Beach et al.v.Padgett

Patent Trials and Appeals Board

Mar 19, 2020

13835352 - (J) (P.T.A.B. Mar. 19, 2020)

BoxInterferences@uspto.gov Filed: 19 March 2020
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Charles Padgett

Junior Party
(Application 14/211,030),

v.

Cybernet Systems Corporation
(Inventors: Glenn J. Beach, James Burkowski, Amanda Christiana, Trevor Davey,
Charles J. Jacobus, Joseph Long, Gary Moody, and Gary Siebert)

Senior Party
(Application 13/835,352).

Patent Interference No. 106,100 (DK)
(Technology Center 3600)

Judgment
37 C.F.R. § 41.127(a)

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH
KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
Interference 106,100

-2-
We enter judgment under 35 U.S.C. § 102(g)1 against Junior Party, Charles 1
Padgett (“Padgett”) following the decision to deny Padgett Substantive Motion 2, 2
arguing for priority (Paper 52). (See Decision on Motions, Paper 64.) In that 3
decision we determined that Padgett failed to provide sufficient evidence of 4
conception or reduction to practice of an embodiment of the Count earlier than the 5
filing date of Senior Party’s application 13/835,352. 6
It is ORDERED that all of the involved claims of Padgett application 7
14/211,030 (claims 1–9 and 12–20) are FINALLY REFUSED; 8
It is further ORDERED that a copy of this judgment shall be entered into the 9
administrative record of application 14/211,030 and application 13/835,352; 10
It is further ORDERED that the parties are directed to 35 U.S.C. § 135(c) 11
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and 12
It is further ORDERED that a party seeking judicial review timely serve 13
notice on the Director of the United States Patent and Trademark Office (see 37 14
C.F.R. §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to 15
Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 16
654–57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated 17
for interference proceedings declared after September 15, 2012). 18

1 Patent interferences continue under the relevant statutes in effect on 15 March
2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference 106,100

-3-
cc (via e-mail):

Attorney for Junior Party Padgett

Louis J. DelJuidice
Christopher Franich
TROUTMAN SANDERS, LLP
Louis.DelJuidice@troutman.com
Chris.Franich@troutman.com

Attorney for Senior Party Cybernet

Christopher P. Maiorana
CHRISTOPHER P. MAIORANA, P.C.
chris@maioranapc.com

John G. Posa
BELZER PC
jposa@belzerlaw.com
BoxInterferences@uspto.gov Filed: 19 March 2020
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Charles Padgett

Junior Party
(Application 14/211,030),

v.

Cybernet Systems Corporation
(Inventors: Glenn J. Beach, James Burkowski, Amanda Christiana, Trevor Davey,
Charles J. Jacobus, Joseph Long, Gary Moody, and Gary Siebert)

Senior Party
(Application 13/835,352).

Patent Interference No. 106,100 (DK)
(Technology Center 3600)

Decision on Priority Motion
37 C.F.R. § 41.125(a)

Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH
KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
This interference is in a second phase. Previously, Junior Party, Charles 1
Padgett (“Padgett”), and Senior Party, Cybernet Systems Corporation 2
(“Cybernet”), filed motions asserting that the other named the wrong inventor(s) 3
Interference 106,100

-2-
on its application. (See Padgett Substantive Motion 1, Paper 33; see Cybernet 1
Systems Corporation Substantive Motion 1, Paper 31.) The parties’ disagreement 2
was about whether Charles Padgett is an inventor of the parties’ claims, which are 3
substantially the same. 4
We denied both parties’ motions in the Decision on Motions. (See Decision 5
on Motions (“Decision”), Paper 49, 18.) Specifically, we determined that Padgett 6
failed to show that Mr. Padgett provided a definite and permanent idea contributing 7
to the subject matter claimed by Cybernet. (See Decision, Paper 49, 15–17.) We 8
also determined that Cybernet failed to show that the contributions of Cybernet 9
personnel to the claimed invention were actually inventive. Thus, Cybernet failed 10
to show that Mr. Padgett did not invent the subject matter Padgett claims. (See 11
Decision, Paper 49, 12.) 12
Because neither parties’ claims were deemed unpatentable, a determination 13
of priority under 35 U.S.C. § 102(g)1 is necessary to ensure that only one party is 14
awarded claims on the interfering subject matter. As explained in the order 15
authorizing motions in this phase of the proceeding, Padgett’s asserted date of 16
conception, reduction to practice, and diligence (11 March 2011) is earlier than the 17
filing date of Cybernet’s involved application (15 March 2013). (See Order 18
Authorizing Priority Motions and Setting Times, Paper 50, 2; see also Padgett’s 19
Priority Statement, Paper 32.) Accordingly, Padgett was given an opportunity to 20
file a motion arguing for judgment against Cybernet based on priority. 21

1 Patent interferences continue under the relevant statutes in effect on 15 March
2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
Interference 106,100

-3-
Padgett filed Padgett Substantive Motion 2 (“Padgett Motion 2”), asserting 1
that it conceived and reduced the subject matter of the Count to practice before the 2
dates asserted by Cybernet in it Priority Statement (Paper 45). (See Padgett 3
Motion, Paper 52, 3:2–7.) Padgett will prevail if it provides sufficient evidence 4
that it was the first party to reduce the invention to practice or that it was the first 5
to conceive of the invention and exercised reasonable diligence in later reducing it 6
to practice. See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Thus, 7
Padgett may prevail if it can show that by 11 March 2011 it conceived of or 8
reduced to practice an embodiment of Count 1. (See Padgett Motion 2, Paper 52, 9
5:10–6:2; see also Padgett Priority Statement, Paper 32.) 10
Conception is “the ‘formation in the mind of the inventor, of a definite and 11
permanent idea of the complete and operative invention, as it is hereafter to be 12
applied in practice.”’ Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 13
1367, 1376, 231 USPQ 81, 87 (Fed.Cir.1986) (citation omitted). “A conception 14
must encompass all limitations of the claimed invention . . . .” Singh v. Brake, 222 15
F.3d 1362, 1367 (Fed. Cir. 2000). 16
“In order to establish an actual reduction to practice, the inventor must prove 17
that: (1) he constructed an embodiment or performed a process that met all the 18
limitations of the interference count; and (2) he determined that the invention 19
would work for its intended purpose.” Cooper, 154 F.3d at 1327. If the inventor 20
establishes actual reduction to practice by providing his or her own testimony, the 21
testimony must be corroborated to provide independent confirmation of the 22
inventor's testimony and prevent fraud. (See id. at 1330; see Kridl v. McCormick, 23
105 F.3d 1446, 1450 (Fed. Cir. 1997)). 24
Interference 106,100

-4-
The Count in this interference is either claim 1 of Padgett application 1
14/211,030 or claim 1 of Cybernet application 13/835,352. (See Declaration, 2
Paper 1, 5:3–4.) Claim 1 of 14/211,030 recites: 3
A system for manufacturing polymer and metal ammunition, 4
comprising: 5
[1] a first feed station for delivery of lower case portions, each 6
lower case portion including a metal head end; 7
[2] at least one subsequent feed station for delivery of upper case 8
portions, each upper case portion having an open top end; 9
[3] wherein one or both of the upper and lower case portions are 10
polymeric[2]; 11
[4] a case assembly station to receive the lower and upper case 12
portions and join the lower and upper case portions through gluing or 13
plastic welding; 14
[5] a case feeder for receiving and conveying the assembled cases; 15
[6] a primer feed and insert station operative to receive primers and 16
the assembled cases and insert one of the primers onto the head end of 17
each case through the open end of that case; 18
[7] a propellant fill station operative to receive the primed cases and 19
propellant, and fill each case with the propellant through the open end of 20
that case to provide propellant-filled cases; 21
[8] a bullet feeder station operative to receive the propellant-filled 22
cases and bullets, and insert one of the bullets into open end of each case, 23
thereby closing off the open end thereof; and 24
[9] a crimping station operative to attach each bullet to the case into 25
which that bullet was inserted and output assembled rounds of ammunition. 26
27

2 The recitation of claim 1 in Padgett’s Clean Copy of Claims uses the word
“polymetric.” (See Padgett Clean Copy of Claims, Paper 6, 2.) Padgett uses the
word “polymeric” in its Motion 2. (See Padgett Motion 2, Paper 52, 7, table.) We
use the word “polymeric,” which seems appropriate given the polymer nature of
the ammunition.
Interference 106,100

-5-
(Padgett Clean Copy of Claims, Paper 6, 2 (bracketed numbers added to indicate 1
separate elements, as provided in Padgett Mtoion 2, Paper 52, 7–8.) 2
Padgett argues that “[c]onception was complete when Padgett described in 3
phone conversations and written correspondence to Cybernet elements of Padgett 4
Claim 1 and was able to describe those elements to Cybernet so they could reduce 5
it to practice.” (Padgett Motion 2, Paper 52, 6:14–16.) Padgett presents a 6
declaration executed by Mr. Padgett in support of its argument. (See Declaration 7
of Charles Padgett (“Padgett Decl.”), Ex. 2011.) Padgett also presents a table with 8
the elements of an embodiment of the Count (Padgett claim 1) and corresponding 9
“Corroborating Evidence of Conception as early as March 11, 2011.” (See Padgett 10
Motion 2, Paper 52, 7–8.) 11
The table presented by Padgett on pages 7 and 8 of Motion 2 does not 12
persuade us that Mr. Padgett either conceived of or reduced to practice each and 13
every element of an embodiment of Count 1. Specifically, evidence of 14
conception of every feature of the at least two “feed stations” required in the 15
Count is insufficiently corroborated or explained. 16
Padgett points to Mr. Padgett’s Declaration at paragraphs 32 and 33, 17
which refer to Exhibit 2005. (See Padgett Motion 2, Paper 52, 7–8.) Mr. Padgett 18
testifies that Exhibit 2005 is an e-mail to Mr. Beach, a Cybernet employee, dated 19
11 March 2011, with the subject line, in part, “Visual Metrology Device.” (See 20
Padgett Decl., Ex. 2011, ¶ 32.) Mr. Padgett testifies: 21
Prior to this email, I do recall having a phone conversation with Mr. Beach 22
to discuss polymer manufacturing systems, which is confirmed by Mr. 23
Beach’s statement that he had “a question that I forgot to ask on the 24
phone.” Id. I also recall that prior to this email in the phone call 25
Interference 106,100

-6-
mentioned by Mr. Beach, I had explained in detailed desired assembly 1
process at Mr. Beach’s office as to the system that I conceived. 2
3
(Padgett Decl., Ex. 2011, ¶ 32.) We are not persuaded that the e-mail of Exhibit 4
2005 corroborates any communication other than the email itself. That is, the e-5
mail refers to an “assembly process,” not a polymer manufacturing system. Mr. 6
Beach’s question about the process does not provide any information about Mr. 7
Padgett’s conception of a system as recited in the Count. (Contra Padgett 8
Motion 2, Paper 52, 9:22–10:8.) 9
As we explained the prior Decision, Exhibit 2005 refers to a single step 10
versus a three-step process, but the parties’ claims, and therefore the Count, are 11
directed to a system with identified parts. (See Decision, Paper 49, 15.) Padgett 12
fails to explain how the discussion of the process of (i.e., “First, put the bullet 13
into the long part of the case. Second, put the head into the short part of the case. 14
Finally, assemble the two halves of the case.” (Ex. 2005)), relates to the elements 15
of the system of the Count (i.e., a first feed station, at least one subsequent feed 16
station, a case assembly station, a case feeder, a primer feed and insert station, a 17
propellant station, a bullet feeder station, and a crimping station). (See Decision, 18
Paper 49, 15.) 19
Similarly, we are not persuaded by Mr. Padgett’s testimony that 20
it is clear that Mr. Beach . . . was confused as to the number of steps that the 21
system I had conceived of was to execute as evidence by his question to me 22
that he “was under the impression that [the assembly process of the system] 23
was a single step process.” 24
25
Interference 106,100

-7-
(Padgett Decl., Ex. 2011 ¶ 33.) Mr. Beach’s statement does not reference a system 1
with “a first feed station for delivery of lower case portions, each lower case 2
portion including a metal head end” and “at least one subsequent feed station for 3
delivery of upper case portions, each upper case portion having an open top end,” 4
as recited in the Count. Mr. Beach’s statement merely refers to a 1-step process 5
and a 3-step process. Thus, Mr. Beach’s statement fails to support conception of a 6
system. Furthermore, the e-mail of Exhibit 2005 fails to support any of the details 7
of the system of the Count, such as “a metal head end” and an “upper case portion 8
having an open top end.” 9
An inventor's testimony requires corroboration. See Price v. Symsek, 988 10
F.2d 1187, 1195 (Fed. Cir. 1993). “The purpose of this corroboration requirement 11
is to prevent fraud, namely to ‘provide[ ] an additional safeguard against courts 12
being deceived by inventors who may be tempted to mischaracterize the events of 13
the past through their testimony.’” Martek Biosciences Corp. v. Nutrinova, Inc., 14
579 F.3d 1363, 1374–75 (Fed. Cir. 2009) (quoting Medichem, S.A. v. Rolabo, S.L., 15
437 F.3d 1157, 1170 (Fed.Cir.2006)). 16
Mr. Padgett’s testimony that he recalls a phone conversation with Mr. Beach 17
to discuss polymer manufacturing systems and that Mr. Beach was confused about 18
a system conceived by Mr. Padgett are not corroborated by the e-mail of Exhibit 19
2005 because the testimony goes beyond the actual text of the e-mail. Mr. Padgett 20
testifies that he recalls subsequent communications with Mr. Beach, but does not 21
have any electronic or written evidence of them. (See Padgett Decl., Ex. 2011, 22
¶ 37.) Without supporting evidence, we have only Mr. Padgett’s uncorroborated 23
testimony to consider. 24
Interference 106,100

-8-
Furthermore, the e-mail fails to mention any of the specific elements of the 1
Count, such as “feed stations,” a lower case portion with a “metal head end,” or an 2
upper case portion with an “open top end.” Thus, even if the e-mail corroborates 3
Mr. Padgett’s testimony about a system with feed stations in general, the text of 4
Exhibit 2005 fails to corroborate Mr. Padgett’s testimony about conception or 5
reduction to practice of these elements of the Count. 6
Padgett argues further that Exhibit 1009 at page 7 corroborates Mr. Padgett’s 7
testimony regarding the first and subsequent feed stations of the Count. (See 8
Padgett Motion 2, Paper 52, 7–8, table; see also Padgett Reply 2, Paper 62, 7:16–9
20.) Mr. Padgett testifies that page 7 of Exhibit 1009 is a copy of an e-mail from 10
Mr. Padgett to Glenn Beach, dated 26 May 2011. (See Padgett Decl., Ex. 2011, 11
¶ 44.) The e-mail recites: 12
Per quote P117 Ammunition Assembly and Inspect, please make the 13
following changes. 14
15
1) Remove the case assembly portion and put in its own quote. I plan to have 16
this machine located in Detroit so that I receive cases assembled and 17
partially inspected for next operation in Orlando. 18
19
a. I would like to have the two components, upper and lower, bulk fed into 20
the machine which will assemble and laser weld the two components 21
together. I would like a basic inspection to verify that the parts were 22
assembled properly. I would assume that this would essentially consist of 23
over height to make sure they were completely together when welded. The 24
individual upper and lower should be prior inspected when coming off the 25
molding machine so they should be fine. 26
27
b. Use a laser such as the one in the previous quote as the basis, but will 28
Interference 106,100

-9-
probably need more than one head and to weld multiple parts to keep the 1
cyclic rate up. 2
3
2) Please incorporate a sealing machine of cybernet’s design in place of the 4
Hernon machine. Henkel Loc-Tite has the preferred sealant and can provide 5
all the dispensing equipment. I need to have both case mouth and primer 6
sealant applied. I have attached a video link of a similar machine. The rate 7
should match the throughput of the total system, minimum of 1 part per 8
second on the 308 case is desired. 9
10
http://www.youtube.com/watch?v=8sOMpYD24dk&feature=related 11
12
3) Include the accuracy expectation for the powder drop system. It is 13
important that each case is loaded as close as possible so maintain low 14
standard deviation in velocity. 15
16
(Ex. 1009, 7 (emphasis added.)). 17
Mr. Padgett testifies that the reference on page 7 of Exhibit 1009 to “upper 18
and lower” components that were to be “fed into the machine” to be assembled and 19
welded together indicate that each upper and lower component would have 20
necessarily had its own feed station prior to assembly and welding. (Padgett Decl., 21
Ex. 2011, ¶ 45.) We agree that Exhibit 1009 corroborates that Mr. Padgett 22
conceived of the elements of a “first feed station for delivery of lower case 23
portions” and “at least one subsequent fee station for delivery of upper case 24
portions” of the Count. 25
We are not persuaded, though, that page 7 of Exhibit 1009 corroborates 26
other aspects of Mr. Padgett’s testimony. For example, Mr. Padgett states: 27
In my discussions with Mr. Beach up to that point, I had explained in great 28
detail to Mr. Beach that our ammunition casings produced by the system of 29
Padgett Claim I would have had a metal base on one end with a polymer 30
Interference 106,100

-10-
portion adjacent the open, upper end of the casing. This is relevant since it 1
means that Mr. Beach would have understood my requested in Ex. 1009 at p. 2
7 related to the upper and lower components as one involving “a metal head” 3
while the other component with the open upper end not necessarily being 4
metal. 5
6
(Padgett Decl., Ex. 2011, ¶ 46.) Page 7 of Exhibit 1009 does not mention a casing 7
with a metal base on one end or a polymer portion adjacent the open, upper end of 8
the casing. Thus, this page does not support Mr. Padgett’s statements about 9
“possession” or conception of elements [1] and [2] of the Count in their entirety. 10
(See Padgett Decl., Ex. 2011, ¶ 47.) Although the evidence supports conception of 11
first and subsequent feed stations, Mr. Padgett’s testimony about all the features of 12
these feed stations is not corroborated. 13
Similarly, Padgett relies on Mr. Padgett’s testimony at paragraphs 32–33 and 14
38–39 of his declaration to support the argument that he conceived of a system 15
with one of both of the upper and lower case portions are polymeric, as recited in 16
the Count. (See Padgett Motion 2, Paper 52, 7, table.) As discussed above, 17
paragraphs 32–33 refer to the e-mail reproduced in Exhibit 2005, which provides 18
discussion of an assembly process, but not a system. (See Padgett Decl. Ex. 2011, 19
¶¶ 32–33.) Neither paragraphs 32–33 of Mr. Padgett’s declaration, nor Exhibit 20
2005, mention either an upper or a lower polymeric case portion. (See Ex. 2005.) 21
Thus, neither paragraphs 32–33 of Mr. Padgett’s declaration nor Exhibit 2005 22
support Padgett’s argument that Mr. Padgett conceived of a system having one or 23
both of the upper and lower case portions that is polymeric. 24
Padgett also cites to paragraphs 38–39 of Mr. Padgett’s declaration. (See 25
Padgett Motion 2, Paper 52, 7, table; see also Padgett Reply 2, Paper 62, 8:20–26
Interference 106,100

-11-
9:12.) Paragraph 38 refers only generally to the elements of Count 1 and, thus, 1
does not support Padgett’s argument about conception of a system wherein one or 2
both of the upper and lower case portions in polymeric. (See Padgett Decl., Ex. 3
2011, ¶ 38.) In paragraph 39, Mr. Padgett states: 4
For example, I begin my email dated April 4, 2011 stating my desire for 5
Cybernet to manufacture my company's '”two piece case components,” 6
which I understand to mean two polymer sections, one with a metal inser,t to 7
form an ammunition casing just as recited in element 3 (“wherein one or 8
both of the upper and lower case portions are polymetric.”) of Padgett Claim 9
1. See Ex. 1009. 10
11
(Padgett Decl., Ex. 2011, ¶ 39.) We are not persuaded that the phrase “two piece 12
case components” indicates anything about the composition of the upper or lower 13
case portions as required in the Count. 14
The first page of Exhibit 1009 refers to a machine to make “two piece 15
components” with the following actions: 16
Please quote a machine to take our two piece case components and do the 17
following: 18
19
Assemble and Bond or Weld 20
21
Handoff to loading machine for priming and loading 22
23
Handoff to sealing machine 24
25
Handoff to modified ATAC for inspection to include but not limit to the 26
following 27
Cartridge dimensions 28
Concentricity 29
30
Primer seating 31
Interference 106,100

-12-
(Exhibit 1009, 1.) The first page of Exhibit 1009 does not include the word 1
“polymeric.” Mr. Padgett does not provide any further explanation why referring 2
to “two piece components” necessarily means a polymeric component. Thus, we 3
are not persuaded that the first page of Exhibit 1009 corroborates Mr. Padgett’s 4
testimony regarding polymeric case portions. 5
In summary, the evidence cited in the table of Padgett Motion 2 for the first 6
three elements of Padgett claim 1 and the Count does not persuade us that Mr. 7
Padgett conceived or reduced to practice. Although Mr. Padgett may have 8
conceived of a system with feed stations, Padgett fails to direct us to evidence of 9
conception or reduction to practice of a system with feed stations for a “lower case 10
portion including a metal head,” an “upper case portion having an open top end,” 11
“wherein one or both of the upper and lower case portions are polymeric.” 12
(Padgett Clean Copy of Claims, Paper 6, 2.) 13
Padgett cites other evidence to show that “Mr. Padgett had essentially 14
conceived of most elements of Padgett Claim 1 by February of 2011.” (See 15
Padgett Motion 2, Paper 52, 8:5–6.) Padgett asserts that “an email dated January 16
27, 2011 from Mr. Beach of Cybernet evidences that Mr. Padgett had recently 17
discussed with another employee at Cybernet as to his conceived system and 18
working with Cybernet to reduce his system to practice.” (See Padgett Motion 2, 19
Paper 52, 8:7–10.) Padgett cites to paragraph 14 of Mr. Padgett’s declaration, 20
which cites to Exhibit 2008, a copy of an alleged e-mail dated 27 January 2011 21
from Mr. Beach to Mr. Padgett. (See Padgett Decl., Ex. 2011, ¶ 14.) 22
Exhibit 2008 does not persuade us of any conception or reduction to practice 23
by Mr. Padgett. Mr. Padgett testifies only that the e-mail demonstrates “that 24
Interference 106,100

-13-
Cybernet was generally interested in exploring a potential relationship between our 1
companies. After some follow-up conversations, Mr. Beach and I negotiated the 2
aforementioned NDA of Ex. 2004.” (Padgett Decl., Ex. 2011, ¶ 14.) This 3
evidence of a “potential relationship” and the eventual negotiation of a non-4
disclosure agreement reveal nothing about conception, reduction to practice, or any 5
other activity by Mr. Padgett. Padgett argues that Exhibit 2008 was “used to lay 6
the foundation in Padgett’s testimony as to the context of certain facts and nature 7
and history between the parties . . . ,” but the e-mail provides no support for 8
Padgett’s arguments. (Padgett Reply 2, Paper 62, 2:15–16.) Furthermore, because 9
the e-mail is authored by Mr. Beach and was sent to Mr. Padgett, it seems that 10
whatever is disclosed would refute Padgett’s argument about conception by Mr. 11
Padgett. 12
Padgett argues further: 13
Following simultaneous conversations between Mr. Padgett with another 14
company, Advanced Engineered Systems, Inc. (“AES”), AES on February 15
11, 2011 (Ex. 2009) sent Mr. Padgett, a detailed letter related to technical 16
specifications, costs, and deliverable timeline for an ammunition 17
manufacturing system. Mr. Padgett sent this letter to Mr. Beach on May 4, 18
2011 to clarify some questions that Mr. Beach had raised as to how the 19
system of Padgett Claim 1 worked. Ex. 2011 at para. 15 20
21
(Padgett Motion 2, Paper 52, 9:1–7.) On its face, Exhibit 2009 provides a 22
“SYSTEM OVERVIEW” for an “intermittent motion machine,” and recites 23
features including: 24
1. Load cartridge case 25
2. Case present check 26
3. A primer present check 27
Interference 106,100

-14-
4. Powder fill 1
5. Powder probe 2
6. Projectile load and pre-seat 3
7. Seat 4
8. Height check 5
9. Unload 6
7
(Ex. 2009, 2.) This list, which is presumed to be components of the system 8
overviewed, does not expressly recite the first three elements of the Count: 9
[1] a first feed station for delivery of lower case portions, each 10
lower case portion including a metal head end; 11
[2] at least one subsequent feed station for delivery of upper case 12
portions, each upper case portion having an open top end; 13
[3] wherein one or both of the upper and lower case portions are 14
polymetric. 15
16
(Padgett Clean Copy of Claims, Paper 6, 2.) 17
Mr. Padgett points to other portions of Exhibit 2009 in his testimony 18
regarding conception and reduction to practice. For example, Mr. Padgett quotes 19
Exhibit 2009: 20
1. The cartridge case would be bowl fed and introduced into the inline 21
transfer assembly, neck side up, by a feeder bowl and drop tube assembly. 22
The case is then transferred to the next station. 23
24
(See Padgett Decl., Ex. 2011, ¶ 17.) According to Mr. Padgett, this portion means 25
that each part of the cartridge would be fed from its own respective feed station 26
and that the case would then be transferred to an in-line transfer assembly station. 27
(See Padgett Decl. Ex. 2011, ¶ 18.) (See Padgett Reply 2, paper 62, 7:5–15.) 28
Interference 106,100

-15-
The quoted text of Exhibit 2009 does not support Mr. Padgett’s testimony. 1
The text refers only to “[t]he cartridge case” and does not mention more than one 2
part. No details of the “cartridge case” or any “case portions” that might be 3
involved are provided. That is, neither a “lower case portion including a metal 4
head end,” nor an “upper case portions, each upper case portion having an open top 5
end” is mentioned. Thus, this portion of Exhibit 2009 does not corroborate Mr. 6
Padgett’s testimony regarding at least the first two elements of the Count. 7
Mr. Padgett also quotes Exhibit 2009 regarding “inline inspection for the 8
presence of the primer. . . .” (See Padgett Decl., Ex. 2011, ¶ 19.) Mr. Padgett 9
testifies that this portion indicates that the system he conceived would add primer 10
prior to inspection for primer. (See Padgett Decl., Ex. 2011, ¶ 20.) Whether or not 11
this portion of Exhibit 2009 corroborates Mr. Padgett’s testimony about conception 12
of other elements of the Count, it does not corroborate testimony about conception 13
of the features of lower and upper case portions as required in the Count. 14
Other evidence cited by Padgett is similarly unpersuasive of Mr. Padgett’s 15
conception and fails to corroborate his testimony. Exhibit 2010, which Mr. Padgett 16
testifies is evidence of his communications with others about the system he 17
conceived, provides information only about a quote and availability for a 18
conference call. (See Ex. 2010; see Padgett Decl., Ex. 2011, ¶ 15; see Padgett 19
Motion 2, Paper 52, 10:15–21.) No details of a system are provided. 20
After reviewing the evidence cited by Padgett in Table 1 and elsewhere in 21
Motion 2, we are not persuaded that Mr. Padgett conceived of or reduced to 22
practice each and every element of the Count by 11 March 2011. See Brown v. 23
Barbacid, 276 F.3d 1327, 1336 (Fed. Cir. 2002) (“A conception must encompass 24
Interference 106,100

-16-
all limitations of the claimed invention . . . and ‘is complete only when the idea is 1
so clearly defined in the inventor's mind that only ordinary skill would be 2
necessary to reduce the invention to practice, without extensive research or 3
experimentation’ . . . .” (quoting Singh v. Brake, 317 F.3d 1334, 1367 (Fed. Cir. 4
2003).) Padgett fails to present evidence that sufficiently corroborates Mr. 5
Padgett’s testimony regarding at least elements [1], [2], and [3] of the Count. 6
We agree with Cybernet that Padgett’s arguments about what Mr. Padgett 7
must have understood because he could have or did contract with others is not 8
proof of conception of the elements of the Count. (See Cybernet Opp. 2, Paper 61, 9
3:3–4.) We also agree that the evidence Padgett cites is not documentation or 10
testimony of a non-inventor that supports actual design work with the details of the 11
claimed system required in the Count. (See Cybernet Opp. 2, Paper 61, 3:8–9.) 12
Padgett argues that Cybernet’s arguments fail because Cybernet failed to 13
depose Mr. Padgett about his testimony and failed to present its own witness. (See 14
Padgett Reply 2, Paper 62, 5:11–17 and 17:19–18:2.) As the moving party, 15
Padgett bears the burden of proving priority. See 37 C.F.R. § 41.208(b) (“To be 16
sufficient, a motion must provide a showing, supported with appropriate evidence, 17
such that, if unrebutted, it would justify the relief sought. The burden of proof is on 18
the movant.”). Thus, Cybernet’s choice of strategy is irrelevant to the sufficiency 19
of Padgett’s evidence. 20
Because Padgett has not proven that Mr. Padgett conceived of or reduced to 21
practice the subject matter of the Count before the earlier than the benefit date 22
Interference 106,100

-17-
accorded to Cybernet, 15 March 2013, the date that Cybernet filed its involved 1
application, we DENY3 Padgett Motion 2. 2

cc (via e-mail):

Attorney for Junior Party Padgett

Louis J. DelJuidice
Christopher Franich
TROUTMAN SANDERS, LLP
Louis.DelJuidice@troutman.com
Chris.Franich@troutman.com

Attorney for Senior Party Cybernet

Christopher P. Maiorana
CHRISTOPHER P. MAIORANA, P.C.
chris@maioranapc.com

3 Padgett states that it would not oppose a decision for Mr. Padgett to be listed as
co-inventor with one or more the Cybernet inventors because “at the very least
Padgett should either be a co-inventor with the Cybernet inventors and/or entitled
to a priority date of March 15, 2013 since absence of evidence is insufficient to
remove Mr. Padgett as an inventor and evidence ceases to exist establishing by a
preponderance be that the filing date of the Padgett application, U.S. Prov.
61/791,236 was filed on March 15, 2013. Padgett Motion 1, Paper 33, 2:23–3:4.”
(Padgett Motion 2, Paper 52, 11:11–18.) Padgett was authorized to argue, and
does argue, that judgment be entered against Cybernet based on priority. (See
Padgett Motion 2, Paper 52, 3:2–4; see also Order, Paper 50, 3 (“It is ORDERED
that Padgett is authorized to file one motion arguing priority of invention . . . .).)
Questions of co-inventorship are not before us now and we make no decision on
them based on the current motion.
Interference 106,100

-18-
John G. Posa
BELZER PC
jposa@belzerlaw.com