UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`THE BOEING COMPANY
`Petitioner
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`v.
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`SEYMOUR LEVINE
`Patent Owner
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`
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`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`Petitioner’s Reply to Patent Owner’s Response
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`03007-0014/92064179.1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`THE BOEING COMPANY
`Petitioner
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`
`
`
`Case No. IPR2015-01341
`U.S. Patent No. RE39,618
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`
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`
`
`
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`
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`Petitioner’s Reply to Patent Owner’s Response
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`03007-0014/92064179.1
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`Case IPR2015-01341
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`Attorney Docket No. 03007.0014
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`Introduction ...................................................................................................... 1
`Because Prior Art Onboard Transmitters Were “Removable,” Claims
`4, 5, 14, and 16 Are Unpatentable ................................................................... 2
`III. Dependent Claims 8-10 Are Unpatentable Because Positional Data Is
`Non-Functional Printed Matter ........................................................................ 5
`IV. Claims 8-10 Are Unpatentable in Light of Monroe ...................................... 10
`A.
`PO Has Not Established Conception Before Monroe’s Priority
`Date ...................................................................................................... 11
`1. May 1996 .................................................................................. 12
`2.
`October 9, 1996 ......................................................................... 13
`3.
`October 23, 1996 ....................................................................... 16
`PO Has Not Shown Diligent Reduction to Practice ............................ 17
`B.
`Claims 8-10 Are Also Unpatentable on Grounds 4 and 5 ............................. 21
`V.
`VI. All Claims Are Unpatentable on Ground 2 Because “Maintenance
`Advice” Is Not Limited to “Recommendations as to What to Do” .............. 23
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`TABLE OF AUTHORITIES
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`CASES
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`Page
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`Bey v. Kollonitsch,
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`806 F.2d 1024 (Fed. Cir. 1986) ................................................................... 19, 20
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`Brown v. Barbacid,
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`276 F.3d 1327 (Fed. Cir. 2002) .......................................................................... 12
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`Brown v. Barbacid,
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`436 F.3d 1376 (Fed. Cir. 2006) .......................................................................... 18
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`D’Amico v. Koike,
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`347 F.2d 867 (C.C.P.A. 1965) ............................................................................ 19
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`Gould v. Schawlow,
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`363 F.2d 908 (C.C.P.A. 1966) ............................................................................ 18
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`Grasselli v. Dewing,
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`534 F.2d 306 (C.C.P.A. 1976) ............................................................................ 17
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`In re DiStefano,
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`808 F.3d 845 (Fed. Cir. 2015) .............................................................................. 6
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`In re Enhanced Security Research, LLC,
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`739 F.3d 1347 (Fed. Cir. 2014) .......................................................................... 19
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`In re Gulack,
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`703 F.2d 1381 (Fed. Cir. 1983) ............................................................................ 8
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`In re McIntosh,
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`230 F.2d 615 (C.C.P.A. 1956) ..................................................................... 17, 18
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`In re Mulder,
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`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 17
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`King Pharmaceuticals, Inc. v. Eon Labs, Inc.,
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`616 F.3d 1267 (Fed. Cir. 2010) ..................................................................... 9, 10
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`Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc.,
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`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 12
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`Spansion, Inc. v. International Trade Commission,
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`629 F.3d 1331, 1356 (Fed. Cir. 2010) ................................................................ 13
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`ADMINISTRATIVE DECISIONS
`Microsoft Corp. v. Surfcast, Inc.,
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`IPR2013-00292, Paper 93 ............................................................................ 12, 20
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`Samsung Electronics Co. v. Home Semiconductor Corp.,
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`IPR2015-00459, Paper 32 ................................................................................... 10
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`ADMINISTRATIVE MATERIALS
`Manual of Patent Examining Procedure § 2111.05 ................................................... 6
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`iii
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`I.
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`Introduction
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`Patent Owner (“PO”) does not dispute that the heart of the challenged
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`claims—real-time transmission of aircraft data to the ground for maintenance
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`analysis—was well-known in the prior art. PO’s sole defense of the independent
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`claims of the ’618 patent hinges on limitations, added during reissue, that the
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`aircraft transmitter be “portable” or “positionable.” As it did in its Institution
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`Decision, the Board should find these obvious in view of the prior art. The record
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`establishes that, at the time of PO’s purported invention, standard aircraft
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`transmitters were discrete devices capable of being removed for repair or
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`replacement. This evidence satisfies the “portable/positionable” limitations.
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`To remove any doubt on this score, Petitioner submitted the declaration of
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`Dr. Helfrick, attesting that “any transmitter used on an aircraft, and specifically a
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`transmitter used in conjunction with an ACARS system, is necessarily
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`‘removable.’” Ex. 1042, ¶ 4. PO neither submitted a contrary expert opinion nor
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`refuted Dr. Helfrick’s testimony in any way. Accordingly, the
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`“portable/positionable” limitation cannot avoid a finding of unpatentability of
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`independent claims 4, 5, 14 and 16 on Grounds 1 and 3.
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`Nor can PO defend the patentability of dependent claims 8-10 (the “position
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`data” claims). As a threshold matter, under their broadest reasonable
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`interpretation, these claims do not require any use of aircraft location data within
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`the claimed maintenance system. Therefore, the limitations regarding that data
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`either lack patentable weight, or are rendered obvious by the prior art supporting
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`Grounds 4 and 5. Moreover, even if these limitations are accorded patentable
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`weight, claims 8-10 remain unpatentable on at least Grounds 1-3 in view of
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`Monroe. PO cannot swear behind Monroe, and does not otherwise dispute that
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`Monroe renders the position data claims obvious.
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`Finally, for Ground 2, PO argues that the prior art would not render the
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`claims obvious if the Board applied a narrower construction of “maintenance
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`advice” than it adopted at institution. Because the preliminary construction was
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`correct, this argument fails and the independent claims remain unpatentable on
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`Ground 2 as well.
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`In sum, all claims should be found unpatentable.
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`II. Because Prior Art Onboard Transmitters Were “Removable,” Claims 4,
`5, 14, and 16 Are Unpatentable
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`PO acknowledges that the prior art disclosed aircraft radio transmitters,
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`including HF and VHF transceivers, for use during flight. Resp., 28. His only
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`defense of the independent claims is an argument that Petitioner failed to prove
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`that these transmitters were “portable” or “positionable.” Id., 26-29.
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`At institution, the Board credited PO’s argument that “transmitter
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`portable/positionable” should be construed to refer to a “removable device for
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`generating radio frequency signals.” Paper 10, 15. The Board then noted that the
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`ordinary meaning of “removable” was “capable of being removed, displaced,
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`transferred, dismissed or eradicated.” Id. This was consistent with the only
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`suggestion of “portability” or “positionability” found in the patent specification,
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`i.e., the reference to the preferred transmitter as a “line replaceable unit.” Ex.
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`1001, 4:59.1 Applying this construction, the Board preliminarily found that it
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`would have been obvious to use “portable/positionable” transmitters in the
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`ACARS systems disclosed in the references supporting each of Petitioner’s
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`asserted grounds. Paper 10, 15-16, 24, 29.
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`In response, PO hypothesized, without any supporting evidence, that prior
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`art transceivers might have been “built into a specific location in the aircraft, which
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`would prevent them from being removable or capable of changing location.”
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`Resp., 28. This hypothesis lacked factual basis. The record, including Dr.
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`Helfrick’s supplemental declaration, establishes that the standard ACARS
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`transmitters at the time of PO’s claimed invention were removable.
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`A basic tenet of aircraft equipment design at the time of the invention (as
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`now) was to use components called line replaceable units, or “LRUs,” that quickly
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`could be replaced at the gate. Ex. 1042, ¶ 3. Consistent with this design principle,
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`1 Throughout, emphasis has been added unless otherwise noted.
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`industry standards for ACARS transmitters specified that they should be
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`removable and replaceable.
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`ARINC 618-1, the key ACARS standard, explains that the aircraft portion of
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`an ACARS system consisted of a Management Unit connected to one or more of
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`the following transmitters: (i) a VHF transceiver, (ii) an HF transceiver, and/or
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`(iii) a Satellite Data Unit. Ex. 1042, ¶ 2; Ex. 1020, § 1.5.2. ARINC 618-1
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`references three related standards that specified the physical characteristics for
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`each of these types of transmitters at the time of PO’s application. Ex. 1042, ¶ 4;
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`Ex. 1020, §§ 1.5.2, 1.8. All three standards indicated that ACARS transmitters
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`should be removable.
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`First, ARINC Characteristic 741P1-7, the Aviation Satellite
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`Communications Systems standard, specified that an SDU and a Radio Frequency
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`Unit (RFU) together constitute a subsystem “made up of multiple line replaceable
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`units,” each of which “must be designed to be autonomous for installation
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`purposes.” Ex. 1042, ¶ 4, and p. 10 (Ex. A, § 1.7). Second, ARINC Characteristic
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`716, the VHF transceivers standard, similarly called for standardized interfaces,
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`id., p. 24 (Ex. C, § 2.1), to provide “[u]nit interchangeability . . . for the [VHF]
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`transceiver regardless of manufacturing source,” id., p. 22 (Ex. C, § 1.4.2).
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`Finally, ARINC Characteristic 753, the HF Data Link Systems standard, provided
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`that HF transceivers should also meet interchangeability requirements so that they
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`easily could be upgraded or replaced. Id., p. 16 (Ex. B, § 2.1).
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`As these standards show, each type of transmitter used with the prior-art
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`ACARS systems was removable, and could be taken out of, or installed into, the
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`aircraft as needed. Ex. 1042, ¶ 4. The uncontroversial nature of this removability
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`feature is reflected in PO’s failure to cross-examine Dr. Helfrick, offer a contrary
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`expert opinion, or respond in any way to Petitioner’s evidence on this point. See
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`Paper 30, 4-5 (noting that PO would be afforded these opportunities).
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`Accordingly, there is ample evidence that the ACARS system disclosed in Ward,
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`Dyson, and Dowling would have been understood by a skilled artisan to utilize
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`“portable/positionable” transmitters. As these limitations were the only basis on
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`which PO opposed Grounds 1 and 3 for claims 4, 5, 14, and 16, the Board should
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`find these claims unpatentable.
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`III. Dependent Claims 8-10 Are Unpatentable Because Positional Data Is
`Non-Functional Printed Matter
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`The “printed matter” doctrine provides that a claim limitation specifying the
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`content of information carries patentable weight only where that information is
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`functionally or structurally related to the physical substrate that contains it. At
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`institution, the Board preliminarily rejected Petitioner’s argument (Pet., 16-22),
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`that certain limitations concerning the type of aircraft information transmitted in
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`PO’s claimed system lacked patentable weight. Focusing on the “configuration
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`label” limitation, the Board held that the specification disclosed that the
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`“configuration label is explicitly considered by, and thus may alter the
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`functionality of, the claimed ‘central station’ that is ‘to receive and analyze said
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`digital aircraft performance data to generate maintenance advice for said aircraft.’”
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`Paper 10, 11.
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`But even if the “configuration label” is entitled to patentable weight,
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`Petitioner maintains that the limitations of claims 8-10 regarding aircraft position
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`data lack patentable weight because there is no functional relationship between
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`data regarding the aircraft’s flight position and aircraft maintenance.
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`A “printed matter” analysis involves two steps. First, there must be a
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`determination whether the limitation at issue “claims the content of information.”
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`In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). The limitations of claims 8-
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`10, specifying that the content of the “digital aircraft performance data”
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`transmitted to the ground station includes “aircraft position data,” meet this test.
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`Next, one must determine “if the matter is functionally or structurally related
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`to the associated physical substrate.” Id. at 851; see also MPEP § 2111.05 (“A
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`functional relationship can be found where the printed matter performs some
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`function with respect to the product to which it is associated.”). Here, PO
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`identifies “the maintenance advice produced by the aircraft maintenance system”
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`as the associated product/substrate, and acknowledges that, for the positional data
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`limitations to merit patentable weight, “a new and unobvious functional
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`relationship” must exist between the positional data and the maintenance advice.
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`Resp., 8.
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`PO fails, however, to identify anything in the patent disclosing such a
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`relationship, or, in the Board’s words, indicating that aircraft position data “may
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`alter the functionality of[] the claimed ‘central station’” in generating maintenance
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`advice. Paper 10, 11. PO cites claim 8 as “specifically describ[ing] the use of . . .
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`aircraft position information in generating maintenance advice.” Claim 8,
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`however, merely specifies that the “digital aircraft performance data” transmitted
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`to the ground-based “central station” for analysis “includes” position data.
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`Applying the broadest reasonable interpretation, the claim does not require that
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`each category of downlinked “digital aircraft performance data” actually be used to
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`generate maintenance advice.
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`Nor does the specification teach or require use of position data in the
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`generation of the claimed maintenance advice. PO argues vaguely that the
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`specification “expressly describes how various flight parameters are transmitted
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`and subsequently ‘analyzed . . . to allow identification of maintenance problems,
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`. . . and maintenance actions.’” Resp., 8. For claims 8-10, however, the issue is
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`not whether some of the “various flight parameters” making up the “digital aircraft
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`performance data” of claim 4—e.g., data regarding engine condition—can be used
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`to generate maintenance advice. Instead, for these particular claims, the specific
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`question is whether the patent discloses any functional relationship between data
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`regarding the aircraft’s position in flight and the claimed maintenance advice.
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`The answer is no. The only part of the specification PO cites to suggest
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`functionality for the location data limitation reads:
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`[N]one [of the prior art] contemplates real-time radio transmission of
`aircraft data to a central station. Furthermore, none contemplates
`combining information from aircraft with global position data, global
`map data, global weather data, ATC system data and manufacturers’
`data and providing real-time feedback, in the form of real-time ground
`and in-flight advisories to aircraft.
`Ex. 1001, 2:16-23. “[G]lobal position data” appears in this passage merely within
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`a list of all the types of data collected and transmitted by the claimed system.
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`Collectively, these types of data are used to generate six “ground and in-flight
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`advisories,” only one of which involves maintenance. Id., 2:34-38 (types of
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`advisories include safety of flight, fuel economy, separation of flight, safe to fly,
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`safe to take off, and maintenance). The specification describes “aircraft position
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`data” as information useful only for non-maintenance advisories. Id., 3:44-4:5
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`(position data used for flight safety, flight separation, and fuel economy
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`advisories).
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`The challenged claims are thus distinguishable from those in In re Gulack,
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`703 F.2d 1381 (Fed. Cir. 1983), cited by PO. The invention there was a band
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`containing digits imprinted according to a mathematical algorithm illustrating
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`aspects of number theory. There was thus a functional relationship between the
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`printed matter and the band that together contributed to the educational and
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`entertainment value of the invention. Here, in contrast, the positional data is not
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`functionally tied to the maintenance advice.
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`This case more closely resembles King Pharmaceuticals, Inc. v. Eon Labs,
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`Inc., 616 F.3d 1267 (Fed. Cir. 2010), which involved a patented method of giving a
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`drug with food that was taught by the prior art. The Federal Circuit held that a
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`limitation that a patient be informed that the drug’s bioavailability was increased
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`by taking it with food did not render the old method patentable. As the Court
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`noted, “informing a patient about the benefits of a drug in no way transforms the
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`process of taking the drug with food. Irrespective of whether the patient is
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`informed about the benefits, the actual method” is “the same.” Id. at 1279.
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`Here too, adding aircraft position to the other data transmitted to the ground
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`station does not affect the function of the claimed maintenance system, which is
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`nowhere described as using position data. The inclusion of position data is thus as
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`unrelated to the claimed maintenance system as if PO had added the offerings on
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`the in-flight menu to the data transmitted to the ground.
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`The “printed matter” doctrine was created for situations, like this, where an
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`informational limitation is functionally unrelated to the claimed apparatus or
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`system. Id. (doctrine prevents “patenting of known products by the simple
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`inclusion of novel, yet functionally unrelated limitations”). The Board “do[es] not
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`apply a rule of construction with an aim to preserve the validity of claims.”
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`Samsung Elecs. Co. v. Home Semiconductor Corp., IPR2015-00459, Paper 32, 12.
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`Here, the claims’ broadest reasonable interpretation does not require any
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`relationship between positional data and the function of the claimed system to
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`generate “maintenance advice.” Thus, the positional data limitations lack
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`patentable significance and cannot rescue claims 8-10 from a determination of
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`unpatentability based on the prior art demonstrating the obviousness of claim 4.
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`IV. Claims 8-10 Are Unpatentable in Light of Monroe
`Even if the positional limitations are afforded patentable weight, claims 8-10
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`are unpatentable on Grounds 1-3. PO does not dispute that, if his
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`“positionable/portable” argument is rejected, and if Monroe is prior art, claims 8-
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`10 are unpatentable. Resp., 13 (“Without” Monroe, Petitioner “Cannot
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`Demonstrate that Claims 8-10 are Obvious in Grounds 1-3”). In his response, PO
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`also acknowledges October 11, 1996 as the date he must swear behind. Id., 15
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`(Monroe “critical date” is October 11, 1996). That date is the filing date of the
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`parent application from which the October 28, 1996 continuation-in-part
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`application claims priority. That parent application, as shown below, discloses all
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`features on which Boeing relies in Grounds 1-3:
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`Subject Matter
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`Collecting sensor and position
`data, recording them in a flight
`data recorder, and sending them
`via radio to “ground link.”
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`GPS receiver used to calculate
`aircraft position.
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`Inertial navigation system used
`to calculate aircraft position.
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`Cited Disclosure in
`Corresponding
`Monroe (Ex. 1017)
`Disclosure in Parent
`(Ex. 1044)
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`2:40-50
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`21:1-6
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`3:20-29
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`7:4-29
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`8:1-17, fig. 8, fig. 12
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`2:53-56
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`3:33-39
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`6:55-60
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`8:52-56
`4:18-22
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`4:6-15
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`20:26-37
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`11:12-16, 11:19-27,
`fig. 4
`10:37-11:4
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`4:20-26
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`10:34-36, 11:16-18
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`12:29-31
`7:26-30
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`As shown herein, PO’s attempt to swear behind Monroe fails for lack of
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`corroboration, lack of disclosure of the claimed invention, and failure to prove
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`diligence.
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`A.
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`PO Has Not Established Conception Before Monroe’s Priority
`Date
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`PO has not established conception before October 11, 1996.
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`1. May 1996
`Relying solely on his own testimony and a personal notebook, PO asserts
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`that he conceived of his invention by May 1996. Resp., 14; Ex. 2009, ¶ 2; Ex.
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`2002. PO’s showing is legally insufficient.
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`No corroboration—A party seeking to prove conception via inventor
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`testimony must provide independent corroborating evidence. Procter & Gamble
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`Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 999 (Fed. Cir. 2009). An inventor’s
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`unwitnessed documents do not qualify. Id. (inventor “must provide independent
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`corroborating evidence in addition to his own statements and documents”).
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`Petitioner challenged the authenticity of Ex. 2002, PO’s unwitnessed notebook.
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`Paper 12. PO submitted no independent corroborating evidence. Thus, PO’s claim
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`to have conceived of claims 8-10 by May 9, 1996 fails. See Microsoft Corp. v.
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`Surfcast, Inc., IPR2013-00292, Paper 93, 17 (rejecting evidence of conception
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`lacking independent corroboration).
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`Failure to disclose the invention—PO does not compare his May 1996
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`notes—which do not mention maintenance advice—with the claims. Thus, even
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`were Exhibit 2002 corroborated, it would not support conception of claims 8-10.
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`See Brown v. Barbacid, 276 F.3d 1327, 1336 (Fed. Cir. 2002) (“[a] conception
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`must encompass all limitations of the claimed invention”).
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`October 9, 1996
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`2.
`The first written description of his invention that Levine compares to the
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`claims of the ’618 patent is a disclosure dated on or about October 9, 1996, two
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`days before Monroe’s priority date. Resp., 15-16; Ex. 2003. This document also
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`fails to establish conception of claims 8-10.
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`No corroboration—Petitioner challenged the authenticity of Ex. 2003.
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`Paper 12. PO again failed to submit independent corroborating evidence for this
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`document. PO admits that he did not give the document to his attorney, Mr.
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`Townsley. Levine Tr. 36:18-20. Nor does he offer any other corroboration. Thus,
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`the document is insufficient to demonstrate conception by October 9, 1996. See
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`Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1356 (Fed. Cir. 2010)
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`(patentee must provide corroborating evidence of what he “disclosed to others”
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`before the prior art’s § 102(e) date).2
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`2 PO and Mr. Townsley assert that, around September 27, 1996, PO gave Mr.
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`Townsley an invention disclosure “similar in format and content to” the October 9,
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`1996 disclosure. Ex. 2009, ¶¶ 3-4; Ex. 2010, ¶ 2; Ex. 2003. Neither declaration,
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`however, attached or discussed the contents of this earlier disclosure, and PO did
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`not compare any such earlier disclosure to claims 8-10. Accordingly, testimony
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`concerning this earlier disclosure also fails to establish conception.
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`Failure to disclose the invention—As with the earlier documents, even if
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`considered, Exhibit 2003 also fails to disclose the claimed invention.
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`No use of position data for maintenance. As noted in the preceding
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`section, PO attempts to defend the claims against Petitioner’s printed matter
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`challenge by arguing that the issued claims “specifically describe the use of . . .
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`aircraft position information in generating maintenance advice.” Resp., 10. Even
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`assuming the issued patent described using positional data to generate maintenance
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`advice—which it does not—PO admitted that the October 9 invention disclosure
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`does not describe such use. Levine Tr. 109:21-25 (“Q. Is there anywhere in this
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`October 9, 1996 invention disclosure where you discuss or describe the use of
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`aircraft position data for purposes of generating maintenance advice? A. No.”).
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`Thus, even under the reading of the claims that PO has adopted to avoid the printed
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`matter doctrine, the October 9 disclosure does not show conception of claims
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`8-10.3
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`3 Conversely, if the claims are construed not to require the use of position data in
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`generating maintenance advice, the position data limitations represent non-
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`functional subject matter lacking patentable weight, for the reasons stated in
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`Section III.
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`No on-board flight data recorder. Claim 4 of the ’618 patent and the
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`position data claims depending on it require “An aircraft maintenance system for
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`use on an aircraft having a flight data recorder.” Moreover, claims 8-10 all require
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`“aircraft position data directed to said flight data recorder.” Exhibit 2003 instead
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`describes using a ground-based flight data recorder to replace the traditional on-
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`board flight data recorder. See Ex. 2003, title, Abs. (describing “ground based
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`recorder for after crash analysis without the necessity of crash shock rugged and
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`waterproof monitoring apparatus aboard the aircraft”); id., 6 (“Unlike the existing
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`crash recorder . . . the system depicted in Figure 1 has a telemetry system to radio
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`these signals to a worldwide communication system”). The October 9 disclosure
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`therefore does not reflect conception of the invention that PO ultimately claimed,
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`which required two data recorders—one onboard the aircraft, and a second, remote
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`recorder on the ground. Levine Tr. 76:13-17 (“Q. But your invention as you can
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`see at least at this time, October 9th, 1996, it didn’t require that there also be a
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`flight data recorder on the aircraft. Correct? A. No, it didn’t require it.”).
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`No maintenance advice, as construed by PO, generated by central station.
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`The challenged claims require that in-flight maintenance advice be generated
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`through data analysis performed by a central ground-based station, or “CGBS.”
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`PO construes “maintenance advice” to require “recommended maintenance
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`actions.” Resp., 32-33. The only such “maintenance advice” described in Exhibit
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`2003 is generated at the “aircraft manufacturer’s” facilities. Ex. 2003, 9 (“aircraft
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`manufacturer would . . . send advisories directly to the aircraft’s ground
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`maintenance personnel”); id., 10 (“manufacture[r]’s facility transmits expert
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`system repair advisories to the aircraft’s maintenance personnel”). The
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`manufacturer facilities are part of a Ground-Based Distribution System (GBDS)
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`outside the CGBS. Ex. 1001, fig. 3; Levine Tr. 66:10-68:4. Moreover, the
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`advisories generated by aircraft manufacturers are created and transmitted while
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`the aircraft is on the ground, not “in flight.” Ex. 2003, 1, 9. Thus, Exhibit 2003
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`fails to disclose the claimed system in which “maintenance advice,” under PO’s
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`construction, is generated through data analysis performed by the “central station.”
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`October 23, 1996
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`3.
`As noted, PO correctly treats October 11, 1996 as Monroe’s priority date.
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`Resp., 15-17. But even were the October 28, 1996 filing date of the continuation-
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`in-part application treated as the priority date, that would not change the outcome,
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`because PO has not provided admissible evidence of conception between October
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`9 and October 28, 1996. PO’s only evidence specifically relating to this period is
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`Exhibit 2004, an invention disclosure dated October 23, 1996. Petitioner
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`challenged the authenticity of Exhibit 2004, Paper 12, and PO again failed to
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`provide any independent corroborating evidence, rendering it inadequate as proof
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`of conception. Even were Exhibit 2004 corroborated, it is virtually identical to
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`Exhibit 2003, and so suffers from the same failures to disclose claims 8-10. See
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`Ex. 1045 (comparing Exhibit 2003 with Exhibit 2004).
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`In sum, PO has not submitted corroborated evidence establishing a
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`conception date for claims 8-10 before the October 11, 1996 priority date of
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`Monroe.
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`PO Has Not Shown Diligent Reduction to Practice
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`B.
`In addition to establishing prior invention, PO must demonstrate a
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`“continuous exercise of reasonable diligence” in the two-month period between
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`October 11, 1996 and December 17, 1996. In re McIntosh, 230 F.2d 615, 619
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`(C.C.P.A. 1956). PO has provided corroborated evidence of at most a few hours of
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`work during this nearly ten-week period, which falls short of showing reasonable
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`and continuous diligence. See, e.g., In re Mulder, 716 F.2d 1542, 1542-46 (Fed.
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`Cir. 1983).
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`PO testified that in October 1996 he reviewed five prior art patents and
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`“continued to revise [his] draft invention disclosures,” as reflected in Exhibit 2004,
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`the invention disclosure dated October 23, 1996. Ex. 2009, ¶ 6. However, both
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`PO’s testimony and his October 23 disclosure lack any independent corroboration.
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`Cf. Grasselli v. Dewing, 534 F.2d 306, 311 (C.C.P.A. 1976) (independent
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`corroboration provided by a “dated signature, on a notebook page, of a witness”).
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`Thus, they carry no weight in the diligence analysis. Brown v. Barbacid, 436 F.3d
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`1376, 1380 (Fed. Cir. 2006) (“an inventor’s testimony concerning his diligence
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`[must] be corroborated”).
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`Even were this evidence considered, PO’s assertion that he reviewed five
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`prior art patents fails to explain how a two-month delay in filing his patent
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`application is “continuous” and “reasonable diligence.” McIntosh, 230 F.2d at
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`619. Nor is that delay explained by PO’s claim that he was revising his invention
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`disclosure, given the extremely minor differences between Exhibit 2003 (dated
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`October 9) and Exhibit 2004 (dated October 23). See Ex. 1045. Moreover, PO
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`could not recall when during the two-week interval between October 9 and October
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`23 he made these minor changes. Levine Tr. 52:24-53:2. Thus, the October 23
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`disclosure would not be evidence of work done after the key October 11 date. See
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`Gould v. Schawlow, 363 F.2d 908, 920 (C.C.P.A. 1966) (“The notebook is not
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`adequate corroboration of diligence if it establishes, in connection with other
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`testimony, what Gould did but not when he did it.”).
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`PO does not suggest any diligence from October 23, 1996 until November
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`19, 1996, when he received a draft patent application from Mr. Townsley. He
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`merely testified that, after November 19, he “worked with Mr. Townsley to finalize
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`the patent application.” Ex. 2009, ¶ 7. However, PO has not produced the draft
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`application, and does not remember how, if at all, it differed from the application
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`that was filed. Levine Tr. 54:6-10. Accordingly, there is no way to determine
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`whether the passage of ne
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