Abu-Isav.Muirhead et al.

Board of Patent Appeals and Interferences

Jan 31, 2012

11498118 (B.P.A.I. Jan. 31, 2012)

Mail Stop Interference Paper 40
P.O. Box 1450 Entered: January 31, 2012
Alexandria Va 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Nextreme, LLC,
Junior Party
(Application 11/498,118;
Named Inventors: Scott A.W. Muirhead and Ismat Abu-Isa),

v.

EnerDel, Inc.,
Senior Party
(Patent 7,378,463 ;
Named Inventor : Ismat Abu-Isa).

Patent Interference No. 105,770 (RES)
(Technology Center 1700)

Before: RICHARD E. SCHAFER, RICHARD TORCZON and
SALLY GARDNER LANE, Administrative Patent Judges.
SCHAFER, AdministrativePatent Judge
Judgment - Motions - 37 CFR § 41.127
In a decision issued simultaneously with this judgment, we held that 1
Nextreme failed to establish that Scott A.W. Muirhead was a joint inventor 2
of the subject matter claimed in EnerDel’s involved Patent 7,378,463. Paper 3
39. For the reasons stated below we enter judgment on patentability against 4
Nextreme's Claims 1-19. 5
2

Background 1
Seeking an interference with the then pending EnerDel application, 2
Nextreme filed its involved application, copying the claims, written 3
description and drawings from EnerDel’s application. Application 4
11/498,118, Preliminary Amendment filed August 1, 2006, p. 9. Nextreme’s 5
application named Muirhead and Ismat Abu-Isa as joint inventors. 6
EnerDel’s application named Abu-Isa as the sole inventor. In Nextreme’s 7
view Muirhead and Abu-Isa were joint inventors of the subject matter 8
claimed by EnerDel. Nextreme also characterized its application as a 9
continuation of EnerDel’s application. Application 11/498,118, Written 10
Description, p. 1, ll. 6-13. 11
Nextreme filed its application under 37 CFR § 1.47(a) without the 12
participation of Abu-Isa, who apparently refused to join. Nextreme’s 13
application was subsequently accorded Rule 1.47(a) status by the Office 14
allowing Nextreme to prosecute the application without Abu-Isa’s 15
participation. Application 11/498,118, Decision on Petition entered 16
February 1, 2010. 17
In copying EnerDel’s application, Nextreme sought an interference 18
solely for the purpose of resolving inventorship. Nextreme noted during 19
prosecution of its application: 20
The only issue that must be resolved through an 21
interference is the issue of inventorship. 22
Application 11/498,118, Letter filed July 24, 2008, p. 4. 23
While Nextreme’s patent was undergoing prosecution, EnerDel’s 24
application completed its own prosecution and issued as Patent 7,378,463 25
involved in this interference. 26
3

The Interference 1
This interference was declared between Nextreme’s application and 2
EnerDel’s patent. EnerDel was designated the senior party by virtue of its 3
earlier filing date. 4
Nextreme filed a motion challenging the inventorship of EnerDel’s 5
patent. Paper 33. Nextreme also filed its supporting evidence. Exhibits 6
2001-2046. We have reviewed Nextreme’s motion and evidence and, in a 7
separate decision (Paper 39), we held that Nextreme failed to prove that 8
Muirhead was a joint inventor. 9
As a result of our decision, EnerDel’s patent remains prior art to 10
Nextreme’s claims under 35 U.S.C. § 102(e). 11
Under § 102(e) Abu-Isa is “another” compared to Muirhead and Abu-12
Isa. “A patent is ‘to another’ when the ‘inventive entities’ are different.” In 13
re Fong, 378 F.2d 977, 980 (CCPA 1967), citing In re Land, 368 F.2d 866, 14
881 (CCPA 1966). 15
Notwithstanding Nextreme’s claim that its application is a 16
continuation of EnerDel’s, Nextreme is not entitled to benefit of the filing 17
date of EnerDel’s application. In order to be given the benefit of the filing 18
date of an earlier application, the later filed application must “be filed by an 19
inventor or inventors named in the previously filed application.” 35 U.S.C. 20
§ 120. Abu-Isa is the only inventor named in EnerDel’s application. 21
Nextreme’s application, while naming Abu-Isa as a joint inventor, was filed 22
under 37 CFR § 1.47(a) without the participation or authority of Abu-Isa. 23
Nextreme’s motion failed to establish that Muirhead is a joint inventor of the 24
subject matter. Paper 39. As a result, Nextreme’s involved application was 25
not filed “by an inventor . . . named in the previously filed application” as 26
4

required by § 120. Nextreme’s application is not entitled to the filing date of 1
EnerDel’s application. 2
Since EnerDel’s patent describes the subject matter of Nextreme’s 3
claims, those Claims are unpatentable under § 102(e) over EnerDel’s patent. 4
JUDGMENT 5
It is appropriate to enter judgment because “[t]he only issue that must 6
be resolved through an interference is the issue of inventorship.” 7
Accordingly, it is 8
ORDERED that judgment as to the subject matter of Claims 1-19 is 9
awarded against the junior party, Nextreme, Inc.; 10
FURTHER ORDERED that claims 1-19 of Nextreme’s Application 11
11/498,118 are finally refused (35 U.S.C. § 135(a)); 12
FURTHER ORDERED that a copy of the decision on motions 13
(Paper 39) and this judgment be made of record in the files of Patent 14
7,378,463 and Application 11/498,118; and 15
FURTHER ORDERED that if there is any settlement agreement or 16
related documents which have not been filed, attention is directed to 17
35 U.S.C. § 135(c) and 37 CFR § 41.205. 18
19
/Richard E. Schafer/ )
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
/Richard Torczon/ ) BOARD OF PATENT
RICHARD TORCZON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
/Sally Gardner Lane/ )
SALLY GARDNER LANE )
Administrative Patent Judge )
5

cc (e-mail):

Attorney for Nextreme, L.L.C.

John M. Adams, Esq.
Price & Adams
4135 Brownsville Road
P.O. Box 98127
Pittsburgh, PA 15227-0127
(412) 882-7170 (telephone)
(412) 884-6650 (facsimile)
paip.law@verizon.net

Lawrence G. Zurawsky, Esq.
Zurawsky & Associates
Allegheny Building
429 Forbes Ave., Ste. 600
Pittsburgh, PA 15219-1604
(412) 281-7766 (telephone)
(412) 281-7769 (facsimile)
szurawsky@aol.com

Attorneys for EnerDel, Inc.

Marc Vander Tuig, Esq.
Senniger Powers LLP
100 North Broadway, 17th Floor
St. Louis, MO 63102
(314) 231-5400 (telephone)
(314) 231-4342 (facsimile)
mvandertuig@senniger.com

David E. Roberts, Esq
EnerDel, Inc.
8740 Hague Rd.
Indianapolis, IN 46256
(317) 585-3400 (telephone)
(317) 525-3444 (facsimile)
david.roberts@ener1.com

Mail Stop Interference Paper 39
P.O. Box 1450 Entered: January 31, 2012
Alexandria Va 22313-1450
Tel: 571-272-9797
Fax: 571-273-0042

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Nextreme, LLC,
Junior Party
(Application 11/498,118 ;
Named Inventors: Scott A.W. Muirhead and Ismat Abu-Isa),

v.

EnerDel, Inc.,
Senior Party
(Patent 7,378,463 ;
Named Inventor : Ismat Abu-Isa).

Patent Interference No. 105,770 (RES)
(Technology Center 1700)

Before: RICHARD E. SCHAFER, RICHARD TORCZON and
SALLY GARDNER LANE, Administrative Patent Judges.
SCHAFER, Administrative Patent Jude
Decision - Motions - 37 CFR § 41.125(a)
Nextreme has filed a motion for judgment attacking the named inventorship 1
of EnerDel’s involved patent 7,378,463. The named inventor of that patent is 2
Ismat Ali Abu-Isa. Nextreme argues that the inventorship is incorrect because 3
Scott A.W. Muirhead is properly a joint inventor of the subject matter claimed by 4
EnerDel. 5
2

Because Nextreme has not established, prima facie, that Murihead is a joint 1
inventor, we deny the motion. 2
The subject matter claimed 3
The subject matter involved in this interference relates to compositions for 4
moldable intumescent fire retardant polymeric materials. EnerDel’s involved 463 5
patent provides a succinct explanation of such materials and their uses: 6
Intumescent materials contain ingredients that decompose on 7
severe heating to generate gases and form an incombustible or 8
low combustible residue. The expelled gases expand the 9
residue to form a foam layer with improved thermal insulation 10
properties. Materials also having a low heat release rate are 11
advantageous in that once they are exposed to fire they release 12
less heat to neighboring materials and diminish fire 13
propagation. This is important because if, for example, a fire is 14
started in a warehouse where large quantities of materials are 15
stored, the fire will not get out of control and will be easily 16
extinguished when fire retardant low heat release materials are 17
used in place of ordinary polymers. Hence, major applications 18
for low heat release polymers are for shipping pallets and 19
shipping containers. However, such polymers can be used 20
wherever there are fire safety concerns. 21
463 Patent, 1:22-37. 22
The claimed composition is a mixture. The relative proportions of the 23
ingredients are specified based on 100 parts by weight for the total mixture. The 24
mixture must have 20-45 parts of a blend of high density polyethylene and an -25
olefin-containing copolymer, 5-25 parts of a nitrogen gas generating agent, 10–35 26
parts of a water vapor generating agent, 1-5 parts of an antioxidant, and 0-15 parts 27
3

of a reinforcing agent. The composition must also be halogen free. The high 1
density polyethylene and the copolymer in the blend must be within specified 2
density ranges and the copolymer must be 1-30 parts of the total mixture. The 3
nitrogen gas-generating agent must be selected from a specified list of materials. 4
Representative Claim 1, which is identical for each party, is reproduced 5
below with bracketing and italics added: 6
1. An intumescent fire retardant system for use in polymeric 7
moldings, comprising, on the basis of 100 parts by weight 8
blended mixture of a polymer component comprising: 9
[1] 20-45 parts of a polymeric binder comprising high 10
density polyethylene having a density in the range of 0.940-11
0.970 g/cm3 and an -olefin-containing copolymer having a 12
density in the range of 0.870-0.910 g/cm3, wherein the a-olefin-13
containing copolymer is present in the range of about 1 to 30 14
parts; 15
[2] 5-25 parts of a nitrogenous gas-generating agent selected 16
from the group consisting of amines, ureas, guanidines, 17
guanamines, s-triazines, amino acids, salts thereof, and 18
mixtures thereof, wherein the salts are selected from the group 19
consisting of phosphates, phosphonates, phosphinates, borates, 20
cyanurates, sulfates and mixtures thereof; 21
[3] 10-35 parts of a water vapor-generating agent; 22
[4] 1-5 parts of an antioxidant; and 23
[5] 0-15 parts of a reinforcing agent, 24
wherein the system is essentially halogen-free. 25
463 Patent, 11:14-33. 26
4

Principles of Law 1
Burden of Proof 2
As the movant, Nextreme bears the burden of proving that the inventorship 3
of EnerDel’s 463 patent is incorrect. 37 CFR 41.121(b). Additionally, upon the 4
issuance of a patent, it is presumed that there are no inventors other than those 5
listed on the patent. Bd. of Educ. v. American Bioscience, Inc., 333 F.3d 1330, 6
1337 (Fed. Cir. 2003). Thus a putative unnamed co-inventor must prove his 7
inventorship. Hess v. Adv. Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 8
1997). 9
Inventorship 10
The inventor is the one who conceives the invention. Collar Co. v. Van 11
Dusen, 90 U.S. (23 Wall.) 530, 563-64 (1874); Burroughs Wellcome Co. v. Barr 12
Lab., Inc., 40 F.3d 1223, 1227-28 (Fed.Cir. 1994). In other words, the decision as 13
to who is an inventor is nothing more than determining who conceived the subject 14
matter at issue, whether that subject matter is recited in a claim in an application or 15
in a count in an interference. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). 16
Conception requires a “definite and permanent idea of the complete and 17
operative invention.” Burroughs, 40 F.3d at 1228. Generally, in order to prove a 18
conception of an invention, every limitation must be shown to have been known to 19
the inventor at the time the invention is alleged to have been conceived. Davis v. 20
Reddy, 620 F.2d 885, 889 (CCPA 1980). Inventions, however, may be made 21
jointly. 35 U.S.C. § 116. The joint inventor’s contribution does not have to be to 22
the subject matter of each claim or of the same type or amount of contribution as 23
the other inventors. Id.. Nor does the contribution have to be to all the limitations 24
of any single claim. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1362 (Fed. 25
Cir. 2004). Thus, no individual co-inventor need have a “definite and permanent 26
idea of the complete and operative invention” so long as all of the co-inventors 27
5

collectively satisfy that requirement. But each joint inventor must make a 1
significant contribution to the conception of the invention. Fina Oil & Chem. Co. 2
v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997) (“to be a joint inventor, an 3
individual must make a contribution to the conception of the claimed invention that 4
is not insignificant in quality, when that contribution is measured against the 5
dimension of the full invention.”) 6
Since conception is fundamentally a mental act known only to its originator, 7
an inventor's own statements are inadequate to prove conception as a matter of law 8
and must be corroborated by independent evidence. Ethicon Inc. v. U.S. Surgical 9
Corp. 135 F.3d 1456, 1461 (Fed. Cir. 1998). A purported co-inventor must 10
corroborate his contribution. Fina Oil and Chem. Co. v. Ewen, 123 F.3d 1466, 11
1474 (Fed.Cir.1997). The evidence must show what the inventor disclosed to 12
others and what the disclosure means to one skilled in the art. Spero v. Ringold, 13
377 F.2d 652, 660 (CCPA 1967). The evidence must establish that the inventor(s) 14
made a “contemporaneous disclosure that would enable one skilled in the art to 15
make the invention.” Burroughs, 40 F.3d at 1228. In the co-inventor context, the 16
contemporaneous disclosure must enable a skilled artisan to practice the portion of 17
the invention that the co-inventor contributed. 18
Corroborating evidence may take many forms. Often contemporaneous 19
documents prepared by a putative inventor serve to corroborate an inventor's 20
testimony. Id.; Price v. Symsek, 988 F.2d 1187, 1195-96 (Fed. Cir. 1993). 21
Independent circumstantial evidence about the inventive process may also 22
corroborate. Knorr v. Pearson, 671 F.2d 1368, 1373, (CCPA 1982) (“[S]ufficient 23
circumstantial evidence of an independent nature can satisfy the corroboration 24
rule.”). The corroborating evidence can be in the form of contemporaneous 25
documents or the oral testimony of an independent witness. Id.; Gemstar-TV Guide 26
v. Int’l Trade Comm’n, 383 F.3d 1352, 1382 (Fed. Cir. 2004). 27
6

Whether the inventor's testimony has been sufficiently corroborated is 1
evaluated under a rule of reason analysis which requires that “an evaluation of all 2
pertinent evidence must be made so that a sound determination of the credibility of 3
the alleged inventor's story may be reached.” Ethicon, 135 F.3d at 1461; Price, 4
988 F.2d at 1195. However, oral testimony of a purported inventor must be 5
viewed carefully as it “is peculiarly untrustworthy, particularly if the testimony is 6
rendered after lapse of years . . . .” Finnigan Corp. v. Int'l Trade Comm'n, 180 7
F.3d 1354, 1368 (Fed. Cir. 1999), quoting Deering v. Winona Harvester Works, 8
155 U.S. 286, 301 (1894). “[T]he temptation for even honest witnesses to 9
reconstruct, in a manner favorable to their own position, what their state of mind 10
may have been years earlier, is simply too great to permit a lower standard.” Hess, 11
106 F.3d at 980. The rule of reason, however, does not dispense with some 12
evidence of independent corroboration. Coleman v. Dines, 754 F.2d 353, 360 13
(Fed.Cir. 1985). 14
Nextreme’s Inventorship Case 15
Nextreme’s case depends largely on the testimony of the alleged joint 16
inventor, Scott A.W. Muirhead. The following summarizes the portions of his 17
testimony relevant to the Muirhead’s alleged contribution to the conception of the 18
involved invention. 19
Muirhead is the named inventor of Patents 6,294,114 and 6,943,678. Ex. 20
2002 and 2003. Those patents relate to methods and apparatus for making 21
thermoformed polymeric articles such as pallets and fuel tanks. 22
Muirhead testifies that on January 9, 2001, he had a telephone call with 23
Bruce Torrey of Chep, Inc. Chep is a manufacturer of pallets. Ex. 2001, ¶ 8. The 24
pallets are used, for example, for moving and storing stock in warehouses. 25
Muirhead says that he called Chep in an effort to get it to license his patents. Ex. 26
2001, ¶ 9. During the conversation Torrey informed Muirhead that “Chep’s 27
7

principal commercial interest was identifying an effective low cost halogen free 1
material or structure for fire resistant plastic pallets.” Ex. 2001, ¶ 10. 2
Muirhead testifies that at the time of the call with Torrey, he was aware of 3
Patent 5,834,535. Ex. 2001, ¶ 7. That patent relates to moldable intumescent 4
compositions that include a blend of high density polyethylene (HDPE) and 5
chlorinated polyethylene (CPE) and/or a silicone rubber. Ex. 2004, 1:55-65. One 6
of the named inventors of the 535 patent is Ismat Ali Abu-Isa. Ex. 2004. 7
Muirhead testifies that he concluded that a thermoplastic pallet, utilizing the 8
composition of the 535 patent would meet Underwriters Laboratory (UL) fire 9
safety standards for pallets. Ex. 2001, ¶ 12. 10
Muirhead testifies that he had a telephone conversation with Richard 11
Marczewski of Delphi, Inc. on January 15, 2001, where he inquired as to the 12
availability of the intumescent composition of 535 patent for licensing. Ex. 2001, 13
¶ 15. Muirhead says that Marczewski indicated that the patent was available for 14
licensing and agreed that Delphi and Abu-Isa would work with Muirhead to 15
validate the use of the 535 composition for pallets. Ex. 2001, ¶¶ 15-16. 16
Muirhead testifies that on January 19, 2001, Chep, Inc. agreed to test 17
intumescent materials obtained from Delphi. Ex. 2001, ¶¶ 17-18. Subsequently, 18
Muirhead received samples of intumescent material from Delphi along with 19
additional information on the material. Ex. 2001, ¶ 19; Ex. 2006. 20
Muirhead testifies that on February 1, 2001, he recognized that the 21
intumescent materials disclosed in the 535 patent included CPE and that a pallet 22
formulation would have to exclude CPE. Ex. 2001, ¶¶ 20 and 23. He also testifies 23
thatn on that same date he recognized that low density polyethylene (LDPE) could 24
replace the CPE in the Delphi compositions. Ex. 2001, ¶ 34. 25
On February 2, 2001, Muirhead sent an e-mail to Marczewski at Delphi 26
acknowledging receipt of the samples and noting that “I have been advised there is 27
8

interest in staying away from halogenated materials, and other components that 1
may cause worker injury in event of fire.” Ex. 2001, ¶ 37; Ex. 2009. In a 2
telephone conversation in response to the e-mail, Murihead testifies that 3
Marczewski expressed concern that Delphi’s intumescent material might not be 4
suitable for pallets. Ex. 2001, ¶ 38. Muirhead says he responded that the 5
substitution of LDPE for CPE would overcome the halogen problem. Ex. 2001, ¶ 6
39. The CPE problem was further discussed in a telephone conference with 7
Marczewski and Abu-Isa on February 5, 2001. During the call Muirhead says he 8
discussed substituting LDPE for CPE and noting that the substitution would restore 9
the properties lost by removing CPE and would improve the skid resistance of the 10
pallet. Ex. 2001, ¶ 40. Marczewski also is said to have asked Abu-Isa if a 11
composition with LDPE rather than CPE could be prepared. Ex. 2001, ¶ 41. Abu-12
Isa is reported to have responded that he did not have the necessary materials. Ex. 13
2001, ¶ 41. 14
The conferees are said to have outlined a process of evaluation including 15
testing a CPE-containing composition to see if the material met certain benchmarks 16
and to establish a baseline for further testing. Ex. 2001, ¶¶ 42 and 44-46. If that 17
test was successful, a “stage 1” test, using a halogen-free composition containing 18
LDPE would be made. Ex. 2001, ¶ 46. Muirhead says he was to supply cut-out 19
pieces of HDPE to Delphi to be laminated with CPE containing intumescent 20
material. Ex. 2001, ¶47. 21
The laminated samples were received from Delphi by February 16, 2001 and 22
were sent to Torrey at Chep for testing on February 17. Ex. 2001, ¶ 51; Ex. 2010. 23
Torrey received the samples. Ex. 2001, ¶ 52, Ex. 2011. Muirhead says that on 24
March 9, 2001, he received a telephone call from Torrey indicating the testing had 25
shown the samples compared favorably with commercial intumescent materials. 26
Ex. 2001, ¶ 54. 27
9

Muirhead testifies that on March 22, 2010, met with Marczewski, Abu-Isa 1
and Mark M. Williams. Ex. 2001, ¶ 57. At the meeting Muirhead says he 2
explained making a non-halogenated fire resistant pallets using LDPE. Ex. 2001, ¶ 3
59. Marczewski and Abu-Isa are also said to have acknowledged that Muirhead 4
“had possession of new concepts for a new material formulation and structure that 5
would have value in the material handling industry for plastic pallets.” Ex. 2001, ¶ 6
61. 7
On March 28, 2001, Muirhead received a copy of the intumescent material 8
test results indicating that the samples were twice as effective as a commercial 9
product manufactured by General Electric. Ex. 2001, 65-69; Ex. 2015. Muirhead 10
faxed the test results to Marczewski the same day. Ex. 2001, ¶ 72. According to 11
Muirhead, Marczewski responded to the fax by phone. Ex. 2001, ¶ 73. During the 12
call Muirhead and Marczewski were said to have speculated that an intumescent 13
material with LDPE substituted for CPE would likely meet the UL benchmark. 14
Ex. 2001, ¶74. On April 9, 2001, Muirhead received an e-mail from Williams 15
stating that Delphi would be sending samples that Abu-Isa prepared for “stage 1” 16
testing. Ex. 2001, ¶ 75; Ex. 2016. 17
On April 10 and 11, 2001 Muirhead sent correspondence to Abu-Isa relating 18
to certain technical issues relating to the construction of pallets. Ex. 2001, ¶ 76; 19
Ex. 2017 & 2018. 20
Muirhead testifies that he met with Marczewski, Abu-Isa, Williams and Dr. 21
Anthony Lee on April 19, 2001 Ex. 2001, ¶ 77. At the meeting a confidentiality 22
agreement between Delphi and Muirhead was executed. Ex. 2001, ¶ 77; Ex. 2014. 23
Muirhead, Abu-Isa and Marczewski are also said to have discussed what would 24
have to be done to develop a new intumescent composition for pallets and a plan 25
for creating a venture to manufacture pallets. Ex. 2001, ¶78. Muirhead testifies 26
that they also discussed developing a second set of samples that omitted CPE so 27
10

that the samples could be tested to validate the hypothesis that “technology from 1
the fuel tank industry could satisfy a need for an effective, low cost halogen-free 2
flame retardant material for pallets. Ex. 2001, ¶ 79. 3
Muirhead was notified on April 25, 2001, that Delphi management had made 4
a decision that Delphi would not be part of a joint venture to manufacture pallets. 5
Ex. 2001, ¶ 80; Ex. 2019. 6
Analysis 7
Nextreme alleges that Muirhead’s contribution was an improvement to the 8
intumescent compositions described in EnerDel’s 535 patent. Specifically, 9
Nextreme urges that the CPE in the 535 composition should be replaced with non-10
halogen LDPE. Nextreme Motion 1, Paper 33, p. 6, ll. 21-23; p. 8, ll. 19-22; p. 9, 11
ll. 21-24; p.10, ll. 1-3; p. 22, ll. 8-11. The limitations in the claims corresponding 12
to this alleged contribution are (1) “an -olefin-containing copolymer having a 13
density in the range of 0.870-0.910 g/cm3, wherein the a-olefin-containing 14
copolymer is present in the range of about 1 to 30 parts” and (2) “wherein the 15
system is essentially halogen-free.” These limitations are in each of EnerDel’s 16
claims. 17
The dispositive question here is whether Nextreme has produced evidence 18
adequate to show that Muirhead conceived these limitations. 19
Nextreme argues that “[t]he concept of a halogen free intumescent material 20
for plastic pallets was conceived by Muirhead . . . .” Paper 33, 23:20-22. The 21
evidence, however, shows that this idea was simply not Murihead’s conception. 22
That idea apparently came from Torrey of Chep, Inc. who advised Muirhead in a 23
telephone call on January 9, 2001, that “Chep’s principal commercial interest was 24
identifying an effective low cost halogen free material or structure for fire resistant 25
plastic pallets.” Ex. 2001, ¶¶ 8 and 10. Additionally the 535 patent recognized the 26
dangers of chlorinated polyethylene in intumescent materials and suggests the 27
11

substitution of silicone rubber to minimize smoke and avoid dangerous 1
halogenated gasses: 2
When mixed with HDPE, chlorinated polyethylene can be 3
substituted in part or totally with silicone rubber. The 4
advantages of using silicone will be that during burning, less 5
smoke is evolved. Also, if silicone rubber was used to substitute 6
all of the CPE, no chlorinated gaseous products will be found in 7
the burning products of the intumescent material. 8
535 Patent, 5:18-25. 9
With respect to the conception of substituting LDPE for CPE, Muirhead 10
testifies to a number of discussions during telephone calls and meetings where the 11
substitution of LDPE for CPE was said to have been discussed. The discussions 12
are said to have taken place on February 2 and 5, and March 22 and 28, 2001. Ex. 13
2001, ¶¶ 38-41, 57, 59, 73 and 74. Another discussion was held on April 19, 2001. 14
That discussion is said to have related to the steps necessary to develop a new 15
intumescent composition for pallets, and making a set of samples for testing that 16
omitted CPE. Ex. 2001, ¶ 78 and 79. 17
Muirhead’s testimony alone, however, is insufficient and his contribution 18
must be corroborated by independent evidence. Ethicon, 135 F.3d at 1461; Fina, 19
123 F.3d at 1474. That evidence must show a contemporaneous disclosure of his 20
contribution to others. Burroughs, 40 F.3d at 1228. 21
An e-mail from Muirhead to Marczewski dated January 2, 2001, notes the 22
desirability of “staying away from halogenated materials” but does not mention a 23
possible replacement for those materials.1 Ex. 2009. Nextreme does not direct us 24

1 In this regard, we again note that the 535 patent itself discloses the substitution of non-
halogenated silicone rubber may replace CPE in moldable intumescent materials. The patent
12

to any documentary evidence or testimony of another witness that shows that the 1
idea of using LDPE instead of CPE was disclosed. We have reviewed each of the 2
submitted exhibits as well as the totality of Muirhead’s testimony. The only 3
evidence of disclosure of the idea substituting LDPE for CPE is Muirhead’s own 4
testimony. While the other evidence confirms that the described meetings and 5
discussions took place, the evidence is insufficient to establish by a preponderance 6
of the evidence that the use of LDPE as a substitute for CPE was disclosed during 7
those meetings and discussions. Looking at the totality of the evidence, there is an 8
insufficient basis for us to infer that such a disclosure was made. A preponderance 9
of the evidence does not establish that Muirhead conceived the use of LDPE in 10
intumescent materials. 11
Even if the evidence was sufficient under the rule of reason to establish 12
conception of the use of LDPE, Nextreme has not explained or directed us to 13
evidence showing how Muirhead contributed to the conception of the specific 14
subject matter claimed. The claims do not merely specify the use of halogen-free 15
LDPE. Rather, all of the claims require an “α-olefin-containing copolymer having 16
a density in the range of 0.870-0.910 g/cm3, wherein the α-olefin-containing 17
copolymer is present in the range of about 1 to 30 parts.” Nextreme has not 18
explained how Muirhead conceived or contributed to this specific limitation or 19
how the disclosure of the substitution of LDPE for CPE was effectively a 20
disclosure of the specified copolymer, density and amounts to one skilled in the art. 21
DECISION 22
Nextreme Motion 1 (Paper 33) for judgment under 35 U.S.C. § 102(f) 23
alleging that the inventorship of EnerDels’ Patent 7,378,463 is incorrect is denied. 24

specifically suggests using silicone rubber to minimize the amount of smoke and the production
of chlorinated gases during burning. 535 Patent, 5:18-25.

13

/Richard E. Schafer/ )
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
/Richard Torczon/ ) BOARD OF PATENT
RICHARD TORCZON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
/Sally Gardner Lane/ )
SALLY GARDNER LANE )
Administrative Patent Judge )

cc (e-mail):

Attorney for Nextreme, L.L.C.

John M. Adams, Esq.
Price & Adams
4135 Brownsville Road
P.O. Box 98127
Pittsburgh, PA 15227-0127
(412) 882-7170 (telephone)
(412) 884-6650 (facsimile)
paip.law@verizon.net

Lawrence G. Zurawsky, Esq.
Zurawsky & Associates
Allegheny Building
429 Forbes Ave., Ste. 600
Pittsburgh, PA 15219-1604
(412) 281-7766 (telephone)
(412) 281-7769 (facsimile)
szurawsky@aol.com

1
14

Attorneys for EnerDel, Inc.

Marc Vander Tuig, Esq.
Senniger Powers LLP
100 North Broadway, 17th Floor
St. Louis, MO 63102
(314) 231-5400 (telephone)
(314) 231-4342 (facsimile)
mvandertuig@senniger.com

David E. Roberts, Esq
EnerDel, Inc.
8740 Hague Rd.
Indianapolis, IN 46256
(317) 585-3400 (telephone)
(317) 525-3444 (facsimile)
david.roberts@ener1.com