Nicolopulos et al.v.Hopper et al.

Patent Trial and Appeal Board

Dec 4, 2015

11941835 (P.T.A.B. Dec. 4, 2015)

BoxInterferences@uspto.gov Entered: December 4, 2015
Tel: 571-272-4683

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

NOVA ORTHO-MED, INC.
(8,141,719),
Junior Party,

v.

KRATOS ENTERPRISES, LLC
(11/941,835),
Senior Party.

Patent Interference 105,975

Before RICHARD E. SCHAFER, SALLY GARDNER LANE and
HUNG H. BUI, Administrative Patent Judges.
PER CURIUM
Judgment - Merits - 37 C.F.R. § 41.127
In a decision issued simultaneously with this judgment, we denied Junior 1
Party Nova’s motion on priority (Paper 135) and granted Senior Party Kratos’ 2
priority motion (Paper 222). Because Nova did not establish a date of invention 3
prior to Senior Party Kratos’ actual reduction to practice, we award a judgment of 4
priority against Nova. 5
Accordingly it is— 6
ORDERED that Judgment on priority is entered against Nova for the subject 7
matter of Count 1 (Paper 1, p. 3); 8
2

FURTHER ORDERED that Junior Party Nova is not entitled to a patent 1
including the subject matter of Claims 1-2 of Nova’s involved Patent 8,141,719 2
FURTHER ORDERED that Claims 1-2 of Nova’s involved Patent 3
8,141,719 are cancelled (35 U.S.C. § 135(a) (2011)); 4
FURTHER ORDERED that a copy of this judgment shall be entered in the 5
administrative records of each of the involved patent and the involved application; 6
FURTHER ORDERED that if there is any settlement agreement or related 7
documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) 8
(2011) and 37 C.F.R. § 41.205; and 9
FURTHER ORDERED that if a party seeks judicial review, the party must 10
file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of initiating 11
judicial review. 12
We also direct the parties’ attention to Biogen MA, Inc., v. Japanese 13
Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015). 14

cc (via email):

JON HOKANSON, Lewis, Brisbois, Bisgaard & Smith LLP, of Los Angeles,
California, and JONATHAN KEPKO, Lewis, Brisbois, Bisgaard & Smith LLP, of
San Francisco, California.
Jon.Hokanson@lewisbrisbois.com
Jonathan.Kepko@lewisbrisbois.com

CHRISTOPHER P. MAIORANA, Christopher P. Maiorana, P.C.,
RONALD B. BURDA, both of St. Clair Shores, Michigan.
Chris@MaioranaPC.com

BoxInterferences@uspto.gov Entered: December 4, 2015
Tel: 571-272-4683

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

NOVA ORTHO-MED, INC.
(8,141,719),
Junior Party,

v.

KRATOS ENTERPRISES, LLC
(11/941,835),
Senior Party.

Patent Interference 105,975

Before RICHARD E. SCHAFER, SALLY GARDNER LANE and
HUNG H. BUI, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
Decision - Priority - 37 C.F.R. § 41.125(a)
This interference is between Nova Ortho-Med’s Patent 8,141,719 and Kratos 1
Enterprises Application 11/941,835. The party’s respective motions for priority, 2
benefit of the filing dates of earlier applications and Nova’s motion to exclude 3
certain Kratos’ evidence are before us for decision. 4
For the reasons detailed below, we hold that Kratos has proved an actual 5
reduction to practice by November 21, 2006, and Nova has not established an 6
earlier date of invention for the subject matter of the count. We also deny Nova’s 7
motion to exclude evidence. We therefor enter a judgment awarding priority 8
against Nova in a separate paper. 9
2

I. 1
When this interference was declared, it was treated as an originality 2
proceeding on inventorship. Nova’s patent names as inventors Weston S. Hopper, 3
Ronald B. Gaudiano and Henri Baldan. Kratos’ Application lists Stephen 4
Nicolopulos, John Gunther and Thomas A. Moeller. The parties assert that they 5
are each entitled to the benefit of the filing date of Application 11/701,759. That 6
application named Hopper and Nicolopolus as the only inventors. Nicolopolus, 7
however, did not join in the filing, or participate in the prosecution, of the 8
‘759 application. At Nova’s request, the ‘759 application was authorized to be 9
prosecuted under 37 C.F.R. § 1.47(a) in the absence of Nicolopolus. 10
Application 11/701,759, Petition Decision dated September 17, 2007. 11
Because of the dispute over inventorship, neither party was accorded the 12
benefit of the ‘759 application. As was noted in the Notice of Declaration: 13
Both parties claim the benefit of 11/701,759, filed 14
2 February 2007, naming Hopper and Nicolopulos as the 15
inventors. This interference appears to be an inventorship 16
(originality) contest. On the record currently before the board, 17
neither party appears to have a superior claim to the 18
'759 application; hence, according benefit to this application 19
would presuppose what must be proved. 20
21
Declaration, Paper 1, p. 3, n.3. The Declaration accorded Nova only the March 1, 22
2010, filing date of the application that matured into its involved patent. Kratos 23
was only accorded the benefit of the November 16, 2007, filing date of its involved 24
‘835 application. Declaration, Paper 1, p. 3. Thus, Kratos is the senior party. 37 25
C.F.R. §§ 41.201 (definition of senior party) and 41.207(a)(1). 26
During the first phase of the interference, each party requested authorization 27
to file a motion challenging the correctness of its opponent’s named inventorship. 28
Both were authorized to file a motion under 35 U.S.C. §§ 102(f) or 102(g)(1) to 29
3

challenge its opponent’s named inventorship. Order Authorizing Motions, Paper 1
14, pp. 2–3. As noted in that Order 2
it makes little difference which basis is relied upon because a 3
dispute is over which named inventive entity is the actual 4
inventor is the simplest possibility under § 102(g)(1) because 5
the actual inventor necessarily invented before the non- 6
inventor. 7
Id. at p. 3, n.3. 8
Each party filed a motion on inventorship and supporting evidence. Nova’s 9
motion requested 10
a Judgment of Unpatentability under 35 U.S.C. §102(f) of the 11
Kratos ’835 application claims should be granted on the ground 12
that the claimed subject matter was not invented by its named 13
inventors. 14
Nova Motion 2, Paper 28, 16:5–7. Specifically, Nova asserted that the Kratos 15
inventors derived the invention from the disclosure of the invention by Nova to one 16
of Kratos’ named inventors, Stephen Nicolopulos. Nova Motion 2, Paper 28, 3:12–17
14; 16:1–4. Kratos’ motion similarly requested 18
judgment against NOVA . . . on the ground that NOVA's claims 19
are unpatentable because the inventors named on the NOVA 20
patent (the ’719 patent) . . . did not [themselves] invent the 21
subject matter of NOVA's claims that correspond to the 22
count . . . [35 USC § 102(f)] and that NOVA did not first 23
conceive or at all conceive the subject matter sought to be 24
patented [35 USC § 102(g)]. 25
Kratos Motion 1, Paper 41, 2:2–7 (bracketing original). 26
Both party’s inventorship motions were denied. Neither had satisfied its 27
burden of establishing that the opponent’s named inventorship was incorrect.
1
See 28

1
Under the procedures in effect since 2004 (37 C.F.R. Part 41, Subparts D and E)
a party filing a motion bears the burden of proving entitlement to the relief
requested in that motion. 37 C.F.R. §§ 41.121(b) and 41.208(b); Standing Order,
4

37 C.F.R. §§ 41.121(b) and 41.208(b) and Decision on Substantive Motions, Paper 1
109, pp. 6–22. This interference then moved to the priority phase.
2
The schedule 2
setting the times for the priority phase informed the parties: 3
Neither party was successful in meeting its burden to prove 4
either that its opponent derived the invention or that its 5
opponent’s named inventorship was incorrect. It is necessary, 6
therefore, to proceed to the priority phase. For this phase of the 7
interference, the inventorship as stated in the oaths of the 8
involved patent and application and any benefit applications is 9
deemed correct. 10
Order Priority Times, Paper 110, 1:2–8. In other words, the remaining issues relate 11
to priority of invention, i.e., which of the named inventors was first to invent—not 12
inventorship. Because motions for priority asserting entitlement to the benefit of 13
the filing dates of earlier applications were not authorized during the first phase of 14
the interference, the parties were also authorized to file separate motions for the 15
benefit of the filing dates of any parent applications. Order Priority Times, Paper 16
110, 1:9–12. 17
II. 18
The invention claimed by the parties relates to a system used to 19
display merchandise for sale. Both parties embody the invention as a 20

Paper 2, ¶¶ 121.3 and 208. Thus, a moving party bears the burden of persuasion
with respect to the relief requested in the motion. Each party filed a motion
asserting that its opponent’s named inventorship was incorrect. Each party thus
had the burden of persuasion to show that its opponent incorrectly named the
inventors. Neither party provided sufficient evidence and argument to satisfy its
burden of persuasion on inventorship. Therefore, both motions were denied and
the inventorship of the involved application and patent remained as stated in the
parties’ involved patent and application and in PTO records.

2
Nova’s Motion asserting that Kratos’ claims were barred under 35 U.S.C.
§ 102(b) because the invention was “on sale” was also denied. Decision on
Substantive Motions, Paper 109, pp. 22–28.
5

display for walking canes. The system includes a supporting base and a 1
vertical pole attached to the base. The key features of the display are a 2
rotatable hub attached to the pole and a number of separate cane attachment 3
members (“clamshells”) that attach to the cane. The hub has a plurality of 4
tapered or cone-shaped openings. The clamshell member is configured to 5
securely hold the cane. The clamshell also has a tapered cone-shaped 6
member that removably mates with the openings of the hub allowing for 7
easy removal of the cane from the display. 8
Figure 2 from the Nova’719 patent and Figure 1 from the Kratos’ 9
‘835 application, showing an embodiment of each party’s cane display 10
system, are reproduced below: 11
6

Figure 2 from Nova Patent
8,141,719 showing an
embodiment of a cane carousel
display system.
Ex. 2004, p. 333.
Figure 1 from Kratos Application
11/941,835 showing a cane
carousel embodiment of a
merchandise display system.
Ex. 2003, p. 367

We also reproduce Figure 5 from Nova’s patent and Figure 8 from the Kratos 1
application showing the respective depictions of the clamshell member with a 2
cone-shaped portion: 3
7

Figure 5 from Nova Patent
8,141,719 showing an embodiment
of the clamshell cane attachment
member. Ex. 2004, p. 335.
Figure 8 from Kratos Application 11/941,835
showing an embodiment of the clamshell cane
attachment member. Ex. 2003, p. 372.

The parties’ invention is represented by Count 1—the only count: 1
The cane carousel display of [Nova Patent] 8,141,719 claim 1 2
or the system of [Kratos Application] 11/941,835 claim 1.
3
3
Paper 1, p. 3. Each of the above-cited claims, as taken from the parties’ 4
respective submissions of annotated claims,
4
is reproduced below: 5

3
The count is the disjunctive of Claim 1of Nova Patent 8,141,719 and Claim 1 of
Kratos Application 11/941,835. With this type of count, both parties may prove
priority as to the subject matter of either alternative of the count. In other words,
the parties are not limited to establishing priority only for the invention as
described in its own claims.

4
Section 41.110(b)(1) of 37 C.F.R. requires, inter alia, that for each involved
claim having a limitation that is illustrated by a drawing, the parties must “file an
annotated copy of the claim indicating . . . where each limitation is shown in the
drawing . . . .” See also Standing Order, Paper 2, ¶ 110.
8

Nova Claim 1: 1
1. A cane carousel display for display [of] a plurality of canes 2
comprising: 3
a. a first vertical pole (FIG. 1, numeral 14); 4
b. a base (FIG. 1, numeral 10) adapted to rest on a 5
horizontal surface and retaining to said first pole in a stationary 6
position relative to said base (FIG. 1, numeral 10); 7
c. a second stationary vertical pole (FIG. 1, numeral 24); 8
d. a hub (FIG. 1, numeral 20) having a plurality of 9
openings (FIG. 3, numeral 54), said hub rotatably attached to 10
said first pole (FIG. 1, numeral 14) and rotatably attached to 11
said second pole (FIG. 1, numeral 24); 12
e. a plurality of clam shell cane holders (FIG. 1, 13
numeral 34) removably retained on said hub (FIG. 1, 14
numeral 22); 15
f. each of said clam shell cane holders (FIG. 1, 16
numeral 34) including a circular section (FIG. 7, numeral 30), a 17
cone shaped member (FIG. 5, numeral 84) and a center area 18
(FIG. 5, numeral 90); 19
g. each said circular section (FIG. 7, numeral 30) adapted 20
to retain a cane (FIG. 1, numeral 32); and, 21
h. each said cone shaped member (FIG. 5, numeral 84) 22
adapted to be removably retained by said hub (FIG. 1, 23
numeral 22). 24
Nova’s Annotated Claims, Paper 45, p. 3. 25
Kratos Claim 1 26
1. A system for displaying merchandise, comprising: 27
(a) a support structure (FIG. 1, numeral 12); 28
(b) a receptacle (FIG. 1, numeral 44) physically 29
connected to the support structure and having a plurality of 30
openings (FIG. 1, numeral 52) around a periphery, wherein 31
each of the openings (FIG. 1, numeral 52) is configured to have 32
a vertical slot and a tapered elongated cavity (FIG. 1, 33
numeral 54); and 34
(c) an attachment device (FIG. 1, numeral 100) adapted 35
to be fastened to an item of merchandise (FIG. 1, numeral 105), 36
said attachment device comprising 37
9

(i) a vertically oriented insertion member (FIG. 6, 1
numeral 136) that is tapered from top to bottom and is 2
removably inserted into one of said plurality of openings 3
in the receptacle (FIG. 1, numeral 40) and 4
(ii) a segment horizontally adjacent to the insertion 5
member, said segment configured to pass through the 6
vertical slot (FIG. 1, numeral 54) when the insertion 7
member is inserted into the elongated cavity 8
(FIG. 1, numeral 54). 9
Kratos’ Annotated Claims, Paper 10, p. 3. 10
III. 11
A. 12
Nova moves for the exclusion of the following Kratos evidence: 13
Exhibit 1032, ¶¶ 5–9, 11–12, and 14–21; Exhibits 1033–1040; Exhibit 1041, ¶¶ 14
59–64, 100–112, 115–119, 121–127, 129–132, 136–138, and 140–141; Exhibits 15
1044–1054; 1057–1061; 1063–1069; 1071–1074; 1078–1080; 1082–1083; 1085; 16
1089–1096; and 1100–1101. Nova Motion to Exclude, Paper 254, 1:3–7. Exhibit 17
1031 is the direct testimony of Kratos’ witness Robert Miller. Exhibit 1041 is the 18
direct testimony of one of Kratos’ named inventors, John Gunther. The remaining 19
exhibits were referred to in Miller’s and Gunther’s testimony. 20
B. 21
A motion to exclude is a miscellaneous motion for which the movant has the 22
burden of proof. 37 C.F.R. §§ 157(c) and 121(b). In order to satisfy that burden, 23
the motion “must provide a showing, supported with appropriate evidence, such 24
that, if unrebutted, it would justify the relief sought.” 37 C.F.R. § 41.208(b). 25
Nova has not satisfied its burden. Nova’s motion merely provides 26
allegations that the cited evidence is inadmissible under certain of the Federal 27
Rules of Evidence without providing an adequate explanation of how the rules 28
apply to exclude that evidence. 29
10

C. 1
For the most part, Nova’s objections are premised on the assertion that 2
Miller and Gunther lack personal knowledge of the subject matter of the referenced 3
paragraphs and exhibits. Nova Motion to Exclude, Paper 254, pp. 1–4. Thus, 4
because of the alleged lack of personal knowledge 5
each is improperly authenticated and fails to complywith 6
F.R.E. §1007, each is speculation under F.R.E. §§602, 901(a) 7
and each is hearsay under F.R.E. § 802, for which no exception 8
exists. 9
Nova’s Motion to Exclude, Paper 254, 2:11–15 and 4:5–7. 10
Nova, however, does not adequately explain the basis for asserting that 11
Miller and Gunther lack personal knowledge as to the matters on which they 12
testified. F.R.E. 602 provides (emphasis added): 13
A witness may testify to a matter only if evidence is introduced 14
sufficient to support a finding that the witness has personal 15
knowledge of the matter. Evidence to prove personal 16
knowledge may consist of the witness’s own testimony. 17
Gunther and Miller each specifically testify that that they have personal knowledge 18
and understanding of the facts set forth in their respective testimony. Miller 19
Declaration, Ex. 1032, ¶ 2; Gunther Declaration, Ex. 1041, ¶ 2. Nova does not 20
explain why Miller’s and Gunther’s affirmations are insufficient to establish their 21
personal knowledge. 22
For each witness, Nova presents only a table identifying the portions of 23
Miller’s and Gunther’s respective declarations and cross-examinations said to 24
establish their lack of personal knowledge. Nova Motion to Exclude, Paper 254, 25
pp. 2–4. We have reviewed the tables. It is not apparent to us how the referenced 26
portions contradict Miller and Gunther’s express testimony that they have personal 27
knowledge. For example, Nova seeks to exclude ¶ 109C (Ex. 1041). Nova’s 28
Motion to Exclude, Paper 254, 3:2–4. To show lack of presonal knowledge, 29
11

Nova’s table directs us to ¶ 109C of Gunther’s direct testimony (Ex. 1041) and 1
Page 253, lines 8–17 of Gunther’s cross-examination testimony (Ex. 2037). 2
Nova’s Motion to Exclude, Paper 254, 3:20. At ¶ 109C Gunthert testifies: “The 3
edrawing shown in the image of EX 1051, page 1 was created by Tom Moeller.” 4
Ex. 1041, ¶ 109C (emphasis added). Nova provides no explanation of how this 5
testimony shows Gunther lacks personal knowledge of page 1 of the exhibit. The 6
cited cross examination begins: “Q Turning your attention to page 9, who made 7
this drawing?” Ex. 2037, 253:8–9. We fail to see how the witnesses’ direct and 8
cross-examination establishes a lack of knowledge as to page 1 of the Exhibit 1051 9
and who created it. The other references similarly fail to establish why Miller and 10
Gunther personal knowledge was not the basis of their testimony. 11
Nova has failed to prove that Gunther and Miller lack personal knowledge of 12
the objected-to evidence. Nova has otherwise failed to explain how that evidence 13
fails to comply with F.R.E. §§ 802, 901(a), and 1007. 14
D. 15
Nova also seeks to exclude ¶¶ 59-64 of Gunther’s testimony (Ex. 1041) as 16
irrelevant and Kratos Exs. 1089–1096 as unauthenticated. Because we did not find 17
it necessary to rely on that portion of Gunther’s testimony or Exs. 1089–1096 in 18
reaching our decision below on prioirty, it is unnecessary to consider excluding 19
that evidence. We dismiss the parts of Nova’s motion directed to ¶¶ 59–64 of 20
Gunther’s testimony and Kratos Ex. 1089–1096. 21
E. 22
Nova’s motion to exclude Exhibit 1032, ¶¶ 5–9, 11–12, and 14–21; Exhibits 23
1033–1040; Exhibit 1041, ¶¶ 100–112, 115–119, 121–127, 129–132, 136–138, and 24
140–141; Exhibits 1044–1054; 1057–1061; 1063–1069; 1071–1074; 1078–1080; 25
1082–1083; 1085; and 1100–1101 is denied. 26
12

Nova’s motion to exclude ¶¶ 59-64 of Gunther’s testimony (Ex. 1041) as 1
irrelevant and Kratos Exs. 1089-1096 as unauthenticated is dismissed as moot. 2
IV. 3
Kratos alleges that the invention was actually reduced to practice no later 4
than September 23, 2006. Kratos Priority Motion, Paper 222, 18:6–7. 5
Kratos principally relies on the testimony of one of its named inventors, 6
John Gunther. Gunther testifies on activities related to the cane display between 7
April and November, 2006. Declaration of John Gunther, Ex. 1041. He testifies 8
that he worked with Kratos’ other named inventors to develop the invention. 9
Declaration of John Gunther, Ex. 1041, ¶ 3. His testimony refers to and relies 10
upon electronic files that he testifies have been in his possession and stored on his 11
computer since the development of the cane display. Declaration of John Gunther, 12
Ex. 1041, ¶¶ 4 and 69. Exhibit 1084 is a listing of those files. Declaration of John 13
Gunther, Ex. 1041, ¶ 69. The listed files have been submitted into evidence as part 14
of Kratos Exhibits 1042–1083. Declaration of John Gunther, Ex. 1041, ¶¶ 69–70. 15
Gunther’s testimony refers to metadata associated with many of those files. 16
He specifically refers to the “modified date.” Gunther testifies that the “modified 17
date” represents the date the content of the file was last modified. Declaration of 18
John Gunther, Ex. 1041, ¶ 71. Nova has not challenged Gunther’s testimony on 19
the meaning of “modified date” appearing in the metadata. 20
Gunther’s declaration presents a reasonably detailed account of the progress 21
on the development of the cane display by Kratos. It was his understanding that 22
Steve Nicolopolus, another of Kratos’ named inventors, was contacted by Nova to 23
develop a cane display system. Declaration of John Gunther, Ex. 1041, ¶ 15. 24
Gunther was brought in by Nicolopolus to help develop that system. Declaration 25
of John Gunther, Ex. 1041, ¶ 17. Gunther hired Tom Moeller, the third of Kratos’ 26
named inventors, to help with the design. Declaration of John Gunther, Ex. 1041, 27
13

¶ 17. Moeller created 2D and 3D computer models using a CAD program called 1
Solidworks. Declaration of John Gunther, Ex. 1041, ¶ 22. 2
Kratos received initial design images and sketches for a cane display from 3
Nova. Declaration of John Gunther, Ex. 1041, ¶ 33. Gunther testifies that 4
drawings in Ex. 1042 show Nova’s initial designs. Declaration of John Gunther, 5
Ex. 1041, ¶ 100C. Gunther testifies he received those files from Nicolpolus and 6
that it was Gunther’s understanding that they came from Nova. Declaration of 7
John Gunther, Ex. 1041, ¶¶ 100D and 100 E. He testifies that the metadata 8
associated with each of the drawings indicates a “modified date” of April 6, 2006, 9
indicating that that those drawings existed no later than that date. Declaration of 10
John Gunther, Ex. 1041, ¶ 100G. Ronald Gaudiano, one of Nova’s named 11
inventors, testifies: “At some point after March 31, 2006, I provided to Steve 12
[Nicholopolus] details of the work done by Wes Hopper, Henri Baldan and myself 13
in designing the cane carousel.” Declaration of Ronald Gaudiano, Ex. 2004, 14
p. 305, ¶ 9. Winston Hopper, another of Nova’s named inventors, testifies that no 15
later than March 31, 2006, Nova had prepared a set of drawings for making a 16
working prototype of a cane display. Declaration of Winston Hopper, Ex. 2004, 17
p. 284, ¶ 14. Some of those drawings were said to be attached as Exhibit 2 of his 18
declaration. Declaration of Winston Hopper, Ex. 2004, p. 284, ¶ 14. The drawings 19
are described in Paragraphs 14–15 of Hopper’s testimony (Ex. 2004, p. 284) and 20
are of record as pages 298–302 of Ex. 2004. Idential drawings are included in the 21
drawings Gunther retrieved from his records. Declaration of John Gunther, 22
Ex. 1041, ¶¶ 100D & 100E; Ex. 1042, pp. 9, 21, 1, 3 and 7. For example, the 23
drawing in Kratos Ex. 1042 at page 9 is identical to the drawing in Nova Ex. 2004 24
at p. 298. The metadata for the drawings from Gunther’s files indicates a modified 25
date of April 6, 2006. We reproduce Kratos Ex. 1042, p. 9 below: 26
14

Cane display design shown in Kratos Ex. 1042, p. 9 1

Gunther refers to the cane desplay design shown in the above drawing as the 2
racetrack design. Declaration of John Gunther, Ex. 1041, ¶ 33. 3
Gunther testifies that by the end of April 2006, Kratos recognized that the 4
racetrack design would not work. Declaration of John Gunther, Ex. 1041, ¶¶ 34 5
and 105K. He testifies that in May of 2006 Kratos developed a prototype design 6
that they identify as Embodiment 1. Declaration of John Gunther, Ex. 1041, ¶ 34. 7
Gunther testifies that the initial design for Embodiment 1 is shown in 8
Ex. 1045. Declaration of John Gunther, Ex. 1041, ¶¶ 103B and 103F. The images 9
were said to have been made by Tom Moeller. Declaration of John Gunther, 10
Ex. 1041, ¶ 103C. Exhibit 1045 shows different views of the initial design of the 11
clamshell and the hub components of Embodiment 1. Declaration of John 12
Gunther, Ex. 1041, ¶ 103D. The “modified date” for the images indicates that they 13
existed by April 27, 2006. Ex. 1045, even pages 2–8. One of the drawings 14
showing the initial design of the Embodiment 1 cane display system is reproduced 15
below (Ex. 1041, ¶ 103B): 16
15

Reproduction of Kratos Ex. 1045, p. 9, showing a cane display system of 1
Embodiment 1 having a two-tiered hub and a clamshell holding a cane. 2

As shown in the above figure, the initial design for the hub and the clamshell lack 3
the tapered elongated cavity and the insertion member that is tapered from top to 4
bottom, respectively, required by the Count. See also Ex. 1045, pp. 1–2. 5
Gunther testifies that based on the discussions between the Kratos inventors, 6
Tom Moeller made additional edrawings of Embodiment 1 shown in Exs. 1046, 7
1048, 1049, 1050, 1052 and 1054. Declaration of John Gunther, Ex. 1041, 8
¶¶ 104E, 106C, 107C, 108H, 108J and 110C. The “motified date” metadata for 9
these drawings show they existed at least by April 28 to May 7, 2006. Declaration 10
of John Gunther, Ex. 1041, ¶¶ 104G, 106G, 107G, 108Y and 110E. 11
16

Gunther testifies that in order to make a prototype of Embodiment 1 they 1
employed subcontactors. Declaration of John Gunther, Ex. 1041, ¶ 37. A 2
machinist was used to manufacture the two-tiered hub. Declaration of John 3
Gunther, Ex. 1041, ¶ 38. Gunther testifies that a company named Serico was used 4
as a subcontractor to make the clamshell prototype for Embodiment 1. Declaration 5
of John Gunther, Ex. 1041, ¶ 39. The schematic drawing of a clamshell shown in 6
Ex. 1047, p. 57, was said to have been sent to Serico. Declaration of John 7
Gunther, Ex. 1041, ¶ 105S. The drawing included dimensions, an isometric view 8
and a final part view of a clamshell design. Ex. 1047, p. 57; Declaration of John 9
Gunther, Ex. 1041, ¶ 105S. Tom Moeller is said to have created that drawing. 10
Declaration of John Gunther, Ex. 1041, ¶¶ 105N and 105P. The metadata for 11
Ex. 1047, p. 57, indicates a “modified date” of April 30, 2006, showing that the 12
document existed by that date. 13
Gunther testifies that Kratos had Serico make twenty-four prototype 14
clamshells for Embodiment 1 based on Kratos’ specifications and drawings. 15
Declaration of John Gunther, Ex. 1041, ¶¶ 39–40 and 113J–113K. Gunther says 16
that page 3 of Exhibit 1055, is an invoice received from Serico for preparing 17
twenty-four prototype clamshells. Declaration of John Gunther, Ex. 1041, ¶ 113G. 18
The invoice is dated May 17, 2006. Ex. 1055, p. 3. The invoice states: 19
Quantity: 24 thermoformed Clamshells, 20
Material: clear 20 ml PetG, Construct 21
original plug/cast to urethane. Built from 22
customer's control drawings. 23
Ex. 1055, p. 3. The “modified date” in the metadata associated with the invoice 24
indicates a date of May 18, 2006. Ex. 1055, p. 2. The invoice says that the 25
clamshells were sold and shipped to “Balance Engineering.” Ex. 1055, p. 3. 26
Balance Engineering was the name of Gunther’s company. Declaration of John 27
17

Gunther, Ex. 1041, ¶ 141D. The invoice also lists John Gunther under the heading 1
“Customer Order No.” Ex. 1055, p. 3. 2
Gunther further testifies that he understands that Steve Nicolopolus 3
delivered a completed prototype of Embodiment 1 to Nova. Declaration of John 4
Gunther, Ex. 1041, ¶ 112D. Nova admits that a prototype of Embodiment 1 was 5
delivered to Nova by Kratos by at least May 16, 2006. Nova Reply 4, Paper 252, 6
Appendix 2, p. x, admission of proposed fact 36. A prototype of Embodiment 1 is 7
said to be shown in the photographs reproduced in Ex. 1054. Declaration of John 8
Gunther, Ex. 1041, 112B. The metadata “modified date” for those photographs 9
show that the photos existed on May 16, 2006. Ex. 1054, even numbered pages; 10
Declaration of John Gunther, Ex. 1041, ¶ 112J. 11
Gunther also testifies that Kratos developed Embodiment 2 of the cane 12
display in June and July of 2006. Declaration of John Gunther, Ex. 1041, ¶ 47. 13
Tom Moeller is said to have made electronic drawings (edrawings) of the 14
components of Embodiment 2.
5
Those edrawings are of record and are listed in the 15
margin.
6
The metadata “modified dates” indicate that the files existed by 16
September 8, 2006.
7
17
Gunther testifies that he understood that Kratos would arrange for 18
manufacture of the cane displays and provide them to Nova. Declaration of John 19
Gunther, Ex. 1041, ¶ 118H. Subcontractors were used to make prototypes of the 20

5
Declaration of John Gunther, Ex. 1041, ¶¶ 115C, 119R, 120K, 120N, 121C,
123D, 123G, 124D, 125E, 125N, 125O, 125Q, 125W, 127C, 131D, and 131Q.

6
Ex. 1057, pp. 1 and 3; Ex. 1061, p. 16; Ex. 1062, pp. 7 and 9; Ex. 1063, p. 1;
Ex. 1065, pp. 1 and 3; Ex. 1066, p. 1; 1067, pp. 3, 5, 7, 14, 16, 18, 20, 22, 24, 26,
28, 30, and 32; 1069, pp. 1, 3, 10, 18, and 26; Ex. 1073, pp. 1 and 8.

7
Ex. 1057, pp. 2 and 4; Ex. 1061, p. 17; Ex. 1062, pp. 8 and 10; Ex. 1063, p. 2;
Ex. 1065, pp. 2 and 4; Ex. 1066, p. 2; 1067, pp. 4, 6, 8, 15, 17, 19, 21, 23, 25, and
27; 1069, pp. 2, 4, 11, 19 and27; Ex. 1073, pp. 2 and 9.
18

Embodiment 2 hub and clamshell. Ex. 1041, ¶ 49-50. Gunther testifies that 1
Exhibits 1058, 1060–1061 include bids and estimates from subcontractors for 2
making the clamshell and hub portions of Embodiment 2. Ex. 1041, ¶¶ 116B, 3
118B, and 119B . 4
Exhibit 1058 includes a copy of a document from Scion. Ex. 1058, p. 1. 5
The document is said to be a bid or estimate for the creation of an Embodiment 2 6
hub. Declaration of John Gunther, Ex. 1041, ¶ 116B. The document is dated 7
June 20, 2006, and the metadata also indicates a modified date of June 20, 2006. 8
Exhibit 1058, p. 1–2. Tom Moeller is listed as the “Engineer.” The “Bill To” and 9
“Ship To” address each identify “Blue Product Development.” Ex. 1058, p. 1. 10
Gunther testifies that Blue Product Development is the name of Tom Moeller’s 11
company. Declaration of John Gunther, Ex. 1041, ¶ 141C. The document refers to 12
Hub2-01. Ex. 1058, p. 1. Hub2-01 is said to be an intermediate design for an 13
Embodiment 2 hub and is shown in Ex. 1057. Declaration of John Gunther, 14
Ex. 1041, ¶ 116E. Exhibit 1057 includes 2 edrawings and corresponding metadata 15
pages. The first is titled Hub2-01 6-15-06.SLDPRT. Ex. 1057, p. 1. That 16
edrawing appears to show a hub meeting all the limitations of the count. The 17
edrawings in Ex. 1057 were said to be created by Tom Moeller. Declaration of 18
John Gunther, Ex. 1041, ¶ 115C. 19
Exhibit 1060 is said to be a quotation from Hong Kong Mould 20
Manufacturing of Canada Ltd. for making an injection mold for use in making 21
Embodiment 2 hubs and for supplying various quantities of the hubs. Declaration 22
of John Gunther, Ex. 1041, ¶¶ 118B, 118E and 118G. The quotation is dated “4-23
Jul-06.” Ex. 1060, p. 1. The metadata indicates a “modified date” of July 6, 2006. 24
The quote is addressed to “Blue Product Development” with “ATTN. TO: Tom I. 25
Moeller.” Id. 26
19

Exhibit 1061 is said to include additional quotes for preparing the prototype 1
for the Embodiment 2 hub. Declaration of John Gunther, Ex. 1041, ¶ 119B. A 2
company called ECP provided a quotation for preparing a mold and making hubs. 3
Ex. 1061, p. 4. The quotation is dated “ll-July-06, is addressed to Tom Moeller 4
and Blue Product Development. Id. The metadata shows a “modified date” of 5
July 15, 2006. Ex. 1061, p. 6. The “Part Name” is identified as “Blue Hub2-02.” 6
Ex. 1061, p. 4. The Part Name “Blue Hub2-02” is said to be a reference to a 7
drawing titled Hub2_02.SLDRPT created by Tom Moeller. Declaration of John 8
Gunther, Ex. 1041, ¶¶ 120M–120O. That drawing is of record as Ex. 1062, p. 9. 9
The metadata for the drawing shows a “modified date” of July 16, 2006. 10
Exhibits 1063, 1065 and 1066 are said to show drawings depicting further 11
refinements of Embodiment 2. Declaration of John Gunther, Ex. 1041, ¶¶ 121B, 12
123B, and 124B. The edrawings were created by Tom Moeller. Declaration of 13
John Gunther, Ex. 1041, ¶¶ 121C, 123D, and 124D. The edrawings in Exhibits 14
1063 and 1065 show a hub and clamshell meeting all the limitations for those 15
elements of the count. Ex. 1063, pp. 3–4 and 1065, p.3. Exhibit 1065 also shows a 16
cane display meeting all the limitations of the Count. Ex. 1065. p. 1. The 17
metadata for Exhibits 1063, 1065 and 1066 show modified dates of July 31 to 18
August 1, 2006. 19
Gunther testifies that Exhibit 1075, p. 7, is a copy of an email he sent to 20
Mike O’Sullivan. Declaration of John Gunther, Ex. 1041, ¶ 133L. O’Sullivan was 21
Kratos’ contact at Serico. Declaration of John Gunther, Ex. 1041, ¶ 105S. The 22
email is dated September 15, 2006. It requests that thirty clamshells be delivered 23
to Los Angeles. Ex. 1075, p. 7. The email also discusses modifications to the 24
clamshell design referring to a first and second sketches. Ex. 1075, p. 7. The 25
exhibit does not include the sketches. Gunther says that copies of the “first” and 26
“second” sketches are shown in Exhibit 1076 at pages 3 and 1, respectively. 27
20

Declaration of John Gunther, Ex. 1041, ¶¶ 134D–134E. The sketches are said to 1
show a redesigned clamshell used in the final phase of the cane display system. 2
Declaration of John Gunther, Ex. 1041, ¶ 134B. The sketches each include the 3
hand written date “9/13/06.” Ex. 1076, pp. 1 and 3. The metadata shows a 4
modified date of September 15, 2006. Ex. 1076, pp. 2 and 4. 5
Gunther testifies that he kept one of the clamshells produced by Serico and 6
took a photograph of it in 2014. Declaration of John Gunther, Ex. 1041, ¶ 136J. 7
The photograph is of record as Ex. 1006. Id. 8
Gunther testified that he met with Nicolopolus at LAX (Los Angeles World) 9
Airport. Ex. 1041, ¶¶ 139D and 139F. Nicolopolus showed him the completed 10
ready-for-sale version of the cane display. Ex. 1041, ¶ 139F. Gunther took photos 11
of a completed cane display system and those photographs are shown in Ex. 1081. 12
Declaration of John Gunther, Ex. 1041, ¶ 139C. The metadata for the photographs 13
show a “modified date” of November 21, 2006. The photographs show a cane 14
disply meeting all the limitations of the count. Thus, a physical embodiment that 15
included all the limitations of the count was made no later than 16
Novemember 21, 2006. 17
B. 18
Priority goes to the first party to reduce an invention to practice unless the 19
other party can show that it was the first to conceive the invention and that it 20
exercised reasonable diligence in later reducing that invention to practice. Price v. 21
Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Lutzker v. Plet, 843 F.2d 1364, 22
1366 (Fed. Cir. 1988). 23
In order to establish an actual reduction to practice, the inventor must prove: 24
(1) construction of an embodiment or performance of a process that met all the 25
limitations of the interference count; and (2) a determination that the invention 26
would work for its intended purpose. See UMC Elecs. Co. v. United States, 816 27
21

F.2d 647, 652 (Fed.Cir.1987) ( “[T]here cannot be a reduction to practice of the 1
invention ... without a physical embodiment which includes all limitations of the 2
claim.”); Estee Lauder Inc. v. L'Oreal S.A., 129 F.3d 588, 593 (Fed.Cir.1997) 3
(“[A] reduction to practice does not occur until the inventor has determined that the 4
invention will work for its intended purpose.”). Depending on the character of the 5
invention and the problem it solves, determining that the invention will work for its 6
intended purpose may require testing. See Mahurkar v. C.R. Bard Inc., 79 F.3d 7
1572, 1578, 38 U.S.P.Q.2d 1288, 1291 (Fed.Cir.1996). Less complicated 8
inventions and problems do not demand stringent testing. Scott v. Finney, 34 F.3d 9
1058, 1062 (Fed. Cir. 1994). In fact, some inventions are so simple and their 10
purpose and efficacy so obvious that their complete construction is sufficient to 11
demonstrate workability. Id.; King Instrument Corp. v. Otari Corp., 767 F.2d 853, 12
861 (Fed.Cir.1985). 13
An actual reduction to practice can not be proved only by an inventor’s oral 14
testimony. In order to establish an actual reduction to practice, an inventor's 15
testimony must be corroborated by independent evidence. See Knorr v. Pearson, 16
671 F.2d 1368, 1373 (CCPA 1982). “The inventor ... must provide independent 17
corroborating evidence in addition to his own statements and documents.” Hahn v. 18
Wong, 892 F.2d 1028, 1032 (Fed.Cir.1989). “[C]orroboration is fundamentally 19
about ‘credibility.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 20
(Fed.Cir.2006). A “rule of reason” analysis is applied to determine whether an 21
inventor's testimony regarding reduction to practice has been sufficiently 22
corroborated. See Holmwood v. Sugavanam, 948 F.2d F.2d 1236, 1238 (Fed. Cir. 23
1991). The rule requires an evaluation of all pertinent evidence when determining 24
the credibility of an inventor's testimony. See Price, 988 F.2d at 1195. In order to 25
corroborate a reduction to practice, it is not necessary to produce an actual over-26
the-shoulder observer. Rather, sufficient circumstantial evidence of an independent 27
22

nature can satisfy the corroboration requirement. See Knorr v. Pearson, 671 F.2d 1
1368, 1373 (CCPA 1982). “The law does not impose an impossible standard of 2
independence on corroborative evidence by requiring that every point of a 3
reduction to practice be corroborated by evidence having a source totally 4
independent of the inventor; indeed, such a standard is the antithesis of the rule of 5
reason.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.Cir.1998) (citation and 6
internal quotation marks omitted). Furthermore, an actual reduction to practice 7
does not require corroboration for every factual issue contested by the parties. See 8
Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1464 (Fed.Cir.1998); 9
Mann v. Werner, 347 F.2d 636, 642 (CCPA 1965) (“This court has rejected the 10
notion that each individual act in the reduction to practice of a count must be 11
proved in detail by an unbroken chain of corroboration.”). 12
C. 13
1. 14
Gunther’s photographs (Ex. 1081) show that Kratos actually reduced a cane 15
display to practice that met all the limitations of the count no later than November 16
21, 2006. Exhibit 1081 shows a complete cane display including a vertical pole, 17
base, clamshells for holding the canes, and two hubs for securing the clamshells 18
and canes. Ex. 1081, p. 23. The display includes a first vertical pole secured in a 19
base that rests on a horizonal surface. Ex. 1081, pp. 3 and 23. The base retains the 20
pole in a stationary position. Ex. 1081, p. 3 and 23. The display includes a hub 21
attached to the first pole and to a second pole. Ex. 1081, pp. 5 and 23. The hub 22
includes cone-shaped openings. Ex. 1081, pp. 11, 21 and 23. The display 23
includes removable clam shell cane holders that include a cone shaped portion that 24
removably mates with the cone-shaped openings in the hubs. Ex. 1081, pp. 5, 11, 25
13, 21, and 25. The clamshell cane holders include a circular portion that wraps 26
around and secures a cane. Ex. 1081, pp. 11 and 13. The clamshells include a 27
23

central section that connects the cone-shaped portion to the cirucluar portion. 1
Ex. 1081, p. 13. Because the display is relatively simple and its operation is 2
apparent from the photographs, it is obvious that the cane display works for its 3
intended purpose. 4
Nova does not contest that the cane display shown in the photographs in 5
Ex. 1081 meets all the limitations of the count or that those photographs represent 6
an actual reduction to practice. 7
2. 8
We hold that Gunther’s testimony is credible and adequately corroborrated 9
under the rule of reason. Gunther testifies in detail about the development of the 10
cane display from his initial involvement from April 2006 through the photographs 11
he made showing an actual reduction to practice no later than November 21, 2006. 12
He corroborates his testimony with electronic files that he maintained in his 13
possession since the completion of the cane display. Those files are consistent 14
with and verify his testimony on the development of the cane display. His files 15
include edrawings prepared by one of the Kratos’ named co-inventors,Tom 16
Moeller, and show continuous progress on development of the cane display 17
beginning in April 2006. The work culminated in an actual reduction to practice of 18
the cane display shown in the photographs Gunther took at LAX. 19
The evidence of record also includes independent corroborration of 20
Gunther’s story: (1) Hopper’s and Gaudiano’s testimony that Nova provided 21
inititial design drawings to Nicholopolus and the fact that those drawings are 22
identical to drawings that Gunther retrieved from his records (Ex. 2004, p. 284, ¶¶ 23
14-15; p. 305, ¶ 9, pp. 298-302; Ex. 1041, ¶¶ 100D and 100E; Ex. 1042, pp. 1, 3,7, 24
9, and 21.); (2) The invoice from Scion dated May 17, 2006 for preparing twenty-25
four prototype Embodiment 1 clamshells (Ex. 1055); (3) Nova’s admission that 26
Nicolopolus delivered a prototype of the Embodiment 1 cane display to Nova by at 27
24

least May 16, 2006 (Nova Reply 4, Paper 252, Appendix 2, p. x, admission of 1
proposed fact 36.) and (4) The bids and estimates from companies for making the 2
Embodiment 2 hubs and clamshells (Exhibits 1058, 1060-1061). 9 3
Looking at the totality of the evidence, Gunther’s testimony is credible and 4
has been sufficiently corroborrated applying the “rule of reason.” Kratos has 5
established an actual reduction to practice no later than November 21, 2006. 6
D. 7
Nova’s argues that Kratos’ actual reduction to practice of the cane display 8
inurres to Nova’s benefit. Nova’s Opposition to Kratos’ Priority, Paper 233, 9
pp. 23–26. 10
1. 11
“Inurement involves a claim by an inventor that, as a matter of law, the acts 12
of another person should accrue to the benefit of the inventor.” Cooper, 154 F.3d at 13
1332. Whether or not a reduction to practice inures to the benefit of another 14
depends, inter alia, on the relationship between the parties. Cooper), 154 F.3d at 15
1332 (Fed. Cir. 1998). 16
It is undisputed that Nicolopolus began working on the cane display at 17
Nova’s request. The crux of Nova’s innurement argument is that but for Nova’s 18
contacts with Nicolopolus, there would have been no reason for the Kratos 19
inventors to develop the cane display. Nova Reply 4, Paper 252. While that is 20
likely true, inurement requires more than just existance of a relationship. 21
Innurement requires establishing that the party asserting innurement conceived the 22
invention that was reduced to practice by another. See Genentech Inc. v. Chiron 23
Corp., 220 F.3d 1345, 1354 (Fed. Cir. 2000). Conception requires that every 24
feature of the count must have been known to the inventor at the time of the 25
alleged conception. Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). For 26
the reasons detailed below, Nova has not established conception of a cane display 27
25

meeting all the limitations of the count. The cane display Kratos actually reduced 1
to practice met all the limitations of the count and was different than the display 2
design relied upon as Nova’s conception. Compare Nova Ex. 2004, p. 298 with 3
Kratos Ex. 1081, p. 23. Because Kratos’ reduction to practice was of a design 4
different than the display design “conceived” by Nova’s inventors, Nova has failed 5
to meet its burden of persuasion that Kratos’ reduction of practice inures to Nova’s 6
benefit. 7
2. 8
Nova’s opposition to Kratos’ priority motion (Paper 233), as well as its 9
Reply 4 on its priority (Paper 252) argues Nicolopolus is not properly named an 10
inventor and Gunther and Moeller as well as its own named inventors should be 11
named joint inventors. 12
We decline to consider Nova’s arguments on inventorship. The principal 13
focus of the first phase of the interference was on inventorship. Nova was 14
authorized to file a motion on inventorship under 35 U.S.C. § 102(f) or 102(g)(1). 15
Order Authorizing Motions, Paper 14, pp. 2-3. Nova did not request additional 16
discovery on the issue prior to filing its motion. See 37 C.F.R. § 41.150(c); 17
Standing Order, Paper 2, ¶ 150.2. Nova filed its inventorship motion. Papers 28 18
and 53. That motion was considered and denied. Decision on Substantive 19
Motions, Paper 109, pp. 6–17. Nova did not seek reconsideration. That decision 20
governs further proceedings in this interference. 37 C.F.R. § 41.125(b). Nova had 21
ample opportunity to address the inventorship of the subject matter of the count. 22
At this stage of the proceeding, further consideration of inventoship is simply 23
unwarranted. We decline to revisit the inventorship issue. 24
3. 25
26

After consideration of Kratos’ motion for priority and Nova’s opposition we 1
hold that Kratos has established a reduction to practice no later than 2
November 21, 2006. 3
V. 4
A. 5
1. 6
Nova also assert priority, Specifically, Nova argues that its named 7
inventors, Hopper, Gaudiano and Baldan, were the first to conceive the invention 8
of the count. Nova Motion 4 for Priority, Paper 135. They assert that “[b]y March 9
31, 2006, the Nova Inventors had conceived the cane carousel in sufficient [detail] 10
that a person of ordinary skill could understand it and reduce it to practice.” Nova 11
Motion 4 for Priority, Paper 135, 3:23–25. Nova also asserts an initial reduction to 12
practice by May 11, 2006. Nova Motion 4 for Priority, Paper 135, 8:27–9:2. 13
Nova directs us to Hopper’s testimony relating to handwritten sketches that 14
he and Baldan made in January, 2006. Hopper testifies that copies of those 15
drawings are part of Exhibit 1 to his declaration. Hopper Declaration, Ex. 2019, 16
¶ 6. The drawings bare the handwritten designations #6–#9. Hopper Declaration, 17
Ex. 2019, ¶ 6. He also testifies that the handwritten drawing bearing the 18
designation #10 was made by Gaudiano one to two months later.
8
Hopper 19
Declaration, Ex. 2019, p. 3, ¶ 6. 20
Nova also directs us to edrawings said to have been made by Baldan. Nova 21
Motion 4 for Priority, Paper 135, 3:18–19. Gaudiano testifies that no later than 22
March 31, 2006, he had received the drawings from Baldan. Gaudiano 23
Declaration, Ex. 2020, p. 2, ¶ 7. Hopper testifies that some of the drawings 24

8
The sketches include handwritten annotations “regarding the features shown in
the sketches.” Hopper Declaration, Ex. 2019, p. 2, ¶ 5. The annotations were said
to have been added “later.” Id. We have not been told when they were actually
added. We have not considered the annotations in evaluating Nova’s conception.
27

provided by Baldan are included as Exhibit 2 of his declaration. Hopper 1
Declaration, Ex. 2019, p. 5, ¶ 14. Those drawings are in evidence as Ex. 2019, 2
pp. 18–23. 3
At some point after March 31, 2006, Nova provided the details of the work 4
done by Hopper, Baldan and Gaudiaono to Nicolopolus. Gaudiano Declaration, 5
Ex. 2020, p. 3, ¶ 9; Hopper Declaration, Ex. 2019, p. 5, ¶ 14. John Gunther’s 6
testimony confirms that drawings consistent with those said to have been provided 7
by Baldan by March 31, 2006, were received by the Kratos inventors around that 8
time. Gunther Declaration, Ex. 1041, ¶¶ 100B to 100F. The drawings received by 9
Kratos are of record as Ex. 1042. Consistent with Hopper’s and Gaudiano’s 10
testimony, the “modified date” metadata associated with the edrawings in Ex. 1042 11
shows those drawings existed by April 6, 2006. Ex. 1042, pp. 1–44 (even 12
numbered pages). The edrawings in Hoppers Exhibit 2 (Ex. 2019, pp. 19–23) 13
appear to be identical to edrawings Gunther retrieved from his files. Gunther 14
Testimony, Ex. 1041, p. 10, ¶ 69; Ex. 1042, pp. 9, 21, 1, 3, and 7, respectively. 15
2. 16
An inventor claiming conception must show possession of every feature of 17
the count, i.e., every featureof the count must have been known to the inventor at 18
the time of the alleged conception. Hitzeman v. Rutter, 243 F3d 1345, 1354 (Fed. 19
Cir. 2001); Coleman, 754 F.2d at 359 (Fed.Cir. 1985). All limitations in counts are 20
material and may not be ignored. Hitzeman, 243 F.3d at 1354. 21
3. 22
We have reviewed the evidence cited to support Nova’s conception by 23
March 31, 2006, as well as all of the drawings in Ex. 1042. Nova has failed to 24
establish a conception of the subject matter of either alternative of the Count by 25
March 31, 2006. 26
The sole count in this interference is 27
28

The cane carousel display of [Nova Patent] 8,141,719 claim 1 1
or the system of [Kratos Application] 11/941,835 claim 1. 2
Notice of Declaration, Paper 1, p. 3. Thus, in order to prove conception, Nova 3
must establish that it had possession of every feature of either Claim 1 of its 4
involved patent or Claim 1of Kratos’ involved application. Nova has not shown 5
conception of two key features of the display –the hub and the clamshell– that 6
meet all the elements of the claims. 7
Nova Claim 1 requires a hub having a plurality of openings and clamshell 8
holders having a cone shaped member adapted to be removably retained by the hub 9
within the openings. Kratos Claim 1 requires a hub (receptacle) having a plurality 10
of openings including a vertical slot and a tapered elongated cavity. Kratos’ claim 11
also requires a clamshell (attachment device) having a vertically oriented insertion 12
member which is tapered from top to bottom that may be removably inserted into 13
the receptable. Kratos’s claim further requires that the attachment device include a 14
vertical segment configured to pass through the vertical slot. 15
None of the drawings and testimony to which Nova directs us demonstrate 16
that the Nova inventors had possession of all of the elements required by either 17
alternative of the count by March 31, 2006. Specifically, Nova’s drawings and 18
testimony do not show possession of a clamshell having a cone-shaped member 19
and a hub having an opening premitting removable retention of the cone-shaped 20
member. 21
Nova asserts, however, that from the drawings, one having ordinary skill in 22
the art could have reduced the invention of the count to practice. Nova Motion 4 23
for Priority, Paper 135, 5:4–6. While an inventor’s conception must be sufficiently 24
complete that one skilled in the art could construct the apparatus without unduly 25
extensive research or experimentation (see Sewall v.Walters, 21 F.3d 411, 415 26
(Fed. Cir.1994)), the inventor must demonstrate possession of every feature of the 27
29

count (Hitzeman, 243 F3d at 1354). “For conception, we look not to whether one 1
skilled in the art could have thought of the invention, but whether the alleged 2
inventors actually had in their minds the required definite and permanent idea.” 3
Burroughs Wellcome v. Barr Laboratories, 40 F.3d 1223, 1232 (Fed. Cir 1994). 4
Conception is distinct from that which would have been obvious to one skilled in 5
the art. See Dawson v. Dawson, 710 F.3d 1347, 1356 (Fed. Cir 2013) (“this court 6
has distinguished conception from obviousness, explaining that the Patent and 7
Trademark Office's determination that a claimed method was obvious is “irrelevant 8
to the question whether the ... inventors had conceived of the invention [at a 9
particular point in time].” (bracketing original)) 10
Nova has not established that it conceived of a cane display including a hub 11
and clam shell as required by either of the two claims that constitute the count. 12
4. 13
Nova argues that 14
[b]ased on a broad, reasonable construction of the Count, claim 15
1 of the ’719 patent version, claim 1 reads on the Nova 16
conception drawings, Embodiment 2 and the cane carousel as 17
described and shown in the specifications of both the Nova 18
’179 patent and the Kratos ’835 application. 19
Nova Reply 4, Paper 252, 5:15–18. 20
It is not apparent from our review of the referenced conception drawings that 21
Nova’s Claim 1 reads on the clamshell structure shown, for example, at page 22 of 22
Ex. 2019. Nova’s Claim 1 requires a clamshell including a cone shaped member 23
adapted to be removably retained by an opening in the hub. Nova’s annotated 24
claims, Paper 45, p. 3. None of Nova’s conception drawings appear to show such a 25
clamshell. Nova Ex. 2019, pp. 14–23; Kratos Ex. 1042. Nova has not provided an 26
explanation or directed us to evidence to establish that they do. We reproduce two 27
of Nova’s conception drawings, pages 19 and 22 of Ex. 2019, below: 28
30

Clamshell concept from
Nova Ex. 2019, p. 22
Cane display concept from
Nova Ex. 2019, p. 19.
1
Nova, has not provided evidence or an explanation of how either of the the claim 2
alternatives of the Count read on the cane display shown in their conception 3
drawings. Conception requires that every feature of the count must have been 4
known to the inventor at the time of the alleged conception. Coleman, 754 F.2d at 5
359. 6
B. 7
Nova also asserts diligence to a subsequent reduction to practice. Nova 8
Motion 4 for Priority, Paper 135, 1:20–21. Because Nova has not established 9
conception of the subject matter of the count, it is not necessary to consider the 10
alleged diligence by Nova in reducing the invention to practice. 11
31

C. 1
Nova alleges that at least one prototype cane display was acutally reduced to 2
practice that included all the limitations of the count. Nova Motion 4 for Priority, 3
Paper 135, 5:16–17. Nova says that between April 1 and May 11, 2006, a 4
prototype was produced, displayed and offered for sale. Nova Motion 4 for 5
Priority, Paper 135, 5:17–20. Nova directs us to Gaudiano’s and Hopper’s 6
testimony as support. Nova Motion 4 for Priority, Paper 135, 5:20–23. 7
Their testimony refers to an email dated May 11, 2006. Ex. 2022, p. 5, ¶ 16. 8
Ex. 2023, p. 4, ¶ 11. The email is of record at page 22 (Ex. 12A) of Ex. 2022. 9
While the email lists “Cane Carousel with canes” as going to “ECRM,” neither the 10
identified testimony nor the email provides any information on the structure of the 11
cane display and whether it meets the limitations of the count. 12
Nova also directs us to emails dated in June 2006, a flyer bearing the 13
handwritten date “June 23, 2006” and Gaudiano’s and Hopper’s testimony related 14
to the emails and flyer. Nova Motion 4 for Priority, Paper 135, 5:24–6:7. The 15
emails are of record as Ex. 2022, pp. 23 and 25. Id. The flyer is of record as Ex. 16
2022, p. 24. Nova Motion 4 for Priority, Paper 135, 6:5–7. The flyer includes a 17
photograph of what appears to be a cane display. Neither the emails nor the flyer 18
establish that the displays that are referenced met all the limitations of the count. 19
The emails do not describe the structure of the “Cane Carousel.” The photograph 20
in the flyer is too indistinct to determine if the all elements of the count are present. 21
Ex. 2022, p. 24. 22
Nova relies on a photograph taken by Sue Chen said to show all the 23
limitations of Kratos Claim 1. Based upon the photograph, Nova argues that it 24
reduced the invention to practice no later than June 20, 2006. Nova Motion 4 for 25
Priority, Paper 135, 6:8–7:10. Chen testifies that she took the photograph and that 26
it was the photo used in the flyer submitted as Ex. 2022, p. 37. Chen Testimony, 27
32

Ex. 2024, ¶ 6.
9
The flyer bears the handwritten date “9/23/06”. Ex. 2022, p. 37. 1
We have not been directed to evidence establishing how or when that date was 2
added to the flyer. She testifies that she took the photograph before June 20, 2006 3
and that it includes all the elements of Kratos Claim 1. Chen Testimony, Ex. 2024, 4
¶¶ 6 and 9. Chen subsequently testifies that she was wrong about the date. She 5
says that the metadata for the original of the photograph indicates the photo was 6
taken on “9/21/05” but that she believed the date was off by one year and five 7
days. Ex. 2038, p. 2, ¶ 6. She now believes she took the photograph on 8
September 26, 2006. Ex. 2038, ¶ 6. However, with respect to the flyer (Ex. 2022, 9
p. 37), Nova’s named inventors, Gaudiano and Hopper, each testify that that the 10
flyer (identified as Ex. 12L), that appears to be a copy of the same flyer, was 11
prepared earlier on September 23, 2006. Ex. 2004, p. 109, ¶ 27 and p. 156, ¶ 20, 12
respectively; Ex. 2004, p. 140. 13
Looking at the totality of the evidence on when the photograph was taken, 14
including Chen’s, Gaudiano’s and Hopper’s testimony, we hold that the evidence 15
is insufficient to prove the date of the photograph by a preponderance. 16
The remaining arguments in Nova’s motion appear to be built upon the 17
asserted actual reduction to practice by June 20, 2004, as shown in Chen’s 18
photograph. Nova Motion 4 for Priority, Paper 135, 7:11–8:26. Those arguments 19
are unpersuasive because Nova has failed to prove a date for that photograph. 20
Nova has failed to establish either that its inventors conceived the invention 21
of the count or actually reduced to practice prior to Kratos’ actual reduction to 22
practice. 23

9
Chen’s testimony identifies three exhibits said to be attached to her testimony.
Ex. 2024, ¶¶ 3-5. However, as filed with the Board, her testimony does not include
any attached exhibits. However, we believe that Exs. 2031-2033 are the exhibits
referred to in her testimony and have so considered them.
33

VI. 1
Both parties have filed motions for the benefit of the filing dates of earlier 2
applications. Papers 130 and 148. In light of our holding that Kratos reduced the 3
invention of the count to practice no later than November 21, 2006, a date which is 4
prior to the filing dates of those applications, it is unnecessary for us to evaluate 5
those motions. Both parties’ motions are dismissed as moot. 6
VII. 7
Various arguments not addressed above have been made by the parties. We 8
have considered those arguments, but conclude that those arguments do not 9
provide a basis for us to reach a different result. 10
ORDER 11
Upon consideration of the parties’ motions, oppositions and replies 12
and the relevant evidence, and for the reasons given, it is 13
ORDERED that Nova’s motion to exclude evidence is denied; 14
FURTHER ORDERED that Nova’s motion for priority is denied; 15
FURTHER ORDERED that Kratos’ motion for priority is granted; 16
FURTHER ORDERED that the parties’ respective motions for the 17
benefit of the filing dates of earlier applications are dismissed as moot. 18
FURTHER ORDERED that a judgment will be issued as a separate 19
paper. 20
21
34

cc (via email):
JON HOKANSON, Lewis, Brisbois, Bisgaard & Smith LLP, of Los Angeles,
California, and JONATHAN KEPKO, Lewis, Brisbois, Bisgaard & Smith LLP, of
San Francisco, California.
Jon.Hokanson@lewisbrisbois.com
Jonathan.Kepko@lewisbrisbois.com

CHRISTOPHER P. MAIORANA, Christopher P. Maiorana, P.C.,
RONALD B. BURDA, both of St. Clair Shores, Michigan.
Chris@MaioranaPC.com