Voglewedev.Lee et al. V. Lee et al.

Board of Patent Appeals and Interferences

Jan 19, 2012

10833009 (B.P.A.I. Jan. 19, 2012)

BoxInterference@uspto.gov Paper 586
Telephone: 571-272-4683 Filed: January 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

RONALD L. VOGLEWEDE
Junior Party
(Application 12/339,424)1

v.

WOOK YONG LEE, EUI YEOP CHUNG,
SEUNG HWAN OH, MYUNG RYUL LEE, CHANG HO SEO,
SEONG JAE KIM and SUNG HOON CHUNG
Senior Party
(Patents 7,383,689 and 7,316,121)2

Patent Interference No. 105,711
(Technology Center 3700)

Before: JAMESON LEE, SALLY GARDNER LANE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

1 Filed November 19, 2008. Accorded the benefit of Application 12/102,103,
filed April 14, 2008, and Application 10/860,906, filed June 4, 2004, now Patent
7,455,085. The real party in interest is Whirlpool Corporation.

2 Based on Application 11/835,561 filed on August 8, 2007 and Application
10/833,009 filed April 28, 2004, respectively. Accorded the benefit of Korean
Application 10-2003-0064503, filed September 17, 2003. The real party in interest
is LG Electronics, Inc.
Interference No. 105,711
Voglewede v. Lee

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Judgment – Motions – Bd. R. 127
Junior party Voglewede’s Motion 3 for judgment based on priority of 1
invention has been denied in a separate paper. 2
It is 3
ORDERED that judgment on priority with respect to Count 1 is entered 4
against junior party RONALD L. VOGLEWEDE; 5
FURTHER ORDERED that involved claims 2 and 5 of junior party’s 6
Application 12/339,424 are herein finally refused; 7
FURTHER ORDERED that the parties shall note the requirements of 8
35 U.S.C. §135(c) and Bd.R. 205; and 9
FURTHER ORDERED that a copy of this judgment shall be entered into 10
the file of Patent 7,383,689, Patent 7,316,121, and Application 12/339,424. 11

Interference No. 105,711
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By Electronic Transmission:

Attorneys for Junior Party Voglewede:

Paul R. Morico, Esq.
Paula D. Heyman, Esq.
Baker Botts L.L.P.
Email: paul.morico@bakerbotts.com
Email: paula.heyman@bakerbotts.com

Attorneys for Senior Party Lee:

Barbara Clarke McCurdy, Esq.
Lara C. Kelley, Esq.
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

Email: barbara.mccurdy@finnegan.com
Email: lara.kelley@finnegan.com

BoxInterferences@uspto.gov Paper 585
571-272-4683 Filed: January 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

RONALD L. VOGLEWEDE
Junior Party
(Application 12/339,424)1
v.
WOOK YONG LEE, EUI YEOP CHUNG,
SEUNG HWAN OH, MYUNG RYUL LEE, CHANG HO SEO,
SEONG JAE KIM and SUNG HOON CHUNG
Senior Party
(Patents 7,383,689 and 7,316,121)2

Patent Interference No. 105,711 (JL)
(Technology Center 3700)

Before JAMESON LEE, SALLY GARDNER LANE and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

Decision -- Priority -- Bd. R. 125(a)

1 Filed November 19, 2008. Accorded the benefit of Application 12/102,103,
filed April 14, 2008, and Application 10/860,906, filed June 4, 2004, now Patent
7,455,085. The real party in interest is Whirlpool Corporation.

2 Based on Application 11/835,561 filed August 8, 2007 and Application
10/833,009 filed April 28, 2004, respectively. Accorded the benefit of Korean
Application 10-2003-0064503, filed September 17, 2003. The real party in interest
is LG Electronics, Inc.
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INTRODUCTION 1
This interference was declared on July 28, 2009, and is now before us on 2
Voglewede’s Motion 3 for judgment based on priority of invention and Lee’s 3
Motion 4 for judgment based on priority of invention. Each party also filed 4
respective motions, Voglewede Motion 4 and Lee Motion 5, to exclude evidence. 5
No oral argument is deemed necessary in this case. 6
ANALYSIS 7
A. Lee’s Motion 4 for Judgment on Priority 8
Lee is senior party in this interference and has an accorded benefit date of 9
September 17, 2003, based on Korean Patent Application 10-2003-0064503. The 10
motion is submitted only to establish a date of conception for Count 1 no later than 11
January 28, 2003. Lee’s establishing a date of conception is of no moment, 12
however, unless either Lee or Voglewede attempts to demonstrate priority of 13
invention through a showing of conception plus reasonable diligence from 14
conception to actual or constructive reduction to practice or alleges derivation. 15
Under 35 U.S.C. § 102(g), the first to conceive but last to reduce to practice may 16
still be entitled to priority if there is reasonable diligence from conception to 17
reduction to practice. Because neither party asserts entitlement to priority based on 18
prior conception with reasonable diligence from conception to reduction to practice 19
or based on derivation of invention by the other party, when Lee’s inventors 20
conceived of the subject matter of the count has no significance or relevance in the 21
priority determination. 22
Accordingly, Lee’s Motion 4 is dismissed. 23
24
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B. Voglewede’s Motion 3 for Judgment on Priority 1
Findings of Fact 2
1. Count 1 is defined as claim 5 of Voglewede’s application or claim 62 3
of Lee’s Patent 7,383,689. 4
2. The claims corresponding to Count 1 are: 5
claims 1, 2, 5, 6, 7, 9-15, 26, 27, 28, 30, 32, 33, 35-38, 41, 42, 6
45-53, 56, 57, 59, 61-64, 67, 68, 71-79, and 91 of Lee’s Patent 7
7,383,689. 8
9
claims 1, 6-10, 13, 20, 21, 26, 32, 34, 35, 36, 65, 66, 69, 70, 74, 10
and 76-83 of Lee’s Patent 7,316,121. 11
12
claims 2 and 5 of Voglewede’s Application 12/339,424. 13
14
3. Voglewede’s claim 5 reads as follows: 15
5. A refrigerator comprising: 16
17
a tray configured to support a container and to extend along a 18
plane perpendicular to an outer surface of a refrigerator from a 19
withdrawn position to an extended position, the tray configured to 20
support a container in the extended position, wherein the tray is 21
configured to withdraw along a plane perpendicular to the outer 22
surface of the refrigerator from the extended position to the withdrawn 23
position; and 24
25
a water dispensing mechanism that is configured to move a 26
nozzle of the water dispensing mechanism to a position at which the 27
nozzle of the water dispensing mechanism is outside of the outer 28
surface of the refrigerator, and that is configured to enable 29
dispensing of water into the container. (Emphasis added.) 30
31
32
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Discussion 1
For determining priority of invention, the first party to reduce an invention 2
to practice prevails on priority, unless another party conceived of the invention first 3
and was reasonably diligent in reducing the invention to practice, from a time prior 4
to the first party’s conception. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. 5
Cir. 1998). In this case, senior party Lee stands on its accorded benefit date of 6
September 13, 2003, as constructive reduction to practice. 7
Junior party Voglewede asserts that Ronald Voglewede conceived of the 8
subject matter of the count as early as October 23, 2002. It is, however, not 9
necessary to determine when Ronald Voglewede conceived of the subject matter of 10
the count, because Voglewede does not rely on conception coupled with diligence 11
from any time toward reduction to practice to demonstrate priority of invention. 12
The issue here is whether Voglewede proved by a preponderance of the 13
evidence that it actually reduced the subject matter of the count to practice prior to 14
Lee’s accorded benefit date of September 13, 2003. There is also an attendant 15
sub-issue -- whether there is suppression or concealment of the invention 16
subsequent to actual reduction to practice. An actual reduction to practice would 17
be rendered ineffective if there has been subsequent suppression or concealment of 18
the invention. 35 U.S.C. § 102(g)(2). 19
We focus on Voglewede’s assertion that it actually reduced the invention to 20
practice as early as May 28, 2003 and no later than June 3, 2003, and then 21
consider, if Voglewede establishes actual reduction to practice prior to September 22
13, 2003, whether Voglewede suppressed or concealed the invention subsequent to 23
actual reduction to practice and before filing a patent application on June 4, 2004. 24
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An actual reduction to practice requires (1) constructing a physical 1
embodiment or performing a process that meets all limitations of the interference 2
count, and (2) determining that the invention would work for its intended purpose. 3
Cooper v. Goldfarb, 154 F.3d at 1327. Depending on the character of the 4
invention and the problem it solves, determining that an invention will work for its 5
intended purpose may require testing. Id. When testing is necessary, the 6
embodiment relied upon as evidence of actual reduction to practice must actually 7
work for its intended purpose. Id. Experiments conducted at the request of an 8
inventor by another party may inure to the benefit of the inventor for purposes of 9
establishing a reduction to practice. Cooper v. Goldfarb, 154 F.3d at 1331; see 10
also 3 Donald S. Chisum, Chisum on Patents § 10.06[3] (1995)(“Acts by others 11
working explicitly or implicitly at the inventor’s request will inure to his benefit.”) 12
From 2001 to 2004, Ronald Voglewede worked as Senior Engineer in the 13
Corporate Technology & Engineering Development Group. (Ex. 2145: ¶ 3). 14
More specifically, in 2001 and 2002, he was a part of the Refrigeration and Air 15
Treatment Innovation and Technology (“Refrigeration Technology”) sub-group. 16
(Ex. 2145: ¶ 11). In the first quarter of 2001, he started thinking about ways to 17
make filtered water from refrigerator dispenser more accessible and usable to 18
consumers, and determined that one of the limitations of existing water dispenser 19
on refrigerators was the inability of consumers to fill large or oddly shaped 20
containers, such as coffee pots, that did not fit in the dispenser cavity. (Ex. 2145: 21
¶ 12). In the first quarter of 2001, he came up with the idea of using a water wand 22
or a water spigot and an extendable tray to facilitate the filling of large containers 23
“outside” of the dispenser cavity of a refrigerator, and approached Omer Nihat 24
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Cur, Director of the Refrigeration Technology Group, to get support to pursue the 1
idea as an official project of the Refrigeration Technology Group. (Ex. 2145: 2
¶ 12). 3
Omer Nihat Cur, Director of the Refrigeration Technology Group at 4
Whirlpool Corporation from 1997 to 2007, confirms that before March 2001, 5
Ronald Voglewede came up with the idea of a refrigerator water dispenser which 6
includes a water spigot and an extendable tray, and discussed it with him in a 7
request for resources to develop it as an official project in the Refrigeration 8
Technology Group. (Ex. 2147: ¶¶ 3, 13). Omer Nihat Cur also testifies that as 9
early as March 2001, Ronald Voglewede was working on developing an advanced 10
dispenser at Whirlpool Corporation – Omer Nihat Cur referred to that work as “the 11
Advanced Dispenser project.” (Ex. 2147: ¶ ¶ 13-14). Omer Nihat Cur further 12
testifies that by April 6, 2001, Ronald Voglewede was leading the development 13
and planning of the Advanced Dispenser project. (Ex. 2147: ¶ 17). Omer Nihat 14
Cur states that by August 2001, a team led by Ronald Voglewede worked on the 15
Advanced Dispenser project and was already considering building a prototype. 16
(Ex. 2147: ¶ 19). Omer Nihat Cur states that in November 2001, the team was 17
actually building a prototype. (Ex. 2147: ¶ 21). Omer Nihat Cur further states that 18
in February 2002, the Advanced Dispenser project was endorsed by as a priority 19
project, and explains that priority status means the corporation intends to pursue it 20
as a product. (Ex. 2147: ¶ 22). 21
In January 2002, the extendable tray and water wand features proposed by 22
Ronald Voglewede were not the only features considered by the Advanced 23
Dispenser team. (Ex. 2145: ¶¶ 20- 21). Consumer focus group studies were used 24
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by Whirlpool Corporation as a part of its process to select features for development 1
based on consumer desires shown in the studies. (Ex. 2147: ¶ 10; Ex. 2205: ¶ 15). 2
In April 2002, the team led by Ronald Voglewede on the Advanced Dispenser 3
project worked toward consumer focus group studies scheduled for May 20-22, 4
2002. (Ex. 2145: ¶ 25; Ex. 2147: ¶ 23). After the consumer focus group studies of 5
May 20-22, 2002, were completed, the Advanced Dispenser team led by Ronald 6
Voglewede selected several features to further develop, including the water wand 7
and extendable tray features proposed by Ronald Voglewede – the water wand 8
feature was also being referred to as “the water spigot.” (Ex. 2145: ¶ 31; Ex. 2147: 9
¶ 27; Ex. 2205: ¶ 18). Ronald Voglewede also asked Marcus Fischer to work on a 10
pivoting water spigot with the capability to extend beyond the dispenser housing. 11
(Ex. 2152: ¶ 15). By September 2002, the Advanced Dispenser team was planning 12
to build a refrigerator door to be completed by November 2002 to demonstrate 13
features of the advanced water dispenser. (Ex. 2145: ¶¶ 35, 36; Ex. 2147: ¶ 29). 14
Ronald Voglewede prepared and gave a presentation on or about October 15
23, 2002, to the Corporate Technology Organization to provide a status report of 16
the Advanced Dispenser project. (Ex. 2145: ¶ 39; Ex. 2205: ¶ 21). The 17
presentation showed that the dispenser would include a water spigot to fill large 18
containers outside of the surface of the refrigerator and an extendable tray to 19
provide a support surface for the container while it was being filled. (Ex. 2145: ¶ 20
39; Ex. 2147: ¶ 33; Ex. 2205: ¶ 21; Ex. 2152: ¶ 22; Ex. 2043: WP-DE000561148). 21
Ronald Voglewede testifies, and Marcus Fischer and Gregory Hortin confirm, that 22
the extendable tray that was worked on and developed in October 2002 by the 23
Advance Dispenser team was to extend and retract in a plane perpendicular to the 24
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surface of the refrigerator and to support a container when in the extended position. 1
(Ex. 2145: ¶ 39; Ex. 2205: ¶ 21; Ex. 2152: ¶ 22). 2
A prototype was completed by mid-November, 2002, and the Advanced 3
Dispenser team prepared for consumer focus group studies to be performed in 4
January 2003. On or about January 6, 2003, Ronald Voglewede worked with 5
industrial designer Dan Quinlan to develop sketches for use in the consumer focus 6
group studies in January 2003. (Ex. 2145: ¶ 43). Renderings based on the 7
sketches were prepared by an outside vendor, Design Central, who sent them to 8
Whirlpool Corporation on January 16, 2003. (Ex. 2145: ¶ 44; Ex. 2152: ¶ 24). 9
The prototype used for the consumer focus group studies in January 2003 included 10
an extendable tray but not a water spigot, and the water spigot was demonstrated to 11
participants using written descriptions and sketches. (Ex, 2145: ¶ 47). 12
In February 2003, the Advanced Dispenser team began to plan for the 13
building of a second prototype, for completion in May 2003. (Ex. 2145: ¶ 50’ Ex. 14
2147: ¶ 39; Ex. 2205: ¶ 37). In March 2003, the Advanced Dispenser team 15
continued to prepare for the building of the prototype to be completed in May 16
2003. (Ex. 2145: ¶¶ 52-53; Ex. 2205: ¶¶ 42-43; Ex. 2147: ¶ 41; Ex. 2152: ¶ 28; 17
Ex. 2234: ¶¶ 13-14). By April 2, 2003, the Advanced Dispenser team actually 18
began building the prototype, now including both the water spigot and the 19
extendable tray. (Ex. 2152: ¶¶ 31-32; Ex. 2205: ¶¶ 47-48; Ex. 2234: ¶¶ 15-16; Ex. 20
2206: ¶¶ 17-18). 21
The prototype was completed by May 28, 2003, which included a water 22
spigot that dispensed water outside a surface of the refrigerator and an extendable 23
tray that supported a container and was moveable in a plane perpendicular to the 24
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surface of the refrigerator from a withdrawn position to an extended position. (Ex. 1
2145: ¶¶ 61-62; Ex. 2147: ¶ 45; Ex. 2205: ¶ 52; Ex. 2152: ¶ 37; Ex. 2206: ¶ 22; Ex. 2
2234: ¶ 22). Ronald Voglewede and Marcus Fischer both testify that the 3
Advanced Dispenser team worked over the Memorial Day weekend in 2003 in 4
order to complete the prototype in time for consumer focus group studies 5
scheduled for the first week of June 2003. (Ex. 2145: ¶ 62; Ex. 2152: ¶ 37). 6
Ronald Voglewede took three pictures of the prototype on May 28, 2003 (Ex. 7
2145: ¶ 62; Ex. 2059: WP-DE000563196; Ex. 2060: WP-DE000563199; Ex. 2061: 8
WP-INT000970) and Marcus Fischer testifies that the pictures accurately reflect 9
the structure of the prototype. (Ex. 2152: ¶ 37). 10
Consumer focus group studies were conducted on June 3-5, 2003, using the 11
prototype constructed by May 28, 2003. (Ex. 2153: ¶ 25; Ex. 2145: ¶ 63; Ex. 12
2205: ¶ 55). Voglewede asserts and Lee does not dispute that the prototype built 13
by Ronald Voglewede’s Advanced Dispenser team by May 28, 2003, satisfied each 14
and every element of the count. 15
Nevertheless, Voglewede still must demonstrate by a preponderance of the 16
evidence that the prototype actually worked for its intended purpose. 17
According to Voglewede (Motion 17: 15-17), the prototype had an 18
extendable tray which “could support a container to be filled by water and was 19
moveable from a withdrawn position to an extended position in a plane 20
perpendicular to the surface of the refrigerator.” (Emphasis added.) Also 21
according to Voglewede (Motion 17: 17-20), the water spigot “could be rotated in 22
order to fill the container with water outside the surface of the refrigerator door.” 23
(Emphasis added.) However, the testimony cited to support the cited assertions is 24
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not sufficiently specific. For instance, Ronald Voglewede states that the prototype 1
was a functioning refrigerator. (Ex. 2145: ¶ 62). Omer Nihat Cur states that the 2
Advanced Dispenser team completed a functional prototype. (Ex. 2147: ¶ 45). 3
Gregory Hortin states that the prototype was a working refrigerator that included a 4
functional water spigot and extendable tray. (Ex. 2205: ¶ 52). Marcus Fischer 5
states that the prototype was a functional prototype. (Ex. 2152: ¶ 37). Patrick 6
Boarman states that the refrigerator was a working refrigerator and the water spigot 7
and extendable tray were not mock-ups but were functional devices. (Ex. 2206: ¶ 8
22). Gary Wilson states that the water dispensing mechanism and extendable tray 9
were not merely mock-ups but were functional devices. (Ex. 2234: ¶ 22). Marcus 10
Fischer further states that the extendable tray “was designed to” support a 11
container. (Ex. 2152: ¶ 37). 12
Neither party contends that the invention is so simple that mere construction 13
of an embodiment, without need for testing, is sufficient to demonstrate an actual 14
reduction to practice. We also do not determine that to be the case. The spigot and 15
the tray are moveable parts and must coordinate with each other, and the tray must 16
withdraw in a particular manner, i.e., in a plane perpendicular to an outer surface 17
of the refrigerator. To prove that the constructed device actually worked for its 18
intended purpose, it is not enough to state that it theoretically “could” work in a 19
certain way. The device has to have actually been tested and successful operation 20
must have been demonstrated. Cooper v. Goldfarb, 154 F.3d at 1327. The cited 21
testimony does not explain any specific step or plurality of steps performed during 22
an actual testing or the results of any such test. Saying merely that a feature was 23
“implemented” or that the device as a whole was “functional” does not provide a 24
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reasonable indication on how the device was tested, if at all, and what the specific 1
testing results were. 2
In the alternative, Voglewede argues that the functions of the prototype were 3
demonstrated at consumer focus group studies conducted on June 3-5, 2003. 4
(Motion at 17:21-22). In that regard, Gregory Garavalia testifies that before the 5
consumer focus group studies of June 2003, he tested the prototype to ensure that it 6
was operational. (Ex. 2153: ¶ 27). But he does not articulate the steps which were 7
performed during the testing. The testimony is conclusory and without supporting 8
details. The testimony is like that of other witnesses as previously discussed which 9
summarily concludes that the prototype was functional. Gregory Garavalia has not 10
stated that he extended the tray, placed a container on the tray, moved a nozzle to 11
outside of the refrigerator, filled the container with water through the nozzle, and 12
withdrew the tray in a plane perpendicular to the outer surface of the refrigerator. 13
The above-quoted testimony of Gregory Garavalia is unpersuasive. 14
Gregory Garavalia further testifies (Ex. 2153: ¶ 27): 15
Additionally, when attending the consumer focus group studies I 16
observed the participants as they interacted with the Prototype 17
Refrigerator by moving the extendable tray and rotating the water 18
spigot outside the surface of the Prototype Refrigerator in order to 19
dispense water into a container. In the Prototype Refrigerator, the 20
water spigot was positioned in the top part of the dispenser cavity and 21
could rotate to a position at which the outlet of the spigot was outside 22
the surface of the refrigerator door. Additionally, the extendable tray 23
in the Prototype Refrigerator was extendable and retractable and 24
supported containers being filled by the water spigot. Exhibits 2059, 25
2060, and 2061 are pictures of the Prototype Refrigerator. (Emphasis 26
added.) 27
28
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It is a requirement of the count that the tray extend along a plane 1
perpendicular to an outer surface of the refrigerator and withdraw along a plane 2
perpendicular to an outer surface of the refrigerator. However, Gregory 3
Garavalia’s testimony does not reveal his observation in that regard when the 4
consumer focus group participants interacted with the prototype. 5
While the prototype was designed to have a tray which extends and 6
withdraws along a plane perpendicular to an outer surface of the refrigerator, it 7
cannot be assumed that the tray actually so moved when used in the consumer 8
focus group studies on June 3-5, 2003. Indeed, that is a reason for requiring 9
testing. The tray might not have extended out in a plane perpendicular to an outer 10
surface of the refrigerator. The tray might not have been withdrawn in a plane 11
perpendicular to an outer surface of the refrigerator. It is plausible that the weight 12
of a filled container of water on an extended tray might have damaged the 13
mechanism for withdrawing or subsequently extending the tray. 14
Gregory Garavalia also does not testify about whether he observed water 15
leakage from the moveable nozzle after it has been moved by the water dispensing 16
mechanism to a position outside of the surface of the refrigerator and about the 17
extent of any such water leakage, if any. In that regard, we note that Voglewede’s 18
motion states (Motion at 19:15-17) that a Service Incident Rate impact evaluation 19
was conducted for the Advanced Dispenser subsequent to the consumer focus 20
group studies of June 3-5, 2003, and that the report indicated that the spigot could 21
have a potential for leakage of water. It cannot be said that the prototype 22
refrigerator worked for its intended purpose if the moveable nozzle has significant 23
water leakage caused by the nozzle moving feature of the invention. On this 24
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record, it is unclear to what extent the prototype had a water leakage problem. It is 1
unknown whether Gregory Garavalia was standing sufficiently close to the 2
prototype to observe any water leakage. Moreover, it would not be reasonable to 3
expect that all water leakage can be observed from an external perspective. 4
There is evidence in the record to suggest that there were actual leakage 5
problems during the consumer focus studies on June 3-5, 2003. Boarman testifies 6
that he worked on performance problems associated with the spigot from July 2003 7
to when he stopped working on the project. (Ex. 1086 163:21 to 164:12). He 8
states that performance problems needed to be addressed so that the spigot could 9
“deliver water without drip, without spray, and in an acceptable manner as to not 10
splash.” (Ex. 1086 166:18-22). Horton testifies that after the June 2003 consumer 11
focus group studies, the performance level of the water spigot needed to improve 12
and he recalled that the problems were with spraying, splashing, dripping, and 13
leaking of water from the water spigot. (Ex. 1090 129:6-22). 14
As is pointed out by Lee, the Service Incident Rate Impact Estimation 15
Worksheet dated June 19, 2003 indicated water leakage from the water arm spigot, 16
and that the water spigot feature was rated as “regression” which means that it was 17
worse than it would be without the feature. (Ex. 2129; Ex. 1090 127:14 to 129:5). 18
We note that even Voglewede’s motion on page 20, lines 4-5, states: “In August 19
2003, the Advanced Dispenser team was working to ensure that the water spigot 20
would not leak when rotated or moved linearly.” Horton further testifies that by 21
early to mid-2004, a level of performance of the water spigot, with which they 22
were happy, was achieved. 23
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We are acutely aware that Whirlpool Corporation was interested in the 1
making and selling of a commercial product and therefore the minimum standards 2
on water leakage should not be the same, and is actually much higher, than that 3
which is required to show an actual reduction to practice of the invention. 4
Voglewede is also correct that a test for reduction to practice does not need to 5
occur under conditions of actual commercial use. However, there still must not 6
have been significant water leakage on a prototype refrigerator asserted as an 7
actual reduction to practice which worked for its intended purpose. Lack of 8
commercial grade performance is one thing; a threshold standard for demonstrating 9
operability is another. For a refrigerator an inventive feature of which is 10
dispensing water from a moveable nozzle, water leakage is a parameter that needs 11
evaluation for determining a successful actual reduction to practice. 12
That Gregory Garavalia did not testify to having observed water leakage 13
does not demonstrate that there was no significant water leakage sufficient to 14
undermine an actual reduction to practice, especially in light of the other evidence 15
discussed above. Note also that he did not testify to not having observed water 16
leakage. We do not know to what extent there was water leakage from the 17
prototype during the consumer focus group studies on June 3-5, 2003. The record 18
is consistent with the existence of a leakage problem significant enough to 19
characterize the prototype as an unsuccessful actual reduction to practice. 20
Also, we note Gregory Garavalia’s testimony that “when attending the 21
consumer focus group studies I observed the participants as they interacted with 22
the Prototype Refrigerator by moving the extendable tray and rotating the water 23
spigot outside the surface of the Prototype Refrigerator in order to dispense water 24
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into a container.” (Ex. 2153: ¶ 27). The statement is general and does not 1
represent that Gregory Garavalia actually observed any participant filling a 2
container while the container is supported on an extended tray. We recognize that 3
in the last sentence of Paragraph 27 in his declaration Gregory Garavalia states: 4
“Additionally, the extendable tray in the Prototype Refrigerator was extendable 5
and retractable and supported containers being filled by the water spigot.” It is not 6
entirely clear whether in that testimony Gregory Garavalia is referring to what he 7
actually observed during the consumer focus group studies on June 3-5, 2003, or 8
merely expressing an opinion on something he did not actually see. The word 9
“observed” is not used in connection with that sentence but was used in connection 10
with the more general statement from the same paragraph of the declaration as 11
already discussed above. It is evident that Gregory Garavalia knows to use the 12
term “observe” when he actually observed an action or event, which means the 13
situation is less clear with regard to an action or event if the term “observe” is not 14
used. It is also unexplained why the tray in its withdrawn position could not have 15
supported a container. If it could, and we assume that it could, then even the last 16
sentence in Paragraph 27 of the declaration does not indicate that the tray in is 17
extended position supported a container that was in the process of being filled. 18
We also regard as weak Gregory Garavalia’s testimony on what he observed 19
at the consumer focus group studies of June 3-5, 2003. On cross-examination, he 20
answered that he does not recall where the prototype was placed in the room, and 21
whether it was placed at the center of the room or against a wall. (Ex. 1093 p. 22
122:16 to 123:5). On cross-examination, he also answered, prior to his recollection 23
refreshed by being shown a document which refers to “refrigerators” at the focus 24
Interference No. 105,711
Voglewede v. Lee

-16-
group studies of June 2003 (Ex. 2323 p.126:8-17), that he does not recall whether 1
other refrigerators were presented to consumers during the June 2003 consumer 2
focus group studies. (Ex. 1093 p. 122:4-8). 3
Gregory Garavalia remembers observing how the prototype appliance was 4
specifically manipulated by consumers but not whether the appliance was set up in 5
the center of the room or against a wall. Also, it is one thing to have a witness’ 6
recollection refreshed but quite another for the witness to be shown a 7
contemporaneous document recording the answer inquired about. As a whole, we 8
regard Gregory Garavalia’s testimony as not very credible. 9
Voglewede also pointed to no persuasive evidence that Gregory Garavalia 10
was in any position to evaluate the success or failure of the demonstrated prototype 11
as an actual reduction to practice of an invention. Gregory Garavalia gave 12
testimony on what he saw but the testimony does not reflect any evaluation and 13
conclusion by him about the success or failure of the demonstration as a reduction 14
to practice of an invention. Voglewede also pointed to no evidence that Ronald 15
Voglewede asked Gregory Garavalia to be the inventor’s agent for making the 16
evaluation. Thus, even assuming that recognition by an agent of the success of 17
demonstration of a reduction to practice inures to the benefit of the inventor, that 18
does not help Voglewede’s situation here. In any event, Voglewede pointed to no 19
evidence that Gregory Garavalia communicated back to inventor Ronald 20
Voglewede the specifics of what he saw at the focus group studies so that Ronald 21
Voglewede could make his own evaluation. A reduction to practice does not 22
occur until the inventor has determined that the invention will work for its intended 23
purpose. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 593 (Fed. Cir. 1997). 24
Interference No. 105,711
Voglewede v. Lee

-17-
Voglewede further argues that in Lee’s Motion 3 alleging unpatentability of 1
Voglewede’s claims 2 and 5, Lee has already regarded Voglewede’s prototype 2
shown on June 3, 2003 as prior public use rendering unpatentable Voglewede’s 3
claims. Voglewede notes that a qualifying public use must be ready for patenting, 4
for example, by proof of a reduction to practice. Thus, Voglewede asserts that Lee 5
cannot now assert, when opposing Voglewede’s motion for judgment based on 6
priority, that actual reduction to practice is not proven. The argument is misplaced. 7
Indeed, a qualifying “public use” does require the invention to be “ready for 8
patenting,” and “ready for patenting” can be shown by prove of an actual reduction 9
to practice. Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1379 (Fed. Cir, 10
2005). However, because Voglewede had represented to the USPTO that the June 11
3, 2003 prototype was an actual reduction to practice, the patent judge determined 12
that Lee in its Motion 3 did not have to prove that aspect of its motion and can 13
address only whether the demonstration can be reasonably deemed as public. (See 14
Paper 22). The parties did not object to the order and proceeded accordingly. 15
Voglewede’s Motion 3 before us is submitted on an entirely different 16
footing. It is Voglewede, not Lee, who now bears the burden of proof. Voglewede 17
must demonstrate that it did in fact actually reduce the invention to practice on 18
June 3, 2003, and cannot be waived of that requirement on the basis that 19
Voglewede itself had made that representation to the USPTO. Lee has not 20
received any windfall through the different treatment of Lee’s Motion 3 and 21
Voglewede’s Motion 3. Note also that Lee’s Motion 3 was denied for failure to 22
show the public nature of the alleged public use. (Paper 173). 23
Interference No. 105,711
Voglewede v. Lee

-18-
Voglewede asks that in rendering our opinion we consider what Voglewede 1
in its Supplemental Reply 3 refers to as admissions by LG Electronics, Inc., Lee’s 2
real party in interest in this interference, in infringement litigation before the U.S. 3
District Court for the District of Delaware involving both of Lee’s patents in this 4
interference. We have. Contrary to Voglewede’s assertion, we do not find that LG 5
Electronics, Inc. admitted before the U.S. District Court for the District of 6
Delaware that Voglewede was the first to conceive and reduce to practice an 7
invention which is the subject matter of the count in this interference. 8
The statement LG Electronics, Inc. made in the district court litigation, i.e., 9
“[t]he evidence relied upon by Whirlpool on the present motion [Rule 60(b) 10
motion for relief from judgment] is irrelevant because Whirlpool submitted 11
substantial evidence that it was both the first to conceive and the first to reduce to 12
practice, making LG’s later conception and later reduction to practice irrelevant,” 13
is complex and highly ambiguous. We do not know what it means and Voglewede 14
has not provided an explanation of the entire statement much less an explanation 15
that is sensible. Yet, Voglewede desires that we take the six words “LG’s later 16
conception and later reduction to practice” as an admission that Whirlpool reduced 17
to practice the subject matter of the count in this interference prior to LG 18
Electronics, Inc. We see no reasonable basis to do so. 19
It is further noted that the portion of the count in this interference that is 20
taken from an involved patent of Lee is claim 62 of Lee’s Patent 7,383,689, and 21
claim 62 has not been identified by Voglewede as a claim involved in the district 22
court litigation. In that regard, Voglewede’s Supplemental Reply 3 states on page 23
2, 19-21: “On March 11, 2011, the jury returned a verdict that claims 20, 21 and 24
Interference No. 105,711
Voglewede v. Lee

-19-
36 of the ‘121 Patent were not invalid and the court entered judgment that the ‘121 1
Patent was not invalid on April 9, 2010.” Also, in its Motion 3 Voglewede 2
selected to rely on its own claim 5 as the count, not Lee’s claim 62. 3
Voglewede has not shown that the term “reduction to practice” as used in the 4
statement of LG Electronics, Inc. in the district court litigation is even directed to 5
the same subject matter as the count relied on by Voglewede in this interference. 6
As is indicated in Footnote 8 of Voglewede’s Supplemental Reply 3, there is at 7
least one feature in the count of this interference which is missing from the claims 8
asserted in the litigation before the U.S. District Court for the District of Delaware. 9
Voglewede also points to two other statements made by LG Electronics, 10
Inc., in the district court litigation. The first is “the uncontested evidence 11
establishes that Whirlpool combined only two of the three elements of the ‘121 12
invention and not all three, as required by the ‘121 patent claims.” (Ex. 2330 p.1). 13
The second is “[t]he jury’s verdict was based on facts other than the conception of 14
the invention, namely, that what Whirlpool invented – a combination of only two 15
of the three elements – is different than what LG invented – a combination of all 16
three claimed elements.” (Ex. 2330 p.9). Voglewede’s position appears to be that 17
whatever elements which have been admitted by Lee’s real party in interest in the 18
district court litigation need not be proven again in this interference and therefore 19
Voglewede need only establish reduction to practice of features in the count which 20
are not in the claims litigated in the district court litigation. The argument is 21
without merit and rejected. 22
Undeniably, the count as represented by Voglewede’s claim 5 or claim 62 of 23
Lee’s Patent 7,383,689 includes a plurality of elements. But the subject matter of 24
Interference No. 105,711
Voglewede v. Lee

-20-
the count is the entire combination of all of the elements “as a whole.” For 1
establishing an actual reduction to practice, Voglewede must demonstrate actual 2
reduction to practice of all of the elements working together in one single 3
embodiment as a whole. The count is not a disparate collection of separate 4
elements and features. Even assuming that LG Electronics, Inc. admitted in the 5
district court litigation that Voglewede conceived of and reduced to practice some 6
of the elements which now appear as portions of the count in this interference, that 7
does not mean in this interference Voglewede need only demonstrate actual 8
reduction to practice of the remaining parts. The subject matter of the count is not 9
subject to division as is proposed by Voglewede. 10
We conclude that Voglewede has not shown that it reduced an embodiment 11
within the scope of the count to practice by May 28, 2003, or by June 3, 2003. 12
Because Voglewede has not shown actual reduction to practice, it is not necessary 13
to consider whether subsequent to the alleged actual reduction to practice, 14
Voglewede suppressed or concealed the invention prior to filing a patent 15
application on June 4, 2004. 16
Hereinafter, we discuss several opposition arguments presented by Lee with 17
which we disagree. 18
Lee states that Gregory Garavalia’s testimony is unsubstantiated by any 19
document from June 3, 2003. The argument is misplaced, because the witness’ 20
first hand observation need not be further substantiated by documentary evidence. 21
Lee asserts that the discussion guide and report from the June 3, 2003 22
consumer focus group study, which provide much detail about the study, do not 23
indicate whether the prototype was tested or shown to have worked for its intended 24
Interference No. 105,711
Voglewede v. Lee

-21-
purpose. But there is no requirement that such information has to be contained in 1
these documents. 2
Lee does not contend that the documents indicate the contrary. Lee asserts 3
that the discussion guide, which Garavalia agreed was closely followed by the 4
moderator of the consumer focus group study, does not indicate that the consumers 5
would be allowed to move the tray and rotate the dispenser. But that does not 6
mean actual contact and manipulation could not have occurred. 7
Lee asserts that multiple witnesses have testified that consumer focus group 8
studies are conducted in a group format with participants having only limited 9
action with the product itself. But that is only a general description and Lee has 10
pointed to no testimony to the effect that more than limited interaction with the 11
product can never occur. Moreover, rotating the nozzle, extending and 12
withdrawing the tray, and filling the container with water can still be regarded as 13
limited interaction if there is a limited time duration for the manipulation. 14
Lee asserts that Gregory Garavalia’s testimony is unreliable because during 15
cross-examination he constantly referred to his declaration before answering 16
simple questions and often read verbatim from his declaration. (Opp. at 15:20-23). 17
Lee points to Gregory Garavalia’s testimony that he would not have been 18
comfortable answering questions on cross-examination without his declaration in 19
front of him for reference. (Opp. at 15:23 to 16:1). We are unpersuaded that the 20
testimony is unreliable for those reasons. There is nothing wrong for a witness to 21
desire that his testimony on cross-examination would be the same or at least 22
consistent with his or her declaration testimony. Perhaps Gregory Garavalia was 23
simply a very careful witness. In any event, Lee’s counsel did not have to provide 24
Interference No. 105,711
Voglewede v. Lee

-22-
the original declaration to Gregory Garavalia no matter how uncomfortable 1
Gregory Garavalia would have been to be cross-examined without access to his 2
declaration. We reject the argument that the witness’ testimony should be 3
considered particularly unreliable because he asked for and was provided his 4
original declaration testimony when asked to answer questions on cross-5
examination. It is what it is – testimony provided after the witness was provided 6
access to the initial declaration. 7
Lee further argues that assuming that the prototype actually worked at the 8
June 2003 focus group studies for its intended purpose, the reduction to practice 9
still would not have inured to the benefit of Ronald Voglewede because Ronald 10
Voglewede is not a sole inventor of the subject matter of the count. The argument 11
is based on Lee’s citation to the following statement in Genentech, Inc. v. Chiron 12
Corp., 220 F.3d 1345, 1354 (Fed. Cir. 2000): 13
[There are] at least three requirements that must be met before a non-14
inventor’s recognition of the utility of an invention can inure to the 15
benefit of the inventor. First, the inventor must have conceived of 16
the invention. Second, the inventor must have had an expectation 17
that the embodiment tested would work for the intended purpose of 18
the invention. Third, the inventor must have submitted the 19
embodiment for testing for the intended purpose of the invention. 20
(Emphasis added.) 21
22
Lee relies on the first stated requirement that the inventor must have conceived of 23
the invention. According to Lee, however, Ronald Voglewede is not the sole 24
inventor and the real inventive entity includes Kevin Gilboe and possibly Gregory 25
Horton or certain actual consumer participants in focus group studies. 26
Interference No. 105,711
Voglewede v. Lee

-23-
The argument is without merit. In our view, the above-stated requirement 1
that the inventor must have conceived of the invention means that for inurement to 2
apply and accord recognition of success by one to another, the latter must be the 3
inventor or inventive entity of the invention the successful demonstration of which 4
has been recognized. In other words, a non-inventor of the invention which has 5
been reduced to practice does not have sufficient stake in the invention to claim 6
that the invention was reduced to practice for him or her. 7
In its priority motion, Voglewede relies on Voglewede’s claim 5 as the 8
count. Ronald Voglewede is the sole named inventor on Voglewede’s involved 9
application in this interference. Therefore, on this record, Ronald Voglewede is 10
the sole inventor and the inventive entity of the subject matter of the count insofar 11
as Voglewede’s priority motion is concerned. He does not have the problem of not 12
having sufficient tie to the invention which has been reduced to practice. 13
To the extent that Lee now seeks to challenge the correctness of the named 14
inventorship on Voglewede’s involved application, the effort cannot help Lee’s 15
position in opposition to Voglewede’s priority motion. 16
First, in its list of proposed motions to be filed in this interference, Lee did 17
not seek to challenge Voglewede’s named inventorship. In the initial telephone 18
conference call held to discuss which motions each party intends to file, Lee did 19
not seek to challenge Voglewede’s named inventorship. In an interference 20
proceeding, the filing of all substantive motions including a motion challenging the 21
opposing party’s named inventorship must be with the prior authorization of the 22
Board. No authorization has been given for Lee to file a motion to attack the 23
named inventorship of Voglewede’s involved application. No such motion has 24
Interference No. 105,711
Voglewede v. Lee

-24-
been filed. Lee may not, under the guise of an opposition, submit what is in 1
essence an unauthorized motion to attack the named inventorship of Voglewede’s 2
involved application. Lee is attempting to gain access through the back door when 3
permission to enter through the front door according to regular procedure has not 4
been timely sought and obtained. That is inappropriate and Lee should have 5
followed established procedure. 6
Secondly, had Lee followed proper procedure and requested authorization to 7
file a motion to attack the named inventorship of Voglewede’s involved 8
application, Voglewede likely would have been given at least one opportunity to 9
consider the assertion and correct the stated error if correction is desired. Lee has 10
not alleged deceptive intent relating to the allegedly misnamed inventive entity. 11
Considering the issue raised in Lee’s opposition would deprive Voglewede an 12
opportunity to correct. The issue is inappropriate for consideration here. 13
Third, even assuming that Lee’s assertion is correct that Ronald Voglewede 14
is not the sole inventor but merely a co-inventor, Ronald Voglewede still would 15
not, on that basis, be deprived of the benefit of inurement. We see no reason to 16
recognize inurement for some member of the inventive entity but not others with 17
respect to inventions reduced to practice for that inventive entity by another. If the 18
entire inventive entity is entitled to inurement, then Ronald Voglewede as a 19
member of the inventive entity is entitled to inurement. Lee has not cited contrary 20
binding authority. 21
Conclusion 22
Voglewede’s Motion 3 for judgment based on priority of invention is 23
denied. 24
Interference No. 105,711
Voglewede v. Lee

-25-
C. Lee’s Motion 5 to Exclude Evidence 1
We do not reach Lee’s Motion 5 to exclude evidence because even without 2
excluding any of the evidence Lee seeks to have excluded Voglewede has not 3
shown entitlement to judgment based on priority of invention. However, we note 4
that a witness’ alleged non-cooperation on cross-examination which precludes a 5
smooth “question-and-answer conversation” format is not a basis for exclusion of 6
evidence unless the matter was brought to the attention of the patent judge in 7
charge of the interference in time to have an order issued to remedy the situation. 8
Lee’s Motion 5 is dismissed. 9
D. Voglewede’s Motion 4 to Exclude Evidence 10
The evidence Voglewede identifies in Section IV. A of Voglewede’s Motion 11
4 all pertain to Lee’s challenge of the named inventorship of Voglewede’s 12
involved application. We have not permitted Lee to challenge Voglewede’s named 13
inventorship in opposing Voglewede’s Motion 3 for judgment based on priority of 14
invention. Therefore, it is not necessary to reach the argument of exclusion with 15
respect to such evidence. 16
The evidence Voglewede identifies in Sections IV. B-E of Voglewede’s 17
Motion 4, and Exhibit 1097 identified in Section IV. F of Voglewede’s Motion 4 18
all pertain to evidence relied on by Lee in Lee’s Motion 4 for judgment based on 19
priority of invention or in Lee’s Reply 4. Because Lee’s Motion 4 has been 20
dismissed, it is not necessary to reach Voglewede’s Motion 4 in connection with 21
such evidence. 22
In Section IV.F of the motion, Voglewede also seeks to exclude portions of 23
Exhibits 1086, 1087, 1089, 1092, and 1093. Those exhibits are transcripts of the 24
Interference No. 105,711
Voglewede v. Lee

-26-
cross-examination of Voglewede’s witnesses Patrick Boarman, Marcus Fischer, 1
Ronald Voglewede, Omer Nihat Cur, and Gregory Garavalia, whose testimony are 2
relied on by Voglewede in support of Voglewede’s Motion 3 for judgment based 3
on priority of invention. With regard to the portions sought to be excluded, 4
Voglewede asserts that the testimony was presented “out of context.” 5
Voglewede’s belief that the cited testimony was presented out of context 6
does not justify exclusion of the evidence. Voglewede had full opportunity to 7
present what it believes to be the proper or full context, as a part of its Reply 3. In 8
the alternative, Voglewede requests admission of additional portions of the 9
exhibits. The request is untimely, as Voglewede should have taken appropriate 10
action in that regard when preparing and filing its Reply 3. Moreover, admitting 11
the additional evidence now is not meaningful, as it is not accompanied by an 12
authorized submission which explains the additional evidence. 13
Accordingly, Voglewede’s Motion 4 to exclude evidence is dismissed. 14
SUMMARY 15
Voglewede’s Motion 3 for judgment on priority is denied. 16
Voglewede’s Motion 4 to exclude evidence is dismissed. 17
Lee’s Motion 4 for judgment on priority is dismissed. 18
Lee’s Motion 5 to exclude evidence is dismissed. 19
20
Interference No. 105,711
Voglewede v. Lee

-27-
Attorneys for Junior Party Voglewede: 1
2
Paul R. Morico, Esq. 3
Paula D. Heyman, Esq. 4
Baker Botts L.L.P. 5
paul.morico@bakerbotts.com 6
paula.heyman@bakerbotts.com 7
8
9
Attorneys for Senior Party Lee: 10
11
Barbara Clarke McCurdy, Esq. 12
Lara C. Kelley, Esq. 13
FINNEGAN, HENDERSON, FARABOW, 14
GARRETT & DUNNER, L.L.P. 15
901 New York Avenue, N.W. 16
Washington, D.C. 20001-4413 17
Tel: 202-408-4000 18
Email: barbara.mccurdy@finnegan.com 19
Email: lara.kelley@finnegan.com 20