBOL TECHNOLOGIES, INC., .et al., . Docket No. CV-S-01-701-PMP(RJJ) Plaintiffs . CV-S-01-702-PMP(RJJ) . CV-S-01-703-PMP(RJJ)

vs. . .LEMELSON MEDICAL, EDUCATION .& RESEARCH FOUNDATION, .LIMITED PARTNERSHIP . . Defendant . Las Vegas, Nevada . December 10, 2002 . . . . . . . . . . . . . . . 1:11 p.m.And related cases and parties

COURT TRIAL - DAY 12

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

COURT RECORDER: TRANSCRIPTION BY:

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

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

Proceedings recorded by electronic sound recording, transcript

002

produced by transcription service.APPEARANCES:

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

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

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

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

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

003

PROCEEDINGS BEGIN AT 1:11 P.M.1

THE COURT: Have a seat. That's all right, folks,2

have a seat.3

All right. We can have Dr. Horn come on back up to4

the witness stand. 5

Ms. Curtin?6

MS. CURTIN: Good afternoon, Your Honor.7

THE COURT: Good afternoon.8

MS. CURTIN: One matter regarding the exhibit list,9

if we might, before we get started?10

THE COURT: Yeah.11

MS. CURTIN: Friday Your Honor asked the parties to12

confer each evening and see if we could come up with an agreed13

list of what had come in during the day, as --14

THE COURT: Right.15

MS. CURTIN: -- I understood it. And we did that16

over the weekend and that worked very well. I sent a list17

last night of what from my notes appear to have gone in, and18

in response, I got a letter back raising objections to the19

exhibits that had not been raised during the day during the20

testimony, and I will give Your Honor a copy of the e-mail. 21

It was not my understanding that this was intended to be an22

opportunity to raise new objections, but simply a ministerial23

matter of coming up with an agree-upon list of what had24

happened under the rules as the Judge -- as you have set them25

004

up during the day. And, mostly, I guess what we're asking for1

is a little clarification.2

THE COURT: All right. Well, maybe -- maybe I3

haven't been clear in that regard. The -- certainly if an4

exhibit, and I think we've had a variety of objections to some5

of the exhibits that were placed before witnesses, have dealt6

with those, reserved on some, granted up or down others, and7

as to the remaining, the binders of exhibits, copies of8

patents, et cetera, my assumption has been that the parties9

were in agreement that they would come in, it was just a10

question of which ones were actually coming in. 11

But what is the nature of the -- what's the12

objection? Let me see the letter, Donna.13

MS. CURTIN: I think Mr. Serra's letter sets it out. 14

What happened, Your Honor, was I sent an e-mail saying I show15

some exhibits that came in, which ones -- which one -- there16

was one you excluded, and I noted that, and which ones were17

discussed but fall under Mr. Lisa's standing objection. What18

I got back was a list of objections that had not been made19

during the day.20

And I do wish to clarify, we're not necessarily21

arguing over each of these. For instance, 196 we agree it22

should not have been on my list and I apologize for that.23

THE COURT: Or one was not used?24

MS. CURTIN: And the not-used one we also are not25

005

insisting needs to go in, but the rest of these are all1

objections that were not made during the day, and what we need2

to know is, you know, is this an opportunity for a mulligan or3

do we still need to stand up and make our objections during4

the day?5

THE COURT: Okay. Mr. Jenner?6

MR. JENNER: Well, Your Honor, I guess the best7

thing to do is to go through what some of these are. 8

First of all, the first -- 196, I understand has9

been withdrawn?10

MS. CURTIN: Yes.11

MR. JENNER: Okay. So we have 1021 and 1930. First12

of all, I should say that, so Your Honor understands, this is13

not a situation where lists was provided, these are cross-14

examination exhibits, we were not given a list in advance,15

there's no binder in advance, so certainly we could not have16

objected Friday morning. We hadn't seen them as of that -- of17

that.18

As far as the exhibits are concerned, the first two19

is an article that was from the Design News.20

THE COURT: Yeah, I recall that.21

MR. JENNER: That was used with the witness, there22

is no objection to it being used. It was never offered in23

evidence. If it's offered in evidence, it's objectionable as24

hearsay, it doesn't meet -- certainly doesn't meet the learned25

006

treatise exception. 1

The same thing with this book. The book was2

referred to, and it's not objectionable to refer to it, no3

offer of the book was made, the book can't come in because4

it's hearsay and it's not a learned treatise. So, that's the5

reason why no objections were made. These were never offered.6

As far as the other exhibits are concerned, in their7

next row, 1125B, 1127A, and 1146A, I have now been advised8

that one of those three is an excerpt from the 1956 file9

history, and I think the 1956 file history is in. So, we10

would not have an objection to that excerpt if I can figure11

out which one it is.12

The other two are from file histories that have not13

been offered, and we have a completeness objection to that. 14

If the complete file histories are provided, I would think we15

probably won't object to the excerpts for whatever purpose16

they're being used as excerpts as long as the complete files17

are in. And the reason for that is because if Your Honor18

looks at those exhibits, they are pages from original patent19

applications which, in fact, were stricken from the20

application. We think the whole application needs to be made21

available so that the fact that the material that's being22

referred to was stricken could be put in context.23

THE COURT: Well, let me -- let me hear from both of24

you as to how best to approach this in the future. We can25

007

come back and deal with these particular exhibits1

individually.2

During the examination of each witness that's3

offered by counsel, you've had binders of exhibits that for4

the most part I don't think anybody has had an objection to,5

and on cross-examination, in some instances, similarly binders6

of materials, occasionally something else that pops up based7

upon what a witness has said on direct examination or in8

response to earlier questions on cross that maybe had not been9

identified as something the party intended to offer because10

they didn't realize they were going to be using it.11

I wanted to avoid, if possible, and maybe it's not,12

but I wanted to avoid the rote situation of admitting each13

document as we go along; it's very time consuming. We can do14

it and I'm prepared to. Probably in a sense it would be15

easier for my clerk 'cause then she would know what has come16

in and that would avoid this problem in the future. I was17

just looking for some way to try and expedite the flow of the18

case, which I think is sensible in a case like this, but --19

and I fear the approach we would take if we were in front of a20

jury, we'd have to do this, for example, is going to protract21

significantly the trial proceedings, but --22

MR. JENNER: And the problem comes up in this23

particular context where we are not given advance notice of24

the exhibits. I don't fault Mr. Lisa, I mean, there's no --25

008

'cause he's not obligated to give us advance notice of what1

he's going to use on cross. It's a simple fact that he2

didn't, and therefore there was no prior opportunity in this3

instance to know what the exhibits were to take any position4

with respect to them, and there was no offer of them, so the5

occasion really never arose until Friday night, or basically6

after the conclusion of the day to deal with it.7

THE COURT: Right. Well, I think there was probably8

no formal offer because there was an expectation based on what9

we've been doing that --10

MS. CURTIN: No formal offer was necessary, Your11

Honor --12

THE COURT: -- was necessary.13

MS. CURTIN: -- and then if any objection was going14

to be made, it need to be made -- needed to be made at the15

time --16

THE COURT: Yeah.17

MS. CURTIN: -- that the exhibit --18

THE COURT: Well, let's --19

MS. CURTIN: -- was shown to the witness.20

MR. JENNER: I don't know how they would have done21

that.22

THE COURT: -- let's do this then, it's going to be23

hard to otherwise regulate it. I suppose for purposes of both24

offer by the party propounding the witness and crossing the25

009

witness, we better go back to the system of marking and1

identifying and laying the foundation and offering each2

exhibit, and we'll just have to do that an exhibit at a time3

until -- if a party is prepared to stipulate, if there's no4

objection to it, then that will move it quickly, but if there5

is -- 6

MR. CHERNY: May I make a suggestion, Your Honor?7

THE COURT: Yeah.8

MR. CHERNY: I think one of the distinctions that9

Mr. Jenner brought up is if we have a specific objection --10

THE RECORDER: Excuse me, Mr. Cherny --11

MR. CHERNY: I'm sorry. 12

THE RECORDER: -- would you --13

MR. CHERNY: If we have a specific objection to the14

use of an exhibit with a witness on cross, we make it at the15

time. And after the things are used, the exhibits are used16

during the night, Ms. Curtin or whoever sends us a list and17

we'll tell them and that will be the equivalent of the offer.18

Let's say, okay, we've used these things, you didn't19

have any objection to us using these exhibits, do you have any20

objection to us moving them into evidence? At that point21

we'll say we agree to 1, 2, 3, 4, 5, and --22

THE COURT: Well, no, no, let's -- let's move 'em in23

before they're used or in conjunction with using them. I24

think that will eliminate any confusion whether we're talking25

HORN - CROSS0010

about something that is a learned treatise or not or something1

that is hearsay or not, and we'll just have to -- I think you2

can pretty well assume, and I assume in most cases, we're3

talking about things that aren't going to be objected --4

copies of patents and so forth. I just can't conceive of 5

what --6

MR. CHERNY: The bulk of things are not going to be7

objected.8

THE COURT: Yeah.9

MR. CHERNY: I mean, the most things, I assume, on10

their side and our side are not going to be objected, but as11

Mr. Jenner said, when you're dealing with a situation on cross12

and we don't object to the use of it with a witness but we may13

object to it being offered in evidence and there's no specific14

offer, there's no way for us to jump up and say we object. If15

there's been --16

THE COURT: To something that hasn't been offered. 17

Right. I understand. I understand.18

MR. JENNER: Did Your Honor want to proceed with a19

proffer as well where there are exhibits books? Because where20

there are exhibit books based on lists if we get them the day21

before, we have an opportunity to get back to the other side22

and say --23

THE COURT: I think on those the best approach24

initially might be to determine whether the parties have got25

HORN - CROSS0011

objections to any of them that are going to be offered, and1

then to the extent you do, we can address those, but for the2

most part, I expect there won't be. And let's just take that3

approach. So, I'll come back later on and unravel the4

situation as to these. 5

I want to get this witness moving forward on further6

cross-examination.7

Yeah, you can have that.8

THE CLERK: I'll just put the ones that are in9

contention that you've --10

THE COURT: Just they're not yet in until we have a11

chance to rule on them. Okay. 12

All right. Go ahead, Mr. Lisa.13

MR. LISA: Thank you, Your Honor.14

DR. BERTHOLD HORN, PLAINTIFF'S WITNESS, RESUMES THE STAND15

CROSS-EXAMINATION (Continued)16

BY MR. LISA: 17

Q Dr. Horn, could you tell me, please, whether you18

discussed with counsel overnight the substance of your19

testimony yesterday?20

A Yes, we talked. We went over the material you provided21

yesterday. Since I hadn't looked at those prior art22

references for a while I had to go through them again, and23

also the prosecution histories that you presented, I wanted to24

read other parts of them since you've selected particular25

HORN - CROSS0012

aspects of them.1

Q About how long did you meet with counsel last night?2

A I didn't keep track, but maybe two hours.3

Q How about this morning?4

A Maybe another couple of hours.5

MR. LISA: Your Honor, I thought we had a admonition6

that in the middle of cross-examinations we weren't going to7

get witnesses hoodwinked, and now in the middle of a cross-8

examination this witness has had four hours of extensive9

consultation with counsel, which to me seems to be entirely10

inappropriate.11

MR. JENNER: May I respond, Your Honor?12

THE COURT: Yes.13

MR. JENNER: First of all, this was brought up in14

the context of it being unfair when exhibit books were15

provided, that counsel could take the exhibit book and go over16

the exhibit book, the exhibits that were going to be used with17

the witness in order, basically, to prepare for what is to18

come. There is no exhibit book in this case, we have no idea19

what exhibits he's going to use, and as the witness says, the20

only thing that was discussed is exhibits that have already21

been used.22

Number two, I think what Your Honor said is that23

even under the circumstances where a witness book is provided,24

counsel can talk to the witness, and other counsel is free to25

HORN - CROSS0013

ask the witness what they discussed.1

THE COURT: Yeah. I think that that clearly was2

what I said. We were -- at the time we were dealing with it I3

think it was in the context of a percipient witness as opposed4

to an expert, but I'll let you query Dr. Horn as to the areas5

of discussion, what was reviewed and what was said regarding6

that.7

MR. LISA: Just makes the job longer obviously.8

THE COURT: Well, it does, but, you know, this -- I9

don't think, counsel, as I'm clearly appreciating, there's10

much way around it in this case. I think that there's -- your11

original estimate may be more accurate than I originally12

thought, and we'll just have to struggle with it, so, go13

ahead.14

BY MR. LISA: 15

Q So, sir, I take it you went back and reviewed again the16

1956 file history; is that right?17

A Yes.18

Q And you went back and reviewed again the 1963 file19

history; is that right?20

A Well, parts of it. Yes.21

Q Did you review the '72 file history?22

A I don't recall looking at that.23

Q Why don't you identify what documents you actually24

reviewed with counsel last night and this evening after your25

HORN - CROSS0014

testimony? Please be specific.1

A I found a readable copy of Greanias, so that's one thing2

I looked at. Then the Hemstreet patent. I looked at some of3

the articles you provided, the Design News article, and4

there's another patent, I guess the Shepard, the first Shepard5

patent. And then the exhibits you had, I think 1146A, I6

believe, and 1125B. And I looked at --7

Q Those were the file histories, correct? Excerpts?8

A Yes, excerpts from file histories, and I went back to the9

other parts of the file -- I mean, I didn't read the whole10

file history, obviously, in that limited time, but I tried to11

find where the context was for these.12

Q Are those the only documents you looked at?13

A Well, I also on my own looked through the stack of14

patents you provided.15

Q Is that all 50 of them or just the ones that we marked?16

A No, no, the -- I guess you pulled out, what is it, 215017

to 2158. Oh, and I see another thing here, let's see, what is18

this? 1127A. And I think that's -- oh, oops, oh, that's just19

another copy of 1127A, although one is much thinner than the20

other, so I'm not sure what that means, but, yes, that's it.21

MR. LISA: Your Honor, I will note for the record22

that the prior art that the witness was looking at is prior23

art that plaintiffs provided in this case, not that we did,24

so, to claims there's any sort of surprise about that should25

HORN - CROSS0015

not have caused any reason for discussion. The witness gave1

detailed expert reports on the subject matter of those2

patents, so, for counsel to complain about that, not having3

advance notice, seems to be a little bit odd. 4

And, of course, you received and heard extensive5

testimony from this witness from the same file histories that6

I placed in front of him, except for the two early ones in7

1955, which, while counsel said is stricken, we'll, of course,8

show they weren't stricken.9

But the point is that these are things that this10

witness knew about, testified about, and to assert any sort of11

surprise seems to me to be a little bit odd.12

THE COURT: All right. Mr. Jenner?13

MR. JENNER: I don't know if it needs a response,14

but number one, I think we've already explained what we15

understood to be the circumstances. As far as this being --16

whether or not he's familiar with it, he has testified17

yesterday that as far as those three references are concerned,18

he has not, in fact, looked at them in a long time. They were19

not anything that we offered in our case in chief; it was20

offered on cross-examination. 21

And the fact that he has reviewed those, I don't --22

I don't really understand what's surprising about that.23

THE COURT: Yeah. Look, there's so much material24

here, I'm -- I'm candidly not surprised anybody is reviewing25

HORN - CROSS0016

and re-reviewing. The stacks of material we saw yesterday, I1

don't think most people would be able to retain all of that2

chapter and verse, so go ahead and let's move forward with3

questions that you have remaining on cross-examination for the4

witness. He obviously has certain opinions he's expressed and5

just as your experts have opinions that are contrary, and you6

can go ahead and probe him on those he hasn't covered already.7

BY MR. LISA: 8

Q Now, Dr. Horn, do you have any objection to Dr.9

Williamson's definition of image field because it includes10

within the image field the object?11

A Could you show me his definition so I can be sure?12

Q How about we do this. Why don't we go to your expert13

report at Defendant's Trial Exhibit 197. I believe I have an14

excerpt of that where you set forth its definition. Says "The15

rebuttal expert report."16

MR. LISA: And, Your Honor, this is just an excerpt17

of that large Exhibit 197. So, I'm not going to put a new18

number on it 'cause the page numbers are reflected in the19

original.20

THE COURT: Let me just ask, is 197 -- has that been21

offered in evidence, the report of Dr. Horn?22

MR. LISA: No, Your Honor, and we do not intend to23

put those big expert reports into the -- into evidence.24

THE COURT: All right. 25

HORN - CROSS0017

MR. JENNER: Your Honor, you had referred to the1

expert reports a number of days ago, and I don't know whether2

you have any interest or expectation that they will be3

offered. We're prepared to offer them if the Court wants4

them.5

THE COURT: There was one I was referring to, I6

think Mr. Steiner's, that had been appended to a motion in7

limine, I think was what I was talking about. And I'm sure, I8

just don't remember which ones. At different times I've seen9

at least references to portions of some reports.10

MR. JENNER: This is a little bit -- 11

MR. LISA: I -- I would -- 12

MR. JENNER: -- this is a little bit unusual. If13

this document were proffered as it is, which basically is a14

few pages from a document, I would normally make a15

completeness objection.16

THE COURT: Right.17

MR. JENNER: In this circumstance it's an expert18

report; I'd really be guided by what the Court wants to do19

with expert reports.20

MR. LISA: Your Honor, I would say that for purposes21

of appeal the last thing we want is a stack of prior-art22

allegations that have been dropped and expert reports moved in23

that we haven't responded to because they haven't put it in24

evidence, and I'd object strenuously to having, you know --25

HORN - CROSS0018

THE COURT: All right. 1

MR. LISA: -- ten months of --2

THE COURT: All right. Well, you're --3

MR. LISA: -- stuff moved in.4

THE COURT: -- you're right. I've got plenty in5

evidence. We've got the testimony of the witnesses. I'm not6

going to expect wholesale offers of reports. If you want to7

use this report to either refresh the recollection of the8

witness or for that matter impeach him, I'll let you --9

MR. LISA: Thank you, Your Honor.10

THE COURT: -- pursue it.11

MR. LISA: And that's exactly the reason why this12

has been -- it's got a definition of image field that this13

witness has written, so.14

THE COURT: Okay. On the page 59 there's reference15

to Dr. Williams' [sic] statement as to what is meant by image16

field, at least it begins there. Go ahead.17

MR. LISA: Thank you.18

BY MR. LISA: 19

Q Dr. Horn, did you take a -- recognize this section 7 of20

your rebuttal expert report in which you address Dr.21

Williamson's definition of image and image field?22

A Yes, I did.23

Q All right. And do you recall that Dr. Williamson24

includes in his definition of image field the object itself. 25

HORN - CROSS0019

Do you recall that?1

A Yes.2

Q And you accept that definition now, don't you?3

A The image is not the object --4

Q All right. 5

A -- so I do not accept that definition.6

Q All right. And I take it you set forth in this expert7

report the reasons why you disagree with Dr. Williamson's8

assertion that an object represented in an image field is9

itself part of the image field; right?10

A You're twisting the words.11

Q Well, I -- if you look at --12

A The object is not part of the image field. 13

Q If you look at paragraph 164, sir, I think I just read14

your sentence, so I hope I'm not twisting your words. You15

disagree with Dr. Williamson's assertion that an object16

represented in an image field is itself part of the image17

field; right?18

A Okay. The -- that's right. The object itself is not19

part of the image field.20

Q And just for clarity, would you explain what you mean by21

that objection so we know what we're talking about right now?22

A When an image is formed, a distribution of brightness is23

produced by, for example, a lens or a mirror, and that's -- a24

part of that is the image field. And if I take an image of25

HORN - CROSS0020

this courtroom, I'll have images of Mr. Lisa and everyone1

else, but that image is different from the object itself.2

That's the distinction I was drawing.3

Q And one of the reasons you make that distinction is4

because the Symbol bar code scanners actually emit a beam from5

the scanner that scans the object; right? And you want to6

have a distinction in the claims?7

A The reason I make the distinction is because that's the8

physics of the situation. Out here is the object and there's9

an image forming system, and in here is the image which has a10

representation of those objects, but not the objects11

themselves.12

Q All right. Well, you, of course, recognize that Mr.13

Lemelson said several times in his patent application that his14

definition of image field actually includes the object. He15

said that, didn't he?16

A Not that I recall, you'd have to show me.17

Q All right. Well, let's take a look -- in fact, if you18

look at page -- bottom of page 62 of this excerpt of your19

Exhibit 197 -- I'm sorry, of your expert report, you'll see20

there at paragraph 171, you say additionally Dr. Williamson's21

citation to the definition of, quote, "IFP given in the common22

specification fails to support his contention that the object23

represented in an image is itself part of the image."24

And if you turn the page, you set forth a quote from the25

HORN - CROSS0021

patent, right?1

A Yes.2

Q And is it your contention that that quote supports your3

position?4

A Yes. It talks about the field in the optical system5

which is the image.6

Q So, and you're referring to the very first line where it7

says, "IF/IFP -- refers to an image field being scanned," and8

you've got that in quotes, right?9

A Yes, that's quoted from the specification.10

Q Now, why don't you look at the specification at the11

column and line numbers that you've cited there and actually12

read for us what it says? You can refer to your Exhibit 17A,13

sir. This is column 5, lines 87 to 53. Would you read that,14

please, for the record?15

A "IF/IFP refers to an image or object field being scanned16

to produce a picture signal. The field in the optical17

system of a" --18

Q You can stop right there. You left a couple words out of19

your quote in your expert report; didn't you, sir?20

A Yes.21

Q An object, right? You left it out?22

A I think I treated those as synonymous, the image field --23

Q Then why did you put it in quotes?24

A -- or object field.25

HORN - CROSS0022

Q Why did you put it in quotes and not indicate that you1

were removing the fact that the objects was in the definition2

of IFP, sir?3

A I don't know. I mean, I'm as surprised as -- I don't4

know how that happened.5

Q Did you direct that to be done, or did your counsel6

present it to you that way, sir?7

A I definitely wrote this report, and it may have gone8

through some editing, but maybe I transcribed it incorrectly,9

I don't know.10

Q Well, let's look at your Plaintiff's Trial Exhibit 3486,11

it's one of your summary charts that you presented to the12

Court. It's in your big book.13

(Pause in the proceedings)14

Q You see that chart? And you remember giving some15

testimony about Figure 5, sir?16

A The one titled scanning meant television and --17

Q Exhibit 3486?18

A Sorry, 3486.19

Q Correct. Plaintiff's 3486?20

A This is of Figure from of the patent?21

Q Yes, sir.22

A Yes, okay. I've got it.23

Q Did you prepare or review this exhibit, sir?24

A I reviewed it.25

HORN - CROSS0023

Q Well, do you see at the top there that you've got in1

quotes a statement about Figure 5, do you see that, with a2

citation to column 38?3

A Yes.4

Q Would you turn to that part of the patent, sir, and read5

whether there's any continuation of this sentence after the6

word "scanning"?7

(Pause in the proceedings)8

MR. LISA: For the record, Your Honor, I'm told I9

didn't mention that that's column 38, line 65, et seq.10

BY MR. LISA: 11

Q So let's turn to your Exhibit 17A, sir, and look at12

column 38 where it says at the bottom Figure 5, do you see13

that?14

A Yes. I'm just trying to correlate the text here with15

what I've got over here. Those parts. Yes. Now the point16

here was --17

Q What I'm asking you do first, sir, is to continue reading18

if there's a continuation of the sentence on the top of column19

39 that you omitted from the chart.20

A Yes. ". . . of a particular area or areas of" --21

Q Of?22

A -- "of the image field or object being scanned."23

Q All right. So, what you did is put a period after24

scanning and leave out the fact that it's not only an image25

HORN - CROSS0024

field, but also an object that may be scanned in Mr.1

Lemelson's systems, right, sir?2

A Well, it didn't seem --3

Q Yes or no. Let's not start off down this path. Yes or4

no, and then if you want to explain, I'll give you time. But5

you put a period, you put the end of the quotes, and you left6

out the part of the sentence that referred to the objects7

being scanned; right?8

A The quote ends after "during beam scanning."9

Q Right. Now if one of your doctorate students presented a10

dissertation to you that did that, would you approve it, sir?11

A Yes, if they quoted the relevant part for the purposes of12

that exhibit. And here, for example, the particular area or13

areas are not necessary for the discussion that's presented14

here. 15

Q All right. Well --16

A You have to cut it off somewhere.17

Q -- you think -- well, how about ten lines later which --18

ten words later which indicates that contrary to your19

testimony, in fact, objects are scanned in Mr. Lemelson's20

inventions?21

A Well, he's not --22

MR. JENNER: Your Honor, I -- I need to note that23

counsel is stating that this exhibit was used with the24

witness, and our information is this exhibit wasn't used at25

HORN - CROSS0025

all. 1

And, secondly, I don't know what version of this2

exhibit counsel is working from, but we did provide a3

corrected version to pick up typographical errors.4

THE COURT: Well, that's fine, but I did allow Mr.5

Lisa, as I told him I would, to establish those areas where6

there were incomplete quotations, things of that sort, so I'll7

allow him to do that.8

With regard to Exhibit 3486, Dr. Horn, what was your9

role in the preparation of this particular exhibit?10

THE WITNESS: Your Honor, I prepared these in11

collaboration with counsel, and I don't remember exactly who12

did what. I mean, I did look at this, and obviously13

considered that using this much of the text was adequate for14

the purpose here. And, you know, many of these sentences are15

very long and it got truncated before it got onto "a16

particular area or areas of the image field or object being17

scanned," but that's all I can say about that.18

BY MR. LISA: 19

Q Is it fair to say, sir, that in the part of the expert20

report that we just looked at in Exhibit 197 and here in your21

Exhibit 3486, in both instances what you did was truncate or22

remove references to the object being scanned?23

A Yes, and it may have had something to do with the fact24

that there are places where Lemelson isn't particularly25

HORN - CROSS0026

precise with language, and he refers to images of objects at1

times as if they were objects, and sometimes we do that when2

we're talking about pictures.3

Q And, in fact, in his definition he says exactly that,4

doesn't he, sir, that the object -- that he defines image5

field to include not only the image, but also the object;6

right, sir?7

A Well, I -- we went through that a minute ago.8

Q Right. And, in fact, if what Mr. Lemelson is using is9

something -- to scan objects is something called a reflective10

flying spot scanner in which the beam exits the scanner, then,11

in fact, what is being scanned is the object, right?12

A That's probably a reasonable way to say it.13

Q Thank you. Now, I think you said repeatedly on your14

direct that the 1954 application does not show any type of15

high bandwidth video; right? This is the 1954 application?16

A That sounds right. Yes.17

Q All right. And that it doesn't show scanning with a18

vidicon or iconoscope or anything like that, right?19

A Yes.20

Q All right. And, in fact, what the 1954 application shows21

is what Mr. Lemelson referred to as photoelectric scanning,22

right?23

A He used that term in the '54 application for that light24

source photocell arrangement.25

HORN - CROSS0027

Q And, in fact, the photoelectric scanning that he shows in1

1954, it is your position that that is not a camera, right?2

A That's right.3

Q All right. And it's your position that a person of4

ordinary skill in the art at the time of Mr. Lemelson's5

inventions in the mid-1950s would very clearly understand the6

difference between photoelectric scanning and a camera; right?7

A No, I wouldn't say that. The term "photoelectric8

scanning" is very general, meaning it involves some conversion9

from image to electricity, from photons to electrons, and10

certainly that would include devices that have photocells in11

them, and it would, in another context, possibly refer to12

television cameras.13

Q All right. Well, let's see if we can clarify that a bit. 14

You would agree that the term photoelectric scanning is15

general enough to include both of the types of scanning you've16

just referred to, right?17

A No, you need to look at the context to know --18

Q That --19

A -- what's being talked about.20

Q Let's try starting with a yes so the record is clear, and21

if you want to explain, sir, that's fine. 22

The question again and the answer for the record, if we23

can get that. The question is what you just stated a few24

moments ago is that the term "photoelectric scanning" is broad25

HORN - CROSS0028

enough to include both types of scanning you described, either1

television or video-type scanning, as you've defined it, or2

this arrangement shown in Mr. Lemelson's 1954 application;3

right?4

A In the abstract, if we're not dealing with a specific5

context.6

Q That means yes? Is that right, sir?7

A Yes, it means you have to look at the context, which is8

what I said before.9

Q So, yes, it means it's general enough to cover both, and10

therefore you have to look at the context, right? Can we have11

a straight answer on this for the Court, please?12

A The term is used generally in various places to mean13

anything involving photons and electrons.14

Q All right. It's certainly proper to refer to what Mr.15

Lemelson did in his 1954 application as photoelectric16

scanning, right?17

A He refers to it that way.18

Q All right. And you agree that's proper, right?19

A Yeah, it involves photons and electrons.20

Q Right. Now, when you put Exhibit 3415 up in front of the21

Judge and us on direct, and that's the exhibit of camera with22

the B-1 bomber on it? Do you recall that?23

A Yes.24

Q Your point there was to show that the image of the object25

HORN - CROSS0029

is on the face plate of the CRT and Mr. Jenner asked you1

repeatedly, the beam doesn't leave the device, right?2

A Mr. Jenner asked me, yes, to confirm that the beam3

doesn't leave the device. Yes.4

Q And this is what you said, this, being Exhibit 3415, you5

said "this is what's shown throughout Mr. Lemelson's6

specification"; right?7

A That's his camera cam.8

Q All right. Well, you also are aware that Mr. Lemelson9

says to use a flying spot scanner, right?10

A Yes, which is also an electron beam deflectival device.11

Q And since you've gone back now and reviewed your prior12

art, you're aware that there are other types of what you refer13

to as mechanical flying spot scanners; right? In fact, they14

were shown in your own prior art, right?15

A What specifically are you referring to?16

Q I'm asking you, sir, whether in your review of the prior17

art last night, did you see that you yourself cited prior art18

with mechanical flying spot scanners?19

A In this context, the flying spot scanner is --20

Q Sir, let's start over again.21

MR. LISA: Judge, we're going to be here forever if22

I don't get --23

THE COURT: Yeah. Try -- try again, Dr. Horn, to24

respond in the affirmative or negative. If you find it25

HORN - CROSS0030

necessary to explain, then you may do so.1

THE WITNESS: Yes, Your Honor.2

BY MR. LISA: 3

Q In the 45 references that you cited as prior art, Dr.4

Horn, did you cite references to -- that included the use of5

mechanical flying spot scanners?6

A There were various experimental devices using, for7

example, Nipcaud [phonetic] disk which someone may have8

referred to as flying spot scanners. They are not the flying9

spot scanners referred to by Lemelson.10

Q Well, Mr. Lemelson just says is a flying spot scanner,11

right?12

A But he repeatedly talks about electron beam devices, and13

so he's talking about a specific kind of flying spot scanner,14

namely, the one that someone in the 1950s would have15

recognized as a flying spot scanner.16

Q Sir, where does he say that the flying spot scanner in17

his specification must be an electron beam flying spot18

scanner?19

A He repeatedly in the specification and in the prosecution20

history talks about using electron beam devices, devices with21

reflective or electron beams.22

Q What I'm asking, sir, is when he refers to the flying23

spot scanner in his specification, show me one place where he24

says that the flying spot scanner must be an electron beam25

HORN - CROSS0031

flying spot scanner?1

A Well, he doesn't say anywhere --2

Q Thank you.3

A -- what his flying spot scanner is.4

Q Right. And so he leaves it to the person of ordinary5

skill in the art to determine what is the appropriate type of6

flying spot scanner to use depending on the type of scanning7

he does; right?8

A As I testified before --9

Q Yes, sir --10

A -- in the 1950s --11

Q Again, sir, please try and preface the question -- your12

answer with a yes or a no if you can. What Mr. Lemelson does13

in a specification is leave it to the person of ordinary skill14

in the art to determine what type of flying spot scanner is15

appropriate?16

A Yes, and at the time it would have been a flying spot17

scanner of the type I described using a deflective or electron18

beam.19

Q Right. Now you didn't ever use one of those reflective20

type flying spot scanners, have you?21

A Not of the type that he describes.22

Q All right. Not of any type, have you, sir?23

A Well, I haven't used what I'd call a flying spot scanner.24

Q All right. And, in fact, you weren't practicing in the25

HORN - CROSS0032

fifties at all, were you, sir?1

A No, but some of these devices were used in the sixties2

also.3

Q So they aren't quite so old if they're still being used4

in the sixties, right?5

A Not quite so old.6

Q Well, you said in your deposition that people skilled in7

the art in the fifties wouldn't use flying spot scanners, but8

maybe their parents or grandparents were; do you remember9

that?10

A I don't remember whether that was in the context of the11

mechanical type of scanners that was -- that was popular in12

the 1920s, so, I'm not exactly sure what part of my testimony13

you're referring to.14

Q Well, even so, if we talk about the type of electron beam15

flying spot scanner in which the beam is used in a reflective16

mode to actually scan the object where the beam is emitted17

from the face of a CRT?18

A There's no beam emitted. The electron beam is in the19

CRT.20

Q And it makes a very bright spot on the face of a CRT,21

right?22

A That it does.23

Q And the light, the radiation from that spot is focused24

through optics, is it not, sir?25

HORN - CROSS0033

A Yes, but it doesn't --1

Q Thank you.2

A -- form a beam.3

Q Radiation does leave the CRT, it strikes and is focused4

upon the object, and the reflected energy is detected by5

photocells, right, sir?6

A Yes, but there's no beam. There's an image formed by the7

lens in front of the CRT on the point in the environment, and8

if you, you know, draw a picture of it, it's a conical9

distribution of light rays, it's not a beam in the sense of --10

Q Ah, so the debate is whether the conical beam that's --11

the conical radiation that is focused by the optics is a beam12

or not; is that what your point is?13

A Well, that's certainly one point, yes.14

Q All right. So, now what we can agree on is that in a15

reflective flying spot scanner, the bright spot of light that16

appears on a CRT generates radiation that is focused by optics17

onto the object itself that is scanned, right? Yes or no?18

A The radiation beam is inside the tube.19

Q All right. 20

A And there's an optical system outside the tube.21

Q And that's why I didn't use beam in my question, sir. 22

What I think I said, and I'll ask it again, is in this type of23

a flying spot scanner, operating in a reflective mode, there's24

a very bright dot formed on the CRT, and that's this device25

HORN - CROSS0034

right here, right, the CRT, and the radiation from that spot1

is focused by a lens so that the beam -- not the beam -- so2

the spot traverses the object itself, right? Isn't that3

right?4

A There's a bright spot focused on the object.5

Q All right. And that bright spot scans back and forth6

across the object, right?7

A No. In our -- in the meaning of scanning at that time8

was the scanning of the electron beam in the cathode ray tube. 9

You're now extending the definition of scanning to include10

something else.11

Q To include the dot so it's scanning if the beam faces --12

if the image is on the face of the CRT and the scan lines13

cross the image, you agree that's scanning, right?14

A That's not the part of scanning --15

Q Sir, let's try it again. Yes or no, did --16

A No.17

Q -- you just say that scanning is what occurs inside of a18

CRT?19

A Scanning is what occurs inside the CRT. It's the -- yes,20

it's the deflection of the electron beam to probe out the21

sensitive surface of the vidicon.22

Q All right. And the -- and you're saying that the fact23

that -- and the fact that the spot now traverses the object24

itself is not scanning now?25

HORN - CROSS0035

A Scanning refers to the operation of the deflective or1

electron beam. Now --2

Q So --3

A -- you may have another definition of scanning --4

Q Well, you certainly know, Doctor --5

A -- derived at many years later, since the term has in6

fact broadened in its meaning and people apply it to other7

things, but in the 1950s scanning would have referred to8

exactly this process in the CRT.9

Q And so we're clear then, your dispute over scanning is10

that if the -- if the radiation exits the CRT and traces the11

raster pattern over the object itself and the radiation --12

reflected radiation is detected, that's not scanning?13

A You started off saying the radiation leaves the CRT. The14

radiation beam doesn't leave the CRT.15

Q Sir, again, let's -- I did not say beam. You have to16

listen to the questions, please. If -- there's a spot on the17

fact of the CRT, right?18

A Yes.19

Q That generates light, radiation; right?20

A Yes.21

Q That's focused by optics; right? Yes?22

A Just a second, I'm thinking back of something I said yes23

a second ago. Well, go on, sorry.24

Q You agree there's optics that take that spot of light and25

HORN - CROSS0036

radiation from it and focuses it on the object; right?1

A There's a lens that focuses the light from that spot.2

Q Right. And you could actually see that spot traversing3

the object if you were to watch it, couldn't you, sir?4

A I guess so.5

Q And there are photocells or detectors that detect the6

amount of reflective light from that spot traversing the7

object; right?8

A That's correct. 9

Q And those photocells generate a signal that is indicative10

of whatever the characteristics are of that object that was11

inspected or -- by the spot, right?12

A It's an analog video signal that responds to reflectant13

variations and so on.14

Q All right. Thank you. And it's your contention that15

that's not scanning?16

A It's my contention that the scanning is what happens in17

the tube in this process.18

Q You, of course, recognize that Symbol describes a process19

of the flying spot beam of light to be scanning, right?20

A I wouldn't be surprised if they did that, since, as I21

mentioned, the term has been broadened, as so many terms have,22

and since in communicating with their clients, they probably23

need to use common language to explain what they're doing.24

Q So, in fact, what you've done is create a distinction in25

HORN - CROSS0037

your definition of scanning to keep the scanning operation1

inside the CRT, not outside, right? In the fifties?2

A I've created a definition of scanning that would have3

been the definition a person of ordinary skill in the art4

would have had in the 1950s.5

Q All right. Now you, of course, realize that Mr. Lemelson6

says in his 1956 application and in his common specification,7

actually -- I'm sorry, strike that.8

What he says in his common specification is that you may9

conduct photoelectric scanning of moving objects or video beam10

scanning of image fields, doesn't he? He says that in his11

1963 common specification, right?12

A Well, I think we went over that there's oddness about13

moving objects since none of the rest of the specification14

deals with moving objects, and since moving objects would, in15

fact, smear the image.16

Q Well, it wouldn't smear the image, sir, if it was a17

photocell that was detecting moving objects, a fixed photocell18

with objects being moved by it in a scanning motion; right,19

sir? That wouldn't smear an image, would it?20

A I think we went there yesterday that if you have a21

photocell with a moving object, you're not going to get a22

useful signal out of it.23

Q Well, we said that we talked about the scanning bed, do24

you remember that? You've seen scanning beds in which the XY25

HORN - CROSS0038

stage moves underneath a fixed photocell, right?1

A What I think I said was --2

Q Sir?3

A -- that I've seen -- what I think I said was that I've4

seen devices that scan by moving a microscope lens over a5

transparency --6

Q And you don't doubt --7

A -- which is the opposite of what you're talking about8

with a moving object. You're --9

Q You certainly don't doubt, sir, that those types of10

scanning beds exist, do you, sir?11

A I'm not familiar with them.12

Q Well, what I'd like you to do is look at column 2413

beginning at line 48 of your Exhibit 17A?14

A Give me the line number again.15

Q Twenty -- column 24, line 47. And you'll see there that16

Mr. Lemelson is describing Figure 3, right?17

A Yes.18

Q And you've talked a lot about Figure 3 in your direct19

examination, right? So, you're familiar with it?20

A Yes.21

Q You didn't refer to this part of the patent, did you,22

sir?23

A I think I may have. I don't really remember.24

Q Well, I can tell -- I can assure you this, you didn't25

HORN - CROSS0039

once mention in your direct that it's moving objects that are1

being scanned, do you see that?2

MR. JENNER: That's not so. Objection. That was3

exactly covered in the direct examination.4

THE COURT: All right. Well, the record will bear5

out what was -- what was said. I don't want to engage in a --6

MR. LISA: I agree, Your Honor. I'm sorry.7

THE COURT: -- test of what the witness can remember8

about last week's testimony, but.9

BY MR. LISA: 10

Q Can we agree, sir, that what Mr. Lemelson says here is11

that the scanning signals may be derived from photoelectric12

scanning of moving objects, that's one alternative; right? Or13

video beam scanning of image fields. Do you see that?14

A Yes. And that was the point I addressed in direct 15

that --16

Q Well, what you can certainly agree as well, sir, is that17

what Mr. Lemelson shows in his 1954 application is18

photoelectric scanning, right? 19

A Ah-hah. Well, this is --20

Q Yes or no, sir? Does he show photo --21

A He uses -- he uses the term photoelectric scanning and --22

Q So, yes, he does, right?23

A -- he uses the term photoelectric scanning and that24

doesn't necessarily mean that he's talking about the same25

HORN - CROSS0040

thing because he explains in both exactly what he means by his1

scanning, and the scanning in the '54 application is moving2

around a light source and a detector and seeing when a beam is3

interrupted, where here the whole core of this is using a4

television camera, using an imaging device.5

Q But, sir, here he's talking about a moving object, and6

you can't understand how he can scan a moving object without7

smearing an image; right?8

A Since you're referring to the '54 application, I'd like9

to point out there's no moving object there either.10

Q Sir, there the arm moves, doesn't it?11

A The photoelectric cell and the detector moves, it's not12

the -- it's not a moving object.13

Q Do you know whether he also says in the 1954 application,14

sir, that scanning may be done while the object is moving on15

the conveyor? Do you remember that he says that in '54?16

A I don't.17

Q All right. So, your opinions haven't considered the fact18

that what Mr. Lemelson says in '54 is that either of them may19

move, the arm or the object?20

A The way I remember the use of the conveyor is that the21

object moves on the conveyor until it breaks a beam which then22

provides a form of prepositioning and then other actions are23

taken. He's not scanning it, he's simply detecting that the24

object has arrived at the certain point. That's very 25

HORN - CROSS0041

different.1

Q He's not scanning it with the moving arm in 1954?2

A He's searching for a reflective mark with a moving arm.3

Q He also makes measurements with the moving arm in '54,4

doesn't he, sir?5

A Now you're talking about the photocell light source6

that's moved relative to a cut out?7

Q Yes, sir?8

A There's no moving object. The arm is moving.9

Q All right. And do you know if -- well, you said he10

doesn't do any scanning motion, right? Didn't we agree in11

your deposition that if you take an arm and move it up and12

down to measure a number of different cutouts, and, in fact,13

let me hold a little card up that looks like Figure 99. Do14

you recognize that, sir?15

A It looks a little bit like part of Figure 99 except it's16

flattened out instead of being a three-dimensional object.17

Q Well, technically it is three dimensional, right, sir?18

A Yeah. You're holding --19

Q Okay. Thank you.20

A -- it in your hand.21

Q All right. But, in fact, what he says in nineteen -- in22

the '54 application is that you can measure each of these23

cutouts by moving the arm relative to the device, right?24

A I don't think he indicates what you --25

HORN - CROSS0042

Q Sir?1

A -- just did with your finger. What he says is he shows2

three positions on the part and says, you could measure the3

dimensions from here to there, or from here to there, or from4

here to there. That doesn't in any way suggest a raster type5

pattern, and it also, by the way, doesn't suggest the kind of6

scanning he's talking about in the '56 application.7

Q Okay. 8

A As I repeatedly point out, I don't see the relevance of9

the '54 application other than for purposes of controlling the10

manipulator arm.11

Q Now while we're talking about that let's talk about the12

1972 application then, because one of the things I know you13

didn't reference in your testimony is the decision by the14

Board of Appeals in 1976. Do you remember that decision, sir?15

A This is the second --16

Q Yes, sir --17

A -- appeal court decision?18

Q -- it is.19

A Yes.20

Q And what did they say about the 1954 application, sir?21

A Well, as you know, I'm not versed in patent law, so --22

but if you will please allow me to give an explanation of my23

understanding of it. Lemelson provided a application in '6224

which the examiner rejected for various reasons, including the25

HORN - CROSS0043

use of boxes labeled simply, for example, "computer." He then1

revised that by adding a section that referenced a number of2

patents which the -- which he did in order to avoid modifying3

the text or the figures of the application. 4

When the examiner then agreed that this somehow repaired5

the defect, he then returned to ask for a decision on whether6

his claims were -- could refer to a filing date of '54, and7

the appeal board apparently decided it did, which is something8

that I'm sure there's a legal understanding. 9

From an engineering point of view, it doesn't really make10

much sense to me because they don't refer to material in the11

'54 application. And my understanding would be that the12

appeals board based their decision on some legal argument, but13

did not come to a conclusion that the claims were supported by14

the '54 application.15

Q Well, let's see if I can ask a few follow-up questions on16

that, sir. You certainly recognize that even the examiner in17

the 1972 application agreed that the changes that Mr. Lemelson18

made rendered the claims adequately supported and cured the19

defects that he had made or raised as an objection in '63;20

right?21

A Again, I'm not an expert on these issues, but that's the22

way I read it.23

Q All right. But the examiner took the position that24

because Mr. Lemelson made some changes to the specification,25

HORN - CROSS0044

he was no longer entitled to the effective filing date of the1

1963 or earlier applications; right?2

A I think that's correct.3

Q All right. Well, let's look and see exactly what the4

Board of Appeals said. And I just placed in front of you an5

excerpt from the 1972 application which is Exhibit 1129A.6

MR. LISA: And Your Honor, we do have the entire7

binder here which we'll submit, but this is just a part of it.8

THE COURT: All right. 9

BY MR. LISA: 10

Q And I guess the first thing we'll do since I have it in11

here, I was going to talk about restriction requirements. You12

recognize, of course, that in 1972 the examiner had entered a13

restriction requirement, correct? Do you remember that?14

A Actually, no, but --15

Q Well --16

A -- you'll refresh my memory.17

Q Sure. Page 194 on the top of Exhibit 1129A. And18

actually if you'll look at the -- at 193, you'll see that's an19

office action from the patent examiner, and on top of 194 is a20

description of a restriction requirement. Do you see that?21

A Yes.22

Q And do you understand what a restriction requirement is,23

sir?24

A That he decide to pick a certain set of claims that cover25

HORN - CROSS0045

a particular area and resubmit the application with that set1

of claims.2

Q All right. Well, if you look at page 2, what you'll3

recall, I hope, is that what the examiner said there is there4

were seven separate and distinct inventions claimed in the5

1972 application. Do you see that?6

A Yes.7

Q All right. 8

A Without reading it in detail, it appears he has broken9

them into seven groups.10

Q Right. And if you look at the second paragraph up from11

the bottom, what the examiner says is:12

"The inventions are grouped above" -- "The inventions as13

grouped above are considered to be separate and distinct14

because each is capable of performing its function15

without requiring the presence of the others." 16

Do you see that?17

A Yes.18

Q All right. And then on the next page, top of page 3, he19

says:20

"Because the inventions are distinct for the reasons21

stated above, and have acquired a separate status in the22

art, and since different fields of search for the23

respective inventions have been shown above, restriction24

for examining purposes as indicated is proper." 25

HORN - CROSS0046

Do you see that?1

A Yes. I just want to remind you that I'm not an expert on2

patent law, but I'm following what you're reading.3

Q All right. And certainly your claim construction that4

you've provided takes into consideration that you're not an5

expert in patent law, right?6

A Yes.7

Q In fact, you have limited experience in patent law,8

right?9

A Yes.10

Q And in fact, you've never been involved in a claim11

construction process before, right?12

A That may not be true. I was involved in one previous13

case.14

Q Right. In your own case, right, with your own patent?15

A No, no.16

Q All right. 17

A Another case.18

Q Did you actually perform a claim construction in that19

case, sir?20

A That's what I was trying to recollect. I can't remember21

because --22

Q All right. Well, you can't --23

A -- it was settled before it went to court.24

Q All right. You can't remember ever doing a claim25

HORN - CROSS0047

construction before, right?1

A I can't at the moment remember.2

Q All right. And do you know which of the groups here Mr.3

Lemelson elected first?4

A I can't tell without looking more in detail at the5

application.6

Q Well, do you notice how many of those groups that are7

separate and distinct and have acquired a separate status in8

the art actually say "television," sir?9

A Well, I just noticed that "video" appears in several of10

them, and "television" -- 11

Q Well, let's go to my question first.12

A -- "television" appears in the first group of claims.13

Q All right. And if you look at groups 2, 3, 4, 5, 6, and14

7, there's no reference to "television" there, is there, sir?15

A Well, there's certainly a reference to "video," which in16

the context of --17

Q Sir, let's -- again, let's start with an answer.18

THE COURT: There are -- there are no -- I'll tell19

you what. It's very difficult, because the witness insists on20

qualifying his response. But 2, 3, 4, and 5 do not use the21

word "television." You don't need to elicit from the witness22

a response that --23

MR. LISA: Thank you.24

THE COURT: -- that's obviously not there.25

HORN - CROSS0048

BY MR. LISA:1

Q All right. And in fact groups 6 and 7 relate -- I'm2

sorry. Groups 5, 6, and 7 don't use the word "digital,"3

either, do they? I mean -- I'm sorry, "video."4

A Well, no, they do not. But I don't know what these5

claims are and how they relate to the patents in suit without,6

you know, looking back at the application.7

Q All right. And your opinions provided in this case don't8

take into consideration how the claims that have been asserted9

may relate to these various groups identified as being10

separate and distinct and capable of performing functions11

without requiring the presence of the others; right?12

A Are you representing that all of these claims have13

something to do with the claims that -- 14

Q Sir, let's please answer my question first, and then you15

can give an explanation. I'm asking whether your opinions16

provided in this case take into consideration whether any of17

the asserted claims fall into these other groups.18

A I can't answer that question, because offhand I don't19

remember looking at this document and making a correlation20

between the claims here and the claims that are under21

consideration.22

Q Thank you. Now, you, of course, recognize that -- I23

believe you were in the courtroom during Mr. Steiner's24

examination. Weren't you?25

HORN - CROSS0049

A No.1

Q You weren't? Okay. Do you recognize that members of the2

Board of Appeals in the Patent Office are extremely3

experienced and competent at examining patents?4

A Oh. Let me first correct what I said. I was here during5

part of his testimony.6

Q Were you there during -- here during that part of Mr.7

Steiner's testimony?8

A No, I don't recollect hearing that.9

Q Do you know that Mr. Steiner said he actually knew these10

examiners and considered them to be competent?11

A I didn't hear him say that, but their names came up in12

the discussion.13

Q All right. Board members. I'm corrected by Mr. Hosier14

it's the Board members, not the examiners.15

All right. So do you recall that, sir?16

A I don't recall the details of the examination.17

Q Well, you certainly recognize that members of the Board18

of Appeals would be more experienced at addressing the issues19

of whether someone's entitled to an effective filing date than20

you are; right?21

MR. JENNER: Well, objection, Your Honor. I mean,22

that goes for questions of practice in the Patent Office that23

this witness -- there's no foundation for him to answer that.24

THE COURT: Sustained as to what the competence of25

HORN - CROSS0050

members of the Patent Office would be.1

BY MR. LISA:2

Q Sir, do you profess to have more competence than Patent3

Office Board of Appeals members at addressing those issues?4

THE COURT: Addressing which issues again, the --5

MR. LISA: Effective filing dates of applications.6

THE COURT: Oh. All right.7

THE WITNESS: No.8

BY MR. LISA:9

Q Thank you. Now, if you will, I'd ask you to turn to page10

288.11

MR. LISA: Actually, Your Honor, for the record I'll12

refer that page 286 on the top actually indicates the heading13

at the Board of Appeals, so you can see that the date is14

November 26, 1976, and it's the reference from the United15

States Patent Office Board of Appeals. So -- and the16

Examiners in Chief and Board members are identified there, as17

in a court's opinion.18

BY MR. LISA:19

Q Now, sir, I take it you have read this document before. 20

Correct?21

A At some point. I don't remember the details.22

Q All right. And you knew of it and you knew of its23

existence, anyway, at the time of your direct examination;24

right?25

HORN - CROSS0051

A You mean now, a couple of days ago?1

Q Yes.2

A Yes.3

Q All right. And if you look at page 288, you'll see that4

in the first full paragraph the Board characterizes how the5

rejections had been made and says, quote, "Although the issues6

before us have been expressly framed in several rejections7

under 35 USC 102 and 103"; do you see that?8

A Top of 288?9

Q Yes, sir. It's the first full paragraph, first sentence10

of the first full paragraph.11

A Okay.12

Q And do you remember reading that the rejections --13

"Although the issues before us have been expressly framed as14

several rejections under 35 USC 102 and 103"; do you see that?15

A Are you sure we're on the right page? 'Cause I -- I16

don't see it.17

THE COURT: It's the typed "288" at the top of the18

page?19

THE WITNESS: Yes.20

THE COURT: "273" handwritten at the bottom, and the21

"3" stricken out.22

THE WITNESS: Okay.23

THE COURT: And then the first full paragraph24

starts, "Although the issues before us."25

HORN - CROSS0052

THE WITNESS: Okay. "Claims 51 and 55 to 58 stand1

rejected as being anticipated by --"2

MR. LISA: I think we're on the wrong page. Can I3

help the witness, Your Honor?4

THE COURT: Sure.5

MR. LISA: Thank you.6

THE COURT: Well, actually, you're on the right7

page. You're just in the first paragraph. But I'm talking8

about the first full paragraph below that, the one that9

starts, "Although."10

BY MR. LISA:11

Q So do you recall having read that before, sir?12

A Not specifically. But I did read this, so I must have.13

Q In your experience so far in this do you understand that14

a rejection under 102 and 103 relates to prior art invalidity15

rejections?16

A Well, thank you for refreshing my memory.17

Q All right. But you do recognize that; right?18

A Yes.19

Q Okay. But what the Board then says is, "The issues as20

framed by both the examiner's and appellant's arguments21

additionally fall within the first paragraph of 35 USC 112." 22

Do you see that?23

A Yes.24

Q Do you understand those issues to be issues of adequacy25

HORN - CROSS0053

of disclosure or support for the claims?1

A Yes.2

Q All right. And then what the Board does is identify that3

the '72 application, "The instant application is a4

continuation in part of the 1963, 1954, and 19565

applications." Do you see that?6

A Yes.7

Q All right. And just so we're clear, the '638

application's referred to as a parent, and the other two are9

referred to as grandparents; right?10

A Okay.11

Q All right. Now, the position of the examiner is stated12

just below, and that is that the patents relied upon are prior13

art because applicant -- or Mr. Lemelson was not entitled to14

an effective filing date earlier than the 1972 application;15

right?16

A The instant application. Okay.17

Q Right. And what the examiner -- I think you explained18

this in your own words. What the examiner had said is that by19

adding that new material Mr. Lemelson cured the problems with20

the spec but now couldn't go back earlier to '63, '56, or '54;21

right?22

A That's the way I understood.23

Q Okay. Then on the next page, 289, the Board sets forth24

what Mr. Lemelson's response was. Do you recall that?25

HORN - CROSS0054

A Vaguely.1

Q All right. Well, do you recall that what Mr. Lemelson2

argued was that the parent case was not fatally defective, he3

just failed to rebut the prima facie case of the examiner? Do4

you recall reading that at one time, sir?5

A Yes.6

Q All right. And that what Mr. Lemelson had done in the7

1972 case was to add some citations to what he called prior8

art patents that were both prior to and after his filing date,9

his '63 filing date, to show that these words or boxes that10

the examiner objected to were common usage at the time; right?11

A Minor detail. I think they were mostly to things earlier12

than '63.13

Q All right. Okay. Well, that's true. But what the Board14

says here is -- well, we'll get to that in a second. So your15

recollection is actually correct, sir; mostly prior to '63.16

So what Mr. Lemelson was arguing is that because he is17

now presenting evidence to rebut that case he can show that18

the parent case wasn't fatally defective. Do you recall that?19

A Yes. He said something of that type, yes.20

Q All right. And then what the Board says in the second21

paragraph, quote, "We have carefully reviewed the record22

before us, including the disclosures found in the parent and23

grandparent applications, and as a result of such review we24

find that the various rejections made by the examiner under25

HORN - CROSS0055

35 USC 102 and 103 can be sustained only as to Claims 1 to 41

and 55 to 57." Do you see that?2

A Yes.3

Q Do you recall that in fact what the Board did was reverse4

the examiner on all of the rejections, except for those claims5

identified right there?6

A Yes. And that's what really surprised me.7

Q All right. Well, the Board's reasoning is set forth8

right below. At first it says that the prior appeal didn't9

hold that the application was fatally defective; right?10

A That's what they say.11

Q All right. And then in the next paragraph, in the next12

sequential pages they go on to say that they had reviewed not13

only the parent application but the grandparent 195614

application and the grandparent 1954 application and stated,15

quote, "We conclude that the broadly phrased combinations of16

elements set forth in Claims," and they're identified, "are17

based upon an adequate written description in Grandparent18

Application Serial Number 626,211."19

A Sorry. Where are you now?20

Q Down at the bottom of page 290.21

So what the Board does is say that they've reviewed the22

disclosures found in the grandparent applications and holds23

that certain broad combinations are supported back in '56 and24

that other broad combinations or other combinations are based25

HORN - CROSS0056

upon an adequate written description in Grandparent1

Application Serial Number 477,467. And that's the 19542

application; right?3

A I believe so.4

Q So you certainly recognize that your opinion that the5

1954 application is irrelevant is absolutely inconsistent with6

what this three-panel Board of Appeals decided in 1976; right,7

sir?8

A I didn't say it was irrelevant. I said it was relevant9

as to the movement of the manipulator arm, and that certainly10

would have played into this decision.11

Q All right. Well, let's maybe state it better, then.12

You certainly agree that your opinions that none of Mr.13

Lemelson's claims are entitled to have support in 1954 is14

inconsistent with the Board's determination; correct, sir?15

A Yes, they are. And the thing is that I'm an engineer,16

and I read what is disclosed. And I cannot see the connection17

with the '54 application.18

Now, I understand that there was a legal decision here19

that goes in another direction. I can't ignore my gut20

feelings about the engineering of it.21

Q Well, you certainly didn't raise it in your direct that22

this opinion existed contrary to your opinion; right?23

A I can't remember. Probably not.24

Q All right. And do you know whether any of these Board25

HORN - CROSS0057

members are engineers skilled in particular arts, sir?1

A No, I don't know them.2

Q So you don't know one way or another whether these3

particular examiners are skilled in this particular art;4

right?5

A I don't know one way or the other.6

Q And even though you call it a legal conclusion, you7

certainly recognize that these Board of Appeals members stated8

that they carefully reviewed the disclosures of not only the9

parent case but the two grandparent cases, as well; right?10

A That's what it says here, yes.11

Q And you have not offered a single opinion in your direct12

examination that specifically addresses the decision made by13

these three Board members; right, sir?14

A I believe I did not in direct examination.15

Q Thank you. Now, you recognize, as well, that Mr.16

Lemelson's 1956 application had restriction requirements in17

it, also; right, sir?18

A I don't at the moment recollect.19

Q I've handed you and Your Honor another excerpt of that20

large binder that we provided yesterday, 1127A.21

MR. LISA: I'm not going to renumber each one of22

these. I'm just going to refer to the page numbers, if that's23

okay.24

THE COURT: All right.25

HORN - CROSS0058

BY MR. LISA:1

Q Sir, I've handed you an excerpt of the large binder we2

presented yesterday, 1127A. And, if you will, turn to what is3

identified as page 162 on the top.4

A Okay.5

Q Do you remember looking at this document, sir?6

A Probably. It doesn't ring a bell right now.7

Q Well, you see on the bottom of page 162 what the examiner8

says. Quote, "Since the applicant has submitted claims to9

multiple distinct inventions," I'm sorry, "distinct fields of10

invention, a requirement for restriction to one of following11

groups is made."12

A That's what it says.13

Q All right. And you see there that what he does identify,14

then, on the bottom of page 162 and top of page 163 are four15

groups. Do you see that?16

A Okay.17

Q Do you recall that there was a four-way restriction18

requirement, sir, in the 1956 application?19

A Well, seems to be so.20

Q Well, I'm just asking if you remember that.21

A Well, it rings a bell. I remember the part about having22

to redraw the drawings or something.23

Q Okay. Well, if you look at the middle of page 163, right24

below that last group, the examiner states, "The subject25

HORN - CROSS0059

matter of these four groups of claims are independent of each1

other, since the television inspection system of Group 1 does 2

not require the specific subject matter of Group 2, 3, and 4,3

and vice versa." Do you see that?4

A Yes.5

Q All right. So what the examiner was saying is that the6

claims submitted in Groups 2, 3, and 4 don't require the7

specific subject matter of a television inspection system and8

vice versa; right?9

A Yes.10

Q Do you happen to know which of these groups Mr. Lemelson11

elected in his 1956 application?12

A Elected in his 1956 application?13

Q Yes. Do you realize that in response to this Mr.14

Lemelson had to select one of these groups and was not allowed 15

to prosecute the others in this application?16

A No, I don't remember which one he picked.17

Q Well, you remember that he made comments about his18

scanning device, and you cited to those comments throughout19

the prosecution of the '56 application that the invention that20

he was there claiming, the instant invention there related to21

television scanning; right?22

A Yes.23

Q So would it surprise you that the distinct and unique24

group that he elected was Group 1, relating to television25

HORN - CROSS0060

cameras, sir -- television inspection systems?1

A I'm sorry, what was the question? Would it surprise me?2

Q Would it surprise you, sir, that the group that he3

actually elected was Group 1?4

A No, wouldn't surprise me.5

Q Thank you. Now, do you remember that Mr. Lemelson's 19546

application likewise was subjected to a restriction7

requirement? Do you remember that?8

A No.9

Q I've handed you, sir, an excerpt from Defendant's Exhibit10

1932A.11

MR. LISA: Which, Your Honor, is the third file12

history for this.13

BY MR. LISA:14

Q And I'll ask you to turn to page 202 on the top, sir. Do15

you remember seeing this document?16

A No, I don't recollect.17

Q Well, if you turn to page 205 at the top, that's a few18

pages in, you'll find another restriction requirement. And19

I'm going to ask you if you recall seeing that.20

A No, offhand I don't recollect seeing this.21

Q Do you recall the examiner stating in the 195422

application that there were a great number of distinct and23

independent inventions presented?24

A No, I don't remember this. As you know, I didn't go into25

HORN - CROSS0061

all of the details of the '54 application, because I was1

interested in the part relating to movement of the manipulator2

arm.3

Q All right. So I take it, then, your opinions are based4

on what you consider to be a relatively incomplete study of5

the '54 file history?6

A No. I studied it thoroughly. What I'm saying is that7

there are parts that I don't recollect now because they8

weren't relevant to where I was going with my study of that.9

Q Well, is it fair to say, then, you didn't consider10

relative to your opinions -- relative to your opinions whether11

or not the examiner said that claims that were presented were12

independent and distinct from each other?13

A Well, keep in mind again the context. We're talking14

about the '56 application referring to this for use of the15

manipulator control arm. So the interest would have been in16

claims relating to that.17

Q Well, sir, you certainly recognize that Lemelson has18

presented in its expert reports and has contended that not19

only did the 1956 -- '63 application refer to the '5420

application, but in fact there were a number of drawings added21

in that 1963 application; right?22

A Yes. Let me just correct something. I misspoke when I23

said the '56 application referred to the '54 application. 24

There were -- there was additional text and additional25

HORN - CROSS0062

drawings in the '63 application, and that included a1

manipulator arm.2

Q And it included a manipulator arm with an inspection3

device mounted on the end of it; right?4

A With a camera CAM mounted on it.5

Q Or a photoelectric scanner; right?6

A It's not described or shown that way. It's showing the7

camera CAM, and Lemelson tells you what that is. It's a8

television camera producing video.9

Q All right. And you certainly recognize that that camera10

is mounted on the end of the manipulator arm and controlled to11

move about an object that's presented for inspection; right?12

A Yes. It's mounted on the manipulator arm, and it can be13

controlled to fixed positions -- can be moved to fixed14

positions.15

Q All right.16

A Did you say "moving object"?17

Q No. I said, "moved about the object."18

A Okay. Okay.19

Q Do you know which group of claims Mr. Lemelson elected to20

prosecute in his 1954 application, sir?21

A No.22

Q You don't recall that what he did was prosecute claims23

addressed to the drills and drilling machine? That doesn't24

ring a bell to you?25

HORN - CROSS0063

A Doesn't ring a bell at the moment.1

Q Did you in your review of the prosecution history of the2

1954 application, if you turn to page 206, see that one of the3

groups that he actually -- the examiner actually identified4

related to claims for measuring devices? Do you see that?5

A Which paragraph is it?6

Q Paragraph 7.7

A Yes. Okay.8

Q Do you recall that now?9

A No. I'm saying I'm reading it here.10

Q All right. So you don't -- you didn't consider any of11

this in forming your opinions, sir?12

A I did. But, you know, this has been a very long time. I13

don't recollect right now reading this particular claim14

constriction -- restriction. Excuse me.15

Q Is it fair to say, sir, now that you at least have your16

recollection refreshed that there were several restriction17

requirements made by the Patent Office during prosecution of18

Mr. Lemelson's applications?19

A Yes.20

Q And that in those restriction requirements the Patent21

Office was saying that Mr. Lemelson's inventions as defined by22

the claims he presented were independent and distinct from23

each other? Do you recall that?24

A That's what it says.25

HORN - CROSS0064

Q All right. And in offering your opinions on claim1

construction --2

And in particular I'm referring to your summary chart3

that has the words "scanning," "analyzing," "computer4

analyzing," "computer processing." Do you remember that?5

THE COURT: What's that number again? It's6

something 29, but --7

MR. LISA: Yeah. It's cut off on the bottom of my8

chart, Your Honor, so I have to ask counsel which one it is.9

MR. JENNER: Show me.10

MR. LISA: 3429, Your Honor.11

THE COURT: 3429.12

BY MR. LISA:13

Q And I actually have -- and if you want to turn to your14

book, sir, do you have that exhibit number handy?15

A Yes.16

MR. LISA: Actually, I'll make it easier. I have an17

excerpt here, Your Honor, from the big binder.18

THE COURT: Well, it's only one page, so he's --19

he's got the whole binder right there.20

Do you have 3429?21

THE WITNESS: Yes, Your Honor.22

THE COURT: He's got it. I've got it, too.23

MR. LISA: There's actually a number of the summary24

pages that appeared for each of these terms later, Your Honor,25

HORN - CROSS0065

that I've put in behind this in one little packet. And it1

just makes it easier than turning all the pages in the book.2

BY MR. LISA:3

Q You'll see, sir, that what I've done here is have behind4

Exhibit 3429 the summary charts you presented for scanning. 5

And that's Exhibit 3430, where you stated, quote, "Mr.6

Lemelson used many terms to describe scanning, and they all7

mean the same thing." Do you see that?8

A Yes.9

Q And then after that is 3448, where it says, "Mr. Lemelson10

used many terms to describe his analyzing step, and they all11

mean the same thing." Do you see that?12

A Yes.13

Q And the next one is, "Mr. Lemelson used many terms to14

describe his computer analyzing and computer processing steps,15

and they all mean the same thing." Right?16

A That's right.17

Q And then same thing with variations, he used many terms18

to describe it, but they all mean the same thing; right?19

A Yes.20

Q And finally, digitizing. He used many terms to describe21

digitizing, but they all mean the same thing.22

A That's right.23

Q And the same thing with memory. He used many terms to24

describe his memory, and they all mean the same thing; right?25

HORN - CROSS0066

A Yes.1

Q All right. And what you're asking the Court to do is to2

ignore the many different terms that Mr. Lemelson used in3

these claims that he obtained from the Patent Office and to4

describe these various elements to all mean the same thing;5

right?6

A Yes. Because we have to interpret the claims in terms of7

the specification and what's disclosed therein.8

Q Well, don't you think it's pertinent, sir, that what the9

Patent Office said is that Mr. Lemelson had presented many10

different and distinct inventions in his claims?11

A That's a separate issue. We're talking here about claim12

terms. And I'm saying that there's a relatively small number13

of distinct claim terms that are used in different claims. 14

They're, of course, used in different ways; otherwise they15

wouldn't be distinct claims.16

Q Now, in fact I wrote down a couple of terms you used in17

your examination. One of them was -- and I believe it was18

with respect to variations, "quite a number of different ways19

he described it," is what you said in your examination. Do20

you recall saying that?21

A No. But I'll take your word for it.22

Q So what you're asking the Court to do are take different23

words and ignore those differences; right? Yes, sir?24

A Yes. And that's because in view of the specification25

HORN - CROSS0067

they can only be referring to certain things. We can't1

suddenly introduce new material from somewhere else.2

Q So if one of Mr. Lemelson's claims says, for example,3

that you're to scan the object under inspection with an4

electronic scanning device and says absolutely nothing about5

television or radiation beams or anything else, you still6

think that claim ought to be limited only to high-bandwidth7

beam television motion picture scanning; right?8

A Absolutely. Because that's what he says throughout the9

specification. Now, if he uses a different term or synonym10

here for describing that, that's another matter. But he can't11

-- you can't now say that he's talking about something else.12

Q Well, what if one of his terms is that you're supposed to13

use photoelectric scanning?14

A We just went through photoelectric scanning. My view is15

that in the '56 application, since it's all about television16

and video, photoelectric scanning refers to television cameras17

producing video signals. Which is perfectly reasonable,18

because we've got photons going into them, and electrical19

signals coming out.20

Q Well, what if in your -- have you considered in your21

opinion that several of Mr. Lemelson's dependent claims --22

Do you know what a dependent claim is, sir?23

A Yes.24

Q Would you explain it to the Court just so we're clear.25

HORN - CROSS0068

A It's a claim that copies the elements of another claim1

and adds additional elements.2

Q Right. Do you know whether any of Mr. Lemelson's claims3

further define a scanning device as a television camera?4

A If any of the dependent claims -- I don't offhand5

recollect. I would be surprised, because typically the claims6

tend to be very general without that kind of specific detail.7

Q Well, let me present to you -- I'd like you to look --8

well, do you recognize this as Mr. Lemelson's '061 patent,9

sir?10

THE COURT: This is Exhibit 1105.11

MR. LISA: 1105. Thank you, Your Honor.12

THE WITNESS: Yes.13

BY MR. LISA:14

Q And this is one of the patents in the chain going back to15

1954 and '56 and '63; right?16

A Yes.17

Q All right. I'd like you to look at the back, at the18

claims, sir, and particularly at Claim 1.19

THE COURT: What page are you on?20

MR. LISA: It's column 65, Your Honor, back -- 21

BY MR. LISA:22

Q And if you look at the Claim 1, element (b), it says:23

"(b) electro-optical scanning means disposed at said24

inspection location for examining articles to be25

HORN - CROSS0069

inspected."1

Do you see that?2

A Yes.3

Q That says nothing about it being a television camera,4

does it, sir?5

A Not directly. Again, reading it in the -- in connection6

with the specification, it could be a television camera or7

flying spot scanner.8

Q But if you look at -- and you said a flying spot scanner9

would be what, a high-bandwidth scanning device, sir?10

A Yes.11

Q And that's a form of television camera; is that right?12

A Yes. It's producing a standard television signal.13

Q All right. Why don't you look at Claim 4, sir, over on14

the right-hand column.15

A Okay.16

Q And that says, "An apparatus as defined in Claim 117

wherein said electro-optical scanning means is a television18

camera." Do you see that?19

A Yes. Perhaps here he's trying to draw a distinction20

between television camera and -- or a flying spot scanner21

versus specifically a television camera.22

Q All right. So it's your view that a flying spot scanner23

is a different type of television camera, it's not a24

television camera?25

HORN - CROSS0070

A It's certainly not my view. It may have been his view,1

that's why he's drawing the distinction.2

Q I thought you said that a television -- that a television3

camera would include a flying spot scanner, sir. Isn't that4

what you said a few moments ago?5

A I said that the kind of scanning device we're talking6

about here is an electron beam scanning device, and that could7

be a television camera or a flying spot scanner.8

Q And you said --9

A I remember saying "or."10

Q Then I asked you, is a flying spot scanner a form of11

television camera, and you said yes; right, sir?12

A Well, and what I said was it produces a video output. In13

that sense it's a television camera. I mean, it's not a14

television camera you'd use in a studio.15

Q So now this becomes -- now your definition of "television16

camera" is one that's used in a studio? Is that what you're17

defining a television camera as now, sir?18

A What I'm trying to do is understand --19

Q Let's -- look, we have to be clear on definitions here,20

sir. Claim terms are important. Is it your -- is it your21

testimony now, sir, that your definition of "television22

camera" is limited to a studio television camera?23

A No, that's not what I said.24

Q All right.25

HORN - CROSS0071

A A television camera could be a vidicon, iconoscope, or a1

flying spot scanner. I was answering your question about why2

he's drawing a distinction here. And in -- and my3

interpretation is he wanted to make sure that whoever reads4

this is able to understand that it could be a television5

camera or it could also be a flying spot scanner in his6

interpretation of that word. I mean --7

Q Well, you just said a moment ago that a television camera8

includes a CRT or vidicon or flying spot scanner; right?9

A That's correct.10

Q All right. So --11

A Now, that's not necessarily mean that anyone reading12

these claims will immediately understand that connection.13

Q Well, certainly it makes clear, doesn't it, sir, that he14

doesn't intend the scanning -- electro-optical scanning means15

of Claim 1 to be limited only to a television camera?16

A Apparently here he's -- his impression is that a flying17

spot scanner might not be recognized by everyone as being a18

television camera, and so he's covering both situations, yes.19

Q Well, is it fair to say that the intent provided here by20

Mr. Lemelson is that when he used the word "electro-optical21

scanning means" he didn't intend it to be limited to only a22

television camera? Right? Because that's why he added23

Claim 4; right, sir?24

A I can't tell what his intent was.25

HORN - CROSS0072

Q Well, you can certainly tell that Claim 4 would be1

useless and unnecessary if the only thing that electro-optical2

means could be is a television camera?3

A Well, I imagine if I was writing these claims I'd have to4

take into account what various peoples might interpret words5

to mean. So, to cover myself, I would make sure that I used6

different ways of saying things, and not necessarily implying7

that there's actually a distinction.8

Q And so you'd use different words to say things without9

implying there's a distinction? Is that what you just said?10

A Yes. For example, suppose that -- suppose that we start11

off with the fact that a television camera is a vidicon, an12

iconoscope, or a flying spot scanner. Now, I, the inventor,13

might know that. Now, when I write the claims I might be14

concerned about someone else thinking that there was a15

distinction, so I'm going to write a dependent claim saying,16

and by the way, Claim 1 where the device is a flying spot17

scanner, or, Claim 1 where the device is a vidicon. I might18

do that in order to make sure --19

Q And here he says -- here he said it's a television20

camera. He didn't go to any of the species that you just21

identified. He wrote a claim --22

A But it's the same concept. The concept is that a23

television camera is a vidicon, iconoscope, or flying spot24

scanner. And he might have been concerned that someone25

HORN - CROSS0073

doesn't group them that way but has a different view of the1

division amongst different devices.2

Q And what you're asking the Court to do in its claim3

construction is to ignore different claims or to find that4

there's no distinction among these claims that use different5

words; right?6

MR. JENNER: Your Honor, at this point I think I7

need to object on two grounds. One, it seems to me this is8

really getting now into the legal issue. And number two,9

nothing in the '061 patent -- no claim, I should say, of the10

'061 patent is any of the claims asserted in this suit or has11

been construed. So this is really going I think beyond12

anything --13

THE COURT: Mr. Lisa, on that last point what would14

the relevance be?15

MR. LISA: The law is absolutely clear in forming16

claim construction you're supposed to consider the claims --17

all the claims.18

THE COURT: Well, I understand what you're going to19

argue to me the law is clear, but with regard to this20

witness's --21

MR. LISA: This witness has stated that every claim22

has to be limited to television camera. And what I'm showing23

is he didn't bother to look at claims that made clear that24

can't be so.25

HORN - CROSS0074

THE COURT: All right. Well --1

MR. JENNER: Well, Your Honor --2

THE COURT: Yeah.3

MR. JENNER: Well, we'll --4

THE COURT: I'm not going to strike it. You all can5

argue what it's covered.6

I have a question. My clerk had queried me on this. 7

We've had several exhibits referenced this afternoon with this8

witness, and let's address whether they're all already either9

in evidence or you're moving them into evidence.10

Now, a lot -- some of them are excerpts of something11

which I think is already received. But as to the exhibits12

marked thus far -- let's just take them globally -- is there13

any objection to any of the exhibits placed thus far before14

the witness today by Mr. Lisa, Mr. Jenner?15

MR. JENNER: Your Honor, I don't think so. I'm not16

sure I've got all of them in hand. But if I -- if I can just17

read off what I've got. 1129A --18

THE COURT: Let my clerk -- 19

Donna, do you have your list?20

THE CLERK: I do.21

THE COURT: Okay. Go ahead.22

THE CLERK: I have 1105; 1127A, which was referred23

to yesterday and is one of the ones in contention.24

THE COURT: Well, 1127A is a -- today's is a sub --25

HORN - CROSS0075

MR. JENNER: That's a piece of the '56 --1

THE COURT: -- a piece of a larger --2

MR. JENNER: Yeah. I think that's a piece of the3

'56 file history. And we don't have a problem with that.4

THE COURT: Right.5

MS. CURTIN: Okay. If I can clarify, Your Honor. I6

realize it's a little confusing, and we apologize. But 1129A,7

1127A, and 1932A are actually all the great big binders. And8

he has been referring to excerpts by page number out of those9

binders for matter of convenience.10

THE COURT: Right. Out of pieces of 1127.11

MS. CURTIN: The A is -- right.12

THE COURT: That's fine.13

MS. CURTIN: The A doesn't refer to the excerpt. 14

The A refers to the fact that those are composites that we15

created --16

THE COURT: Got it.17

MS. CURTIN: -- to clean up the file histories.18

MR. JENNER: So these three we don't have a problem19

with.20

THE COURT: Right. Are there any you do have a21

problem with?22

THE CLERK: 1127A, 1129A, and 1932A is already in23

from yesterday.24

THE COURT: Yeah. Donna, what else do you have25

HORN - CROSS0076

there?1

THE CLERK: Another one I have is Defendant's 1105. 2

And Plaintiff's 3486, which Mr. Lisa referred to earlier. 3

That's also not in.4

MS. CURTIN: Okay. Plaintiff's 3486 is one of those5

that we have the standing objection to and that he was cross-6

examining him on to deal later with the reserved objection.7

THE COURT: All right. Then hold that --8

MR. JENNER: That's the one --9

THE COURT: Hold that out, Donna.10

Any others that are still at issue, then?11

MR. JENNER: 1105. Just relevance. But that's --12

no, we won't --13

THE COURT: Is 3415, Donna, was that already in?14

THE CLERK: 3415 was already in.15

THE COURT: How about -- well, 3429 obviously was.16

THE CLERK: 3429 was already in.17

THE COURT: And 197?18

THE CLERK: That was --19

MS. CURTIN: 197 we are not offering, Your Honor.20

THE CLERK: That was the one they're not offering.21

THE COURT: All right. Okay.22

THE CLERK: Okay. So then 1105 is in, also?23

MR. JENNER: Well, Your Honor, I guess --24

THE COURT: Yes.25

HORN - CROSS0077

MR. JENNER: I'm sorry.1

THE COURT: Go ahead.2

THE CLERK: 1105 is in, also, then?3

MR. CHERNY: We have a relevance objection, but4

we're not going to fight bringing it into evidence.5

THE COURT: All right. All right. That'll be6

received, Donna.7

(Defendant's Exhibit 1105 admitted)8

MR. JENNER: We have one other issue, I guess, which9

counsel points out to me that I guess was raised earlier and10

has not fully been resolved, which maybe we need to do11

tonight. We don't have any problem with these excerpts coming12

if the base prosecution history is in.13

Now, the problem that we do have, which I gather has14

not been resolved, is that defendant has one version of these15

prosecution histories, we have a different version. They have16

made up some kind of a composite version, and it's not clear17

to us yet what that is. I think we won't have a problem with18

it if we can look at their composite version overnight and19

confirm -- 20

THE COURT: Why don't the two of you compare them21

tonight, and you can --22

MR. LISA: They were delivered seven weeks ago --23

six weeks ago.24

MR. JENNER: Well, be -- it's at least a different25

HORN - CROSS0078

copy.1

THE COURT: Okay. But focus on them tonight, and2

you can perhaps resolve that. Okay.3

MR. LISA: And for the record, what we'll do --4

well, I think we did refer to 1129A, and why don't we just go5

ahead and put the whole files in so we --6

MR. JENNER: Which one is that?7

MR. LISA: That's the '72 file history.8

MR. JENNER: That's the same idea. As long as we9

can confirm, no problem.10

THE COURT: Sure.11

MR. JENNER: And excerpts will be no problem,12

either.13

THE COURT: Fair enough. Fair enough.14

MR. LISA: I think all the other file histories were15

delivered yesterday. So this is the only one I haven't yet --16

THE COURT: All right.17

MR. LISA: -- yet delivered.18

THE COURT: All right. Let's take 10 minutes, then,19

and let everybody stretch their legs, and then we'll20

reconvene.21

MR. LISA: I was -- noticed time was off a little22

today, Your Honor, on your clock. What time is it really?23

THE COURT: I don't know. That seems to be pretty24

close.25

HORN - CROSS0079

MR. LISA: Oh. Wait. It's not morning. You're1

right. How about that. I thought it was 9:00 a.m.2

(Court recessed at 2:55 p.m., until 3:21 p.m.)3

THE COURT: Have a seat, folks.4

All right. Go ahead, Mr. Lisa.5

MR. LISA: Thank you, Your Honor.6

BY MR. LISA:7

Q I'm going to hand you, sir, Defendant's Trial Exhibit8

1107.9

MR. LISA: Your Honor, I have one without the staple10

for you right now. Thanks.11

THE COURT: That's fine. And let me see what it is.12

MR. LISA: It's the '626 patent in suit.13

THE COURT: All right. Is there any objection to14

1107, or is that already in?15

MR. JENNER: No, Your Honor. That's -- that's okay.16

It's a patent in suit.17

THE COURT: All right.18

(Pause in the proceedings)19

BY MR. LISA:20

Q Now, sir, you recognize that the '626 patent Claim 8 is21

one of the asserted patents; right?22

A One of the asserted claims.23

Q Yes.24

A Yes.25

HORN - CROSS0080

Q And if you look at '626, Claim 8, you will see that it1

describes, "A method of converting analog information to2

digital form comprising the steps of"; do you see that?3

A Yes.4

Q Do you see anywhere in there where it says "scanning"? 5

Second line. See that?6

A Yeah. Element (a).7

Q "Scanning a varying process." Do you see that?8

A Yes.9

Q Then the very next element is "analyzing a selected10

portion of said analog signal to the exclusion of other11

portions of said analog signal." Do you see that?12

A Yes.13

Q Okay. And the first element, (a), is "generating a14

variable electrical analog signal derived from scanning";15

right?16

A Yes.17

Q Does that say "television scanning"? 18

A It does not. But in the context of the specification19

that's the kind of scanning he's talking about. He's saying20

he's using -- I forget the exact words, but right at the end21

he summarizes it by saying this could be a -- this is a22

television camera or flying spot scanner.23

Q And is it your opinion that the signal in Claim 8, the24

variable electrical analog signal, must then be a video25

HORN - CROSS0081

signal?1

A Yes.2

Q All right. Well, let's look at Claim 9. It's on the top3

of column 67.4

A Yes, I see it.5

Q See it says, "Said variable electrical analog signal is6

generated as an analog video signal"? Do you see that?7

A Yes.8

Q So it's your opinion that Claim 8 already requires that9

the analog signal be a video signal; right?10

A Yes.11

Q So you're asking the Court in its claim construction to12

ignore the differences between Claim 8 and Claim 9; right,13

sir?14

A I'm not a patent lawyer, but the way I would write claims15

is so that they would cover all possible cases. And in this16

case the 8 version doesn't talk about variable -- excuse me,17

doesn't talk about an analog video signal directly.18

Q But, sir, you said the claim -- a moment ago I asked you19

if Claim 1 should be limited to a video signal, and you said20

yes -- in Claim 8 --21

A Claim 8.22

Q -- should be limited to a video signal. And you said23

yes.24

A Yes.25

HORN - CROSS0082

Q Now, is it in your opinion and did you consider -- I'm1

sorry. Strike that.2

In your claim construction did you require that Claim 83

be -- describe a system in which the analog signal is defined4

from a video camera scanning an image? In other words, do you5

construe Claim 8 to require the signal to be defined from a6

video camera scanning an image?7

A It's a television camera producing a video -- analog8

video signal.9

Q That would require, then, that it scan an image; right? 10

It's a television camera in your view?11

A Yes, scanning --12

Q Let's look at Claim 10, please.13

A Okay.14

Q You see that Claim 10 says that the "variable analog15

signal defined in Claim 8 is defined [sic] from a video camera16

scanning an image to be analyzed"? Do you see that?17

A Yes.18

Q And it's your view that that's already a requirement of19

Claim 8; right?20

A Well, naturally, I wondered about these things.21

Q Let's first get an answer to the question.22

A Yes. Yes.23

Q Thank you.24

A Naturally, I wondered about this nesting, providing25

HORN - CROSS0083

successively more specific information when all that's1

disclosed in the common specification is actually using analog2

video signals.3

Q So you found the existence of these different claims with4

different words to be inconsistent with your conclusion that5

all the independent claims already had these limitations;6

right?7

A Not inconsistent. I treated it as a way of an inventor8

to make sure that he gets the maximum coverage by first9

stating something very general and, then just to make sure,10

refining it to be more specific.11

Q Well, that's a good point. First you state it general,12

then you refine it to say something more specific; isn't that13

right, sir?14

A Yes.15

Q That's what a dependent claim does; right, sir?16

A That's correct.17

Q And Claim 8 says absolutely nothing about "video" or18

"television"; right?19

A Not directly. But since it's talking about scanning and20

the only kind of scanning disclosed in the specification is21

that kind of scanning --22

Q So in that case, then, Claim 9 and Claim 10 would each be23

superfluous if your claim construction is adopted; right?24

A From a strict interpretation, they'd be superfluous. I'd25

HORN - CROSS0084

imagine that there's some legal advantage to having both1

statements just in case there's a question about how it's to2

be interpreted.3

Q Well, that's what we're talking about, sir, is how you4

interpreted it. Is there a difference, sir, between '6265

patent Claim 8 and '626 patent Claim 9? Under your claim6

construction is there a difference?7

A I don't see a difference.8

Q Is there a difference, sir, between '626 patent Claim 89

and '626 patent Claim 10?10

A No.11

Q But you certainly agree different words are stated there;12

right, sir?13

A Different words are used --14

Q So, yes, different words --15

A -- and so 9 and 10 are more specific, where the others16

depend on what's in the specification to clarify what is17

meant.18

Q Let's look at the '190 patent. And that's Defendant's19

Trial Exhibit 1115.20

THE COURT: Ms. Clerk, that probably is already in21

evidence. If not, it will be received.22

THE CLERK: Yes, Your Honor.23

BY MR. LISA:24

Q Now, if you'd turn to column 66, you'll see Claim 6, and25

HORN - CROSS0085

hopefully you'll recognize that that is again one of the1

asserted claims.2

A Yes.3

MR. LISA: I said the '190 patent. Okay. For, the4

record, I think I'm -- I said the wrong patent number, I'm5

told, so this is the '190 patent, Your Honor.6

THE COURT: It is. Yeah, '190, Exhibit 1115. And7

we're at column -- I'm sorry -- 66. What was the line number?8

MR. LISA: Line 24.9

THE COURT: Line 24. All right. Claim 6.10

BY MR. LISA:11

Q And you see here, sir, where this is "A method for12

controlling scanning of an image field by a scanning device." 13

Do you see that?14

A Yes.15

Q Look over at Claim 1, which is not asserted, sir. That's16

the bottom. Says, "A method for controlling scanning of an17

image field by a camera." Do you see that?18

A Yes.19

Q You'll agree that the word "scanning device" is a broader20

term than the word "camera"; right?21

A Within the context of the specification -- well, the22

camera is usually taken to be both the image-forming part, the23

lens, as well as the vidicon or iconoscope. So there's some24

distinction there in terminology.25

HORN - CROSS0086

Q There's a difference; right?1

A Between --2

Q "Scanning device" and "camera" there is a difference;3

right?4

A Well, the scanning device would be a television camera. 5

"Camera" without the word "television" potentially could be a6

photographic camera or some other device. Of course, it7

wouldn't make any sense in this context.8

Q In this context you would construe "camera" to be the9

same as "scanning device," that is, a high-bandwidth10

television video camera; right?11

A That's correct.12

Q All right. Now, if you look at clause (a) of Claim 613

over on column 66, see that it says, "scanning an image field14

with said scanning device and generating first electrical15

signals which vary in accordance with variations --"16

A Sorry. Which claim?17

Q Claim 6, sir.18

A Okay.19

Q And look at the first element, paragraph (a), which20

describes the scanning step. Do you see that?21

A Uh-huh.22

Q It says, "scanning an image field with said scanning23

device and generating first electrical signals which vary in24

accordance with --" there's an error there "-- variations in25

HORN - CROSS0087

the image field scanned." You see that?1

A Yes.2

Q All right. No mention there about the signals that are3

generated being video signals; right?4

A Not directly.5

Q All right. If you look over at Claim 1 at the scanning6

step, bottom left-hand column of claim -- column 65, do you7

see how the output signal's defined there, sir?8

A "...generating output video signals," yes.9

Q All right. And what Mr. Lemelson asserted in this case10

is Claim 6, not Claim 1; right?11

A Yes.12

Q And do you see that the rest of the claim elements track,13

as well, between those two claims?14

A Yes.15

Q And so you see, of course, that Claim 6 says, "a scanning16

device," and "generating electrical signals with vary -- that17

vary," whereas Claim 1 says, "a camera" and "output video18

signals"; right?19

A Yes.20

Q And you're asking the Court to construe those two claims21

the same with respect to the scanning element; right?22

A Yes. Because the only scanning device he discloses is a23

television camera or flying spot scanner.24

Q Let's look at the '730 patent.25

HORN - CROSS0088

That's Defendant's Trial Exhibit 1106, which, Your1

Honor, we'd move into evidence.2

THE COURT: No objection, I trust, to the patent. 3

That'll be received.4

(Defendant's Exhibit No. 1106 admitted)5

BY MR. LISA:6

Q If you look at the '730 patent, sir, at Claim 7.7

THE COURT: That's column?8

MR. LISA: 66, Your Honor, at the bottom, line 64.9

BY MR. LISA:10

Q See there that it says, "An automatic scanning system11

comprising"?12

A Yes.13

Q Then it says, "a conveyor for handling a plurality of14

articles to be inspected."15

By the way, you notice that language such as that, "a16

conveyor for handling a plurality of articles to be17

inspected," does not appear in many of the asserted claims,18

does it, sir?19

A That's right.20

Q And you would agree that the Court should not read that21

kind of a limitation into all the claims; right?22

A I don't follow.23

Q Well, do you agree that certainly the claims shouldn't be24

limited to only systems or methods in which a conveyor is25

HORN - CROSS0089

used? Right?1

A That's correct.2

Q Yet that's what Mr. Lemelson shows in Figure 13 and3

Figure 16; right?4

A He shows conveyors in Figure 13 and Figure 16.5

Q But it's okay for that limitation not to appear in all6

the claims; right? In your claim construction you don't7

impose a conveyor limitation on all the claims; right?8

A Right.9

Q Okay. Now, clause (b) says, "an electro-optical scanning10

means disposed adjacent said conveyor for scanning a field11

through which individual articles move as carried by said12

conveyor." Do you see that?13

A Yes.14

Q All right. Now, you would certainly require that that15

scanning device be a standard conventional television scanning16

device; right?17

A That's correct.18

Q Well, let's look at Claim 8, which depends on Claim 7. 19

What does Mr. Lemelson say there about what the electro-20

optical scanning means includes?21

A Well --22

Q Well, let's just first answer the question. What does it23

say?24

A I was about to read it. "Said electro-optical scanning25

HORN - CROSS0090

means includes an X-ray beam scanning device."1

Q All right. That's not a standard television camera, is2

it, sir?3

A And it's also not a device that exists.4

Q Well, sir, answer the question first. It's not a5

standard television signal -- camera, is it?6

A If it existed, it might very well produce a standard7

television camera [sic].8

Q Do you know of any standard NTSC motion picture video9

signals that are X-ray based, sir?10

A I don't know of any X-ray beam scanning device.11

Q And yet you know that Mr. Lemelson certainly includes12

whatever that is in the definition of the scanning device of13

Claim 7; right? Yes or no?14

A He does. And it's hard to interpret what that might be.15

Q So you agree, then, that for this claim it's not proper16

to limit the scanning device to only standard television;17

right?18

A No, I don't agree. What I said is that if this mythical19

device that's called an X-ray beam scanning device existed, it20

might very well produce an analog video signal like a21

television picture. In fact, you know, that was my impression22

of what it did, you deflected an X-ray beam and you produced23

some signal that responded to whatever's out there.24

Q That's a standard 3 to 4 megahertz high-bandwidth25

HORN - CROSS0091

television signal, sir?1

A For it to work in his invention it would have to be set2

up that way.3

Q Sir, you know of no such device, do you?4

A Well, there is no X-ray beam scanning device. But for it5

to work with the rest of his circuitry, it would have to6

produce a standard analog video output.7

Q Because you construe every device to be that way; right?8

A Because the only support in the specification is for9

signals of that type.10

Q By the way, let's look at Claim 9 while you're at it. 11

That's at column 67. That claims says, "Said electro-optical12

scanning means includes a beam scanning device operative to13

scan while an article is in motion along said conveying means14

and in its scanning field." Do you see that?15

A Yes, I see that.16

Q That's another thing you say that's not possible in the17

Lemelson spec, right?18

A Yes, and I'm -- I was very surprised by that claim19

because the whole moving object issue was put to rest by the20

Patent Office during the prosecution history.21

Q While we're on the '730 patent let's look at Claim 11.22

A Sorry?23

Q Claim 11, clause (a). Do you see there he actually does24

say "First means for scanning a standard image field and25

HORN - CROSS0092

generating a first video signal of said scanning which varies1

in accordance with variations in said image field." Do you2

see that?3

A Yes.4

Q Now in your view that would include a composite signal if5

it was in fact a standard NTSC scanning signal; right?6

A I'm not sure where you're going with that. I would say7

this was a signal produced by a television camera or flying8

spot scanner --9

Q Is that a --10

A -- and it would be an analog video signal.11

Q -- is that a -- is that -- in your view, is that a12

composite signal, sir?13

A That most likely is a composite video -- excuse me, a14

composite signal, although at the level of detail he provides15

you can't tell whether it has all the sync signals in it or16

not.17

Q All right.18

A I believe he actually somewhere mentions that19

possibility.20

Q Well, you certainly see that in Dependent Claim 12 he21

further defines the video signal as a composite signal,22

including framed vertical sync pulses; do you see that?23

A Yes.24

Q So there he undertakes to further define the video signal25

HORN - CROSS0093

to make it clear that it's a composite signal; right?1

A Which is consistent with what I said that the signal in2

11 could be the signal from a TV camera before you've added3

the composite sync pulses to it.4

Q Let's look at the '073 patent.5

A Sorry, which one?6

Q '073, Defendant's Exhibit 112.7

THE COURT: All right. That will be received, Ms.8

Clerk.9

(Defendant's Exhibit No. 112 admitted)10

BY MR. LISA: 11

Q Let's go to '073, Claim 7, which you'll recognize as an12

asserted claim.13

MR. JENNER: Asserted patent?14

MR. LISA: '073?15

MR. JENNER: Yeah, asserted patent. You said16

asserted claim.17

MR. LISA: Oh, I'm sorry. Asserted patent. Thank18

you.19

BY MR. LISA: 20

Q '073, Claim 7. And there you'll see that Mr. Lemelson21

recites a method for inspecting an image field to determine if22

a select image phenomenon is present in said image field23

comprising and now the scanning element is scanning an image24

field containing at least one optically contrasting image25

HORN - CROSS0094

portion which is detectable with an electro-optical scanning1

means. Do you see that?2

A Mm-hmm.3

Q And while we're on that subject, you recall in your4

expert report that you gave testimony or said in presented5

opinions that you felt or believed that many of Mr. Lemelson's6

claims were what you characterized as means for step-plus-7

function claims? Do you remember addressing that in your8

expert report?9

A Yes. That was a long time ago but I do remember that.10

Q All right. And just to be clear you did not offer a11

single opinion on direct examination regarding whether any of12

Mr. Lemelson's claims fell within Section 112, paragraph 6,13

the means-plus-function or steps-plus-function requirements of14

the statute, right?15

A That's correct. I did not give any evidence in direct16

examination.17

Q Now, if you look at '073, Claim 7, there is nothing in18

there regarding whether or not this is a camera or a19

television camera on the scanning element; right, sir?20

A Let me just check. Yes, it does not mention a camera.21

Q And if you look at Claim 10, which is not asserted, do22

you see that there's a method for inspecting an image field to23

determine if a select image phenomenon is present in said24

image field and there the scanning, it says at the bottom of25

HORN - CROSS0095

the paragraph, "wherein said scanning means includes a1

camera." Do you see that?2

A Yes, I see that.3

Q "And means for effecting controlled relative movement4

between said camera and said image phenomenon in a field which5

is greater in area than the scanning field of said camera." 6

Do you see that?7

A Yes.8

Q All right. So there's a situation where Mr. Lemelson9

added limitations to further define the electro-optical10

scanning means as a camera and means for effecting relative11

movement; right?12

A Yes, as well as changing some of the other claim13

elements.14

Q But in this claim he elected to call it a camera, right?15

A In element (a).16

Q Right. And that claim's not asserted, is it?17

A I don't believe so.18

Q Let's look at the '038 patent which is Defendant's Trial19

Exhibit 110 which we'd move into evidence, Your Honor. If20

you'll turn to column 67 you will find '038 patent, Claim 10,21

which hopefully you'll recognize as one of the asserted22

claims?23

A Okay.24

Q I'm sorry, it's not asserted. I'm sorry. And if you25

HORN - CROSS0096

look at Claim 10 the -- recites a method for scanning and1

generating image information, "said method comprising2

generating a radiation beam and then controllably moving said3

beam to cause said beam to scan an image field." Do you see4

that?5

A Yes.6

Q In your view that would require that it be a standard7

television camera; right, sir?8

A Yes, the radiation beam would be the electron beam in the9

camera.10

Q And are those beams -- does that -- does it -- in a11

standard television do the beams trace out parallel lines on12

the face of the CRT?13

A Yes.14

Q All right. Well, let's look at Claim 12. "A method in15

accordance with Claim 10 wherein said radiation beam is16

controllably moved to scan a plurality of paths which are17

angulated with respect to each other." Do you see that?18

A Yes.19

Q That would exclude a conventional television camera,20

wouldn't it, sir?21

A It would be a camera that had some modification in the22

deflection circuits that's not supported by the common23

specification.24

Q So it's claiming something that you say is not there;25

HORN - CROSS0097

right?1

A That's right. I guess the notion would be that a person2

of ordinary skill in the art would somehow figure out how to3

do that, but --4

Q So in your view a person skilled in the art would know5

how to take a conventional television camera and make it scan6

at a plurality of angles; right?7

A No, I wouldn't agree that a person of ordinary skill in8

the art could do that. I'm saying that who wrote this claim9

might have had that notion.10

Q You certainly agree that this claim is absolutely11

inconsistent with your claim construction that requires a12

standard television picture signal; right, sir?13

A It's inconsistent with what's in the common14

specification.15

Q By the way, if you look at Claim 18 you'll see that that16

depends on Claim 10 as well?17

A Yes.18

Q See that it says there that the plurality of paths are19

parallel with respect to each other?20

A So that describes the raster scan.21

Q Right. But the other claim doesn't?22

A Yes, and where in the specifications is it explained how23

to do that?24

Q So what you see, sir, is that Mr. Lemelson presented a25

HORN - CROSS0098

number of different claims describing and scanning elements in1

a number of different ways, right?2

A Sorry. He presented --3

Q A number of different scanning elements in a number of4

different ways in the claims that he presented to the Patent5

Office; right?6

A Okay. The claims element. Yes.7

Q And the Patent Office decided to allow those claims,8

right?9

A Yes.10

Q And in fact you know it took Mr. Lemelson a lot of years11

to get those claims out; right?12

A Well, I gather so, yes.13

Q Well, it was one of the reasons why you thought what he14

said -- what he did was unfair is 'cause it took so long for15

him to get 'em; right?16

MR. JENNER: Objection, Your Honor. There's no17

foundation, there's no evidence as to how long it took to get18

any particular claim out and especially the ones in this19

patent. There's no evidence about that.20

THE COURT: Sustained.21

MR. LISA: All right. 22

BY MR. LISA: 23

Q Sir, you're asking the Court to ignore the differences24

that we just pointed out in these claims, aren't you?25

HORN - CROSS0099

A What I'm saying is that they're --1

Q Let's first get an answer to my question. Are you asking2

the Court to ignore the differences that we just spent the3

last hour and a half going over with respect to the scanning4

element?5

A I'm not asking that to be ignored. I'm unable to explain6

some of the inconsistencies between what's in some of the more7

obscure claims that we see here, such as the one about X-ray8

scanners and what's actually disclosed in the common9

specification.10

Q Now is that an answer that your counsel told you to give11

during the break when they were talking to you outside in the12

hallway, sir?13

A Not at all, and I resent the implication.14

Q All right.15

A I can tell you exactly what I was told. One was that16

you're going -- you're doing okay, hang in there, and the17

other one was something about the glass structure on top of18

the entrance we were conjecturing whether it was similar to a19

geodesic dome.20

Q And last night did you talk about similarly esoteric21

issues, or did you talk about the claims and the patents?22

A Last night we talked about the three prior art patents23

that you brought to my attention that I hadn't seen for over a24

year.25

HORN - CROSS00100

Q And again this morning you did as well, right?1

A We -- well, I explained earlier what we talked about.2

Q Now, sir, you of course recognize that I could, over the3

next several hours address each and every one of these topics4

put forth in your chart and roll out claim after claim, and5

dependent claims, that shows that there are very clear6

differences among the 600-some claims that issued in Mr.7

Lemelson's patents; right?8

A I don't know whether you can do that.9

Q Well, you know that he used, in your words, many10

different words to describe the analyzing elements; right?11

A That's correct.12

Q And do you also know that he has some claims that are13

very specifically addressed to gating, which you say must be14

in every claim element, right, every claim -- every claim must15

be limited to gating; right?16

A Yes.17

Q All right. And you know we looked yesterday at the '37918

patent, the patent from the 1956 application, and that had19

claims in it describing gating, didn't it?20

A Yes. When we looked at those claims we noted that at21

that time the claim language was very carefully detailed,22

laying out in each element exactly what is to be done, which23

is in stark contrast to the claims that we've studied later24

where the claims are very short and very general, and you had25

HORN - CROSS00101

to resort to the common specification to interpret them. You1

couldn't simply read the claim and really know what's going2

on.3

Q So you didn't have to read -- you don't have to read4

narrow claims in light of the specification then, only the5

broad ones, right?6

A No, that's not what I said. You have to read all claims7

in terms of the common specification, but the earlier claims8

are much easier to understand on first reading because all of9

the details are laid right out there.10

Q Now is that something you discussed last night with11

counsel?12

A No.13

Q Didn't discuss the claims of the '379 patent with14

counsel?15

A Let me first answer that other part. In fact, I brought16

that up in a way yesterday when you were talking to me.17

Q What I asked first was whether you addressed that issue18

with counsel last night, the claims of the '379 patent?19

A The claims of the '379 patent? I don't recollect,20

but --21

Q How about this morning?22

A Certainly the opinion I just gave you was not something23

that I got from counsel --24

Q You don't recall?25

HORN - CROSS00102

A -- because yesterday I was about to address that with you1

when you cut me off.2

Q Okay. So I think the words you used were the later3

claims are in stark contrast to the earlier claims, right?4

A Yes.5

Q So what you're -- what you're asking the Court to do is6

to take these stark contrasting claims and construe them all7

to include a gating limitation; right?8

A Yes.9

Q And you're asking him to read in that gating limitation10

from the common specification, right?11

A And the supporting figures --12

Q All right. And --13

A -- excuse me, and the prosecution history.14

Q And you certainly recognized that not a single claim15

asserted in this case includes expressly any gating16

limitation; right?17

A I don't recollect, but I wouldn't be surprised which goes18

to the point I was making.19

Q In fact, sir, you limit -- or ask the Court to read into20

every claim a requirement that the analyzing step perform a21

comparison between a test image and a reference image; right?22

A Yes.23

Q And yet you know that there are numerous figures in the24

patent and numerous embodiments in the patent that don't show25

HORN - CROSS00103

any such comparison at all; right?1

A Sorry, let me just go back over my claim interpretation2

for the analyzing term.3

Q The analog -- would you state on Exhibit 3429 under4

analyzing, is the analog video signals derived from scanning a5

standard object and a test object?6

A Yes.7

Q And so you have imposed on this limitation a requirement8

that analyzing require scanning a standard object and then a9

test object and recording, in synchrony on separate tracks,10

preselected lengths of the test and the standard signals;11

right?12

A And you've conveniently cut if off where it says, "and/or13

gating signals." The notion is that there are two kinds of14

analyzing, one involving a point-by-point comparison with a15

standard video signal on another track, the other involving16

checking for inflections in a gating area on another track17

derived from a standard object. In other words, telling you18

where the inflections would be in the standard object.19

Q Now you realize in your expert -- we're going to go back20

to that in a second. You realize in your expert reports you21

took the position that the only thing described was comparison22

to a test and reference image signal; right?23

A If you take comparison to include the point-by-point24

comparison and the test for whether one signal has an25

HORN - CROSS00104

inflection where the other one has, then that would be1

correct.2

Q And in fact, just to be clear for the record, if we turn3

to your Exhibit 17A and look at, for example, Figure 4,4

there's certainly no standard picture signal recorded there;5

is there, sir?6

A That's correct. The gating signals on tracks C3, C4, C57

are derived from a standard signal and they indicate where the8

standard signal is expected to have inflections. So this is9

the second case I describe.10

Q But there's certainly no test signal stored in synchrony11

with the -- I'm sorry, strike that. There's certainly no12

standard image signal stored for comparison to the test image13

signal; right, sir?14

A In this case the video signal stored on the tape is the15

test signal. The standard signal is only used to create the16

gating regions that I describe.17

Q All right. Of course you recognize there are numerous18

gating signals there of different lengths and widths, do you19

see that? Different lengths, I mean.20

A Yes.21

Q Okay. 22

A And they're used to deal with different departures from23

the correct position.24

Q So this in a -- this particular embodiment has on one25

HORN - CROSS00105

track a very wide gating signal, that's track C3; do you see1

that?2

A Yes.3

Q And then above that is a slightly narrower gating region;4

right?5

A Yes.6

Q And then above that yet a further narrower region; right?7

A Yes.8

Q And what that enables is for what you said various9

differences in the positioning of the object; right?10

A No, it's for dealing with manufacturer variations so that11

the various outputs on the right, I2, I2, 3, I4, I5, I6, et12

cetera can be used to classify, if you like, products that13

were manufactured better or worse, so.14

Q Now let's investigate that a second. By manufacturing15

tolerances you mean differences in the size of an object16

that's being made, for example?17

A Manufacturing variations.18

Q What does that mean, sir?19

A That it's not identical to the standard object.20

Q All right. And I take it then that it's your opinion21

that these gating signals get set in accordance with the22

manufacturing tolerances that are at issue on a particular23

assembly line, for example?24

A Well, they'd be set based on some standard object that25

HORN - CROSS00106

was the desired manufactured result.1

Q How would that -- I mean, how would that be determined?2

A Well, presumably the manufacturer has a description or a3

drawing of the product he's trying to make, so the -- its4

shape and size would be known.5

Q So that the manner in which you configure the gating6

signals in this particular Figure 4 depend on, for example,7

what's being manufactured; right?8

A Yes, the placement, for example, of these P1 -- I can't9

quite read them on this copy, P1 through P4, would depend on10

where an inspection is expected based on the particular object11

that's being manufactured.12

Q So is it your testimony then that in order to properly13

configure the system as shown in Figure 4 you have to have14

some knowledge of the manufacturing process that's -- of the15

object being manufactured?16

A The gating signals are based on the -- of an image of the17

standard object.18

Q The question, sir, I asked for a yes or no answer. Is it19

your testimony that in order to configure the gating signals20

in Figure 4 you have to have knowledge of the manufacturing21

process?22

A No, you need to have some way of putting gating signals23

on the magnetic tape.24

Q Well, how do you know what they are if you don't know25

HORN - CROSS00107

what is being manufactured and what the tolerances are?1

A Well, you were saying that you have to know something2

about the manufacturing process. I'm talking about knowing3

about the object. In other words, there's an engineering4

drawing for that object and there's a prepositioning device5

that places it in a certain position and that's what's going6

to tell you where the inflections are inspected or not7

expected -- not --8

Q So you're saying that while you -- while they define9

manufacturing tolerances, you don't have to know what's being10

manufactured or what the tolerances are?11

A Sorry, say that again?12

Q All right. The person who's asked to configure the13

system of Figure 4 must know what the manufacturing tolerances14

are, in your view, right?15

A Okay. So now you're talking about the width of these16

gating signals?17

Q Yes, sir.18

A The intent, I believe, is that you will produce a signal19

that indicates a certain deviation from normal manufacturing20

conditions.21

Q The intent is that this system, in your view then, be22

used in a manufacturing process; right?23

A In my view this is producing some --24

Q Sir, let's --25

HORN - CROSS00108

A -- output. 1

Q Let me ask --2

A I'm not -- I'm not saying that it's necessarily used in a3

manufacturing process as --4

Q Then why -- then why do you say that those signals define5

only manufacturing tolerance and not positional tolerance?6

A Because Lemelson, when talking about these signals, says7

that they're there to deal with manufacturing variations.8

Q And manufacturing variations, sir, include positional9

variations, don't they?10

A No, they don't.11

Q Cognex --12

A You bring the -- excuse me, you bring the part into a13

prepositioned alignment in front of the camera and it might be14

slightly smaller or larger than you've designed, but it's15

still prepositioned and aligned. There's no allowance for the16

-- for departure from its correct position.17

Q Sir, you know Cognex's own literature says that you draw18

a region of interest in which to inspect for alignment marks19

to allow for positional variation in the manner in which an20

inspected object is placed in front of the camera; right?21

A No, I don't know that, and the use of the region of22

interest is completely at odds with the use of these gating23

signals here. The region of interest is used to improve the24

efficiency of a computation, and it's typically based on25

HORN - CROSS00109

previous computation. In other words, you first find the1

object, then you say, okay, now, I don't want to process the2

whole image I just want to process this region. Whereas here3

we're talking about a narrow region that defines where an4

inflection is to be found if you know already that the object5

is there. The two things are completely unrelated.6

Q All right. So, sir, in your view, if Mr. Lemelson's7

system is inspecting a bottle, such as this bottle of water8

placed on the lectern, these gating signals will allow for9

manufacturing tolerances in the widths or dimensions of the10

object and still work properly, but won't allow for the object11

to be displaced slightly left or right; is that your12

testimony?13

A Well, first of all --14

Q Yes or no, is that your testimony?15

A No, it's not. What I'm -- what I'm saying is that16

Lemelson tells you to preposition it, the -- and he tells you17

that the purpose of these zones is to allow for manufacturing18

variations. Now you want to depart from his design and say,19

let's not preposition and let's pretend that these tolerance20

zones are there to allow for small movements of the object. 21

Now you're using them for two different purposes, and if22

there's a manufacturing variation and a small shift you'll be23

outside the zone.24

Q How about if there's no manufacturing variation and a25

HORN - CROSS00110

small shift?1

A Well, there's always manufacturing variations.2

Q What if there's not, sir?3

A It goes counter to --4

Q Sir, what if --5

A -- what he tells you to do.6

MR. JENNER: Objection, Your Honor. The witness is7

now answering the question, and I request that he be permitted8

to answer.9

THE COURT: Yeah. He is. That's not a question10

that calls for yes or no.11

Go ahead.12

BY MR. LISA: 13

Q If the manufacturing tolerances are tight and the gating14

signals in Figure 4 are drawn wide, that will allow for15

variation in position won't it, sir?16

A That's not what they're designed for.17

Q Sir, the -- that called for a yes or no answer.18

A It's not -- excuse me.19

Q Want the question back again?20

A Small variations in position might cause the inflections21

to still fall within the -- within the gating signals, but22

that's not what they're for.23

Q So I think we now agree, sir, that in Figure 4 Mr.24

Lemelson does not show a standard image stored for comparison;25

HORN - CROSS00111

right?1

A He shows only gating signals derived from a standard2

image.3

Q He doesn't show a standard image signal; right, sir?4

A Yes.5

Q And you just agreed that if the manufacturing tolerances6

are tight and the gating signals are drawn large, there is7

some accommodation for what you called at least slight8

movement in position; right? Yes or no.9

A Yes. And again with the provision that that's not what10

they're there for, and if you have, in addition, manufacturing11

variations you'll then fall outside the gated regions.12

Q Now if you look at Figure 5, sir, of the patent, that's13

another one in which there's no standard image signal stored14

for comparison purposes; right?15

A There's only a gating track --16

Q Sir.17

A -- derived from a standard --18

Q Again, let's just try and focus on the question. There19

is no standard image signal stored for comparison; right?20

A That's correct.21

Q And to speed things along, in Figures 6, 7, 8, and 922

there are no standard image signals stored for comparison23

purposes; right, sir?24

A That's right. The only gating signal is based on25

HORN - CROSS00112

standard images.1

Q And you also know that at least with respect to Figures 72

and 9, Mr. Lemelson said in column 20 that you don't need to3

use the gating signals; right?4

A He says that, but of course you don't get useful results5

if you do that.6

Q So if we look at your analyzing definition that you have7

on Exhibit 3429, you certainly see that there are many figures8

and many embodiments that don't require the standard signal to9

be stored; right? Yes or no?10

A Yes. I'm just rereading this. Obviously conciseness was11

an issue here and I'm looking for the text that says that12

either a standard signal or gating signals derived from a13

standard signal are stored on the magnetic tape.14

Q All right. Well, that's in the third line; it says,15

"Test, standard and/or gating signals." 16

A Plus sync and gating signals.17

Q So you certainly agree that there are several embodiments18

that we just pointed to that don't require the storage of19

standard signals, right?20

A That don't involve directly storing the standard signals.21

Q Sir, there are several embodiments that don't require22

storage of a standard signal; right?23

A Yes.24

Q And there are several embodiments that don't require25

HORN - CROSS00113

analyzing a standard signal, right?1

A The same answer, again, that they used the gating2

signals --3

Q Let's start over. Is that a yes or no?4

A Yes. There are several figures that show instead gating5

signals derived from a standard signal.6

Q And what we know from column 20 and Figures 7 and 9 is7

that while the gating signals are stored, Mr. Lemelson says8

that you can analyze the image signal without using them;9

right? Column 20.10

A That's correct, in column 20 he makes various11

suggestions, including those, and you know what the rest of my12

answer would be.13

Q Okay. Now your definition of memory --14

THE COURT: With that, it would be a good time to15

break.16

MR. LISA: Okay. Thank you, Your Honor.17

THE COURT: We'll --18

MS. CURTIN: Your Honor, I have on my notes that19

Exhibits 110 and 112 were offered but not admitted. Could20

we --21

THE COURT: Those are two patents --22

MS. CURTIN: Yes, sir.23

THE COURT: -- that were -- those are received. 24

Those are received. All of the patents are received.25

00114

MR. LISA: Thank you, Your Honor. 1

(Defendant's Exhibit No. 110 admitted)2

THE COURT: All right. 3

MR. LISA: Do you have an indication, Your Honor, I4

know we're trying to keep time of how much time I actually5

have left? I've lost track over these few days.6

THE COURT: Well, because of the shortened day we'd7

been almost two and a half days on direct, and I'll have to8

tally it back up. How much longer do you need?9

MR. LISA: Well, one of the problems I have is we10

have a number of charts that went in by summary fashion, and I11

haven't quite figured out yet how to deal with them and I12

indicated that it might be a problem doing so. I'm -- my13

guess would be another hour and a half, couple hours, two14

hours. Which I think they had about 11 and I should be at15

about 8 1/2 or 9 right now.16

THE COURT: Well, probably close to that. I'll give17

you -- I'll give you another two hours.18

MR. LISA: Thank you, Your Honor.19

THE COURT: You can use that tomorrow if you need it20

and --21

MR. LISA: I'll try and shorten it up if I can.22

THE COURT: Great. All right. Thank you, everyone.23

(Court recessed at 4:04 p.m. until the following day,24

December 11, 2002, at 8:30 a.m.)25

00115

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

DR. BERTHOLD HORNCross-Examination by Mr. Lisa 11

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

110 Patent 115112 Patent '073 951105 Lemelson '061 Patent 791106 Lemelson '730 Patent 90

00116

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