`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`ANDERSEN CORPORATION,
`Petitioner
`
`v.
`
`GED INTEGRATED SOLUTIONS, INC.,
`Respondent
`
`
`Case DER2017-00007
`Petitioner Application No. 15/058,862
`Respondent Patent No. 9,428,953
`
`
`
`
`
`
`
`
`
`Before JONI Y. CHANG, JOSIAH C. COCKS, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. A TRADITIONAL INTERCEPT® SPACER WITH THE SEAM
`MOVED AWAY FROM THE CORNER IS THE DESIGN
`CLAIMED IN THE ’953 PATENT ............................................................... 2
`A. Oquendo’s and Briese’s Documents Confirm Moving from a
`Corner Seam to a Butt-Joint Seam Is the Novel Concept .................... 2
`B. Oquendo’s Design Includes a Stop Away from the Corner ................. 3
`C.
`The File History Confirms Moving the Seam From the Corner
`Is the Novel Aspect of the Claims ........................................................ 8
`D. Oquendo’s Testimony Confirms Moving the Seam From the
`Corner Is His Inventive Concept ........................................................ 10
`III. OQUENDO’S NOVEL DESIGN WAS COMMUNICATED TO
`BRIESE ......................................................................................................... 12
`IV. THE ’953 PATENT CLAIMS ARE DERIVED FROM OQUENDO ......... 16
`V.
`BRIESE’S DECLARED IGNORANCE CANNOT SAVE THE ’953
`PATENT CLAIMS ....................................................................................... 21
`VI. GED FAILED TO IDENTIFY ANY LIMITATION NOT DERIVED
`FROM OQUENDO ...................................................................................... 23
`A. Oquendo Conceived and Communicated a Stop Spaced From
`the Corner ........................................................................................... 25
`B. Oquendo Conceived and Communicated a Lateral Connection
`Spaced From the Corner ..................................................................... 26
`C. Oquendo Conceived and Communicated a Stop That Is
`Locatable Over Repeated Assemblies ................................................ 30
`D. Oquendo Conceived and Communicated Stiffening Flanges ............ 30
`E.
`Oquendo Conceived and Communicated Four Identically
`Constructed Corners ........................................................................... 31
`Oquendo Conceived and Communicated Concentrically
`Aligned Apertures .............................................................................. 31
`
`F.
`
`
`
`
`
`-i-
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`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`G. Oquendo Conceived and Communicated an Abutment Stop
`Defined by a Notch, a Gap in the Stiffening Flanges, and a
`Bump in a Sidewall ............................................................................ 31
`VII. CONCLUSION ............................................................................................. 33
`
`
`
`
`
`-ii-
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`

`

`DER2017-00007
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Price v. Symsek,
`988 F.2d 1187 (Fed. Cir. 1993) .......................................................................... 24
`Weiss v. Woodman,
`20 C.C.P.A. 1211, 65 F.2d 274 (C.C.P.A. 1933) ............................................... 21
`
`
`
`iii
`
`

`

`DER2017-00007
`
`Updated Table of Exhibits
`
`Declaration of Brian Parker
`
`Declaration of Katherine Graham
`
`Exhibit No. Document Name
`Declaration of Sammy H. Oquendo
`1001
`1002
`1003
`1004
`1005
`
`U.S. Patent Application No. 15/058,862
`
`U.S. Patent No. 9,428,953
`
`1006
`
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`
`Claim Comparison Between U.S. Patent Application No. and
`U.S. Patent No. 9428953
`
`Description of Intercept® Spacer Technologies
`
`Photographs of a Traditional Intercept® Spacer Frame
`
`Intercept® Spacer Frame Finished Quality Specifications
`
`Photograph of Poorly Sealed Fourth Corners
`
`Photographs of Mr. Oquendo’s March 2009 Prototype
`
`Mr. Oquendo’s CAD Drawing Dated May 14, 2009
`
`Mr. Oquendo’s CAD Drawing Dated June 5, 2009
`
`June 15, 2009 Oquendo Request to Change Tooling
`
`June 5, 2009 Oquendo Email to Silver Line
`
`June 8, 2009 Oquendo Email to Alex Bredemus
`
`November 28, 2006 Confidentiality Agreement
`
`McGlinchy March 16, 2009 Email to Silver Line
`
`Glass Symposium Review
`
`GED's Schematic 4th-Corner Patching Station
`
`iv
`
`

`

`DER2017-00007
`
`1021
`1022
`1023
`1024
`1025
`
`1026
`
`1027
`1028
`1029
`1030
`1031
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`May 29, 2009 Briese Email to Oquendo
`
`Oquendo Certification of Completion
`
`Briese January 12, 2011 Email to Oquendo
`
`Attachment to Briese Jan. 12, 2011 Email to Oquendo
`
`GED’s Marketing Sheet for Intercept® Corner Plus
`
`3-11487(DIE) Mod request Model _3-11493 (Punch) Mod
`request
`
`Silver Line IG Quality NB Report
`
`Silver Line IG Quality Lansing Report
`
`Screenshot showing creation date of June 5, 2009 of Ex. 1013
`
`Telephone Conference Proceedings from January 27, 2017
`
`Claims Filed with U.S. Patent Application No. 15/058,862
`
`GED’s June 10, 2016 Amendments and Remarks Regarding U.S.
`Patent Application No. 14/703,027
`
`Andersen’s March 2, 2016 Response to Restriction Requirement
`and Preliminary Amendment Regarding U.S. Patent Application
`No. 15/058,862
`
`Dec. 11, 2016 Non-Final Office Action for U.S. Patent Appl. No.
`15/058,862
`
`Dec. 11, 2016 List of References Cited by the Examiner
`Regarding U.S. Patent Application No. 15/058,862
`
`Dec. 11, 2016 List of References Cited by the Applicant and
`Considered by the Examiner Regarding U.S. Patent Application
`No. 15/058,862
`
`Dec. 11, 2016 Examiner’s Search Strategy and Results
`Regarding U.S. Patent Application No. 15/058,862
`
`v
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`

`

`DER2017-00007
`
`1038
`1039
`1040
`
`1041
`
`1042
`1043
`1044
`1045
`1046
`1047
`1048
`1049
`
`1050
`
`1051
`1052
`
`1053
`
`1054
`1055
`
`Petition Filing E-mail Chain
`
`Proof of Service
`
`APPENDIX B: Protective Order Guidelines (based on the trial
`rules).
`
`Timeline for Patent Applications No. 15/058,862 and No.
`14/703,027
`
`Manske Declaration
`
`2017.02.14 - Telephone Conference Transcript
`
`2017.11.09 - Telephone Conference Transcript
`
`2018.04.17 - Initial Conference Call Transcript
`
`Errata Sheet for Brian Parker
`
`Errata Sheet for Sammy Oquendo
`
`Discovery Requests
`
`Intercept® Spacer Frame Finished Quality Specifications -
`Exhibit 1009 written on by W. Briese at deposition
`
`U.S. Patent No. 9,428,953 - Exhibit 1005 written on by W.
`Briese at deposition
`
`Mr. Oquendo’s Spacer Frame Prototype
`
`Attachment to Briese Jan. 12, 2011 Email to Oquendo – Exhibit
`1024 written on by W. Briese at deposition
`
`Briese Inventor’s Notebook Detail from April 17, 2014 – Exhibit
`2031 written on by W. Briese at deposition
`
`Purchase Order Terms and Conditions
`
`Mutual Confidentiality Agreement
`
`vi
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`

`

`DER2017-00007
`
`1056
`
`1057
`1058
`
`
`
`
`Corner+ Spacer Frame (for purposes of filing of this Reply,
`photographs of the spacer frame taken by counsel for Andersen
`are provided under the exhibit number)
`
`Briese Deposition Transcript
`
`McGlinchy Deposition Transcript
`
`
`
`vii
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`DER2017-00007
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`I.
`
`Introduction
`
`The record evidence establishes Sammy Oquendo conceived of the spacer
`
`claimed in GED’s ’953 patent and communicated that idea to Bill Briese. In 2009,
`
`Oquendo proposed to Briese that the Intercept® spacer be modified to move from
`
`a corner seam to a butt-joint seam away from the corner. In January 2011, Briese
`
`sent a drawing to Oquendo of what he “thought Mr. Oquendo was talking about in
`
`2009,” but stated “GED does not recommend the fabrication of Intercept spacers in
`
`this manner.” In April 2014, however, Clifford Weber allegedly suggested to
`
`Briese the same idea of moving the seam off the corner. Briese then recalled the
`
`drawing he had made for Oquendo three years earlier and used that same drawing
`
`to document an April 2014 “invention” of Oquendo’s idea. Briese also used the
`
`2011 drawing as a template for creating tooling drawings to make the alleged
`
`“invention” and filed for a patent claiming Oquendo’s idea but naming Weber and
`
`Briese as inventors.
`
`GED now argues Oquendo’s idea is different from the patent claims because
`
`Oquendo’s idea allegedly did not include a stop. But the evidence, including
`
`Briese’s own testimony, establishes Oquendo’s idea includes a stop in the form of
`
`stiffening flanges that abut at the butt-joint seam. These stiffening flanges are
`
`already present along all sides of a traditional Intercept® spacer and abut at the
`
`corner seam, creating a stop. When the seam is moved from the corner as Oquendo
`
`
`
`1
`
`

`

`DER2017-00007
`
`proposed, the stiffening flanges remain and abut at the butt-joint seam when the tab
`
`is inserted, creating a stop spaced from the corner, as Briese admitted at his
`
`deposition.
`
`The’953 patent therefore claims the spacer that results from modifying a
`
`traditional Intercept® spacer to move the seam off the corner. That idea was
`
`communicated from Oquendo to Briese in 2009 and 2011. The ’953 patent claims
`
`were derived from Oquendo and must be canceled.
`
`II. A Traditional Intercept® Spacer With the Seam Moved Away From the
`Corner Is the Design Claimed in the ’953 Patent
`
`A. Oquendo’s and Briese’s Documents Confirm Moving From a
`Corner Seam to a Butt-Joint Seam Is the Novel Concept
`
`The ’953 patent claims’ novel aspect is moving the seam off the corner to
`
`form a butt-joint seam. This is how Oquendo described his idea in June 2009 in
`
`internal email correspondence, X1016 (“Relocation of the spacer seam off the
`
`corner”), and CAD drawings, X1015 at 2 (“OFF CORNER SEAM”). Briese had
`
`the same understanding, as he described Oquendo’s idea as “[c]hanging the tab
`
`insertion to a butt-joint instead of a corner joint.” X1021. Briese admits the phrase
`
`butt-joint “meant a folded spacer frame configuration where the seam resulting
`
`from assembly of the frame was located along a wall rather than at a corner.”
`
`X2032 at ¶ 33.
`
`2
`
`

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`DER2017-00007
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`Briese’s “inventor” notebook confirms moving the seam from the corner is
`
`the novel aspect, stating “NEW DESIGN IS BUTT-JOINT VS. CORNER JOINT
`
`(EXISTING).” X2031 at 1. The “positive stop” was not identified as the new
`
`design but was instead listed as the fifth of five resulting advantages of changing to
`
`a butt-joint seam:
`
`
`
`
`
`
`
`X2031 at 1. Notably, Briese admitted the 2011 drawing made at Oquendo’s
`
`direction includes the other four identified advantages. X1057 at 156:7-157:9,
`
`158:5-159:5.
`
`B. Oquendo’s Design Includes a Stop Away From the Corner
`
`Modifying an Intercept® spacer to move from a corner to a butt-joint seam
`
`as Oquendo proposed creates a stop away from the corner. Intercept® spacers are
`
`formed from a single strip of metal, with “V”-shaped notches cut using a punch
`
`and die system to facilitate folding at the corners. The cut for the three identically
`
`formed corners is seen in Punch Detail #2 in the below figures from GED’s
`
`Specifications:
`
`3
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`

`

`DER2017-00007
`
`
`
`
`
`X1009 at 5; see also X1057 at 26:4-7.
`
`The fourth corner is at the seam created when the tab is folded and inserted
`
`into the tail. The “V”-shaped notch cut to create the fourth corner is seen in Punch
`
`Detail #1. X1057 at 27:2-5. The notch is cut where the tab connects with the
`
`remainder of the spacer, indicated by the red triangle above. Additionally, an
`
`angled cut is made at the tail, indicated by the blue rectangle above. Both the tab
`
`4
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`

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`DER2017-00007
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`and tail must be cut to form the corner seam, as seen in the below images of a
`
`traditional Intercept® spacer.
`
`
`
`
`
`
`
`V-shaped notch cut to
`allow folding here
`
`
`
`
`
`Angled cut to align tail
`with corner
`
`
`
`
`
`
`
`Because Oquendo’s design moves the seam off the corner, all four corners
`
`are formed identically using identical cuts. Briese confirmed having four identical
`
`corners “was the crux of [Oquendo’s] idea.” X1057 at 178:18-21. With the corner
`
`seam removed, the notches in the tab and tail in the traditional Intercept® design
`
`are also removed, as Briese confirmed at his deposition, admitting “you would
`
`never include a notch like that around the side in a spacer frame” and “most
`
`anybody would come to that conclusion.” X1057 at 129:23-130:24. Oquendo’s
`
`5
`
`

`

`DER2017-00007
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`CAD drawing, created no later than June 2009 and including the below details no
`
`later than December 2010, shows the butt-joint seam at the vertical line indicating
`
`the connection between the tab and tail, identified with the text “THE SEEM [sic]
`
`IS NOW HERE.”
`
`
`
`See Exs. 1013, 1015.
`
`Removing the notches in the traditional Intercept® design’s tab and tail
`
`creates a stop away from the corner. An Intercept® spacer includes stiffening
`
`flanges except in the locations where a notch has been cut. X1057 at 46:19-23.
`
`With a corner seam, the flanges extend to the point where the notch is cut and abut
`
`in the corner if the folded tab is over-inserted into the tail. X1057 at 46:24-50:23.
`
`6
`
`

`

`DER2017-00007
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`When the seam is moved from the corner and notches are no longer cut from the
`
`tab and tail, the stiffening flanges will remain and abut at the butt-joint seam when
`
`the tab is inserted into the tail. This can be seen in GED’s Corner+ product, which
`
`Briese testified embodies the’953 patent claims, shown below.
`
`Butt-joint seam
`where stiffening
`flanges abut
`
`
`
`
`
`Image of X1056, GED Corner+ spacer; X1057 at 56:12-57:8. Timothy McGlinchy
`
`testified the change to make Corner+ is the only structural change to the Intercept®
`
`spacer in over twenty years. X1058 at 18:1-2, 19:4-7.
`
`Oquendo repeatedly testified moving the seam would cause the traditional
`
`Intercept® design’s stiffening flanges to serve as abutment stops in the new spacer.
`
`X2025 at 51:12-52:2, 67:19-68:7, 75:24-76:15, 91:19-92:5, 92:24-93:1, 99:16-
`
`100:5. Briese also confirmed the notch at the seam would be removed and the
`
`stiffening flanges would abut, which creates a stop. X1057 at 129:23-130:24,
`
`7
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`

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`DER2017-00007
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`133:21-134:2, 192:2-194:9. Oquendo’s concept of modifying a traditional
`
`Intercept® spacer to change the corner seam to a butt-joint seam includes a stop
`
`away from the corner because the stiffening flanges present in the Intercept®
`
`spacer abut at the butt-joint seam away from the corner. The opposing flanges
`
`would constitute a physical abutment that prohibits movement of the adjoining
`
`structure beyond a predetermined location, satisfying the claimed “stop” as
`
`construed by the Board.
`
`C.
`
`The File History Confirms Moving the Seam From the Corner Is
`the Novel Aspect of the Claims
`
`The ’953 patent file history also demonstrates the claims’ novel aspect is
`
`moving the seam from the corner. As originally submitted, independent claim 1
`
`included a stop but did not include reference to a seam spaced from the corner.
`
`X2028 at 32. Dependent claim 2 then required a “lateral connection spaced from
`
`said corresponding corners” and “forming a union point between said opposite
`
`frame end and said connecting structure.” Id. The Written Opinion of the
`
`International Searching Authority stated claim 1, with the stop, lacked novelty in
`
`light of U.S. Patent No. 5,678,377 to Leopold,1 but claim 2, with the lateral
`
`connection spaced from the corner, was novel. X2028 at 99. After the initial Office
`
`Action, GED canceled claim 2 and moved the “lateral connection spaced from said
`
`
`1 Leopold describes the traditional Intercept spacer design.
`
`8
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`

`DER2017-00007
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`corresponding corners . . . forming a union point” into claim 1. Id. at 107, 115. The
`
`Examiner nevertheless rejected the claim as anticipated by Leopold, construing
`
`“lateral connection” broadly and finding the overlap in Leopold Fig. 5 disclosed
`
`the lateral connection spaced from the corner and the “shoulder 84” where the tab
`
`meets the remainder of the spacer disclosed the stop, as seen below:
`
`
`
`Lateral connection
`spaced from corner
`
`X2026 Fig. 5; X2028 at 130.
`
`
`
`After an Examiner interview, claim 1 was amended to recite that the lateral
`
`connection spaced from the corner forms a union point “by said stop.” X2028 at
`
`159. GED argued the prior art did not disclose “a stop and a lateral connection
`
`spaced from the corresponding corners and along one of the at least three sides, the
`
`lateral connection forming a union point by the stop.” X2028 at 168. The Examiner
`
`allowed the claims, stating “having the lateral connection by [sic] formed by the
`
`9
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`DER2017-00007
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`stop and spaced from the corner . . . is novel and non-obvious.” Id. at 182. The
`
`claims issued only after being amended to require that the union point (i.e., the
`
`seam) be spaced away from the corner, which is also where the stop naturally
`
`occurs.
`
`D. Oquendo’s Testimony Confirms Moving the Seam From the
`Corner Is His Inventive Concept
`
`Oquendo testified repeatedly his idea was to alter an existing Intercept®
`
`spacer by moving the seam off the corner. X2025 at 6:6-18, 8, 12-18, 9:19-10:3,
`
`15:21-16:1, 18:2-8, 20:3-21, 31:1-10, 51:5-52:2, 52:18-53:5, 63:18-65:16, 85:18-
`
`86:9, 87:10-13, 99:16-100:5. Oquendo further testified that when the seam is
`
`moved, the traditional Intercept® spacer’s existing stiffening flanges would
`
`function as a stop. Id. at 51:22-52:2, 68:1-7, 75:24-76:5, 91:19-92:5, 92:24-93:22,
`
`99:16-100:5.
`
`GED goes to great lengths to disparage and mischaracterize Oquendo’s
`
`testimony. For example, GED asserts Oquendo “testified that he did know or care
`
`what sort of ‘stop’ would be used to construct the spacer frame he envisioned,”2
`
`Opp. at 2 (emphasis in original), whereas in fact Oquendo testified
`
`
`2 Presumably GED intended to assert Oquendo did not know, not that he did know.
`
`10
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`

`

`DER2017-00007
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`• “[a]nything where one side came into contact with the other would
`
`serve as a stop, including the stiffening flanges which are already
`
`there,” X2025 at 51:23-52:1;
`
`• the physical stop depicted in his June 2009 CAD drawing “includes
`
`the return flanges,” id. at 91:19-92:5; and
`
`• the stiffening flanges “serve as a stop for the engagement” in his
`
`invention, id. at 92:21-93:1.
`
`Oquendo’s testimony confirms he knew the existing stiffening flanges would
`
`serve as a stop in his design.
`
`GED also mischaracterizes Oquendo’s testimony as limiting his design to a
`
`“‘friction fit’ created by shoving a swaged ‘tab’ into a ‘tail’ frame segment.” Opp.
`
`at 2. Rather than describing a friction fit, however, Oquendo testified “[t]he swage
`
`is not stopping it” and the [t]he swage is not a stop.” X2025 at 76:15-17.
`
`Moreover, GED cannot distinguish the ’953 patent claims from Oquendo’s idea by
`
`characterizing that idea as including a friction fit because the claims also include a
`
`friction fit. X1005 at 14:13-14, 14:60-61.
`
`GED’s distortions of Oquendo’s testimony cannot alter the fact that
`
`Oquendo proposed to modify a traditional Intercept® spacer by moving from a
`
`corner to a butt-joint seam, a modification which creates a stop away from the
`
`11
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`DER2017-00007
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`corner due to the stiffening flanges which were already part of the Intercept®
`
`spacer.
`
`III. Oquendo’s Novel Design Was Communicated to Briese
`
`The evidence also demonstrates Oquendo communicated the concept
`
`claimed in the ’953 patent to Briese. That evidence includes:
`
`• the 2009 prototype which Oquendo testified was shown to Briese and
`
`McGlinchy in March 2009, X1001 ¶ 52, X1011;
`
`• Briese’s May 2009 email to Oquendo in which Briese refers to
`
`“[c]hanging the tab insertion to a butt joint instead of a corner joint”
`
`and says “I like the idea, and I’d like to continue this discussion,”
`
`X1021;
`
`• Oquendo’s June 2009 email describing conversations with Briese,
`
`X1016 at 2;
`
`• The June 2009 CAD drawing which Oquendo testified was shown to
`
`McGlinchy in the September to December 2009 time period, X1001 ¶
`
`57; and
`
`• The 2011 drawing Briese created at Oquendo’s request and provided
`
`to Oquendo which Briese described in his sworn declaration as “what
`
`12
`
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`DER2017-00007
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`I thought Mr. Oquendo was talking about in 2009,” X1023; X2035 ¶
`
`12.
`
`Briese denies he was shown the March 2009 prototype and claims “Oquendo
`
`never presented any such idea [for moving the fourth corner seam to an offset
`
`location] to us.” X2032 ¶¶ 25, 27. Briese’s denials are not credible.
`
`In a May 29, 2009 email sent in response to a question from Oquendo,
`
`Briese specifically refers to “changing the tab insertion to a butt-joint insertion
`
`instead of a corner joint.” X2018 at 2. Briese knew Oquendo proposed moving the
`
`corner seam to a butt-joint seam offset from the corner. While Briese denies this
`
`knowledge derived from the March 2009 meeting, Briese claims he does not “have
`
`a specific recollection of what prompted” his May 2009 message. X2035 ¶ 9. He
`
`claims no recollection of what he and Oquendo talked about in March 2009 and no
`
`recollection of any conversation where the topic of the May 2009 email was raised,
`
`either before or after that email. X1057 at 87:9-18, 97:14-98:5, 109:13-110:23.
`
`Given Briese’s utter lack of recollection of conversations which the evidence
`
`establishes must have occurred, his denials as to the substance of those
`
`conversations should be given no weight.
`
`Even without the March 2009 meeting and even if Briese never saw the
`
`prototype, the evidence still establishes Briese knew Oquendo proposed to move
`
`from a corner seam to a butt-joint seam off the corner. Briese’s own words
`
`13
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`

`DER2017-00007
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`describe that exact concept in his May 2009 email, and the 2011 drawing created
`
`by Briese at Oquendo’s request shows the seam offset from the corner.
`
`
`
`Seam offset from corner
`
`
`
`X1024.
`
`Oquendo testified this drawing was created in response to his request for
`
`software changes to GED’s system “to add another strike in order to form all four
`
`corners of the spacer frame in the same manner.” X1001 ¶ 58. Briese confirms this
`
`drawing is “[b]ased on my [Briese’s] understanding of what Mr. Oquendo wanted”
`
`and “what I thought Mr. Oquendo was talking about in 2009.” X2032 ¶ 43; X2035
`
`¶ 12. The 2011 drawing establishes Oquendo’s idea to move from a corner to a
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`butt-joint seam was communicated to Briese. The 2011 drawing also belies
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`Briese’s attempt to mischaracterize Oquendo’s idea as a proposal “to insert the tail
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`into the tab in a standard Leopold design, rather than the tab into the tail.” X2032 ¶
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`37. As Briese testified, the crux of Oquendo’s idea was to make the fourth corner
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`identical to the other three. X1057 at 178:18-21. This could be done by reversing
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`the tab and tail, or by moving the tab off the corner. X1057 at 120:5-17. Either
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`change will move the seam off the corner. As Briese admits, the 2011 drawing
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`“has the standard Leopold frame feature of inserting the tab into the tail of the
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`spacer frame.” X2032 at ¶ 44. Briese testified that drawing was “a sketch to try and
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`understand what [Oquendo] was talking about to the best of my abilities” and when
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`he showed it to Oquendo in 2011, Oquendo “acknowledged that this is what he
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`was interested in.” X1057 at 120:8-121:3; see also id. at 125:5-126:15. Briese
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`knew in January 2011 Oquendo’s idea included making the fourth corner identical
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`to the other three by moving the tab off the seam and was not limited to reversing
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`the tab and tail.
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`Briese’s May 2009 email referring to “[c]hanging the tab insertion to a butt-
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`joint instead of a corner joint” and the 2011 drawing establish Oquendo’s idea was
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`communicated to Briese. Both men also knew these changes were to be made to
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`the Intercept® spacer. X1057 at 132:16-25 (Briese testifying “because this is
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`Intercept, I know where the stiffening flanges are”). As discussed above, the
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`traditional Intercept® spacer included stiffening flanges that function as a stop
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`located away from the corner when the seam is moved from the corner, which
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`Briese admitted at deposition. X1057 at 129:23-134:2. Oquendo’s communications
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`to Briese of Oquendo’s idea of moving the fourth corner of a traditional Intercept®
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`spacer to no longer be located at the seam disclosed the invention later claimed by
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`Briese in the ’953 patent.
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`IV. The ’953 Patent Claims Are Derived From Oquendo
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`In addition to the contemporaneous documents from 2009-2011, Briese’s
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`2014 “invention” story and “inventor” notebook also confirm Briese derived the
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`claims from Oquendo. The patent names Briese and Clifford Weber as inventors.
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`Briese testified, in his declaration and at deposition, that Weber contributed the
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`idea that the seam be moved away from the corner. X2032 ¶ 53; X1057 at 171:12-
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`172:1. Weber allegedly made this suggestion in April 2014, approximately five
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`years after Oquendo disclosed this same idea to Briese and more than three years
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`after this idea was recorded in the 2011 drawing Briese testified “is what I thought
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`Mr. Oquendo was talking about in 2009.” X2035 ¶ 12.
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`This 2011 drawing of Oquendo’s idea is also included in Briese’s notebook,
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`which states “PRELIMINARY WORK WAS DONE ON THIS PROJECT IN
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`JAN. 2011.” X2031 at 1, 3; X1057 at 7-12. Briese himself, in documenting his
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`alleged invention, identified the drawing he made for Oquendo as the preliminary
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`work on the concept claimed in the ’953 patent. Briese testified Weber’s
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`“suggestion to me was, what if we moved the seam off the corner, and I had
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`recalled making this drawing.” X1057 at 138:24-139:4 (emphasis added). Briese
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`also testified the drawing of Oquendo’s idea was the template he used to instruct
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`an engineer to make detailed tooling drawings for his alleged invention. X1057 at
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`167:22-169:6. And finally, Briese testified the software changes made to the
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`Intercept® system to make his alleged invention are the same software changes
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`Oquendo requested in 2011. X1057 at 62:2-65:16, 117:14-119:4.
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`Briese admits:
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`• the contribution for which Weber is named as an inventor was the idea
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`Oquendo disclosed five years earlier,
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`• upon hearing that same suggestion from Weber, Briese returned to the
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`drawing he had made of Oquendo’s idea three years earlier, and
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`• that drawing discloses the idea Briese claims to have invented.
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`Briese’s testimony also confirms his allegedly new idea is nothing more than
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`moving the seam off the fourth corner. Briese testified the only changes from the
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`traditional Intercept® spacer involve the fourth corner and the tab and tail
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`interaction. X1057 at 57:9-58:4. The “original Intercept was notched 45 degrees at
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`the tail, and it is now 90 degrees,” X1057 at 58:22-23, and the “folding feature that
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`was an integrated part of the tab was decoupled from the tab and a separate and
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`identical fourth corner was created,” id. at 59:20-23. These changes can be seen by
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`comparing ’953 patent Figure 4A as annotated by Briese with GED’s Intercept®
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`Specification. The 90 degree notch is circled in blue, and the folding feature
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`decoupled from the tab is circled in red.
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`45° angle now 90°
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`Folding feature (fourth corner) decoupled
`from tab
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`
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`X1050 at 6; X1009 at 5.
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`These changes simply represent the changes necessary to move the fourth
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`corner off the seam. As Briese testified, “squaring off the tail to 90 degrees” is
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`“reconfiguring the tooling to not be a corner juncture or a corner seam.” X1057 at
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`161:10-15. Briese also testified that when the tail is squared off at 90 degrees, the
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`existing stiffening flange runs to the end of the tail. Id. at 59:4-17. Briese
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`confirmed these two changes, which are simply moving the corner off the seam
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`created when the tab is inserted into the tail, create a positive stop:
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`[W]here you square off the tail to 90 degrees, and you decouple
`the tab from the corner feature, then the stiffening flanges run
`into each other when you insert the tab, and that’s what creates a
`positive stop. That’s what the advantage is, right?
`
`A. That was the key advantage of the positive [stop] of the
`stiffening flanges contacting each other, yes.
`
`
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`X1057 at 160:3-12.
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`Briese’s own testimony establishes the positive stop, which GED now
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`claims is the novel aspect, results from Oquendo’s idea of moving the fourth
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`corner off the seam and is merely one of the advantages of the idea Oquendo
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`communicated to Briese. Even if Oquendo were unaware of this benefit, as argued
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`by GED, Briese would still not be entitled to claim that benefit as his invention
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`because “[m]ere discovery of an additional function in a device invented by
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`another does not constitute invention.” Weiss v. Woodman, 20 C.C.P.A. 1211,
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`1218, 65 F.2d 274 (C.C.P.A. 1933). The ’953 patent claims should be canceled.
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`V.
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`Briese’s Declared Ignorance Cannot Save the ’953 Patent Claims
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`In an effort to save the claims, GED now argues the invention was a stop
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`located away from the corner and the 2011 drawing does not disclose the claims
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`because it does not depict a sufficient stop. See, e.g., Opp. at 33. Briese contends,
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`in his declaration, that “[i]t did not occur to me in 2011 to modify the [2011
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`drawing] to eliminate the V-notches from the drawing.” X2032 ¶ 49. GED’s other
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`declarant, McGlinchy, includes a verbatim copy of this same paragraph in his
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`declaration. Compare id. with X2033 ¶ 26. This attempt to save the claims by
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`pleading ignorance fails.
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`The 2011 drawing was not intended to depict the modified spacer design as
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`it would be manufactured and assembled. Rather, the drawing depicts changes
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`Oquendo requested be made to GED’s software to move the seam away from the
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`corner to make four identical corners. X1057 at 125:5-25. The modifications
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`necessary to no longer include notches at the tab and tail would then be made by
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`physically modifying the die used to punch the metal strip. X1057 at 131:18-132:1.
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`That the 2011 drawing does not show an abutment stop where the stiffening
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`flanges meet at the seam therefore does not save the patent claims from
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`cancellation. The gap or notch shown in that drawing is present only because
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`Briese based the drawing off existing Intercept® profiles and notch configurations,
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`which include a notch at the tab because the spacer must be folded at the tab to
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`create the fourth corner. X1057 at 130:2-20. As Briese admitted, “you would never
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`include a notch like that around the side wall in a spacer frame” and “most
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`anybody would come to [the] conclusion” that a notch cannot be left along the
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`sidewall and still have a workable spacer. X1057 at 130:21-24, 131:18-23. Briese
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`must have known in 2011 Oquendo’s idea would not include a notch in the seam
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`and therefore the stiffening flanges would abut and create a stop.
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`GED’s attempt to avoid cancellation of the claims by pleading ignorance of
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`what and when Briese knew of Oquendo’s invention must be rejected. GED
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`contends Briese is entitled to a patent that claims an idea which was disclosed to
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`him in 2009 by Oquendo, on the grounds that Briese failed to recognize the idea at
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`the time and did not appreciate it until five years later when it was proposed to him
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`a second time by Weber. Briese claims to be an inventor because “up until 2014,
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`the idea of the positive stop had not been – had [eluded] me.” X1057 at 173:2-10.
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`But he admits the “key advantage” of the positive stop simply derives from moving
`
`the seam off the corner such that the tail is no longer notched and the stiffening
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`flanges abut. X1057 at 159:18-161:18.
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`So according to Briese’s testimony:
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`• Oquendo disclosed moving the seam off the corner;
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`• “most anybody would come to [the] conclusion” that the notches
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`previously cut from the tab and tail to form the corner seam would be
`
`removed which would leave the stiffening flanges;
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`• the “key advantage” of the positive stop derives from the abutment of
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`the stiffening flanges; and
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`• this concept eluded Briese for five years.
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`Briese cannot be an inventor. The ’953 patent is derived from Oquendo
`
`because Briese knew a traditional Intercept® spacer i