UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF IDAHO
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`HOYT A. FLEMING,
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`Case No. 1:09-cv-00105-BLW
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`ATTORNEYS EYES ONLY
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`Plaintiff,
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`Defendants.
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`SUPPLEMENTAL REBUTTAL EXPERT REPORT OF
`CHRIS GREGORY BARTONE, Ph.D., P.E.
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`v.
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`ESCORT INC. and BELTRONICS USA, INC. )
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`Escort Ex. 2040, pg. 1
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by Park, Vaughan, Fleming & Dowler LLP, counsel for
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`plaintiff, Hoyt A. Fleming (hereinafter referred to as “plaintiff” or “Fleming”), to render
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`opinions with respect to the following U.S. Patent Numbers and claims (collectively, the
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`“patents-in-suit”):
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`Patent
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`RE39,038
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`RE40,653
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`2.
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`Asserted Claims
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`1, 3, 5-8, 11, 13, 18, 23, 25-28, 45-48
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`22, 24, 26, 30-33, 38, 41-42, 45-46, 48-50
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`Specifically, I was asked to respond to the invalidity and non-infringement
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`arguments made in the expert report of John R. Grindon, D.Sc.
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`3.
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`This is the report of my response, which I am told I am required to prepare
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`pursuant to Rule 26(a)(2) of the Federal Rules of Civil Procedure and the Court’s scheduling
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`order.
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`II.
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`STATEMENT OF OPINIONS AND
`THE BASIS AND REASONS THEREFOR
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`4.
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`It is my opinion that Dr. Grindon has not shown any of the asserted claims in any
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`of the patents-in-suit to be invalid or unenforceable for any reason.
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`5.
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`It is also my opinion that Dr. Grindon has not shown that any of the asserted
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`claims in any of the patents-in-suit are not infringed by Escort’s Passport 9500i, Escort’s
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`Passport 9500ix, Escort’s Passport iQ, and Beltronics’ GX65 (collectively the “accused
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`products”).
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`6.
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`I expect to testify concerning the process I undertook in arriving at the opinions
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`2
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`Escort Ex. 2040, pg. 2
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`expressed herein.
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`7.
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`I understand
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`that
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`the first step
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`in performing a validity/invalidity or
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`infringement/non-infringement analysis is to determine the meaning of the asserted patent
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`claims from the perspective of the person of ordinary skill in the art at the time of the
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`invention without reference to any accused devices or methods.1
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`8. My opening expert report explains the claim constructions that I have applied in
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`my analysis. I hereby incorporate the entirety of my opening report.
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`Presumption of Validity
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`9.
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`I understand that, under 35 U.S.C. §282, a patent is to be presumed valid. As
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`such, I am informed that clear and convincing proof is required to invalidate a patent.
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`Validity (Indefiniteness)
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`10.
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`I understand that, under 35 U.S.C. §112 ¶2, a patent specification must conclude
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`with one or more claims particularly pointing out and distinctly claiming the subject matter
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`that the applicant regards as his invention. Claims are indefinite if they do not reasonably
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`apprise those skilled in the relevant art of the applicant’s intended scope of the invention when
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`read in light of the specification. Claims that reasonably apprise those skilled in the art are,
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`therefore, definite.
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`Validity (Written Description and Enablement)
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`11.
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`I understand that the written description of a patent (or patent application as the
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`case may be) under 35 U.S.C. §112 ¶1 must convey clearly to those skilled in the art, that, as
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`1 I understand that during the prosecution of the patents in suit that the Patent Office has
`described a person of ordinary skill in the art as “a person with a degree in electrical
`engineering with several years of practical experience in the design and/or testing of radar
`detector systems.”
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`3
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`Escort Ex. 2040, pg. 3
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`of the filing date sought, the applicant was in possession of the invention claimed.
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`12.
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`I further understand that a claimed invention is not enabled under 35 U.S.C. §112
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`¶1 if the patent specification does not teach those of ordinary skill in the art how to make and
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`use the invention as broadly as it is claimed, without undue experimentation. I have been
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`advised that the assessment of undue experimentation is based on the level of skill in the art as
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`of the effective filing date of the application on which the patent-in-suit claims priority. Thus,
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`a specification enables a claimed invention when it does in fact teach those of ordinary skill in
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`the art how to make and use the invention as broadly as it is claimed, without undue
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`experimentation.
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`Validity (Anticipation)
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`13.
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`I understand that the first step in determining either validity or infringement is to
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`properly construe the claims. I also understand that the claims must be construed the same
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`way in determining validity/invalidity and infringement/non-infringement.
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`14.
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`It is my understanding that, for a finding of invalidity of a patent under 35 U.S.C.
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`§102, i.e., anticipation, each and every element of a claim, as properly construed, must be
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`found either explicitly or inherently in a single prior art reference. Under the principles of
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`inherency, if the prior art necessarily functions in accordance with, or includes the claimed
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`limitations, it anticipates. However, if the prior art could function without the claimed
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`limitations, then the claimed limitations are not inherent.
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`15.
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`I understand that a patent claim is invalid under 35 U.S.C. §102 (a) if the claimed
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`invention was known or used by others in the U.S., or was patented or published anywhere,
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`4
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`Escort Ex. 2040, pg. 4
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`before the applicant's invention. I further understand that a claim is invalid under 35 U.S.C.
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`§102 (b) if the invention was patented or published anywhere, or was in public use, on sale, or
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`offered for sale in this country, more than one year prior to the filing date of the patent
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`application. A claim is invalid, as I understand, under 35 U.S.C. §102 (e), if an invention
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`described by that claim was described in a U.S. patent granted on an application for a patent
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`by another that was filed in the U.S. before the date of invention for such a claim.
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`16.
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`It is also my understanding that a claim is invalid under 35 U.S.C. §102 (g)(2) if,
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`prior to the date of invention for the claim, the invention was made in the U.S. by another who
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`had not abandoned, suppressed or concealed the invention.
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`17.
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`In this case, I understand that Dr. Grindon contends that Mr. Orr made certain of
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`the claimed Fleming inventions in April-May 1996. I am informed that, from a legal
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`standpoint, this means that Dr. Grindon believes that Mr. Orr conceived and reduced the
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`subject matter of those claims to practice prior to Mr. Fleming. Indeed, while I note that Dr.
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`Grindon says nothing about Mr. Orr’s conception, he argues that Mr. Orr “reduced to practice
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`certain inventions in and about April and May 1996.” (Grindon Report, pg. 6.)
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`18.
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`In order to prove a “prior invention” in these circumstances, I am informed that
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`defendants must prove by clear and convincing evidence that Mr. Orr conceived and reduced
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`to practice the challenged patent claims in April or May 1996. Given that Dr. Grindon has
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`said nothing about conception, I will assume that it is Dr. Grindon’s contention that
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`conception also allegedly occurred in April or May 1996. If the Court allows Dr. Grindon (or
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`anyone else) to testify otherwise, I reserve the right to consider and opine on that contention at
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`that time.
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`5
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`Escort Ex. 2040, pg. 5
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`19.
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`I am informed that conception in these circumstances requires: A showing, by
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`clear and convincing evidence, that in April or May 1996 Mr. Orr had formed in his mind a
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`definite and permanent idea of the complete and operative invention as set forth by each of the
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`challenged patent claims, as they were to thereafter to be applied in practice. Moreover, Mr.
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`Orr’s idea must have be so clearly defined in his mind that only ordinary skill would be
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`necessary to reduce each of the challenged claims to practice, without undue experimentation.
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`20.
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`Implicit (if not explicit) in this is that every claim element, in the arrangement and
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`combinations set forth, in each challenged patent claim must have been conceived in April or
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`May 1996. Likewise, since the only witness Dr. Grindon has identified is the alleged prior
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`inventor, Mr. Orr, his (Mr. Orr’s) testimony must be corroborated by independent evidence. I
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`am informed that such independent evidence is testimony or documents from someone other
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`than the inventor, his friends, or other interested persons. I am also informed that
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`corroborating evidence must be contemporaneous with the alleged conception and exist in
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`such detail that it would enable one skilled in the art to make the invention, i.e., the subject
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`matter of each of the challenged claims.
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`21.
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`I am informed that an actual reduction to practice requires clear and convincing
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`proof that: (1) the claimed device—i.e., a device including every claim element, in the
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`arrangement and combinations set forth, of each challenged claim—was built (or the claimed
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`process was preformed); (2) as built, the device was actually tested; (3) the testing
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`demonstrated that the device operated for its intended purpose; and (4) the timing regarding
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`when each of elements 1-3 took place. Since the only witness Dr. Grindon has identified is
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`the alleged prior inventor, Mr. Orr, his (Mr. Orr’s) testimony regarding each of elements 1-4
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`6
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`Escort Ex. 2040, pg. 6
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`must be corroborated by independent evidence. I am informed that independent evidence is
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`testimony or documents from someone other than the inventor, his friends, or other interested
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`persons. I am also informed that corroborating evidence must be contemporaneous with the
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`alleged actual reduction to practice.
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`22.
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`I am informed that an alleged prior inventor must also show by clear and
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`convincing evidence that his alleged prior invention was not abandoned, suppressed, or
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`concealed. I understand that a prior invention will be deemed suppressed or concealed within
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`the meaning of 35 U.S.C. § 102(g) if, within a reasonable time after it is reduced to practice,
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`no steps are taken to make the invention publicly known, which can include the filing of a
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`patent application.
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`23.
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`I understand the Dr. Grindon has opined that certain claims in the patents-in-suit
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`are invalid because they are anticipated by certain references. My rebuttal to those
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`contentions are contained in Appendices to this report as follows:
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`Appendix A – Orr’s Alleged Prior Invention
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`Appendix B – Murakami (Japanese Patent Application Publication H9-27096)
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`Appendix C – Martin (U.S. Patent 6,384,776)2
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`Appendix D – Silverman (U.S. Patent 6,201,493)3
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`Appendix E – Hoffberg (U.S. Patent 6,252,544)
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`Appendix F – Ross (U.S. Patent 5,977,844)
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`2 I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
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` 3
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` I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`7
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`Escort Ex. 2040, pg. 7
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`Appendix G – Rayner (U.S. Patent 6,449,540)4
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`Invalidity (Obviousness)
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`24. Although Dr. Grindon offers obviousness opinions that are conclusory statements,
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`without any clear and precise explanation of a motivation to combine, and does not address,
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`nor give any weight to, secondary considerations of non-obviousness, I set forth my
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`understanding of non-obviousness here, in the event I am called upon to testify regarding
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`obviousness.
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`25.
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`I understand that a claimed invention is unpatentable under 35 U.S.C. §103 if the
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`differences between the invention and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having ordinary skill
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`in the art to which the subject matter pertains. Obviousness, as I understand it, is based on the
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`scope and content of the prior art, the differences between the prior art and the claim, the level
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`of ordinary skill in the art, and any objective evidence of non-obviousness, which is also
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`referred to as "secondary considerations of non-obviousness."
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`26. Objective evidence of non-obviousness may include, for example:
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`(a) Long felt but unmet need in the prior art that was satisfied by the invention;
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`(b) Failure of others to achieve the results of the invention;
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`(c) Commercial success of the invention;
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`(d) Copying of the invention by others in the field;
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`(e) Whether the invention was contrary to the accepted wisdom of the prior art;
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`4 I understand that the Court struck this reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on it at this time.
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`8
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`Escort Ex. 2040, pg. 8
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`(f) Expression of disbelief or skepticism by those skilled in the art upon learning of the
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`invention;
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`(g) Unexpected results;
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`(h) Praise of the invention by others skilled in the art; and
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`(i) Taking of licenses under the patent by others.
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`27.
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`I also understand that there must be a nexus between any such secondary indicia
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`of non-obviousness and the invention. In forming my opinions as to non-obviousness, I have
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`considered the above secondary indicia.
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`28.
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`I also understand that mere conclusory statements cannot sustain an obviousness
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`opinion; instead, there must be some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness. As I understand, it may be necessary to assess,
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`among other things, the interrelated teachings of patents as well as the background knowledge
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`of the ordinarily skilled person in order to determine an apparent reason to combine known
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`elements as claimed. Further, I understand that it can be important to identify a reason that
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`would have prompted a person of ordinary skill in the relevant field to combine the elements
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`in the way the claimed new invention does.
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`29.
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`It is further my understanding that it is impermissible to simply engage in
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`hindsight reconstruction of the claimed invention, using the applicant's invention as a template
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`and selecting elements from the references to fill the gaps. I am informed that a fact finder
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`should be aware, of course, of the distortion caused by hindsight bias and must be cautious of
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`arguments reliant upon hindsight reasoning.
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`30.
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`I understand the Dr. Grindon has opined that certain claims in the patents-in-suit
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`9
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`Escort Ex. 2040, pg. 9
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`are invalid because they are obvious in view of certain combinations of references. My
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`rebuttal to those contentions are contained in Appendices to this report as follows:
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`Appendix H – Orr’s Alleged Prior Invention/Murakami/Hoffberg
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`Appendix I – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Henderson
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`Appendix J – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Lang5
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`Appendix K – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Ross
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`Appendix L – Orr’s Alleged Prior Invention/Hoffberg—Orr (U.S. Patent 5,668,554)
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`Appendix M – Orr’s Alleged Prior Invention/Hoffberg—Orr (U.S. Patent 5,305,007)
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`Appendix N – Orr’s Alleged Prior Invention/Hoffberg—Valentine (U.S. Patent
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`5,146,226)
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`Appendix O – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Rayner6
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`Appendix P – Orr’s Alleged Prior Invention/Murakami/Hoffberg—Orr (U.S. Patent
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`5,668,554)
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`Dr. Grindon’s Additional Opinions Relating
`Unenforceability
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`to
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`Invalidity
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`and
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`31. Paragraph 1139 in Dr. Grindon’s invalidity report makes statements to the effect
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`that “[i]t is my opinion that there is substantial overlap between Claims 1-21 of the ‘798
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`patent and the claims of the ‘038 patent, and the claims of the ‘653 patent. This includes
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`Claims 22, 36, 37, 38, 49, 50 of the ‘653 patent. By way of example, the limitations of
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`5 I understand that the Court struck the Lang reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on this combination at this time.
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` 6
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` I understand that the Court struck the Rayner reference from defendants’ contentions on
`December 8, 2010. Accordingly, I will not opine on this combination at this time.
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`10
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`Escort Ex. 2040, pg. 10
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`Claims 1, 8-9, 12-13, and 18 of the ‘798 patent substantially overlap, including with Claim 22
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`of the ‘653 patent.” I do not know what Dr. Grindon means by “overlap”, much less
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`“substantial overlap”, and he does not explain himself. If Dr. Grindon is allowed to testify
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`about this topic, then I reserve the right to listen to his testimony and respond accordingly.
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`32. Paragraph 1140 in Dr. Grindon’s invalidity report makes statements to the effect
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`that “it is my opinion that Orr’s Prior Invention, Mr. Orr’s declarations and the materials
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`supporting those declarations, and the ‘881 application and its prosecution history, disclose
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`material information that was not already before the USPTO through the prior art that was
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`cited to the USPTO during prosecution of the ‘798 patent, the ‘038 patent, and the ‘653
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`patent.” It is difficult to respond to this for many reasons. Dr. Grindon never identifies what
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`it is about “Orr’s Prior Invention” that was not disclosed to the USPTO.
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`33. Moreover, Dr. Grindon never explains why Mr. Orr’s declarations should have
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`been disclosed when they obviously are not prior art (they are dated many years after the
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`patents-in-suit were filed). Likewise, the ‘881 application is not prior art to the patents-in-suit
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`since it was filed later. Dr. Grindon also fails to explain how or why any of these supposedly
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`undisclosed materials are not cumulative to what was already before the USPTO during
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`prosecution of the patents-in-suit. I am informed that information is only material if it is not
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`cumulative. Thus, Dr. Grindon appears to have failed in his burden of demonstrating
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`“materiality”. If Dr. Grindon is permitted to supplement his opinion, I reserve the right to
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`comment on that supplement as well as explain why the purportedly undisclosed information
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`is cumulative to what was disclosed to the USPTO.
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`34. Paragraph 1154 in Dr. Grindon’s invalidity report argues that “[t]he ‘798 patent
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`11
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`Escort Ex. 2040, pg. 11
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`does not adequately enable or disclose how one of ordinary skill in the art would determine
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`moving direction, or utilize moving direction for example for purposes of providing a display
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`to the user, as required by claim 24 of the ‘653 patent. In addition, it is my opinion that the
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`‘798 patent does not adequately enable or disclose how one of ordinary skill in the art would
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`receive or store information received from a button, as required by claims 25-26, 30-33, 41-
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`42, 45-46, and 48 of the ‘653 patent.” I disagree. I also note that the USTPO disagrees. Each
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`time Fleming sought a reissue patent, he was required to point out to the USPTO exactly
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`where in his patent specification each of the reissue claims was supported (for enablement and
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`written description purposes). He did that, and the USPTO agreed that all of the reissue
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`claims were supported. I incorporate that portion of the prosecution histories, and I concur
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`with the USPTO for the same reasons.
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`35. Paragraph 1159 in Dr. Grindon’s invalidity report argues that claim 18 in the ‘038
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`patent is indefinite. As an initial matter, I note that this is an issue of claim construction that
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`neither the defendants nor Dr. Grindon raised during the claim construction hearing for this
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`case. Thus, I will testify about this issue unless the Court concludes that it has been waived.
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`From a substantive standpoint, I do not follow Dr. Grindon’s logic. I find claim 18 to be quite
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`clear and understandable, and I intend to testify to that effect. I also believe that this
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`limitation would have been clear to one of ordinary skill in the art in the late 1990s.
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`36. More specifically, in paragraph 1159 of his report, Dr. Grindon argues that the
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`limitation “a global positioning system receiver coupled to the microprocessor and operable to
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`provide the microprocessor with data that indicates the position of the radar detector” is
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`indefinite because “the data indicating the position of the radar detector does not serve any
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`12
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`Escort Ex. 2040, pg. 12
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`purpose and is not utilized in any manner ‘for alerting an operator of a motor vehicle to an
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`incoming police radar signal’”. This limitation makes perfect sense to me and it means just
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`what it says. It means that the GPS receiver is coupled to the microprocessor in the radar
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`detector and, as such, it provides the microprocessor with data that indicates where the radar
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`detector is. Whether or not the remainder of the claim ever uses that information does not
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`mean that I cannot understand what the claim limitation means. I also believe that this
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`limitation would have been clear to one of ordinary skill in the art in the late 1990s.
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`37. Paragraph 1161 in Dr. Grindon’s invalidity report argues that certain claims in the
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`‘653 patent are indefinite because Dr. Grindon does not understand how data can be received
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`from a button. I respectfully do not understand Dr. Grindon’s argument. In my opinion,
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`providing data is precisely what a button on an electronic device does, and I intend to testify
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`to that effect. See also my analysis below regarding claims 26, 30-33, 41-42, 45-46, and 48 in
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`the ‘653 patent.
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`38. Paragraph 1162 in Dr. Grindon’s invalidity report argues that claim 48 in the ‘653
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`patent is indefinite because Dr. Grindon cannot decipher the claim phrase “performing an act
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`that is unrelated to storing a position in the non-volatile memory based upon second data
`received from the button.” I do not follow Dr. Grindon’s argument. I find claim 48 to be
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`quite clear and understandable, and I intend to testify to that effect. See also my analysis
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`below regarding claim 48 in the ‘653 patent. I also believe that this limitation would have
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`been clear to one of ordinary skill in the art in the late 1990s.
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`Infringement
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`39.
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`I hereby incorporate my statements regarding infringement from my Opening
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`13
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`Escort Ex. 2040, pg. 13
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`Report.
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`40. Attached as Appendix Q is my rebuttal to Dr. Grindon’s infringement report.
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`III.
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`DATA OR OTHER INFORMATION CONSIDERED
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`41. The data or other information that I considered in forming my opinions is listed in
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`Appendix R.
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`IV.
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`EXHIBITS USED TO SUPPORT OR SUMMARIZE
`OPINIONS
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`42.
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`I expect to use certain exhibits (demonstrative or otherwise) to support and/or
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`summarize my opinions. I anticipate that these exhibits will be taken either directly or
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`indirectly from the data and other information listed in Appendix R.
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`V.
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`QUALIFICATIONS
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`43. A detailed account of my work experience and other qualifications is listed in my
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`curriculum vitae attached as Appendix F to my opening report. Included in my curriculum
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`vitae is a list of all publications I authored in the previous 10 years.
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`VI.
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`OTHER CASES
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`44. A list of all other cases in which, during the previous 4 years, I have testified as an
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`expert at trial or by deposition is attached as Appendix F to my opening report.
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`VII.
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`COMPENSATION
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`45.
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`I am being compensated for my time and effort on this case at the rate of $350.00
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`per hour. None of my compensation is contingent upon any outcome in this case.
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`VIII.
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`RIGHT TO SUPPLEMENT
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`46.
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`I reserve the right to supplement and/or amend the opinions expressed herein in
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`14
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`Escort Ex. 2040, pg. 14
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`response to positions taken by experts or defendants, including any technical expert.
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`I further
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`reserve the right to amplify what is stated in this report, including claim charts and add
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`additional detail, where necessary, especially in View of information not presently known to
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`me or new information presented by defendants’ experts prior to, or at trial, and to supplement
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`this report should additional information be brought to my attention during the course of this
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`proceeding.
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` February 16, 2011
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`Chris Gregory Bartone
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`15
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`Attorneys Eyes Only
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`Escort Ex. 2040, pg. 15
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`Escort Ex. 2040, pg. 15
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`CERTIFICATE OF SERVICE
`I HEREBY CERTIFY that on the 16th day of February 2011, I delivered a copy
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`of the foregoing by email to defendants’ counsel as addressed below.
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`Brett A. Schatz
`Gregory F. Ahrens
`WOOD, HERRON & EVANS, L.L.P.
`441 Vine Street
`2700 Carew Tower
`Cincinnati, OH 45202
`bschatz@whepatent.com
`gahrens@whepatent.com
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` /s/
`Michael S. Dowler
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`Rebuttal Expert Report of Chris Gregory Bartone, Ph.D., P.E.
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`Attorneys Eyes Only
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`16
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`Escort Ex. 2040, pg. 16
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`Appendix A -- Orr’s Alleged Prior Invention
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`Analysis of Documents Relied on by Dr. Grindon (the “Orr Materials”):
`Below is my analysis of each of the documents or items Dr. Grindon relies on as
`supporting his prior invention opinion (hereafter referred to as the “Orr Materials”). As
`explained, it is my opinion that none of the Orr Materials adequately evidences, much
`less corroborates, the conception or actual reduction to practice of any of the asserted
`Fleming patent claims allegedly invented by Mr. Orr.
`(1) “The Entire Zip Collection”
`Dr. Grindon never defines the documents that constitute “the entire zip
`collection”. I have been told to assume that this collection refers to the “zips” file that
`defendants produced to Mr. Fleming on November 18, 2010 and containing ESC 14814-
`818. If that is not correct, I reserve the right to have Dr. Grindon explain what he means
`and to comment thereafter.
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`
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`Taking the “zip collection” one document/file at a time, the first document is ESC
`14814. This appears to be software provided by Rockwell in support of its NAVCARD
`product. This software appears to be dated May 1990 – September 1996. This software
`enables a computer to communicate with the NAVCARD GPS receiver. Given the
`source (i.e., Rockwell) and the functionality of the software, it is my opinion that these
`documents show nothing about what Mr. Orr conceived or physically reduced to practice
`in April or May 1996. These documents also do not disclose any, much less all, of the
`claim elements of any of the challenged patent claims. These documents also evidence
`nothing about a device or any tests of a device built in April or May 1996, whether that
`device embodied each element of each challenged patent claim, or whether those tests
`demonstrated that the device operated for its intended purpose.
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`
`
`AppendixA
`Attorney’sEyesOnly
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`ESC 14815 appears to be a collection of raw data files taken from a radar detector
`in the June 1992 – December 1993 timeframe. These documents are dated years before
`Mr. Orr’s alleged conception and reduction to practice in April or May 1996. As such,
`these documents are not contemporaneous with Orr’s alleged prior inventions and they
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`Page1of22
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`Escort Ex. 2040, pg. 17
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`
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`show nothing about what Mr. Orr conceived or physically reduced to practice in April or
`May 1996. These documents also do not disclose any, much less all, of the claim
`elements of any of the challenged patent claims. Moreover, because Mr. Orr apparently
`generated these documents, they are not independent of him, as required to properly
`corroborate his alleged prior invention. These documents also evidence nothing about a
`device or any tests of a device built in April or May 1996, whether that device embodied
`each element of each challenged patent claim, whether those tests demonstrated that the
`device operated for its intended purpose, or the timing of when those tests were made.
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`
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`ESC 14816 appears to be two files dated April 22, 1996 showing raw GPS data
`that has been charted. These files show nothing about what Mr. Orr conceived or
`physically reduced to practice in April or May 1996. These documents also do not
`disclose any, much less all, of the claim elements of any of the challenged patent claims.
`Moreover, because Mr. Orr apparently generated these documents, they are not
`independent of him, as required to properly corroborate his alleged prior invention.
`These documents also evidence nothing about a device or any tests of a device built in
`April or May 1996, whether that device embodied each element of each challenged patent
`claim, or whether those tests demonstrated that the device operated for its intended
`purpose.
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`
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`ESC 14817 appears to be raw GPS data files dated April 22-30, 1996. These files
`show nothing about what Mr. Orr conceived or physically reduced to practice in April or
`May 1996. These documents also do not disclose any, much less all, of the claim
`elements of any of the challenged patent claims. Moreover, because Mr. Orr apparently
`generated these documents, they are not independent of him, as required to properly
`corroborate his alleged prior invention. These documents also evidence nothing about a
`device or any tests of a device built in April or May 1996, whether that device embodied
`each element of each challenged patent claim, or whether those tests demonstrated that
`the device operated for its intended purpose.
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`AppendixA
`Attorney’sEyesOnly
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`Page2of22
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`Escort Ex. 2040, pg. 18
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`ESC 14818 appears to be XLS files with corresponding data graphs dated April
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`23 – 30, 1996. These files show nothing about what Mr. Orr conceived or physically
`reduced to practice in April or May 1996. These documents also do not disclose any,
`much less all, of the claim elements of any of the challenged patent claims. Moreover,
`because Mr. Orr apparently generated these documents, they are not independent of him,
`as required to properly corroborate his alleged prior invention. These documents also
`evidence nothing about a device or any tests of a device built in April or May 1996, or
`whether that device embodied each element of each challenged patent claim, whether
`those tests demonstrated that the device operated for its intended purpose.
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`(2) A radar detector connected to a laptop computer, through its COM serial
`communications port
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`Dr. Grindon refers to a radar detector connected to a laptop computer, but I am
`told that the laptop computer that Mr. Orr allegedly utilized in 1996 for Mr. Orr’s alleged
`GPS/radar detector tests has been lost together with the software that ran on that
`computer. In the absence of this evidence, obviously a different laptop computer
`connected to a radar detector in 2010 cannot be used to corroborate anything, much less
`the alleged conception or reduction to practice of the supposed Orr Prior Invention in
`April or May of 1996. I am informed that the manufacturing of such unauthentic
`evidence is not allowed.
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`(3) QBASIC programs tst4600k.bas and related “.bas” applications such as
`road22.bas, road23.bas, road24.bas, road24a.bas
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`
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`AppendixA
`Attorney’sEyesOnly
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`tst4600k.bas appears to be a BASIC program, dated September 25, 1995, that
`receives data from a radar detector. Road2x.bas appear to be BASIC programs dated
`June 29, 1992 to July 17, 1992. Given the date of the programs and their functionality, it
`is