001 United States District Court District of Nevada SYMBOL...

001

United States District CourtDistrict of NevadaLas Vegas, Nevada

SYMBOL TECHNOLOGIES, INC., .et al., . Docket No. CV-S-01-701-PMP(RJJ) Plaintiffs . CV-S-01-702-PMP(RJJ) . CV-S-01-703-PMP(RJJ)

vs. . .LEMELSON MEDICAL, EDUCATION .& RESEARCH FOUNDATION, .LIMITED PARTNERSHIP . . Defendant . Las Vegas, Nevada . December 09, 2002 . . . . . . . . . . . . . . . 8:38 a.m.And related cases and parties

COURT TRIAL - DAY 11

THE HONORABLE PHILIP M. PRO PRESIDINGCHIEF UNITED STATES DISTRICT COURT JUDGE

COURT RECORDER: TRANSCRIPTION BY:

ERICA DAVIS NORTHWEST TRANSCRIPTS, INC.U.S. District Court Las Vegas Division

P.O. Box 35257Las Vegas, Nevada 89133-5257(702) 658-9626

Proceedings recorded by electronic sound recording, transcript

002

produced by transcription service.APPEARANCES:

FOR THE PLAINTIFFS: JESSE J. JENNER, ESQ.STEVEN C. CHERNY, ESQ.CHARLES QUINN, ESQ.ALBERT E. FEY, ESQ.KENNETH B. HERMAN, ESQ.PABLO D. HENDLER, ESQ.JOHN P. HANISH, ESQ.KHUE V. HOANG, ESQ.Fish & Neave1251 Avenue of the AmericasNew York, New York 10020

ELISSA F. CADISH, ESQ.Hale, Lane, Peek, et al.2300 West Sahara Avenue, #800Las Vegas, Nevada 89102

FOR THE DEFENDANTS: GERALD HOSIER, ESQ.8904 Canyon Springs DriveLas Vegas, Nevada 89117

STEVEN G. LISA, ESQ.55 West Monroe, Suite 3300Chicago, Illinois 60603

VICTORIA GRUVER CURTIN, ESQ.LOUIS JAMES HOFFMAN, ESQ.14614 N. Kierland Blvd., 300Scottsdale, Arizona 85254

003

PROCEEDINGS BEGIN AT 8:38 A.M.1

THE COURT: All right, we can have Dr. Horn come on2

back up to the witness stand and proceed.3

Mr. Hosier.4

MR. HOSIER: Hi. Just one item this morning, Your5

Honor.6

THE COURT: Yeah.7

MR. HOSIER: Last week, when we settled on this8

schedule --9

THE COURT: Oh, on the witness's deposition, yeah.10

MR. HOSIER: -- witnesses and all, and now, looking11

at things with a little more insight as to how the witnesses12

are going to proceed, it's clear that neither Niro nor13

Witherspoon will be able to be witnesses next week when our14

case comes on.15

THE COURT: All right.16

MR. HOSIER: So now I'm going to have to fly two of17

them, one from Chicago, one from D.C., here, then go back and18

come back.19

What I propose and what I've asked, I'd like to see,20

obviously, both of them go off and be deposed during our21

break, because I've got to do a lot of the witnesses -- got to22

do a turnaround here from their case to our case, but I'm23

willing to do part way if I could just get their indulgence on24

one. I'll bring Witherspoon out here. We can proceed on the25

004

scheduled time to take his deposition right now. All I need1

is indulgence on Mr. Niro, who's a very busy person as well,2

take his deposition some time during the break.3

I live part time in Aspen and he has a home in4

Snowmass, about 15 miles away. He's going to be there. I'm5

going to be there. Neither one of us then has to travel, I6

get some relief from this trial schedule and we just7

inconvenience one person one time for that deposition. I take8

the inconvenience for bringing Witherspoon out here, getting9

him set up and I'd just ask that we have that essentially10

accommodated.11

One other thing, Your Honor. We need that Tuesday,12

or we're going to get a little bit behind and, with doing13

this, we also get Tuesday back and we get our half day on14

Tuesday.15


MR. McCABE: Well, Your Honor, I'm happy to take Mr.17

Witherspoon on the 17th, as agreed, and I appreciate the18

offer.19

With respect to Mr. Niro, I'll leave it to Mr. Fey. 20

However --21

THE COURT: So Witherspoon's the morning of the22

17th?23

MR. McCABE: Well, he's the morning or as long as he24

goes.25

005

THE COURT: Yeah.1

MR. McCABE: I don't expect to go all day, but maybe2

it's --3

THE COURT: Right, but you've started -- you're4

starting him in the morning.5

MR. McCABE: I'll start in the morning.6

MR. HOSIER: That's fine.7

THE COURT: Yeah, okay.8

Okay, Mr. Fey, on Mr. Niro.9

MR. FEY: Well, Mr. Hosier has offered us Mr. Niro10

on Christmas Eve --11

MR. HOSIER: No.12

MR. FEY: -- and on December 27th, those two dates,13

and that was two or three weeks ago. We agreed, at least a14

week ago, to Niro on this coming Saturday and as far as I know15

that's never changed. He was going to come out here Friday16

night, be prepared in the morning, testify in the afternoon.17

And I love --18

THE COURT: The 14th?19

MR. FEY: This coming Saturday, yeah.20

THE COURT: Yeah, the 14th.21

MR. FEY: And I love Aspen, don't misunderstand, but22

I don't want to go there on Christmas Eve. I've got family23

obligations in New York.24

THE COURT: Sure, yeah.25

006

MR. HOSIER: Your Honor, --1

MR. FEY: And I want to do him on Saturday, like2

he's agreed for the last week, and now, all of a sudden, he's3

changing it, and I think that's inappropriate.4

THE COURT: Okay.5

MR. FEY: And I object to it.6


MR. HOSIER: Now that didn't happen. I sent them an8

e-mail immediately for -- they've known this for now days,9

over the weekend, number one. Number two, it's not Christmas10

Eve. All these things get -- The hyperbole is unbelievable.11

MR. FEY: December --12

MR. HOSIER: Any time in the break. I'll take him13

any time in the break.14

THE COURT: Any time between the 23rd and the 3rd of15

January, is there any time in that time frame, Mr. Fey, that16

would work for you during those two weeks?17

MR. FEY: In New York maybe, but not in Aspen. I18

don't want to fly to Aspen on Christmas Eve or between19

Christmas and New Year's.20

THE COURT: Okay. Well, here's what I'm going to21

have to do then.22

MR. HOSIER: After the New Year.23

THE COURT: I'm going to have to stick with -- I24

realize it's expensive, but we'll have to stick with Niro on25

HORN - CROSS007

the 14th and Witherspoon on the 17th then.1

MR. FEY: Thank you, Your Honor.2

THE COURT: If the parties were agreeable to it, you3

know, I'd certainly approve it, but otherwise we'll just have4

to stick with that.5

MR. HOSIER: Your Honor, could we maybe get that6

Tuesday back? I'll just -- I think we can live with --7

THE COURT: Yeah, we'll still have court Tuesday8

afternoon.9

MR. HOSIER: Okay. We had, the other day, decided10

we weren't going to have court Tuesday afternoon because of11

taking the deposition that day.12

THE COURT: Of Witherspoon, but you'll --13

MR. HOSIER: What we'll do is we'll just have to14

split up.15

THE COURT: Well, you'll take Witherspoon in the16

morning and hopefully finish by noontime or 1:00 o'clock.17

MR. HOSIER: Right.18

THE COURT: But we'll start at 1:00 on the 17th.19

We can still do that, right, Donna?20

MR. HOSIER: Okay. Great.21

THE COURT: Yeah. Okay?22

MR. HOSIER: Thank you.23


All right, go ahead, Mr. Lisa. We'll proceed with25

HORN - CROSS008

your cross-examination of Dr. Horn.1

MR. LISA: Thank you, Your Honor.2

DR. BERTHOLD HORN, PLAINTIFF'S WITNESS, RESUMES THE STAND3

CROSS-EXAMINATION (Continued)4

BY MR. LISA:5

Q Good morning, Dr. Horn.6

A Good morning, Mr. Lisa.7

Q You had testified on your direct examination that you did8

not believe Mr. Lemelson's patents to be pioneering patents;9

is that right?10

A That's right.11

Q And did you, in considering and forming your opinions12

regarding the pioneering nature of Mr. Lemelson's inventions,13

look at, for example, the number of patents that issued off of14

what you've referred to as the common specification?15

A I'm aware that there's a number of them, yes.16

Q Nineteen patents that have issued off of one common17

specification; right?18

A I'm not sure, but --19

Q There's 14 patents-in-suit, right?20

A Yes.21

Q And you reviewed all of them, correct?22

A I reviewed all of them and they have the same23

specification.24

Q And do you have some understanding of how many claims25

HORN - CROSS009

issued in all of these patents?1

A Quite a number.2

Q Roughly 600 claims. Is that about right, to your3

understanding?4

A I don't know the exact number.5

Q You certainly realize that it is quite a number of claims6

and quite a number of patents off of one common specification;7

right?8

A Yes.9

Q All right. Have you ever seen so many patents issued off10

of a single specification?11

A I'm not really that familiar with patents, but I have not12

seen that.13

Q Have you ever seen so many claims issued off of a single14

specification in your experience, sir?15

A Again, I don't have that vast experience with patents,16

but I've not seen that.17

Q So we agree that in your limited experience with patents18

you haven't seen either this many patents or this many claims19

issue off of one specification; right?20

A Well, we also have to keep in mind whether those patents21

led to useful devices.22

Q I'm just asking, sir, whether -- we're going to get23

there, okay?24

A Okay.25

HORN - CROSS0010

Q Okay. Have you -- in your limited experience, as you've1

just stated, with patents, you certainly agree that you've2

never seen as many patents or as many claims issued off of a3

single specification; right?4

A Not in my limited experience.5

Q Now, you did review the file histories, right?6

A Yes, I did.7

Q And you certainly recognize that there are a number of8

restriction requirements in the prosecution history, right?9

A Could you be specific?10

Q Do you know what a restriction requirement is, sir?11

A You could perhaps remind me.12

Q All right. It's where the patent examiner says that13

there are several distinct and different inventions and14

requires the applicant to select one for prosecution.15

A Yes.16

Q All right. And you, of course, recall that there was a17

restriction requirement in the 1954 application; right? Do18

you remember that?19

A I don't recall that.20

Q You don't remember that?21

A I don't remember that.22

Q And you don't remember the examiner saying there are a23

great many distinct inventions and that there were seven24

different groups?25

HORN - CROSS0011

A I do remember the examiner, in some instances, pointing1

out that the claims would need to be split up.2

Q Well, with respect to the 1954 application, you don't3

remember those words; right?4

A I don't specifically remember what he said.5

Q Do you remember there was a restriction requirement in6

the 1956 application?7

A I believe there was.8

Q And that was a four-way restriction requirement? Do you9

remember that?10

A I don't remember how many restriction --11

Q Do you remember that in the 1972 application there was a12

seven-way restriction requirement? Do you recall that?13

A Again, I don't remember how many ways it was.14

Q All right. So then is it fair to say that, in forming15

your opinions as to whether or not Mr. Lemelson's inventions16

were pioneering, you didn't give consideration to whether or17

not the Patent Office, throughout the prosecution of these18

applications, said that there were a number of very different19

and distinct inventions?20

Is that a fair statement, sir?21

A I'm not sure how that relates to whether it's a22

pioneering patent or not, however.23

Q Well, we'll let other people decide that. I'm just24

asking, sir, whether you considered it. Evidently not, if you25

HORN - CROSS0012

don't see how it relates; right?1

A I think that's a fair statement.2

Q All right. So again, to be clear, in deciding whether3

Mr. Lemelson's inventions are pioneering, you did not consider4

that the Patent Office had entered several restriction5

requirements identifying numerous distinct groups of6

inventions off of a single application or common7


A Well, I take that more as a --9

Q Yes or no, sir? I'm just asking a simple question.10

A Okay, then please tell me again what the question was.11

Q All right. Is it fair to say, so that we're clear, that12

in forming your opinions of whether or not Mr. Lemelson's13

inventions were pioneering, you did not consider the several14

restriction requirements that occurred during prosecution of15

the patent applications?16

A I did not apply great weight to that consideration.17

Q Did you apply any weight to it, sir?18

A Yes.19

Q So then you do recognize that the Patent Office20

identified about 15 different and distinct inventions21

described in these applications?22

A I'm not sure what you mean by 15 distinct inventions. 23

Could you be more specific?24

Q Sure.25

HORN - CROSS0013

How many different restriction groups were there? How1

many different groups did the examiner identify in the various2

restriction requirements that you did give some weight to?3

A I can't give you the total, but it was the order of ten4

or so.5

Q So at least ten; right?6

A Probably.7

Q In your limited experience in patents, have you seen8

before any specification that received restriction9

requirements identifying at least ten distinct inventions10

described in there?11

A Yes. Again, I'm not a patent lawyer, so I don't get to12

read very many of them.13

Q So that the answer is clear, was your answer, yes, you14

have seen it or, no, you haven't?15

A In my limited experience, I have not.16

Q In considering whether or not Mr. Lemelson's inventions17

are pioneering, did you consider how many companies have18

signed licenses under those patents?19

A Yes. I know that a number of companies have signed20

licenses.21

Q And you know that it's now approaching about a thousand22

companies, right? You know that.23

A I don't know that. I know it's a large number.24

Q And in deciding that Mr. Lemelson's inventions weren't25

HORN - CROSS0014

pioneering, you did consider the number of licensees that were1

signed; correct?2

A Indirectly. Of course, companies have many reasons for3

signing licenses.4

Q Sure, they do.5

Do you know how much money was paid under those licenses,6

sir?7

A No, I don't.8

Q All right. So you didn't ask counsel how much was paid9

under the licenses that you considered in deciding whether the10

inventions were pioneering or not?11

A I have a rough idea of what the number is, since you've12

told me that number a few times.13

Q All right, what is the number, sir?14

A The order of a billion.15

Q How about a billion three?16

A I wouldn't know that.17

Q All right.18

A I'll take your word for it.19

Q You can take my word for it.20

In your experience at MIT with inventions and licensing 21

-- let's -- I'll withdraw that. Let's back up.22

You have some patents, don't you?23

A Yes.24

Q And they're assigned to MIT, correct?25

HORN - CROSS0015

A Some are and some aren't.1

Q All right. And you're certainly aware that MIT has a2

licensing program for its patents, right?3

A Yes.4

Q All right. And, in fact, MIT is reasonably successful in5

its licensing of its patents, wouldn't you say?6

A Well, recently. They haven't done that well in the past.7

Q All right. Are you aware of any patents at MIT that have8

a thousand licensees and nearly 1.3 billion -- or9

approximately 1.3 billion in revenue, sir?10

A I'm not familiar with the licenses that MIT has.11

Q Well, you're a pioneering inventor in the machine vision12

field, right?13

A Pioneering inventor?14

Q I think your inventions were listed on your chart of15

pioneering achievements in what you consider the machine16

vision field; right?17

A Yes, one or two were.18

Q All right. How much -- how many licensees have signed19

agreements under your patents, sir?20

A Generally, I have placed my work in the public domain so21

everyone can benefit. I've only taken out patents when it was22

required by the contracts under which my research was23

conducted.24

Q And I take it then you don't place great weight in the25

HORN - CROSS0016

patent system?1

A I place great weight. It happens that my interest is in2

teaching and research rather than licensing patents.3

Q All right, so then it's fair to say that, in considering4

whether Mr. Lemelson's patents are pioneering, you don't have5

much experience in the patent end of that, right?6

A I don't have a great deal of experience in patents as,7

for example, you do.8

Q Now you do have a number of patents assigned to MIT,9

right?10

A Yes. Probably two or three of my patents I assigned to11

MIT.12

Q Do any of those relate to machine vision, sir?13

A Yes.14

Q All right. And are all of those dedicated to the public,15

sir?16

A No.17

Q All right. And how many of those -- And MIT shares its18

revenue with its professors, doesn't it, from licensing?19

A I've been told that.20

Q All right, have you received any revenue from MIT21

licensing your patents, sir?22

A I don't think so.23

Q Do any of those patents cover what you consider to be24

important inventions that you have?25

HORN - CROSS0017

A Not really. They're all focused on some minor aspect.1

Q All right. So you dedicate your important inventions to2

the public and file your patent applications on the less3

important ones? Is that fair to say?4

A No. I believe I explained that the way it works is that5

certain contracts, with the government, for example, require6

that we file patent applications on that research.7

Q Okay. Certainly you recognize that Mr. Lemelson's8

patents have many times the number of licensees and9

significantly more revenue than anything you've done; right,10

sir?11

A That's certainly true.12

Q All right. Now -- and, is it fair to say, significantly13

more licensees and significantly more revenue than any patents14

you're aware of at MIT, right?15

A I couldn't speak to that. I believe there's some16

important patents in developments of computers and microwave17

radar that have a large number of licensees.18

Q And how much revenue? Do you know?19

A I do not know.20

Q All right. Now, did -- as a man trained in the21

scientific methods, was your curiosity piqued as to how it is22

that if these patents were so worthless so many companies23

would have paid so much money?24

A That did occur to me.25

HORN - CROSS0018

Q Did you ask your counsel, Fish & Neave, how many of their1

clients have signed licenses and how much their clients have2

paid to Lemelson?3

A Actually, I didn't.4

Q So would you be surprised to find that about 50 of the5

Fish & Neave clients have accepted licenses and paid on the6

order of 100 million dollars?7

A Well, not really, since so many companies did take out8

licenses and Fish & Neave is a company with very, very many9

clients.10

Q Certainly they have the skill and the experience to try11

the case, don't they? They're here, right?12

A I'm not sure how that's relevant. I mean, many companies13

decide not to try the case and just pay the licensing fee, for14

example.15

Q A hundred million dollars as a nuisance value, right?16

A For a large company.17

Q All right. Now, is it your testimony, sir, that a18

company would pay a hundred million dollars as opposed to19

litigate a case?20

MR. JENNER: Objection. There's no foundation for21

that.22

THE COURT: Sustained. The witness would have no23

way of knowing what the particulars of each of those24

independent lawsuits were.25

HORN - CROSS0019

BY MR. LISA:1

Q Well, certainly you recognize that the lawyers you've2

been working with are fully informed on the defenses to these3

patents, right?4

A Well, they certainly are now.5

Q Okay. Well, they also tried the Ford case, sir, and were6

involved in the Ford case, right?7

A I don't know about that.8

Q All right.9

A But I believe that's true.10

Q And did you sit down and ask Fish & Neave counsel why it11

is that so many companies would have paid those fees?12

A I did and one of the things that I mentioned earlier that13

occurred to me was that frequently people will sign licenses14

for reasons other than that they think their technology15

infringes it, particularly if they're not themselves familiar16

with the technology.17

Q Well, let's talk --18

A Which would be the case, in many cases, of end users of19

say machine vision equipment.20

Q Well, you're not an end user of machine vision systems,21

are you, sir?22

A I may have, on occasion, purchased equipment that we use23

in the lab.24

Q You recognize that there was a previous lawsuit with25

HORN - CROSS0020

Ford, General Motors, Chrysler and Motorola, right?1

A I know there was a previous lawsuit. I'm not exactly2

familiar with who was in it. 3

Q You don't know that Ford, GM, Chrysler and Motorola were4

in a litigation with Lemelson? You don't know that, sir?5

A That's not what I said. What I said was that I'm6

familiar with the lawsuit. I don't know whether that is the7

exact number of people involved.8

Q Do you know that that lawsuit went on for a while, a9

couple of years?10

A Yes, the early nineties.11

Q All right. And are you aware that those companies had12

teamed up in a joint defense against Mr. Lemelson? You're13

aware of that, right?14

MR. JENNER: Objection, foundation.15

MR. LISA: I'm asking if he's aware.16

THE COURT: Well, the witness has previously17

testified about his involvement, so, if he knows, I'll let him18

answer.19

THE WITNESS: Sorry, could you repeat it?20

BY MR. LISA:21

Q Are you aware that those companies had jointly sued Mr. 22

Lemelson and, in fact, even Motorola and Ford shared Fish &23

Neave's counsel? Do you recall that?24

A I'm not familiar with the details. I know there was some25

HORN - CROSS0021

interaction.1

Q Do you know how far that lawsuit went before it was2

settled, sir?3

A No. As I said, I didn't follow the lawsuit.4

Q And did you ask counsel how much was paid under those5

licenses?6

A No, I did not.7

Q All right, so in forming your opinions regarding the8

pioneering nature of Mr. Lemelson's inventions, you did not9

consider the extent to which the patents were litigated in the10

prior lawsuit with Ford, General Motors, Chrysler and11

Motorola, right?12

A I did not --13

Q Fair to say you did not consider that?14

A I did not study the case in detail.15

Q All right. You didn't consider how much was paid by16

those companies, correct?17

A I'm not sure that would be a measure useful in18

determining whether it was a pioneering patent or not.19

Q Well, if you're on the verge of a Markman hearing, where20

the Court's about to decide what the claims mean and major21

corporations pay --22

MR. JENNER: Objection, Your Honor. There's no23

foundation for this and it was not the verge of a Markman24

hearing.25

HORN - CROSS0022

THE COURT: All right. Well, --1

MR. JENNER: It was about to go into further summary2

judgement proceedings.3

THE COURT: Hold on.4

MR. LISA: On claim construction, Mr. Jenner.5

MR. JENNER: No, not so.6

THE COURT: Why don't you all -- You know, you all7

can present your argument to me about the dynamics of the8

case. I'm not even sure this witness knows what a Markman9

hearing is and I don't understand why it really is material to10

or relevant to have this witness give his opinion about it.11

MR. LISA: Well, he certainly provided claim12

construction, Judge, so I think he does know what the Markman13

process is about.14

THE COURT: Okay.15

MR. LISA: And I also think he's testified on direct16

that Lemelson's patents are -- there's lots of reasons why17

companies will sign and they pay nuisance values. And I think18

it's relevant to show that this witness did not consider that19

litigations were, you know, a long way down the path and20

whether he considered how much was paid and whether that21

would, in fairness, be a nuisance value.22

THE COURT: Well, you can ask him that. In the way23

you just stated it, ask him that, whether he considered --24

MR. LISA: Sure.25

HORN - CROSS0023

THE WITNESS: May I just -- You said that I stated1

something about nuisance value. I never used that term in my2

report.3

MR. LISA: Okay.4


MR. JENNER: Right. That only came up on cross.6

THE COURT: Yeah.7

BY MR. LISA:8

Q You said -- 9

MR. LISA: I'll rephrase it, Your Honor.10


BY MR. LISA:12

Q You said there's lots of reasons why companies pay,13

right?14

A Yes.15

Q And one would be that you think the value of -- the cost16

to settle it would be nominal for a large company, right?17

A I didn't say that, but that may occur.18

Q Maybe if we just put it this way. In saying Mr.19

Lemelson's inventions were not pioneering, you didn't consider20

the Ford, General Motors, Chrysler and Motorola lawsuits or21

the extent to which they were litigated or the amounts that22

were paid, correct?23

A I was aware of the lawsuit, so I imagine it influenced my24

judgement.25

HORN - CROSS0024

Q In what way, sir?1

A I was aware that major companies were involved in an2

argument about whether they should be paying licensing fees on3

these patents.4

Q Were you aware of how much they paid?5

A No. I don't know the number.6

Q So you certainly couldn't consider that, correct?7

A Well, I don't think I need to know the exact number.8

Q Well, let's be clear. You formed an opinion and offered9

testimony on the pioneering nature of Mr. Lemelson's patents,10

right?11

A Yes.12

Q And you said you were aware of the lawsuit between those13

major corporations, right?14

A Yes, without knowing the details.15

Q All right. And you didn't ask about the details, right?16

A I don't think I delved into the details.17

Q Didn't ask about the details?18

A I don't know. I may have.19

Q Well, did you receive the details or not, sir?20

A I did not study the details.21

Q Now in forming your opinions on the pioneering nature of22

Mr. Lemelson's inventions, did you consider whether there were23

industry groups that could share legal fees and file lawsuits24

or defend jointly against the Lemelson's patents?25

HORN - CROSS0025

A Sorry, did I consider whether --1

Q Yes.2

A -- there were industry groups?3

Q Sure.4

A Well, in a way, because, the way I understand it, the5

previous lawsuit involved more than one company. I don't know6

if they're industry groups, but there was more than one7

company involved.8

Q All right. Well, there were companies who could form9

together, form a joint defense, share legal fees and defend10

against the patents, correct?11

A Yes.12

Q All right. And, in fact, this case is an example, where13

Cognex and Symbol and a number of bar code manufacturers have14

joined together and are sharing legal expenses to defend -- or15

assert invalidity and non-infringement against the patents,16

right?17

A Yes.18

Q All right. So that becomes a relatively efficient and19

cost-effective, if litigation can ever be cost effective, way20

of trying a case, right?21

A I wouldn't know. I'm not a patent trial lawyer.22

Q Well, you certainly know there were -- Well, do you know23

there were lawsuits pending down in Phoenix against the24

semiconductor manufacturers?25

HORN - CROSS0026

A I'm not sure I knew about that.1

Q Didn't know about the Phoenix lawsuits that were filed2

against 88 electronics and semiconductor companies?3

A I remember there was some litigation involving4

semiconductor manufacturers.5

Q All right. And did you ask counsel what the status of6

that lawsuit was in considering the pioneering nature of Mr.7

Lemelson's inventions?8

A I didn't ask them about that lawsuit.9

Q I see.10

Well, sir, if all but a handful, less than ten companies,11

notwithstanding the filing of this lawsuit up here by Cognex12

and Symbol, agreed to pay licenses, accept license fees,13

wouldn't you consider that in determining whether or not Mr.14

Lemelson's patents are pioneering?15

A Sorry, you lost me there. Could you restate that?16

Q Sure.17

The lawsuits down in Phoenix were stayed. Do you recall18

that or did you know that?19

A Stayed, meaning they have to wait for this one?20

Q That's correct, they were sitting dormant waiting for the21

results up here.22

A Yes, I believe I heard that.23

Q All right. And so there were no legal fees being spent24

by those companies defending against the machine vision25

HORN - CROSS0027

patents. Do you recognize that?1

A Yes.2

Q All right. And yet all but a handful of those companies3

accepted licenses and paid tens, if not hundreds, of millions4

of dollars. Did you know that?5

A Is that correct? I have no idea.6

Q It's certainly -- Well, obviously you haven't considered7

that then, have you?8

A No.9

Q All right.10

A I mean, you're stating that as a fact. I don't know11

that.12

Q So then it's fair to say, sir, that, in forming your13

opinions on the pioneering nature of the Lemelson patents, you14

didn't investigate the status and results of the lawsuits15

pending down in Phoenix either, right?16

A That's right.17

Q Now in looking at the pioneering nature of Mr. Lemelson's18

inventions, did you happen to do a search to see how many19

times Mr. Lemelson's patents have been cited in other patents20

at the Patent Office?21

A No, I didn't.22

Q Would it surprise you, sir, to find out that Mr.23

Lemelson's numerous patents, even those outside of the machine24

vision field, have been cited over 5,000 times as prior art in25

HORN - CROSS0028

other patents? Do you know that?1

A I have no idea.2

MR. JENNER: Objection, Your Honor, relevance as to3

a citation of patents outside of the patents involved in this4

lawsuit.5

THE COURT: Overruled. I'll let the witness answer6

if he is aware.7

Your answer was, I understood, --8

THE WITNESS: No, I don't.9

THE COURT: -- was no, you were not aware of that?10

THE WITNESS: Yeah.11


BY MR. LISA:13

Q You said one of your articles was cited a thousand times,14

is that right?15

A Yes.16

Q And you considered that to be a lot, right?17

A For a scientific article that's a lot.18

Q All right. Now did you look to see whether any of19

Lemelson's machine vision patents were being cited by other --20

as references in other machine vision or bar coding21

applications?22

A Did I look?23

Q Yes.24

A Yes, I looked at a few patents and they weren't cited,25

HORN - CROSS0029

but I'd imagine there are others where he was.1

Q Did you actually undertake to look? Do I understand that2

you did undertake to look to see whether Lemelson's machine3

vision patents were being cited as prior art in pending or4

issued -- patents cited in issued patents, sir?5

A As I indicated, I looked at patents that I was reading6

for other reasons to see whether he was cited and he was not7

in those patents.8

MR. LISA: Your Honor, I'd like to introduce --9

present the witness with Defendant's Trial Exhibit 2159.10


THE WITNESS: Thank you.12

(Pause in the proceedings)13

BY MR. LISA:14

Q Now, sir, I'll represent to you that we did a search this15

weekend on the Internet at the Patent Office web site and16

found the patents listed on Exhibit 2159 as patents that cite17

the various Lemelson machine vision patents.18

A Sorry, these are machine vision patents that cite19

Lemelson's machine vision patents, right?20

Q And bar coding patents.21

A Machine vision and bar coding?22

Q Yes, sir.23

A Uh-huh. I notice most of these are very recent, by the24

way.25

HORN - CROSS0030

Q Don't you find that --1

THE COURT: Well, what's your question to the2

witness though?3

MR. LISA: I'm asking --4

THE COURT: You've handed him a document and5

represented what it is, but --6

MR. LISA: I'm going to premise --7

MR. JENNER: Your Honor, on that basis, I would8

voice an objection for that very reason. This appears to be a9

summary document. The underlying information or documents10

which are the basis for this summary have not been provided,11

we've never seen them, so this is --12

THE COURT: All right. Well, I anticipated the13

question would be, as the witness has talked about patents he14

had looked at, whether in his review he saw any of these, just15

to get us started, and then we can address the underlying16

patents, but let me ask a question.17

Looking at 2159, the 50 patents that are enumerated18

there that, according to the headings, cite Lemelson machine19

vision patents or bar code patents, do you recall, Dr. Horn,20

in your review, in forming your opinions in this case, whether21

you looked at any of the 50 specified patents in Exhibit 2159?22

THE WITNESS: Your Honor, it would take me a while23

to look through, but, off the top of my head, I don't24

recognize any.25

HORN - CROSS0031

Also, I question whether these are really what1

you've qualified as machine vision patents just from some of2

the titles, "Liquid Soy Nutritional Products."3

MR. LISA: Oh.4

THE WITNESS: "Display-Pointing Device, Security5

Document Voiding System."6

I'm not saying they're necessarily not related to7

machine vision, but I don't have the documents.8


THE WITNESS: So I wouldn't be able to verify that.10

THE COURT: Very well.11

I'm not going to receive 2159 at this point. The12

witness has indicated he didn't review -- or does not recall13

reviewing the patents contained therein. And at such point as14

plaintiff -- I'm sorry, defendant wishes to offer 2159, and15

can lay a foundation as to what it is, then we can deal with16

it.17

Go ahead.18

MR. LISA: Thank you, Your Honor. That's fine.19

I will say one of the issues I'm about to address20

was the witness testified that nobody heard of Lemelson before21

in the machine vision field and I'm about to hand --22

THE COURT: I don't think he used those terms.23

MR. LISA: Something to that effect. And what I'm24

about to show, Your Honor, is that these patents that cite Mr.25

HORN - CROSS0032

Lemelson are issued to major machine vision electronics1

corporations.2

THE COURT: Very well. No, go ahead.3

MR. LISA: At least they know about Mr. Lemelson.4

THE COURT: Yeah. No, go ahead.5

MR. LISA: All right. I'm going to hand the witness6

Defendant's Trial Exhibits 2150 through 2158.7



MR. LISA: Your Honor, we do have copies of all of10

these available for inspection, but obviously we just pulled11

them down this weekend, so --12


MR. LISA: There's a number of -- All 50, I mean,14

are here in the courtroom for inspection and we'll let them15

look at them over the break.16

THE COURT: Fine.17

MR. LISA: Thank you.18


THE COURT: Dr. Horn, while they're sorting those20

out, let me just make sure I understand. In preparing your21

opinions in this case, and to the extent you reviewed other22

patents to see -- Well, did you conduct any kind of search of23

other patents to determine whether Lemelson patents were cited24

in any of them?25

HORN - CROSS0033

THE WITNESS: Yes, Your Honor, I did. I didn't do a1

thorough search. I did notice that recent patents tend to2

cite Lemelson.3

THE COURT: Let me make sure I understand. Recent4

could mean a lot of things depending upon the context.5

Would '86 or '95 -- What would you call recent?6

THE WITNESS: Well, I was thinking within the last,7

I don't know, five to eight years. There were some earlier8

and I took into account the fact that the citations might have9

been introduced by the applicant or by the patent examiner.10

And certainly, once the Lemelson systems enter the11

patent system, they would have been pulled up by the patent12

examiner just by looking at the field of the patent.13

THE COURT: And each time you, in your search, hit14

upon a reference to a Lemelson patent, did you then go look at15

the patent which referred to the Lemelson patent?16

THE WITNESS: Yes.17

THE COURT: Okay. And approximately how many of18

those would you say you actually came upon in your --19

THE WITNESS: I probably looked at 20 or so to see20

whether there was actually a connection between the material21

in the patent and the cited Lemelson patent.22

THE COURT: And were these all matters relating to23

machine vision or machine vision and bar coding or --24

THE WITNESS: I focused on machine vision, Your25

HORN - CROSS0034

Honor.1

THE COURT: Okay. All right, thank you.2

MR. LISA: Your Honor, I think we're entitled to3

have whatever files this witness just identified produced to4

us for the basis for his opinions.5

THE WITNESS: I don't have --6

THE COURT: I didn't hear him say he referred -- he7

created a file. I asked him whether he conducted a search.8

Did you keep a file or keep track of the ones that9

you looked at?10

THE WITNESS: No, Your Honor. This was an online11

search. I didn't produce a document based on it.12


BY MR. LISA:14

Q So you didn't certainly look at the file histories of15

those patents to determine why Lemelson's patents were cited,16

right?17

A That's correct.18

Q All right. Did you look at who the assignees were of19

those 20 patents or so?20

A Yes.21

Q All right. So are you aware then that Lemelson's22

patents, machine vision patents-in-suit, are being cited in23

patents issued to Intel or Meade or Novartus or General24

Electric or NCR or Welch-Allen or major U.S. corporations like25

HORN - CROSS0035

that? Did you see those names, sir?1

A As I indicated, I'm not sure that the citing of a patent2

necessarily says that there's a subject matter that's being3

carried over. Simply if you're --4

Q Answer my question first, sir.5

MR. JENNER: Your Honor, may the witness be allowed6

to answer?7

THE COURT: Well, yeah, but preface it with yes or8

no so counsel, at least, gets a response.9

Restate your question.10

MR. LISA: Sure.11

THE COURT: You can then always explain your answer,12

but first give him an affirmative or negative response, unless13

you just have to qualify it and can't give either.14

MR. LISA: All right.15

THE COURT: Go ahead.16

BY MR. LISA:17

Q Did you recognize, sir, in doing your searches, that18

major U.S. corporations were having the Lemelson machine19

vision patents cited in their patents?20

A Yes.21

And may I explain?22

THE COURT: Sure.23

BY MR. LISA:24

Q Go ahead.25

HORN - CROSS0036

A As I indicated, the citations are often pulled up simply1

by looking at the subject matter and many of them will be2

inserted by the patent examiner by saying this is in a certain3

field, what are the patents in that field that relate to a4

similar matter. It doesn't necessarily indicate that there5

was some invention that was exploited in the new patent. I6

mean, sometimes it does, sometimes it doesn't.7

Q But you don't know one way or another, do you, sir?8

A I did not consult the prosecution history of those9

patents.10

Q And, in fact, you said yesterday that you're not an11

expert on patent prosecution in the Patent Office either,12

right?13

A That's correct.14

Q And you don't know, in fact, what the standards are for a15

patent examiner to do his searches, do you, sir?16

A No.17

Q Would it surprise you, sir, that the examiners attempt to18

find patents that are relevant to pending claims?19

A Sorry, say again.20

Q Would it surprise you, sir, to find out that what the21

examiner is asked to do is to find references that relate to22

the pending claims?23

A That's probably true.24

Q All right.25

HORN - CROSS0037

A And it's a little surprising then that the list you've1

given me of 50 references are all recent. In other words, why2

didn't the patent examiners pick up on the pending claims in3

the eighties or seventies?4

Q Well, sir, in fact it is kind of interesting, isn't it,5

that Mr. Lemelson's 1950's patent specification is now being6

cited as prior art in modern machine vision and bar coding7

inventions -- patents. Didn't that peak your curiosity, sir,8

as to how that could be?9

A Yes, it is puzzling.10

Q And yet you understand that Patent Office examiners are11

experienced in determining and searching prior art relevant to12

pending claims, right?13

A Well, as you just said a moment ago, I'm not a patent --14

an expert on how the Patent Office operates.15

Q And if you look at -- I'm sorry, strike that.16

When you said on your direct examination that you had17

never heard of Mr. Lemelson before these lawsuits, I believe18

you also said that people in the field had not heard, to your19

understanding, of Mr. Lemelson, correct?20

A Yes.21

Q When you gave that testimony, had you already done these22

searches in which these major corporations have had the23

Lemelson patents cited against them?24

A I was talking about the field of machine vision that I am25

HORN - CROSS0038

in, in the academic world.1

Q All right. And that's an important point, sir. You're2

in the academic world, right?3

A Yes, although I've certainly consulted for industrial4

machine vision.5

Q So you have offered no opinion then as to whether those6

who practiced machine vision in the practical or end-user7

world knew of Mr. Lemelson, have you, sir?8

A No. That's an invalid characterization of what I said. 9

Certainly, much of the interaction I have is with people who10

do practical things.11

Q All right. Then, when you said that people in the12

industry didn't know about Lemelson, did you know that these13

major corporations were having the patents cited against them?14

A Yes.15

Q Certainly they heard of Mr. Lemelson and his machine16

vision patents, right?17

A Certainly they found his patents when they did a search18

on a subject area. I don't think that indicates in any way19

they made use of his invention.20

Q Sir, I think your opinion was nobody had heard of him,21

they hadn't heard of Mr. Lemelson. That's what you said,22

right?23

A Yes.24

Q That's inconsistent with the Patent Office search25

HORN - CROSS0039

records, right, sir?1

A Nobody in the --2

Q Yes or no, sir? Let's get an answer to that first.3

A Sorry, restate it then, please.4

Q All right. Your testimony that nobody in the machine5

vision world or industry heard of Mr. Lemelson is inconsistent6

with the Patent Office search records, right?7

A Well, not really. I mean, for example, if my experience8

with patents is any indication, the inventor often writes down9

what he thinks the invention is and then there's a whole10

process of adding the required language around it, such as11

figuring out what field it's in and all kinds of references to12

prior art.13

Q Sir, it seems to be an obvious fact that these companies14

were aware of the Lemelson patents and were having them cited15

against their patents, right?16

A I don't think it's an obvious fact that the researchers17

who did this work were aware of it. Certainly the patent18

lawyers who filed these patents must have found the Lemelson19

patents to reference them or be made aware of them by the20

patent examiner.21

Q Now you had made a comment -- But, again, you don't know22

one way or the other and you didn't consider that, right?23

A Sorry, I don't know one way or another about what?24

Q Whether or not -- what the reason was for the Lemelson25

HORN - CROSS0040

patents being cited.1

A I didn't read the prosecution history.2

Q All right. Now you had made a comment, when you looked3

at this list, that you thought a lot of these had nothing to4

do with machine vision. Is that what you said?5

A I said that I couldn't tell, but some of the titles6

didn't seem to indicate machine vision content.7

Q All right. Well, if you look at, for example,8

Defendant's Exhibit 2158 that I handed to you, interestingly9

enough that's assigned to the United States of America.10


If you look at that patent, sir, do you see the title on12

it, "Apparatus and Method for Computer Vision Measurements"? 13

Do you see that?14

A Yes, I see the title.15

Q All right. And, in fact, if you look at the references16

cited, do you see that there are two Lemelson patents cited?17

A Sorry, I only see one.18

Q Well, there's one up top, the fifth one.19

A Yeah.20

Q Then down below that, about six or seven more, is another21

one. Do you see that?22

A Okay.23

Q And this patent, you can tell by looking at the first24

figure, relates to machine vision, right? It's got a camera,25

HORN - CROSS0041

a digitizing system, a video processor, a computer, a display1

and a control system. Do you see that?2

A Yes.3

Q If you look at Defendant's Trial Exhibit 2150, "Pattern4

Recognition System," do you see the first patent cited there5

is Lemelson, down below?6

A Yes. I also notice Bobby R. Hunt is one of the7

inventors.8

Q Who?9

A Bobby R. Hunt, one of your expert witnesses.10

Q How about that. I didn't notice that. Very interesting.11

A Which might explain why he's citing Lemelson.12

Q Could you repeat that, sir? I couldn't hear you.13

A Which might explain why he was aware of Lemelson.14

Q That's exactly the point, isn't it, sir? If Dr. Hunt was15

aware of Mr. Lemelson as a result of his patent application16

process, isn't it fair then, based on the assumption you just17

made, that the others would be as well, right?18

A Sorry, let me just look at something else.19

Q Well, no, let's answer --20

THE COURT: No, hold on. Let me make sure I21

understand.22

The application was filed in August of 1993 and that23

would suggest that Bobby Hunt and the others were aware of24

Lemelson in 1993, am I correct?25

HORN - CROSS0042

THE WITNESS: Yes.1

THE COURT: And you were making a connection to Hunt2

and maybe that's why he's aware of Lemelson.3

What was Hunt's involvement with Lemelson in 1993 to4

your knowledge?5

THE WITNESS: Your Honor, I don't know.6

MR. LISA: Your Honor, he wasn't hired until a year7

and a half ago or two years ago.8

THE COURT: Okay. Well, I wanted to make sure I9

understood --10

MR. LISA: I mean Dr. Hunt.11

THE COURT: Pardon?12

MR. LISA: Dr. Hunt. Dr. Hunt was only hired for13

this lawsuit with Cognex --14

THE COURT: All right. I just wanted to make sure I15

understood the witness' comment then about the connection. I16

was a bit puzzled on that.17

So what would explain then -- I don't understand18

your testimony. What would explain Hunt's awareness of19

Lemelson?20

THE WITNESS: Your Honor, I was just surprised,21

reading through the authors, that his name came up. I didn't22

think it through.23

I also don't know when the reference to Lemelson was24

added during the prosecution of the patent. It could have25

HORN - CROSS0043

been after the time it was submitted.1

THE COURT: Between '93 and the date of the patent,2

November '95?3

THE WITNESS: Yes.4

THE COURT: Okay.5

BY MR. LISA:6

Q But the assumption you made, sir, was that, because7

Lemelson was cited in the patent application process, Dr. Hunt8

might have been aware of Lemelson before these lawsuits,9

right? That was the assumption or conclusion you were10

drawing, right?11

A Actually, I wasn't yet drawing any conclusions. I was12

just startled to see his name there and trying to connect it13

somehow.14

Q I think you said that might explain why he heard of15

Lemelson, right?16

A Yes. I didn't know when your connection with Dr. Hunt17

started. For example, you might have had a connection with18

him in previous cases.19

Q Sir, I believe you had testified in your direct that you20

didn't see that there was any relationship between Mr.21

Lemelson's inventions and bar code scanning, right?22

A Yes.23

Q And would it surprise you then that Mr. Lemelson's24

patents are being cited by Patent Office examiners against bar25

HORN - CROSS0044

code applications and patents?1

A It would surprise me.2

Q All right. And, in fact, the fact that Mr. Lemelson's3

patents are being cited by Patent Office examiners in bar code4

manufacturing or bar code scanning patents, is inconsistent5

with your conclusion that Lemelson's patents have nothing to6

do with bar code scanning, right?7

MR. JENNER: Objection, Your Honor, foundation.8

THE COURT: Overruled, if the witness can -- does9

have a basis for responding.10

Go ahead.11

THE WITNESS: In later patents Lemelson tried to12

obtain bar code claims so that someone doing a search might13

have come across that and decided to include those patents14

simply for that reason.15

BY MR. LISA:16

Q Do you know, sir?17

A I didn't read the prosecution history of the cases since18

you haven't even told me what these are.19

Q Were you aware, as a result of the searches that you did20

on your own online, that some of those patents that were21

citing Mr. Lemelson's patents-in-suit in fact were bar code22

patents, sir?23

A As I indicated, I focused on the machine vision part24

of --25

HORN - CROSS0045

Q So the answer then is no, you did not know?1

A Sorry, I did not know what?2

MR. LISA: Well, what I'll do, Your Honor, is have3

these patents available for review at the next break. We can4

present them to counsel and we'll ask more questions after5

they've had a chance to review them.6


BY MR. LISA:8

Q Now while still on the subject of pioneering inventions,9

you identified -- I think you mentioned the Wright Brothers10

and the airplane as one of the pioneering inventions that --11

THE COURT: I think, actually, I probably raised the12

airplane as a pioneering invention and the witness, as I13

recall, agreed that that would be an example.14

MR. LISA: Well, then --15

THE COURT: But there were other --16

MR. LISA: There were. Thank you, Your Honor.17

BY MR. LISA:18

Q And you referred to how interesting that was since Fish &19

Neave had represented the Wright brothers, right?20

A Yes, as I understand.21

Q Can you tell me how far the Wright brothers' airplane22

actually flew?23

A I don't know the exact distance, but it was the order of24

100 feet or something.25

HORN - CROSS0046

Q All right, certainly not very practical as a form of1

commercial or even private aviation, right?2

A But it was the beginning of a long development,3

incremental evolutionary development, from that device to4

something practical.5

Q And, in fact, some of those fundamental and practical6

inventions, even though the plane only flew on the order of7

100 feet, had a --8

A But the basic principle worked.9

Q And those basic principles and those basic fundamentals10

were carried forward into later inventions and later -- in the11

airplanes that later became commercially significant, right?12

A That's correct.13

Q And, in fact, the Wright brothers -- or do you know14

whether the Wright brothers were engaged in significant legal15

battles over their patents?16

A Well, apparently, from the letterhead of Fish & Neave, I17

gather there was a major battle over it.18

Q All right. And do you know some of the background on19

whether or not there were industry-wide smear campaigns20

against the Wright brothers and things such as that? Have you21

read that before?22

A I'm not familiar with that.23

Q All right, but we can agree that the fact that the plane24

wasn't practical or useful --25

HORN - CROSS0047

A I didn't say that.1

Q Well, it only flew a hundred feet, sir, right?2

A It was a working prototype.3

Q All right. So then I take it one of the bases upon which4

you decided that Mr. Lemelson's patents were not pioneering5

was the fact that he didn't make a working model, is that6

right?7

A No, that you couldn't make a working model.8

Q And that, of course, is the opinion -- And you've laid9

out your opinions as to why you believe that to be true on10

direct, right?11

A Yes.12

Q But you do agree with the fact that the airplane that was13

built by the Wright brothers was not a practical or useful14

device for commercial aviation?15

A No. We just said that's not what I said.16

Q Well, was it, sir, in the form that they built it,17

modeled it and patented it, a commercially useful device?18

A It was the beginning of the development of a commercially19

useful device. It was a working prototype. There was a20

continuity of development from what they had to what was later21

a commercially useful device.22

Q And some of those inventions that they had are still23

being used today, aren't they, sir?24

A Sorry, some of the inventions --25

HORN - CROSS0048

Q That the Wright brothers had, some of their developments,1

are still being used today, right?2

A Yes, that's true.3

Q All right. Now would you consider the transistor to be a4

pioneering invention?5

A Yes.6

Q Do you know who invented it?7

A Kirby at Bell Labs.8

Q Do you know how big the transistor was that they invented9

or how slowly it switched?10

A I'm somewhat familiar with that since I worked with early11

experimental transistors myself.12

Q But you would agree that they had some very fundamental13

inventions that they made, right, in transistor design?14

A Yes, and there's continuous development starting from15

there. They had something that worked and there were16

incremental improvements to do additional things.17

Q Okay. And those later developers and innovators followed18

off of those basic and fundamental inventions in the19

transistor, right?20

A That's correct.21

Q How about Bell's telephone, would you consider that to be22

a pioneering invention?23

A Yes.24

Q And do you know how much noise there was in Bell's first25

HORN - CROSS0049

telephone transmission?1

A I don't have a specific reference to that.2

Q Your understanding was that it wasn't a very clear3

transmission, was it?4

A Fortunately, human beings are very good at dealing with5

noise in audio and video, where a machine trying to make a6

decision cannot tolerate noise.7

Q Sir, again, I'd just request, if you can, you first --8

you can explain your answers to the extent reasonable, but I9

would appreciate if you'd at least get me an answer to my10

question first, okay?11

A Certainly.12

Q Would you try and do that? Thank you.13

You certainly recognize that that transmission was a14

relatively noisy transmission in comparison to today, right?15

A Actually, I don't know that.16

Q You never heard recordings of it?17

A No. Are there recordings from that time? What would18

they be recorded on?19

Q You don't know one way or the other?20

A I don't know of any recordings of that time.21

Q All right. Do you have an understanding, sir, that --22

Well, let me ask you, why do you consider the telephone to be23

a basic or pioneering invention by Bell?24

A It was the solution to a long-known problem and it was25

HORN - CROSS0050

the beginning of continuity of development that had all sorts1

of implications.2

So it worked, it solved a longstanding problem and it was3

the basis of additional invention.4

Q And it was improved upon by others who continued to use5

his basic inventions, right?6

A Yes.7

Q All right. Now you said a moment ago that one of the8

reasons that you considered -- the fact that Lemelson's9

invention couldn't be built as a reason for why it wasn't10

pioneering, right?11

A That's one reason, yes.12

Q The fact that he didn't build one isn't a reason for13

concluding it's not pioneering, right?14

A I believe that's correct in the way the patent system15

works.16

Q All right. So we understand then, you do not --17

THE COURT: Well, your point is not critical of the18

fact that a model or prototype was not submitted, but it's19

your view, your opinion, that a working model could not have20

been constructed?21

THE WITNESS: That's correct, Your Honor.22

THE COURT: Okay.23

BY MR. LISA:24

Q And I take it, from your testimony, it's correct that the25

HORN - CROSS0051

fact that others continued to improve and incrementally build1

upon a basic invention doesn't take away from the pioneering2

nature of that basic invention, right?3

A Well, in fact, I guess it would indicate -- what's the4

word, it would make that invention even more important.5

Q Now when did you first hear of the term machine vision?6

A Probably in the mid-1960s from Marvin Minsky, who started7

the artificial intelligence laboratory at MIT.8

Q All right. And is it fair to say then that the field of9

machine vision did not exist as an independent field prior10

that, correct?11

A Well, there's a development of that term. There were12

related fields, such as character recognition, pattern13

recognition, image processing, what have you.14

Q But the field of machine vision, as you understand it,15

began in the early to mid-1960s, right?16

A I believe the term was first used then. I can't be17

certain about that.18

Q So the fact that Mr. Lemelson didn't say machine vision19

in his patents wouldn't surprise you if the term wasn't coined20

until the early sixties, right?21

A That's correct.22

Q And, likewise, do you know when the word bar code first23

started being used?24

A Well, I know there was some bar code related patents25

HORN - CROSS0052

going back to the forties. I don't think they used the term1

bar code, rather some other kind of identification mark.2

Q Do you know what kind of word they used to describe it,3

sir?4

A I believe they actually use different words in different5

patents.6

Q Do you know whether the term mark or marking was used?7

A I don't know.8

Q Is it fair to say, sir, that the field of machine vision9

actually developed several years after the filing of Mr.10

Lemelson's 1954 and 1956 applications, correct?11

A There's a continuum of related matters, such as the12

character recognition, which goes back to the 1940s, and some13

simple inspection techniques, which also go back then.14

As far as my involvement is concerned, it was the mid-15

1960s.16

Q But as far as talking about commercially significant17

machine vision practices and the industry that would have18

heard of Mr. Lemelson, that industry didn't develop until the19

mid-1960s, correct?20

A Well, in the early stages there were isolated inventors21

in various places. There wasn't, first of all, a concerted22

field that had a publication or that had that name, machine23

vision, at that time.24

Q Well, as far as a commercially significant industry.25

HORN - CROSS0053

A No. It was more in the nature of individual1

developments.2

Q My question was phrased in that manner, sir. What I'm3

trying to find out is at what point in time would have an4

industry have actually started to become commercially5

significant practicing what you understand to be the field of6

machine vision.7

A Okay. Well, I think that there were a few companies that8

entered into what we now call machine vision in the 1970s.9

Q So it wouldn't surprise you then that Mr. Lemelson's10

patents weren't being cited in the mid-sixties to early11

seventies if there wasn't a commercially significant industry,12

right?13

A I don't follow that. I mean, if someone is working in14

this nascent field, whether there's a huge industry or just a15

few individuals, whether or not they cite some material would16

be dependant on whether it was relevant, not on how large the17

industry is.18

Q Well, you certainly recognize that, if there's19

individuals, as you said, working here and there in an20

industry, there aren't going to be as many patent applications21

being filed as if -- or as when the industry becomes22

commercially significant, right?23

A There would be fewer patent applications.24

Q Right.25

HORN - CROSS0054

Now did you, in your review of the Lemelson file1

histories, notice that there were documents called "Requests2

for Access" to Mr. Lemelson's patent applications?3

A I don't recollect seeing those.4

Q Do you know that, when a patent application gets cited in5

an issued patent or issues as a patent, the file becomes6

available to the public?7

A I believe that's correct.8

Q And in forming your opinions on whether people in the9

industry would have heard of Mr. Lemelson, I take it then you10

didn't look to see whether people were filing requests for11

access, say in the mid-1960s, to Mr. Lemelson's patent12

applications, is that right?13

A I did not check on requests for access.14

Q Well, I'm going to hand you one of Mr. Lemelson's patent15

applications. Actually, we're going to go through several of16

them here and we're going to point out --17


I'm handing you Defendant's Exhibit 1932A.19

MR. LISA: Your Honor, a brief explanation of what20

this document is.21

This is a file history of the 1954 application and22

what occurred in this case is both plaintiffs and defendants23

independently ordered certified file histories and, not24

surprisingly, depending on when you ordered them, you may get25

HORN - CROSS0055

very different things. So what we did this summer was attempt1

to compare plaintiff's version with our certified versions and2

we put together what we have called a consolidated version,3

which was an attempt to provide to you the most thorough4

representation of what was contained in these file histories.5

THE COURT: All right, so it's updated as of what --6

what would be the operative date then?7

MR. LISA: Well, what it contains is everything that8

was in our certified file history, plus whatever additional9

documents were found in plaintiff's version of the certified10

file history, thereby providing to you a single document with11

the most complete record --12

THE COURT: Right.13

MR. LISA: -- of the Patent Office.14

THE COURT: But I take it the most complete record15

would be the most recently requested, am I right?16

MR. LISA: Sometimes, sometimes not. The documents17

get lost. And, in fact, that's one of the things. We had18

some back from the Ford case that were, in fact, more complete19

than what occurred now. The reverse is the ones that -- in20

some, when we had ordered them in Ford, the plaintiff's were21

more up to date.22

THE COURT: Okay. So this would recent as of -- or23

up to date as of what date?24

MR. LISA: As of the date --25

HORN - CROSS0056

THE COURT: 2002?1

MR. LISA: I would imagine the date the latest file2

history was ordered by either side and I can get you those3

dates.4

THE COURT: All right, just approximately.5

MR. LISA: But I would say approximately as of this6

year, maybe last year.7

THE COURT: All right, some time earlier this year.8

MR. LISA: Correct.9

THE COURT: Okay.10

BY MR. LISA:11

Q So, sir, I take it you've looked at the file history for12

the 1954 application, is that right?13

A Yes. And I guess I'm surprised that there's some14

question about exactly what it is. I kind of assumed that the15

file history was the file history.16

Q Well, as I just explained, sometimes, depending on who17

copies it, --18

MR. LISA: You even have errors in the Patent19

Office, Your Honor, if the clerk doesn't copy it correctly. 20

Everybody's human. So you'll find, as you get in this21

business, every patent case you get into, neither side has the22

same file histories.23

BY MR. LISA:24

Q I'd like you to turn to tab 5, sir, of Exhibit 1932A.25

HORN - CROSS0057

MR. LISA: And that's page 346 at the top, Your1

Honor.2

BY MR. LISA:3

Q And if you look there, sir, you'll see a document4

entitled "Petition to Inspect Abandoned Application." Do you5

see that?6

A Yes, I do.7

Q And you can see that here somebody in 1966 is seeking8

access to Mr. Lemelson's 1954 application. Do you see that?9

A Yes.10

Q Okay. And if you start turning the pages, sir, you'll11

see page after page after page after page of members of the12

public seeking access to Mr. Lemelson's 1954 application. 13

And, in fact, if you go all the way, I think to page 423,14

you'll see additional requests for access all the way down15

there.16

Do you see that?17

A Yes, I do.18

Q All right. Now, sir, when you testified that you didn't19

think members of the industry had heard of Mr. Lemelson, you20

weren't aware that all these requests for access were being21

made to his file, did you?22

A I wasn't aware of it. I'm not that surprised, since he23

mentions the abandoned application in another patent, so24

people would have wondered what it was all about and asked for25

HORN - CROSS0058

access. It doesn't necessarily mean that what they found was1

in any way relevant. It's simply that they read the number in2

his patent and thought to look it up.3

Q Do you know how much it costs to order a file history,4

sir, from the Patent Office?5

A I don't.6

Q But people wouldn't necessarily want to spend money7

unless they thought it was relevant, right, sir?8

A Well, since I don't how much it is, I have no basis for9

answering that.10

Q Now do you know whether any of these people that were11

seeking access to Mr. Lemelson's --12

THE COURT: Well, it might be helpful, this is13

cross-examination of an expert, hypothetically you could tell14

him approximately what it would cost and that might inform his15

opinion. What does it cost to -16

MR. LISA: In 1966 I have a hard time knowing. I17

know today some of these are as much as a thousand dollars18

($1,000) for some.19


MR. LISA: All right, so on the order of a thousand21

dollars ($1,000) today and dollars back then. How's that for22

an examination question, Your Honor?23

MR. JENNER: Your Honor, I will object to that. I24

mean, counsel now himself is speculating as to what the cost25

HORN - CROSS0059

was.1

MR. LISA: I think I was asked --2

THE COURT: You know, to the extent it's3

speculation, I mean, if you knew what it cost, then I would4

allow you --5

MR. LISA: I'll accept their --6

THE COURT: Hypothetically, assuming it cost a7

thousand dollars ($1,000), would that affect your opinion.8

MR. LISA: All right, I'll accept their number. 9

They've ordered the file histories.10

Do you want to give me a number, Jesse, and we'll11

ask the witness?12

MR. JENNER: We don't know what it cost in the13

1960s. For all I know, it was twenty dollars ($20).14

THE COURT: Really, the witness' opinion about that15

probably is not at all significant anyway.16

MR. LISA: Sure.17

MR. JENNER: May I state, Your Honor, in connection18

with your question, that the fact that there's a petition for19

access doesn't mean anybody made a copy of it. There's no20

evidence of that.21


MR. JENNER: You can go in and look at it and say,23

"I don't care about this," and throw it back on the shelf.24


HORN - CROSS0060

MR. LISA: That's right. You can send somebody to1

Washington and do that, right.2

BY MR. LISA:3

Q Now, sir, do you know whether any of these people are4

members of the machine vision industry that was developing in5

the mid-1960s?6

A Well, I wouldn't know that since you've just presented7

this to me now.8

Q So is it fair to say, sir, that when you formed your9

opinion that members of the industry didn't know about Mr.10

Lemelson you didn't consider whether or not those members of11

the industry were requesting and getting access to Mr.12

Lemelson's patent applications? Isn't that fair to say, sir?13

MR. JENNER: Objection, assumes a fact that the14

witness has just said he can't confirm.15

BY MR. LISA:16

Q All I asked is whether you considered it, sir.17

THE COURT: I'll let the witness answer whether he18

considered such a factor.19

THE WITNESS: Well, as I indicated, I haven't seen20

this, so I didn't consider it. I also I didn't consider21

whether they found it of any benefit whatsoever.22

BY MR. LISA:23

Q Now Mr. Lemelson's 1956 application issued as a patent. 24

Do you recall that?25

HORN - CROSS0061

A Yes.1

Q And that makes it automatically available to the public,2

doesn't it, sir?3

A Yes, it does.4

Q So at that point do you know whether you have to request5

access to see a file that's cited as the base file for an6

issued patent?7

A Sorry, to access the application you mean?8

Q To get a copy of the file history for an issued patent,9

all you have to do is call the Patent Office up and ask for10

it, right?11

A And pay for it presumably.12

Q All right. So do you know whether any members of the13

industry were requesting or making copies of Mr. Lemelson's14

1956 patent application after the '379 patent issued?15

A How would I know that?16

Q That's my point, sir. You don't know, do you?17

A I don't know.18

Q Thank you.19

Mr. Lemelson's 1963 application, that did not issue as a20

patent, did it?21

A Correct.22

Q All right. And, in fact, you cited extensively from that23

file history, right?24

A Yes.25

HORN - CROSS0062

Q So I take it you reviewed that file history carefully?1

A I reviewed that file history.2

Q Did you notice whether there were any requests for access3

to that file?4

A I don't recollect.5

THE COURT: So the record's clear, the 1956 file6

history was 1127A? It was a separate binder.7

MR. LISA: That was the 1956 application, correct,8

Your Honor.9

THE COURT: '54 was 1932A and '56 is 1127A?10

MR. LISA: That's correct, Your Honor.11

THE COURT: Okay.12

MR. LISA: And these will be referred -- I provided13

a whole copy because we're likely to begin referring to these14

frequently, Your Honor.15

THE COURT: All right. And 1931A is the 1963 --16

MR. LISA: '63 file history. Correct, Your Honor.17

THE COURT: Got it.18

BY MR. LISA:19

Q Now, sir, if you'd turn to tab 7 of Exhibit 1931A, you'll20

notice again that there are requests for access that precede 21

-- some of them dated '86, some '89. See that?22

A Yes. Again, I notice that people refer to patents in23

which this application is referenced.24

Q All right, so there were patents that issued that25

HORN - CROSS0063

reference this file, therefore making it available to the1

public, correct?2

A Yes.3

Q All right. Do you know whether any of these entities4

requesting access to the Lemelson 1963 application were5

members of the machine vision industry, sir?6

A Well, just paging through, I don't recognize any, but, of7

course, I haven't read through all of them.8

Q All right. Do you remember seeing these when you looked9

at the file history?10

A I may have run across them, but they weren't things that11

I paid a lot of attention to.12

THE COURT: Well, just so I'm clear, I take it,13

unless you happen to know the person, you would not have any14

way of knowing whether Cheryl Cutler or Noreen somebody were15

in the machine vision industry anyway, would you?16

THE WITNESS: Correct, Your Honor, since the17

companies they work for aren't listed or the -- but, you know,18

the people who were active in the machine vision industry tend19

to be people I know.20

THE COURT: Well, would they necessarily be, in your21

experience, those who request access? Would they be the22

actual -- Would you make that request yourself or would23

someone, a staff member, be doing that on your behalf or maybe24

an attorney doing it on your behalf through a paralegal or25

HORN - CROSS0064

secretary or somebody else making the actual request?1

THE WITNESS: Yes, I see what you mean, Your Honor. 2

Typically, in a large company, someone else would make the3

request.4

THE COURT: It wouldn't say IBM wants to look at5

this.6

THE WITNESS: Yeah.7

THE COURT: It would, as it appears here, be some8

individual.9

MR. LISA: Your Honor, at the risk of testifying for10

you, it's typically the practice that it's done anonymously11

through agents in Washington, D.C.12

THE COURT: Oh, all right.13

MR. LISA: Which makes the point.14

THE COURT: Well, that makes it even more difficult,15

doesn't it, to determine, for anybody?16

How would the witness then know whether these were17

people --18

MR. LISA: Well, some --19

THE COURT: -- interested in machine vision or20

interested in anything else?21

MR. LISA: Well, you could --22

MR. JENNER: Typically by lawyers, Your Honor, and23

typically done blindly and typically done after somebody's24

been approached about an infringement allegation.25

HORN - CROSS0065

THE COURT: Okay.1

MR. LISA: We accept Mr. Jenner's testimony.2

THE COURT: Okay. Well, I mean, again, this witness3

is not going to be able to help us with these requests for4

access. I mean, he's, you know, two or three levels removed5

from that.6

BY MR. LISA:7

Q Now, sir, we had briefly addressed last Friday what you8

had done in preparation for providing your expert reports. Do9

you recall that?10

And you can stack these on the side to get them out of11

your way if you want. That's going to end up falling and 12

then --13

THE COURT: Well, that will be all right.14

In fact, Donna, do you want to go ahead and grab15

those maybe?16

MR. LISA: We're going to be referring to them17

today, Your Honor, so --18

THE COURT: Yeah. She won't take them away. She'll19

just put them some place safe.20

MR. LISA: Okay.21

BY MR. LISA:22

Q I think we agreed last week, sir, that you had spent23

about 220 to 230 hours before you were deposed in June, is24

that right?25

HORN - CROSS0066

A I believe that's approximately correct.1

Q And over the weekend did you perhaps look back to confirm2

that?3

A No, I didn't.4

Q And what I'd like to do, if we can, is to try and5

investigate exactly how much time you spent on certain of the6

issues for which you've formed opinions and offered testimony7

on direct examination.8

To be clear, is it your testimony that you actually9

substantively reviewed and studied everything that was10

presented in your expert reports?11

A I'm sorry, did I study everything that was represented in12

my -- yes.13

Q All right. And I take it that you actually helped14

substantively prepare those expert reports, right?15

A Yes. There are large parts that I drafted myself and16

other parts where it was an interactive process.17

Q And is it fair to say that down to the level of each18

paragraph you carefully looked at each representation or19

statement you made in those expert reports?20

A Yes. Of course, that's quite a while ago.21

Q All right. So when certain text was selected from22

Lemelson's specifications or file histories or patent23

prosecution documents, you helped make that selection?24

A In most cases, yes.25

HORN - CROSS0067

Q And I take it you checked to make sure that the documents1

accurately reflected what you wanted them to reflect by way of2

citing and quoting out of the Lemelson patents, is that right?3

A Well, yeah, modulo the typos I introduced.4

Q So aside from typos, substantively you are unequivocally5

adopting what you said in your expert reports, right?6

A Yes.7

Q And, likewise, with the summary charts that were8

presented to the Court on your direct examination, is it your9

testimony that you substantively reviewed and confirmed the10

accuracy of each of those charts?11

A Yeah. Could you be specific which charts you're talking12

about?13

Q The summary charts that you used on your direct14

examination.15

A Okay, yeah.16

Q And it was in the volume -- your witness exhibit book 1. 17


A Yes.19

Q All right. So you actually made an attempt to confirm20

that each place you cited the Lemelson patents or the file21

histories agreed with what you wanted to be said, right?22

A Yes.23

Q And the titles and intent of the statements made were24

your statements, right?25

HORN - CROSS0068

A Yes.1

Q Now, at the time that you were deposed in June, I asked2

you a series of questions in your deposition about how you had3

allocated your time. Do you recall that?4

A Yes. You were trying to pin down how many hours I used5

on various parts of the endeavor.6


Q I have a chart that I'm going to put up here for you to8

look at.9

MR. LISA: Actually, we don't have an exhibit number10

on this yet, do we?11

THE CLERK: Yeah, we do.12

THE COURT: Would it be next in order or was it13

premarked?14

MR. LISA: It's going to be the next in order,15

unless we did mark it.16

MS. CURTAIN: It should be 2199.17

THE COURT: 2199, okay.18

THE CLERK: And there's an A, B, C, D, E and F?19

MR. LISA: And that's wrong.20

(Colloquy between Mr. Lisa and Clerk)21

MR. LISA: Plaintiff's exhibit -- I mean,22

defendant's exhibit?23

THE CLERK: Defendant's exhibit.24

MR. LISA: Let's do just 2200. Would that be right?25

HORN - CROSS0069

THE CLERK: 2200 is already --1

MR. LISA: Well, I'll let them decide. I'm not very2

good at this part.3

THE COURT: Okay.4

MR. LISA: What was the number?5

THE CLERK: 2199.6


THE COURT: All right, 2199. All right.8

BY MR. LISA:9

Q Now what I'd like to do is just confirm that what's shown10

on 2199 is, in fact, representative fairly of what you11

testified in your deposition.12

A I have no way, sitting here, to confirm that.13

Q We're going to walk through it, sir, just to make sure,14

all right?15

THE COURT: Why don't we do this. Let's go ahead16

and take our morning recess. The witness can look at the17

deposition excerpts you're talking about and then come back18

and counsel can too. If it's accurate and it totals up to19

130, based upon at least what's contained in the deposition,20

then we can cut out a lot of time on the record.21

MR. LISA: That would be fine with me, Your Honor.22

THE COURT: All right? All right.23

THE WITNESS: Excuse me, may I have a clarification? 24

Am I supposed to be looking at these exhibits also?25

HORN - CROSS0070

THE COURT: I think counsel will look at them, Mr.1

Jenner and Mr. Lisa at least, and perhaps with you, and then2

you can determine whether that's an accurate accounting.3

MR. LISA: We can delay the patents to after lunch. 4

I'd like to move the testimony along, so we'll --5

THE COURT: Well, yeah, or take the time right now,6

over the next 15 minutes, along with your break, to just7

verify it. It shouldn't take a long, long time, but I'd8

rather do it that way than sit here and go through them 289

hours, 28 hours, 43 hours and so forth.10

All right.11

(Court recessed at 10:01 a.m. until 10:25 a.m.)12

THE COURT: All right. My clerk advised me the13

chart before the witness has been remarked to 2221?14

MR. LISA: Yes, Your Honor. We --15

THE CLERK: Yes, Your Honor.16

THE COURT: Yeah. Okay. 17

MR. LISA: -- had the wrong number on it.18

THE COURT: All right. 19

MR. JENNER: Your Honor? Before we begin.20

THE COURT: Yeah, Mr. Jenner.21

MR. JENNER: -- yesterday afternoon, we went through22

a number of the chart-type exhibits that were used with the23

witness, and we found in a number of instances typographical24

errors, quotation marks in the wrong place, words transposed 25

HORN - CROSS0071

and so on.1

THE COURT: Okay. 2

MR. JENNER: But what we have done is to try to3

correct as many of those as we could. I've got a set of them4

for the Court, I've got a set of 'em for counsel -5

THE COURT: Good.6

MR. JENNER: -- and I'll just hand them over.7

THE COURT: Okay. Great. Then later on those can8

be looked at and corrected. You've all got a lot of material9

to look at. 10

Let me just ask the Doctor while we've got him here,11

counsel mentioned what they did, but did you participate in12

that as well?13

THE WITNESS: No.14

THE COURT: In the revising of the charts?15

THE WITNESS: No. I was given --16

MR. JENNER: I don't think we changed anything. I17

don't -- we don't think we changed anything substantive. 18

These were typographical errors --19

THE COURT: I see.20

MR. JENNER: -- that we had a bunch of people pick21

up by going back and comparing the charts with the source22

material so that if there -- as I say, if there was a23

quotation mark in the wrong place or if there was a --24

THE COURT: I've got you. In the various boxes25

HORN - CROSS0072

then. It didn't change the actual illustrations?1

MR. JENNER: We don't think so, no. The2

illustrations are not changed at all.3

THE COURT: Okay. 4

MR. LISA: Your Honor, one of the things that -- and5

obviously we've not seen that, it's -- what they say is not6

substantive, for example, when you cut off 20 words and start7

a paragraph -- a sentence with a capital A and put a quotation8

there --9

THE COURT: Right.10

MR. LISA: -- that's a substantive misrepresentation11

in my review. And I don't know what they've done, but I can12

guarantee you we've looked at a lot of these charts and there13

are -- there's words inserted where they shouldn't be, and14

there's going to be a battle over this is what my guess is.15

THE COURT: Okay. Well, we'll -- we'll address16

that, but I don't want to take up this witness's time with it17

if it's not something he worked on, so --18

MR. LISA: I just asked him the questions, Your19

Honor. He said these are the charts he reviewed and did.20

THE COURT: They are. I asked whether he21

participated in the revisions of them.22

MR. LISA: So, I'm going to ask questions based on23

what was presented to Your Honor by this witness. 24

THE COURT: Oh, sure. Sure.25

HORN - CROSS0073


THE COURT: And then if it turns out there's2

something misquoted, we can address it in that context, but go3

ahead.4

MR. LISA: Okay. 5

THE COURT: Well, you'd forewarned of this earlier6

on with your concerns about portions being taken out of7

context and what not. All right. 8

CROSS-EXAMINATION (Continued)9

BY MR. LISA: 10

Q Before turning back to your hours, sir, there is11

something I forgot to address that I was reminded to address.12

I'd like to do that.13

And I'm going to hand you -- actually, let me first ask14

you, did you do any literature searches to see if any books or15

articles cited Mr. Lemelson before forming your opinions as to16

whether he should be classified as a pioneering inventor or17

not?18

A Yes, I did. To refresh my memory since I'm familiar with19

most of the literature in machine vision.20

Q All right. And did you happen to find that Mr. Lemelson21

-- that there was some -- a book and an article written about22

Mr. Lemelson?23

A In the machine vision literature, you mean?24

Q No, sir, just in the -- a book that included a chapter on25

HORN - CROSS0074

Mr. Lemelson and an article in Design News in which he --1

A I didn't run across those.2

Q All right. Well, I'd like to hand you Defendant's Trial3

Exhibits 1930 and 1021. And while that's being done, so that4

the record is clear, your opinions regarding whether he was a5

pioneering inventor or not did not include consideration,6

then, of any published book or article; correct? Yes or no.7

A I may have read some articles such as the one in Fortune8

Magazine.9

Q How is it that you came across that article, sir?10

A I don't recall. I found it on the web. You do a search11

and that's one of the things you find.12

Q Okay. Well, sir, I ask you to look first at Defendant's13

Trial Exhibit 1930. Have you seen that book before, sir?14

A No, I've not.15

Q Well, I ask you to turn to the table of contents, and16

there's several pages there of inventors listed. Do you17

recognize any of those names, sir?18

A Yes. Steve Wasniak [phonetic] who was also elected to19

the National Academy of Engineering as I was this year.20

Q How about Jacob Rabinough [phonetic]? Do you recognize21

that name?22

A Right now I draw a blank. I guess I see Raymond23

Kirtzwell [phonetic] who I recognize.24

Q The third page, Gordon Gould [phonetic], the inventor of25

HORN - CROSS0075

the laser, do you recall that?1

A Yes.2

Q All right. And do you see that Mr. Lemelson's name is3

included there?4

A Yes.5

Q All right. And this article, this book was published in6

1988? Do you see that?7

THE COURT: Well, it's hard to find, but it was.8

MR. LISA: It's on the second page, Your Honor. I'm9

sorry.10

THE COURT: Yeah.11

BY MR. LISA: 12

Q Copyright 1988 by Microsoft Press, do you see that?13

A Microsoft Press, one of the world's more famous14

publishers.15

MR. JENNER: Your Honor, I would have what I assume16

is a correctable objection based on completeness. Apparently17

what we have here is excerpts, and unless something -- unless18

I'm misunderstanding something, the page -- well, maybe it's19

'cause pages are out of order --20

MR. LISA: Well --21

MR. JENNER: -- but certainly the section I have on22

Lemelson goes from a page that's unnumbered, but from the23

table of contents I take to be page 121. The next page I have24

is page 146, but then I see there are more pages after that,25

HORN - CROSS0076

so maybe it's all here, I don't know.1

THE COURT: I think it just -- it ends at 145. Mine2

does the same thing. It's just a matter of xeroxing, I think.3

MR. JENNER: All right. So maybe -- maybe it's all4

here.5

MR. LISA: And, Your Honor, we have --6

THE COURT: One page got misplaced.7

MR. JENNER: All right. 8

MR. LISA: And we have the original book, there is9

no page number --10

THE COURT: Yeah.11

MR. LISA: -- on the cover page of the book.12

MR. JENNER: Okay. Looks like it's just out of13

order. All right. 14

BY MR. LISA: 15

Q Now, you would agree that somebody, obviously, made a16

determination to include Mr. Lemelson in a book about 1617

notable American inventors; correct?18

A Well, I can't speak to how they make that decision, and19

since I don't recognize quite a number of these people, I20

can't really comment on how they picked them.21

Q And in doing your Internet searches, you didn't come22

across the Design News article about Mr. Lemelson?23

A No, I don't remember it. Let me just take a look,24

please.25

HORN - CROSS0077

Q This is Defendant's Trial Exhibit 1021.1

A I don't believe I've seen this. No.2

Q Have you ever read Design News, sir?3

A On rare occasions.4

Q But even you've read it on occasion, right?5

A On rare occasions.6

Q That means on an occasion, right, sir?7

A It means on rare occasions.8

Q Define rare, sir?9

A Not often.10

Q Thank you. Now, you know how an individual gets elected11

as the engineer of the year by the Design -- to be -- with12

Design News?13

A No, I don't.14

Q You don't know that it's the readers who elect the15

engineer of the year?16

A I don't know that.17

Q Well, obviously you didn't consider Defendant's Trial18

Exhibit 1021 in your consideration of whether Mr. Lemelson was19

a pioneering inventor; correct?20

A No. What I considered, as I told you, was whether it was21

the basis of an invention that actually worked, whether it led22

to additional developments, whether it was the basis of23

machine vision as I know it, and whether somebody in a24

publication of this sort decides to write an article about Mr.25

HORN - CROSS0078

Lemelson wasn't a very important consideration, in my mind.1

Q Well, actually, it wasn't somebody, sir. The readership2

elects this person. Are you aware of that?3

A I doubt whether the readership is particularly conversant4

with machine vision or its history?5

Q You know how many readers the subscription circulation is6

for this magazine, sir?7

A Since it's a very general coverage magazine, the8

subscription base would be quite large, but probably wouldn't9

include a large fraction of machine vision people.10

Q It would certainly include engineers, wouldn't it, sir?11

A I would imagine.12

Q And like you said, the circulation for this type of a13

magazine is quite large, right?14

A Yes. There are several of these kinds of trade magazines15

which have broad coverage.16

Q Now, during our break, did you get the opportunity to17

look at Defendant's Exhibit 2221 to see if the estimate of18

ours was correct?19

A Well, in a rather hurried way. I went to the particular20

citations you've indicated, and I imagine there are others21

that you didn't indicate that I missed, but the chart you've22

presented is, first of all, inaccurate and I can go over23

details of it, and then throughout the discussion in the24

deposition, I made it clear that I did not refer to accurate25

HORN - CROSS0079

records of time. In fact, I didn't keep accurate records1

saying how much I spent on one topic or another, and therefore2

my estimates were just that, estimates. And in some cases3

quite wide, such as more than one day, less than one week. 4

And so these are merely estimates, they're very5

inaccurate, and in reviewing them, I have to say that I seem6

to have a tendency to underestimate, which I've been told I'm7

not charging enough because I tend not to put down all the8

hours that I spent.9

Q Would you like to change any of the numbers so we can10

have an accurate -- reasonably accurate description, sir? 11

Which ones are in error? And I have a marking pen and 12

you've --13

A Well, let me first say that my recollection now, of14

course, is going to be even more inaccurate than it was then,15

but just going back to the deposition record to the places you16

indicated, I noted a number of problems. One is that in the17

first item, you say two days each. Well, it actually says two18

to three days.19

Q So, would you like to increase that at all?20

A I'm just pointing out that it's inaccurate. Then in 21

the --22

Q Okay, let's back up. If it's inaccurate, it's inaccurate23

because it's low, right? Is that right, sir?24

A It's inaccurate, and it's likely -- it's more likely that25

HORN - CROSS0080

it's low than that it's too high.1

Q Well, let me make a little mark on here that says low. 2

My handwriting is horrible.3

MR. JENNER: Your Honor, may I just approach and4

just put -- to see what --5

THE COURT: Sure. Yeah. Just the words -- or the6

word "low" is written.7

MR. LISA: Not very well, but it's there.8

THE COURT: L-O-W. I can read it.9

THE WITNESS: Then in the second time where you10

quote me as saying "equivalent," it actually said probably11

similar, and it followed some text saying "harder to pin down12

a number." As you recollect, I had a hard time coming up with13

numbers, and you pressured me into saying, well, is it less14

than this, or more than that, and so on.15

BY MR. LISA: 16

Q Well, lt's stop there.17

THE COURT: Let me see if I can save some time. I18

take it you're being paid at a certain rate per hour for your19

time? Am I correct?20

THE WITNESS: That's correct. 21

THE COURT: Do you provide a billing of any kind for22

which you are paid?23

THE WITNESS: Yes. And I'll --24

THE COURT: How -- how regular a basis do you bill?25

HORN - CROSS0081

THE WITNESS: Once a month, or sometimes once every1

two, three months.2

THE COURT: Okay. And have you kept copies of the3

billings that you've submitted?4

THE WITNESS: I don't know. I imagine that5

efficient --6

THE COURT: It just seems to me it would be a lot7

simpler to look at billing sheets, or whatever is used, to8

know how many hours were spent rather than trying to speculate9

on whether, you know, I spent six hours or ten.10

THE WITNESS: Well, if I may, Your Honor, my billing11

is not broken down on, you know, I spent two hours on this,12

three hours on that, it's more along the lines of I was at13

Fish & Neave in New York for that day and we discussed the14

upcoming deposition. There was -- it's not at this level of15

detail.16

THE COURT: I understand it wouldn't break down17

according to reviewing asserted prior art or the 5418

application. Is that what you're driving -- you find it19

essential to drive at these particular sub-groupings of --20

MR. LISA: Your Honor, what we intend to show, and21

I'm more than happy to say it is, if this number is low,22

that's fine. That leaves a hundred hours maximum for Dr. Horn23

to prepare all these papers. And that's what I want to go to,24

is to see --25

HORN - CROSS0082

THE COURT: Okay. Go --1

MR. LISA: -- what he's done --2


MR. LISA: -- and so this is not preparing the4

expert reports, this is what he testified in his deposition5

was done before the reports were written.6

THE COURT: Okay. Go ahead.7

BY MR. LISA: 8

Q So, do you think you spent more time reviewing the9

asserted claims, or less time, sir, than 28 hours? And I'll10

let you go either way, you can best estimate.11

A I have no idea. I mean, as I indicated then, I wasn't --12

it was hard to pin down that number and now even more time has13

passed.14

Q But the best you could say at your deposition, though, at15

page 28 when you were asked the question:16

"And then in terms of the patent claims, how much time17

did you spend?18

"Answer. Well, probably similar amounts since there are19

many claims for many patents. It would be harder to pin20

down a number because I wouldn't sit down at one go and21

read front to back" as you did with the common22

specification, right?23

A Yeah, that's what I said.24

Q So, the best you could estimate under oath was it was25

HORN - CROSS0083

about the same, right?1

A Yes.2

Q All right. So, roughly 28 to 35 hours, right?3

A Roughly the same.4

Q All right. Now in reviewing the 1954 application, you5

said it was more than one day and less than one week, right?6

A Yes.7

Q So, to put down a minimum of eight hours would be the8

least amount you spent reviewing the specification, right?9

A That's correct. 10

Q All right. And so, if you'd like to put more hours11

there, it takes away some from the preparation of the reports. 12

Do you want to put more hours there or less?13

A Really, you know, as I indicated, I can't make it -- I14

can't make a more accurate determination now than I could15

then.16

Q Well, then we'll leave it at at least one day and eight17

hours, is that fair, sir?18

A As a -- sorry. As a minimum that --19

Q Okay. 20

A -- you're working on minimums, okay?21

Q Now there were 43 prior art references that you22

identified in your expert reports. Do you recall that?23


Q In fact, you provided several hundred claim charts where25

HORN - CROSS0084

you showed where in your view these 43 pieces of prior art1

allegedly rendered invalid because they were obvious or2

anticipated the various Lemelson patent claims that were3

asserted. Do you recall that?4

A Yes.5

Q Okay. So, you certainly had to sit down and look at each6

of these pieces of prior art and study them in sufficient7

detail to understand them before you could write the8

invalidity charts, right?9

A Yes.10

Q All right. And is the 43 hours that we've put down there11

a reasonable estimate based on your deposition testimony as to12

that subject, sir?13

A Again, I can't now recall any more accurately than I did14

there.15

Q So, the best you could do was what you said back then,16

and that's accurately reflected as a minimum there on Exhibit17

2221; right?18

A Well, you multiplied the one hour by 43. I don't know if19

that's accurate.20

Q Well --21

A Some were less, some were more, I don't recall. There22

might have been some, for example, where there was some23

commonality between two patents which would have saved time,24

and so on.25

HORN - CROSS0085

Q And some were significantly more, like the [Kronstad1

reference which you said in your deposition you needed six2

hours to review. Do you recall that?3

A I don't recall that, but it was more difficult --4

Q All right. So --5

A -- than the others.6

Q So putting 43 hours down is probably conservative in your7

view, right, sir?8

A Well, again, I can't give you any more accurate9

information now than I did then.10

Q Well, would you hesitate to say that you prepared claim11

invalidity charts based on less than at least a reasonably12

thorough review of the piece of prior art?13

A I definitely looked at the prior art.14

Q And you read them and you understood them and you talked15

to counsel about them before preparing your invalidity charts,16

right?17

A Yes.18

Q And you're going to say it took you less than an hour to19

do that for each reference that you asserted invalidity charts20

for?21

A Well, keep in mind that in many cases you do not need to22

thoroughly understand all aspects of the patent because, as23

for example, in Rochester, there could be huge sections of the24

patent that have nothing to do with what we're talking about25

HORN - CROSS0086

here.1

Q Sir, is it your testimony that you presented claim2

invalidity charts in this case in your expert reports on less3

than a thorough review of the prior art?4

A It was a thorough review. What I'm saying is that the5

aspects of a patent that might -- might talk about6

manufacturing of plastics or something that had nothing to do7

with the prior art.8

Q Well, let's ask it this way then. Is it fair to say that9

in reading each of the pieces of prior art that you included10

claim charts for, that you spent at least an hour looking at11

the parts that were relevant to the Lemelson specification and12

claims, understanding how those systems operated, and talking13

to your -- to counsel before preparing the charts?14

A Well, again, I can't give you any more accurate15

information than I did that. In fact, it'll tend to be less16

accurate since more time has passed.17

Q So then you have no reason to disagree with the number18

that's set up there on Exhibit 2221, correct?19

A It's a -- it's a very rough guess that we somehow arrived20

at during the deposition.21

Q What you said in your deposition was that the range that22

you had given for the prior art that you had identified in23

your deposition was between one to six hours for the prior art24

that we talked about in your deposition; right?25

HORN - CROSS0087

A Well, I don't have my deposition in front of me, but I'll1

take your word for it.2

Q All right. Now in addition, in preparation for preparing3

your expert reports, you said in your deposition that you met4

with counsel, right?5

A That's correct. 6

Q All right. And do you have a problem with the twenty7

hours there?8

A Well, I took several trips to New York. Again, if that's9

what I guessed at that time, that seems reasonable. Again, I10

don't have any new information on that.11

Q All right. And you certainly were firm, I think, in your12

view that it was a morning meeting that you had at Cognex13

about three hours, right? Do you recall that? Had one14

meeting at Cognex where you viewed the demos and talked to Mr.15

Silver and that was a morning?16

A Yes. I think the demonstration part of it was the17

morning. I don't know if we stayed for lunch. I forget.18

Q Well, then it might be that it was more than three hours,19

right?20

A Well, three hours, I guess, sounds about right.21

Q So, is it fair then to say that this estimate based on22

your deposition testimony under oath is the best you can come23

up with and probably conservative; right, sir?24

A Well, it's the best that during the deposition we could25

HORN - CROSS0088

estimate in a gross way what these numbers were.1

Q And it's probably conservative, if anything, right, sir?2

A Probably.3

Q All right. 4

MR. LISA: What I'd like to do is put on the board5

what we've marked as Defendant's Exhibit 2221.6

THE COURT: Well, 2221 was actually --7

MR. LISA: I'm sorry.8

THE COURT: -- the last one.9

MR. LISA: 2221A. I'm sorry.10

THE COURT: 2221A. Okay. 11

BY MR. LISA: 12

Q And you'll notice, sir, that in -- on Defendant's Exhibit13

2221A, we've allocated 120 hours remaining after your 130 in14

which you were to perform the remaining tasks that you carried15

out that you didn't identify in your deposition that were done16

before your deposition. And do you see the heading on top,17

"Other activities Dr. Horn did in remaining 120 hours"; do you18

see that?19

A I'm sorry. You talking about the one we just had a20

minute ago?21

Q Well, the one we just had a minute ago so that you had --22

A Oh, okay.23

Q -- approximately --24

A No, I know --25

HORN - CROSS0089

Q -- 130 hours and we pumped your time up a little from 2201

or 230 to 250 and subtracted that and came up with a generous2

120 hours left; do you see that?3

A I see the heading.4

Q All right. And just so you know where that number came5

from, I don't want you to be misled. You had said in your6

deposition it was about 250 hours; you later clarified that at7

220 to 230 based on your billing, right?8

A Something along those lines.9

Q All right. And we've estimated probably conservatively10

130 hours on Exhibit 2221, which, if we did all that right,11

you'd only have 100 hours left, but we've put 120 up there. 12

Do you see that?13

A Yes.14

Q All right. Now what I'd like to do if we can is take a15

look at what you actually prepared in those hundred hours, all16

right?17


MR. LISA: Is this the microphone that I can carry19

with me here, do you know?20

THE COURT: Should be. Well, let Erica tell us. 21

Does that -- 22

MR. LISA: Next thing you know I'll pull it out of23

its --24

THE COURT: -- does that one travel?25

HORN - CROSS0090

MR. LISA: -- I'll pull it out of its socket.1

(Off-record colloquy)2

MR. LISA: How about if I just talk loud then?3

THE COURT: Well, I have no trouble hearing you when4

you do that, it's -- again, it's the sensitivity of the -- as5

somebody pointed out earlier, you know, humans can sort out6

noise and other things that obscure, the machines cannot, and7

our equipment doesn't always do a great job of even picking me8

up, and I'm pretty loud usually.9

BY MR. LISA: 10

Q All right. Now, Dr. Horn, one of the things you had to11

do after reviewing the various materials was to prepare your12

opening expert report. Do you recall that?13

A Yes.14

Q And that was on invalidity and unenforceability. Do you15

recall that?16

A Unenforceability. Yes. Okay. 17

Q All right. And you also provided an expert report on18

claim construction in that original expert report, right?19

A Yes.20

Q Okay. And to put that in perspective, there are roughly21

75 to 80 claims at issue, right?22

A Seventy-seven.23

Q All right. And so, what you did was to prepare a24

detailed statement of all the reasons why you thought25

HORN - CROSS0091

Lemelson's system wouldn't work; right?1

A I had a detailed statement of some of the reasons. I2

didn't put all of them in there.3

Q All right. But it was roughly 70 pages of why it4

wouldn't work, right?5


Q All right. But you did, in fact, take a look at the7

Lemelson specification and write a report outlining many of8

the points you identified here on direct examination about why9

Lemelson's system won't work, right?10


Q All right. And at that time you also had Dr.12

Williamson's claim construction and his claim support charts,13

right?14

A I believe that's true.15

Q All right. So you reviewed them and provided a detailed16

response on claim construction for each of the 77 claims,17

right?18

A Yes.19

Q All right. And that, for the record, is attached as20

Exhibit B to your expert report, which is Defendant's Trial21

Exhibit 193. 22

MR. LISA: Your Honor, we are not going to move23

these into evidence. So I'm just going to refer to them for24

the record so that we have them.25

HORN - CROSS0092


MR. LISA: All right?2

BY MR. LISA: 3

Q And then you prepared a statement on why Lemelson's4

system emphasizes prepositioning, right?5

A Yes.6

Q And then you had a very detailed three-volume set with7

several hundred claim charts, detailed claim charts like you8

had in the court for each of the 43 pieces of prior art9

reference that you asserted identified against the various10

claims, a total of about 400 charts; right, sir?11

A Yes. It may help to explain that there's a lot of12

commonality in the charts where items were copied over from13

one to the other. So the volume is, if you like, bloated by14

that process.15

Also, as you know and as I stated in the deposition, with16

the charts I had a lot of help from counsel, and while I17

reviewed the charts, I didn't lay them out, I didn't have the18

templates to do that kind of word processing.19

Q Well, aside from the word processing, though, you20

certainly looked at the substance of every chart, right?21

A Yes.22

Q In order to determine that there was commonality between23

the 77 claims as applied to the 43 references, you certainly24

had to spend time looking at each claim, each element and each25

HORN - CROSS0093

piece of prior art, right?1

A Yes.2

Q And then on top of that, you worked back and forth with3

counsel to make sure that whatever word processing was done4

accurately reflected your views, right?5

A That's correct. 6

Q All right. Do you have some estimate, sir, of how much7

time you spent preparing just those several hundred invalidity8

charts based on the 43 prior art references?9

A I wish I did, but I don't.10

Q So, of the 120 hours that are left, you have no idea?11

A That's correct. I would be guessing.12

Q Okay. Well, you know, you still have double patenting13

that you did as well?14


Q Do you know if you spent -- did you spend about an -- and16

for the benefit of the Court, could you explain what you17

understood to be the purpose of your double patenting expert18

report?19

A Well, I'm not sure that's still relevant since I20

understand there was a motion to not go into the double21

patenting and we dropped it.22

Q Well, sir --23

A As a result, I haven't looked at that material for a very24

long time.25

HORN - CROSS0094

Q But you, in fact, prepared a four volume set of detailed1

invalidity charts in which you took Lemelson's earlier-issued2

patent claims and made detailed assertions as to why3

Lemelson's later patent claims were supposedly obvious4

variance of the earlier-issued claims, right?5

A Yes --6

Q And there -- there was --7

A -- I prepared those charts with counsel.8

Q All right. And, in fact, you substantively reviewed each9

and every chart, right?10

A Yes.11

Q And, of course, that meant that you had to go study, now,12

claims that weren't even in the suit, Mr. Lemelson's earlier13

patent claims; right?14

A Some of them. Yes.15

Q All right. So, a number you recognize of those earlier16

patents that you used weren't patents-in-suit, they were17

claims of the earlier patent like the '379 patent that issued18

in 1963, right?19

A I don't recollect that one, but I'd imagine that was one.20

Q And that ended up being four volumes with several hundred21

charts; right, sir?22

A Yes, I had a lot of help.23

Q Yeah. All right. And it's your testimony that you24

reviewed all of it?25

HORN - CROSS0095

A Yes.1

Q Did you help formulate the opinions stated there, sir, or2

did you just sign them?3

A I helped formulate the opinions.4

Q All right. 5

A What I meant by a lot of help is, as you can see, that's6

a huge word-processing task.7

Q Right. Well, for the record, we've got about 14 to 168

inches of typed -- solidly taped paper, right?9

A Again, with quite a bit of duplication.10

Q It's your position that you provided duplicate opinions?11

A The position is that in the charts there will be many12

entries that are carried over from other claims because the13

claims read the same.14

Q And there are many entries that aren't, right, sir?15

A Sure.16

Q All right. 17

A I mean, there are many entries that are, and some that18

aren't.19

Q Can you estimate, please, between -- in your opening20

expert reports, you had, it appears to be, at least three21

major tasks. One was the patent wouldn't work, right?22

A Yes.23

Q The second one was the claims are invalid in view of24

these 43 prior art references, right?25

HORN - CROSS0096

A Mm-hmm.1

Q And the other one was that these claims were invalid for2

all of these earlier Lemelson patent claims, the double-3

patenting aspect, right?4

A Just let me recollect, was this in my initial expert5

report?6

Q Yes, it was, sir.7

A Okay. 8

Q And then on top of that, you did claim construction. So9

actually there was four major tasks in your opening expert10

reports, right?11

A Yes.12

Q Of the 100 hours that you had, 120 hours in which you13

prepared your opening reports, reviewed Lemelson's opening14

reports, which we haven't talked about yet, and prepared then15

your rebuttal reports, which we haven't talked about yet, how16

much of the 120 hours did you spent reviewing the prior art17

and preparing your invalidity statements versus the double18

patenting?19

A I don't know. You know, we did this during the20

deposition. I don't have records of that, and you can ask me21

those questions, but I just don't know.22

Q All right. Well, then you realize that before you were23

deposed, you had received Lemelson's expert reports, right?24

A Yes.25

HORN - CROSS0097

Q And included in those 130 hours is your review of Mr.1

Lemelson's expert reports, right?2

A Yeah. Are you sure those are -- it looks a little high.3

Q Well, we'll go through it. There was an expert report of4

John Grindon -- oop, that's a rebuttal report, you're5

absolutely right, sir. I'm sorry. Of course you reviewed the6

rebuttal reports before your deposition as well, right?7

A Before the deposition.8

Q Right. So, that's going to be in the 120 hours, so it9

doesn't matter, but we'll do it in order.10

You'll recall that there was an expert report provided by11

Mr. Hughes, right, Dr. Hughes, on the use of machine vision in12

semiconductor and electronic processing? Recall that?13

A I don't recall that.14

Q All right. Do you recall the expert report of Dr.15

Williamson?16

A Yes, certainly do that.17

Q All right. And that was where Dr. Williamson provided18

his claim construction and detailed claim charts that looked19

like your double-patenting charts only it showed support and20

specifications of the '54 and '56 applications; right?21

A Yes, I remember those charts.22

Q All right. And that was almost 400 pages of charts alone23

on support, right?24

A Again, with quite a bit of repetition.25

HORN - CROSS0098

Q All right. But you remember you read and studied that1

expert report, right?2

A Yes.3

Q All right. And then you remember that Dr. Hunt provided4

an expert report on infringement, right?5

A Yes. I'm just trying to recollect whether that was at6

that time, but I believe it was.7

Q Well, clearly Lemelson provided expert reports 'cause you8

rebutted Dr. Hunt's infringement report. Do you recall that?9

A Well, I'm just trying to remember whether that was at the10

time of my initial expert report or are you now going past11

that?12

Q They were provided November 16th, 2001, sir. They were13

exchanged the same day yours were provided.14

A Sorry. They were exchanged the same day. Well, right,15

and --16

Q The expert reports were exchanged?17

A Well, that's what I was questioning. Are we still18

talking about my initial expert report, because this --19

Q No, sir, we're talking about what you read before20

preparing your rebuttal reports?21

A Okay. I'm sorry, I missed that transition 'cause those22

were not matters that came up in my initial report, and I23

thought we were still talking about that.24

Q No, I think what we're talking about is what you did in25

HORN - CROSS0099

addition to preparing your expert report, sir.1

A Okay. 2

Q All right? You gave an expert report and Lemelson gave3

expert reports at the same time, right?4

A Yes.5

Q And then both sides exchanged rebuttal reports; do you6

recall that?7

A That's correct. 8

Q Then both sides supplemented occasionally, correct?9

A Yes.10

Q All right. So, the first one I held up, this three or11

four inch document, was Dr. Williamson's expert report on12

claim construction and claim support?13

A Yes.14

Q And then Dr. Hunt provided an expert report on15

infringement of the Cognex 3000, 4000, 5000, and Checkpoint16

systems, right?17

A Yes.18

Q And then Dr. Hunt provided, and that's about an inch deep19

with the detailed claim infringement charts in the back,20

right?21

A You don't have to tell me how much paper there is in this22

case.23

Q All right. Then he provided a infringement analysis of24

the Cognex 8000 system, right?25

HORN - CROSS00100

A Yes.1

Q All right. And he supplemented that a few weeks later;2

do you recall that?3

A At the moment, I don't.4

Q Okay. Well, that's right here. And he provided an5

infringement analysis on the Insight systems, do you recall6

that?7

A This is Hunt?8

Q Yes.9

A Yes.10

Q Okay. And he provided an infringement analysis on the11

Isys Web inspection systems; do you recall that?12

A Yes. That was one of the shorter ones.13

Q Yes, it was. And then he provided the shortest one yet14

on the Cognex bar code systems, right?15

A Yes. I don't recall that at the moment, but --16

Q So, that roughly foot-high set of documents is what you17

studied in this 120 hours before preparing your rebuttal18

reports, right?19

A Yes.20

THE COURT: I'm tempted to ask, who was it again21

that provided the short report?22

MR. LISA: Dr. Hunt, but unfortunately, it's only23

one of many --24


HORN - CROSS00101

MR. LISA: -- Your Honor. If you total 'em up, it1

ends up being a lot anyway.2

THE COURT: Well, we'll have you all Bates stamp all3

of them before we're done once everything is received so we4

can keep it straight.5

BY MR. LISA: 6

Q And then what you did before your deposition was to7

provide, after studying all that, a rebuttal expert report to8

Dr. Williamson; correct?9

A Yes.10

Q And that rebuttal expert report addressed his claim11

construction, correct?12

MR. JENNER: I'm sorry, which one is that?13

MR. LISA: Dr. Horn's rebuttal. It's not14

infringement of --15

MR. JENNER: Okay. 16

MR. LISA: -- Cognex products, it's in rebuttal to17

the expert report of Dr. Williamson. That's not infringement,18

I'm sorry.19

BY MR. LISA: 20

Q But it's his infringement contentions, right?21

A Yes.22

Q And you did that with detailed claim charts like the ones23

you actually presented to Your Honor during your direct24

examination, right?25

HORN - CROSS00102

A Yes.1

Q And you rebutted each and every one of Dr. Williamson's2

infringement charts, right?3

A Yes.4

Q And you provided a separate volume in which you rebutted5

each and every one of Dr. Williamson's claim construction6

points, correct?7

A Yes.8

Q And actually, we've divided that up into two volumes9

because you also rebutted his claim support as well, correct?10

A Yes.11

Q All right. Now this stack of paper has grown to almost12

two and a half feet, I'd say, right? And in addition -- is13

that right, sir?14

A Oh, I don't know. I don't have a ruler here.15

Q It's less than three and more than two, right? Can we16

agree on that at least?17

A Whatever you say.18

Q All right. Now can you please explain for the Court and19

for me how much time you spent reviewing the Lemelson reports20

before undertaking to write your rebuttal reports?21

A I can't pin that down because I didn't divide my time up22

that way when I kept records.23

Q Can you tell us how much time you spent writing your24

expert reports after having -- your rebuttal expert report25

HORN - CROSS00103

after having reviewed the Lemelson reports?1

A Again, I don't have a way of pinning that down. I might2

point out that since I've written several books and hundreds3

of articles, I'm pretty good at writing things fairly rapidly.4

Q All right. Is it your testimony, sir, that you, in fact,5

spent your time writing these expert reports? You wrote them?6

A I wrote the parts that are not charts. The charts were7

done in -- well, both of them were iterate processes, but with8

the charts, I relied more on counsel to get the format and the9

general layout.10

Q Then you just read them?11

A No. There was an iterative process where I would discuss12

with them what certain things meant, and we'd modify it and go13

back over it.14

Q Now the other thing you did before your deposition was to15

review Lemelson's rebuttal expert reports, right?16

A Okay. Before the deposition, yes.17

Q All right. And for the record, Dr. Williamson provided a18

rebuttal expert report on several of your issues about19

discussions on the Lemelson patent and claims, correct?20

A Yes.21

Q And you'll recall that Dr. Grindon provided a detailed22

response to your allegations of inoperability as well, right?23

A Yes.24

Q And you reviewed each of these documents in that 12025

HORN - CROSS00104

hours, right?1

A Yes.2

Q That grows the stack even more. And, of course, there3

was a response on double patenting --to your double-patenting4

allegations as well, right?5

A Another nicely short report.6

Q That was an objection that I wrote, so --7

Now, sir, a number of these expert reports you didn't8

even sign, did you?9

A I signed all of them. I might have been away at the time10

and faxed my signature, or in two places I, on the telephone,11

asked Mr. Quinn to sign them for me.12

Q So, counsel signed for you and initialed your name,13

right?14

A Well, as you know, when you're communicating word-15

processing documents by e-mail, that part's very easy to do16

and then comes the signing part, so, you always end up with17

that awkwardness of the last page.18

Q Well, you managed to fax one or two in, didn't you?19

A Yes, and they were places where -- as you know, I'm on20

sabbatical in Berkeley, I don't have access to my home21

equipment, I don't have a fax machine there, so I was forced22

in two instances to simply permit Mr. Quinn to sign them for23

me.24

Q In a number of cases, you simply referenced that the25

HORN - CROSS00105

charts were attached and didn't even adopt or describe them,1

right?2

A Is this a legal point about the language I used in3

referring to them?4

Q Why don't we just put it on the record and see, sir.5

THE RECORDER: Mr. Lisa, can I have you go to the --6

MR. LISA: Sure. I'm sorry. 7

BY MR. LISA: 8

Q I'm looking at your expert report of Dr. Horn on patent9

invalidity and claim construction, Exhibit 193, and I'll just10

see if this refreshes your recollection. I'm reading from11

paragraph 270 on page 101.12

"The separate prior art appendix accompanies this report13

which contains specific invalidity comments with respect14

to the asserted claims in the prior art. 15

"In addition, I may rely on the following references as16

prior art," and you cite four references.17


A Could I see that, please?19

Q Sure. I'll be happy to hand it to you.20

MR. LISA: Your Honor, I don't have another copy.21

THE COURT: That's all right. That's all right.22

MR. JENNER: Could counsel -- Your Honor, could23

counsel state again what paragraph that was?24

MR. LISA: 270.25

HORN - CROSS00106

MR. JENNER: Okay. 1

THE WITNESS: Yes.2

BY MR. LISA: 3

Q And if you turn the page, could you read to the Court,4

'cause I don't have it in front of me, what you said about the5

double-patenting appendix?6

A "A separate double-patenting appendix accompanies this7

report which contains specific double-patenting comments8

with respect to the asserted claim."9

Q That's all you had to say about it, right?10

A On the topic of double patenting.11

Q Is there a topic after that? I can't recall?12

A Indefiniteness.13

Q Would you read what that says, please?14

A "I expect to testify that any or all of the following15

limitations are unclear and would have no definite16

meaning to one of ordinary skill in the art as to what17

the claims describe or embrace. Applying the detection18

signal, applying the reproduced signal" --19

Q You can stop there. You list several -- you list several20

terms, right?21


Q But provide no explanation, right?23

A Right.24

Q Now, sir, is it your testimony that in the 120 hours that25

HORN - CROSS00107

were left, you had the ability to substantively understand and1

approve and adopt each of the positions that were presented in2

the more than 1,000 various claim charts of sorts or another3

that were presented in those expert reports?4

A I'm sorry, 1,000 claim charts?5

Q Between the invalidity charts, the double-patenting6

charts, the claim-support charts?7

A How are you counting, the number of elements in the8

charts? 9

Q No, sir --10

A There are not a thousand charts.11

Q You presented several hundred invalidity charts on prior12

art alone. You did, sir, right?13

A Well, define what a chart is? How -- what's the scope --14

Q Individual piece of prior art asserted against a claim.15

A Well, there certainly weren't a thousand pieces of prior16

art.17

Q No, sir, there were 43 pieces of prior art asserted18

against 77 claims and a total of 428 charts that you provided19

on prior art alone, 428 separate charts?20

A Well, first of all, we've seen now that it's not a21

thousand, and then by chart, I guess you mean basically a row22

in a chart. I wouldn't consider that a chart.23

Q No, sir, I'm not considering it that, I'm saying an24

individual piece of prior art asserted -- the Shepard patent25

HORN - CROSS00108

asserted against '626 claim 8, that's a chart, right? Just1

like you gave the Court in your direct examination?2

A If you wish to define it that way. I suppose to me an3

element in a chart is just that, it's not the whole chart, but4

if you want --5

Q No, sir, I'm talking about --6

A -- to define that as --7

Q -- I'm talking about the whole chart, sir, your entire8

analysis as to why a particular piece of prior art by itself9

invalidated one of Mr. Lemelson's claims. Do you understand10

you -- 11

A Okay. So, you're --12

Q -- do you understand that you provided those?13

A The issue is what I consider a chart. You're saying that14

the --15

Q Use whatever number -- use whatever name you want, sir. 16

What do you characterize what you provided in your expert17

reports in which you took a piece of prior art and asserted18

that it, by itself, invalidated one of Mr. Lemelson's claims? 19

What word do you want to use to characterize that?20

A Well, I think we're just having a terminology issue. To21

me --22

Q That's why I want to end it. Let's just get a name.23

A Okay. To me, the whole thing is a chart. In other24

words, going through all of the claims of a particular patent25

HORN - CROSS00109

as opposed to calling each claim element, or whatever, a1

chart. Certainly that way you can inflate the numbers.2

Q Sir, what would call an individual-- just please tell me3

what your best description is for one of your documents that4

describes, like you provided to the Court, individual --5

A The -- the whole thing is a chart.6

Q So that like the charts you handed to the Court on the7

three pieces of prior art you asserted against the '626 claim,8

is that by itself a chart, one of those pieces of prior art9

against the '626 patent as you did in your direct? Is that a10

chart or not, sir?11

A I would consider in that context a chart to be the12

matching up of a particular piece of prior art with the claims13

from a particular patent, and there aren't 500 or 1,000 of14

those, are there?15

Q No, sir, there's 428 that you provided.16

A Well, I can't check that number.17

Q You know how many double-patenting charts you provided,18

sir?19

A No, I don't.20

Q How about 340? Does that sound familiar?21

A Again, measuring chart the way you do, it doesn't sound22

familiar --23

Q All right. 24

A -- but that seems --25

HORN - CROSS00110

Q Well, 75 reference claims you used. You look -- you took1

75 claims and applied them against the claims-in-suit, right?2

A I guess.3

Q All right. And it was that monstrous four volume set4

that was about a foot by itself. Do you recall that?5

A Oh, yes.6

Q All right. Now, then you prepared equally rebuttal7

charts, right?8

A Yes.9

Q All right. How much is it your testimony that you10

substantively examined each and every one of those --11

A Yes.12

Q -- charts?13

A Yes.14

Q Now, one of the things that happened when we got to trial15

is that you dropped a bunch of the prior art references, isn't16

that right?17

A Counsel elected for some reason to limit the number of18

prior art.19

MR. LISA: And again, Your Honor, I am not moving20

into evidence those expert reports, so that there's21

clarification on that. I mentioned Exhibit 193, and we're not22

moving them into evidence.23

THE COURT: Well, correct me if I'm wrong, some of24

them or pieces of them are already --25

HORN - CROSS00111

MR. LISA: It very well may be but --1

THE COURT: -- exhibits, are they not? I think one2

of them even referenced 193, I don't remember if that's in3

evidence but --4

MR. LISA: -- it is not, in my view, in evidence.5

THE COURT: Or maybe I'm just thinking of things6

that have been appended to different motions that I --7

MR. LISA: That's --8

THE COURT: -- have seen, that could be what I'm --9

MR. LISA: It is my understanding, Your Honor, that10

none of the parties' expert reports have been moved into11

evidence.12

THE COURT: Okay. Fine. Fine.13

MR. JENNER: I think Your Honor is correct that some14

of the attachments or modifications of the attachments are15

what has been submitted so far.16


MR. JENNER: The expert reports themselves are not,18

they're available. If the Court wants them, we'd be delighted19

to offer ours.20

THE COURT: All right. All right. 21

BY MR. LISA: 22

Q So, sir, in the end what we came down to at trial was23

plaintiff's assertion that only three of the 45 prior art24

references actually are being relied upon for assertions of25

HORN - CROSS00112

prior art invalidity in this case; correct?1

A Only three are being used. That doesn't in any way2

indicate that the others weren't appropriate either -- as3

well.4

Q My point, sir, is, so that the Court is clear --5

A Yes.6

Q -- you are making no -- you've offered no opinions for7

any assertions of invalidity against any claims by any prior8

art except for the three references you identified on your9

direct examination, right?10

A That's correct in this trial.11

Q Now, of course, you still are very familiar with these12

other pieces of prior art that you studied and wrote these13

detailed claim charts for, right?14

A Not really. Since we -- since counsel elected not to15

present them here, I haven't looked at them in ages.16

Q Well, when you made certain representations on direct17

examination as to what the status of the art was in 1956 or18

earlier, did you bother to go back and review any of the prior19

art, those other 42 prior art references that you had20

asserted, disclosed, the very elements of the claims that were21

being asserted here in this case?22

A I'm sorry, that's a very long thing. Can you --23

Q I'll start it over again. You said to the Court on24

direct examination that certain features of Mr. Lemelson's25

HORN - CROSS00113

invention wouldn't operate because people skilled in the art1

at the time wouldn't know how to do it; right?2

A Yes, there were such --3

Q And you stated unequivocally in your direct examination4

that certain things like magnetic drums that could record5

analog video signals weren't available in 1956 or earlier;6

right?7

A As far as I know, they weren't.8

Q And what I'm asking is when you gave that testimony, did9

you consider going back and looking at the 42 other references10

that you said you studied ages ago before offering that11

testimony on direct?12

A Not specifically. I reviewed the technology at that time13

regarding magnetic recording.14

Q So, even though you had spent time understanding the15

patents and preparing charts in which you asserted in your16

expert report, that they showed the very same things in Mr.17

Lemelson's patents, rendered them invalid because they18

anticipated his patents, you didn't think to go look to see19

about whether they disclosed certain of these individual20

elements that you testified on direct weren't available at the21

time?22

A I don't believe I did.23

Q Well, let's take Shepard, for example. Remember, you're24

familiar with the Shepard patent --25

HORN - CROSS00114

A Which --1

Q -- that's not now asserted in this case?2

A Which one?3

Q The one that's not now asserted, sir?4

A Could you give me the number?5

Q That is Exhibit 1474.6


BY MR. LISA: 8

Q I'm going to hand you, sir, Defendant's Trial Exhibit9

1474.10


Q Do you recognize this patent, sir?12

A Yes, I do. I haven't looked at it in a while, but I13

certainly recognize it.14

Q Well, one of the things you've said on direct examination15

is that there were no multi-track magnetic recording drums16

available that would record on multiple tracks analog video17

signals, right?18

A Yes.19

Q Yet you recognize that you asserted in your expert report20

that Shepard did exactly that, right?21

A As an alternate embodiment, he talks about using a22

magnetic drum of sorts.23

Q And in fact, you cited to a Figure 8 in the patent?24


HORN - CROSS00115

Q Well --1

MR. JENNER: Your Honor, I would object in view of2

the detail of this. If he's going to examine the witness3

about claim charts that the witness has already said he hasn't4

seen in a long time, then he ought to put the charts in front5

of the witness.6

MR. LISA: I'm not going to ask --7

MR. JENNER: So the witness can see what it is he8

wrote a long time ago.9

THE COURT: All right. Mr. Lisa?10

MR. LISA: Well, Your Honor, there are several11

responses, one is I could simply ask him questions off the12

Shepard patent because he said it's not in the prior art. I13

could impeach him with his claim charts if I choose to. I14

will hand to him, though, the part of his expert report,15

Defendant's Trial Exhibit 196, that actually refers to the16

Shepard chart that he just mentioned --17

THE COURT: All right. Why don't you do that so the18

witness can at least refresh --19

MR. LISA: I hand you, sir --20

THE COURT: -- his recollection from that.21

MR. LISA: Let me just grab it, Your Honor, so we22

can get the right thing.23

MR. JENNER: Well, objection, Your Honor. This is24

not the chart, this is just a picture of an embodiment. This25

HORN - CROSS00116

isn't any characterization by the witness of anything.1

MR. LISA: Sir --2

THE COURT: Well, I'm not sure, "Prior art appendix3

to the expert report of Dr. Horn," and --4

MR. LISA: This is the figure that the witness just5

referenced, Your Honor.6

THE COURT: Well, let's let the witness tell us what7

it is, it's from his report.8

THE WITNESS: Well, I'm a little confused right now9

because Figure 8 in the patent you handed me is something10

different. It's a decoding circuit of sorts.11

BY MR. LISA: 12

Q Sir, I'm going to hand up to you your prior art appendix13

to the expert report, refer you to Tab 14, pages 15 and14

following through to 22, 23 up through 25. So, it's Tab 1415

and see if that helps refresh your recollection?16

MR. JENNER: Your Honor, may we have a moment to17

either get a copy of this or --18

THE COURT: Sure. Why don't you --19

MR. JENNER: -- see what it is the witness has?20

THE COURT: -- step up if you want to see what the21

witness is looking at; that might be even more helpful.22

THE WITNESS: Again, I don't see the relevance of23

this. The figure is not here and --24

MR. LISA: The figure is there, sir.25

HORN - CROSS00117

THE COURT: Well, go ahead and step up and show him1

where the figure is.2

THE WITNESS: Not this one.3

THE COURT: Figure 8 is 1474. This is what I have4

is Figure 8. 5

THE WITNESS: Yes, that's --6

BY MR. LISA: 7

Q Page 22 shows the same Figure 8 with the page 22 on the8

bottom that I handed up in the excerpt, right?9

A Yes, which is not in the patent, sir. I'm having a hard10

time recollecting what this is.11

Q Yeah. In fact, sir, I was about to ask you that 'cause12

we had a hard time with that, too.13

THE COURT: Well, let him take a look at it for a14

moment and let Mr. Jenner see what it is as well.15

Counsel, if I'm correct, one is the Figure 8 filed16

March 1, 1951, the second, which is attached at page 22 to17

Exhibit 196 is styled Figure 8, parens, (second embodiment),18

close parens?19

MR. LISA: That's what it says.20

THE COURT: Does that -- you all know the21

terminology, does that suggest it's a iteration or a22

refinement of the original Figure 8 submitted in 1951?23

MR. LISA: We're going to ask the witness, Your24

Honor. This figure is not in the patent.25

HORN - CROSS00118

THE COURT: I see. Okay. All right. 1

MR. LISA: But it does show, you'll see, a magnetic2

drum and that's where we're going. So, this is something3

drawn by the --4

THE COURT: Which one shows the magnetic drum?5

MR. LISA: The one that's -- page 22 --6

THE COURT: Okay. 7

MR. LISA: -- 758 --8

THE COURT: I see magnetic drum there, I wasn't sure9

how to interpret the Figure 8 on Exhibit 1474, other that in10

some other fashion shows --11

MR. LISA: Your Honor is struggling as we were on12

the invalidity chart. That's exactly right.13

THE COURT: Okay. 14

BY MR. LISA: 15

Q Sir, maybe I can help focus this. Do you remember that16

this Shepard patent was one of your more widely-cited pieces17

of prior art?18

A One of the more widely pieces of --19

Q Maybe raise your mike. Thank you. Yes. That you cited20

Shepard quite frequently, right?21

A There were two Shepard patents and I referred to both of22

them.23

Q This particular one you cited frequently, right?24

A I don't know what -- how you characterize frequently. 25

HORN - CROSS00119

I'm still trying to find the reference in the --1

Q Well --2

A -- chart to the figure.3

Q -- I'll represent to you, sir, that this particular piece4

of prior art you cited against most all of the Lemelson5

claims. Do you recall that?6

A Yes, although I don't know whether this particular aspect7

of it was important in that regard.8

Q Well, you certainly inserted it in your invalidity claim9

charts and referred to it as Shepard patent Figure 8, second10

embodiment, right?11

A Let me find it. Yes, I see it here, I -- is this an12

accurate copy of Shepard's patent 'cause -- 13

Q Sir, this is your expert report. You're the one who14

studied the charts, studied the references and prepared the15

charts, and I'm going to ask you, where did Figure 8, second16

embodiment that you list underneath Shepard patent number17

2,663,758 in your expert report come from?18

A I don't recollect. I'm wondering now whether it was in19

the application that Shepard submitted rather than in the20

issued patent.21

Q Well, in fact, sir, do you recall that counsel prepared22

this chart for you as their interpretation of some text at the23

back of the patent? Do you recall that?24

A No, I don't recall that.25

HORN - CROSS00120

Q So, you don't know where this chart came -- where this1

figure came from, right?2

A Well, it's been a long time, and it doesn't ring a bell. 3

I'm thinking from the fact that it's hand drawn that it's --4

it's -- it's the -- it obviously refers to the alternate5

embodiment he refers to in the end of the patent after he goes6

through discussing the one in Figure 1.7

Q All right. Well, why don't you look at Figure 8 here?8

THE COURT: Well--9

MR. LISA: I'm sorry.10

THE COURT: Before you leave this, take a look at11

both of them, the two Figure 8s, if you will, the one that's12

attached to Exhibit 1474 and the one that's attached to 196. 13

Now obviously I'm the most ignorant one in the room on this14

subject, but is Figure 8 in Exhibit 1474, does that purport to15

represent some kind of circuit?16

THE WITNESS: Well, just looking at it quickly, the17

circuit in Figure 8 of the original patent is a decoding18

circuit sometimes called the Christmas tree switching circuit.19

THE COURT: All right. Now look at the -- look at20

the second embodiment in Exhibit 196, Figure 8. There's a box21

that's not filled in at the bottom, it's styled "interpreter22

circuit," parens, "(Figure 8)," close parens. Would the23

original Figure 8 in Exhibit 1474 be or purport to be the24

circuit which would fit within what appears to be a blank --25

HORN - CROSS00121

THE WITNESS: Yes, Your Honor.1

THE COURT: -- interpreter circuit?2

THE WITNESS: Yes, Your Honor, that would be3

consistent.4

THE COURT: And -- okay. Okay. Go ahead.5

BY MR. LISA: 6

Q Sir, did you ask counsel where this figure came from?7

THE COURT: Now which figure are we talking to?8

BY MR. LISA: 9

Q Figure 8, second embodiment, that's not in the patent?10

A You know, this is a long time ago. I don't remember11

asking about it or whether, in fact, this is a hand drawn12

sketch I made based on the text in the patent which was not13

supported by a figure. It doesn't look like my handwriting,14

but I can't be sure. Or whether this, you know, my original15

idea was this might have been pulled out of the application16

rather than the issued patent.17

Q Well, sir, I'll represent to you that it was prepared by18

a counsel named Charlie Bradley in the Ford case. Does that19

ring a bell to you? In the Lemelson v. Ford case, that figure20

was --21

A Well, as I said earlier, I'm not familiar with the Ford22

case.23

Q Well, I'm going to hand you a document, Defendant's Trial24

Exhibit 2222, and I'll ask if you've seen that document25

HORN - CROSS00122

before, sir?1

A No, I haven't.2

Q Do you notice the heading is "Shepard Patent 2,663,758,3

second embodiment using the interpreter circuit of Figure 8."4

Do you see that?5

A Yes.6

Q And this is a nicely-typed and word-processed document,7

isn't it?8

A Yes.9

Q All right. And this has been redrawn evidently in your10

expert report to look a little more aged, isn't it?11

A Well, I don't know which is the original and which is the12

redrawn version. Usually the cleaner version is the later13

one, but I don't know.14

Q Well, do you see the letters F-333 on the bottom?15

A Yes.16

Q Okay. I'll represent to you, sir, that that was marked17

in a deposition of Dr. Williamson eight years ago in the Ford18

case by counsel. And you've never seen this document?19

A No.20

Q And do you see that it's been reformatted and retyped to21

look like it's handdrawn in what's been included in your22

expert report?23

MR. JENNER: Well, objection. There's no foundation24

for that.25

HORN - CROSS00123

MR. LISA: I'm just --1

THE COURT: Well, no, it's a question.2

BY MR. LISA: 3

Q Sir, do you see that?4

A What I see is a similarity between the 8(b) -- Figure 8,5

second embodiment, and the one you've shown me.6

THE COURT: I guess -- let me make sure I7

understand. The simple question I've got, Exhibit 196 is8

styled at the front, "Prior art appendix to the expert report9

of Dr. Horn" suggesting to me that Exhibit 196 is part of a10

report that you prepared.11

THE WITNESS: Yes.12

THE COURT: Am I correct in that regard?13

THE WITNESS: That's correct. 14

THE COURT: Now I understand as you sit here at this15

moment you can't recollect from the mass of paper how -- what16

is styled as Figure 8, second embodiment, page 22 came to be17

included as part of that appendix. However, with your report18

here, do you have the ability to discern that by reviewing the19

larger body of your report, or is that something you just20

don't know if you can recreate or replicate?21

THE WITNESS: Well, I might be able to figure22

something out by looking at it more carefully, but to be23

honest, I don't know where this came from off the top of my24

head right now, and I don't know whether looking at these25

HORN - CROSS00124

charts is going to help me with that.1

BY MR. LISA: 2

Q Well, maybe your deposition will?3

THE COURT: Well, let me -- let me -- wherever it4

came from it would have been something that you generated as5

part of your report during your review and research; am I6

correct?7

THE WITNESS: Well, interaction with counsel --8

THE COURT: Or with counsel? Okay. 9

THE WITNESS: -- who supplied me with the patents10

and the figures and so on.11

THE COURT: I see. Well, naturally. Yeah. Okay. 12

Okay. Go ahead.13

BY MR. LISA: 14

Q Sir, I'd like you to turn to page 185 of your deposition,15

please.16

A I don't think I have it here.17

Q We have an extra copy, I think. There should be one up18

there, but we'll bring you another copy, sir.19

A Thank you.20

Q And why don't you go ahead and read that while the21

Court's conferring.22


Q Now, sir, in fact, in your deposition you stated that you24

had spent very roughly an hour or two reviewing this Shepard25

HORN - CROSS00125

patent, right?1

A I'm not sure that's right. It says here three to six2

hours or something, I'm not --3

Q Okay. 4

A -- I'm not sure. I'm reading this rapidly here.5

Q Well, at line 17, you were asked: 6

"Question. And you gave claim charts in Exhibit 196 on7

prior art, correct?"8

A Yes.9

Q "Answer. There are such charts in here, they were10

constructed in consultation with counsel.11

"Question. You studied them and you made sure you12

understood them and they are correct, right?13

"Answer. I verified that I agree with everything in14

there."15

A That's what I said.16

Q Did they ask those questions, did you give those answers?17

A Yes.18

Q And they're consistent with what you would say today,19

right?20

A Yes.21

Q All right. Now, did you review Dr. Williamson's22

deposition in the Ford case that he gave in Ford --23

A I --24

Q -- on the prior art issues?25

HORN - CROSS00126

A No.1

Q All right. So, you don't know where the original version2

of this second embodiment, Figure 8 came from, do you?3

A I don't know. You're telling me it appeared there first?4

Q I'm telling you the F-333 at the bottom of Exhibit 2222 5

-- is that correct -- is a deposition exhibit marked by6

counsel who represented Ford in the earlier litigation, yes,7

sir.8

A Just as a matter of interest, is this something that9

Williamson drew or --10

Q No, sir. This is something that counsel for Ford Motor11

Company drew.12

A I see.13

Q Now did you redraw this document to look like the14

handwritten print and text of -- that was attached in your15

expert report, Exhibit 196?16

A No, I did not. I must have received this figure along17

with the patent and assumed it was part of it.18

Q When you saw that this figure wasn't in the patent,19

didn't that raise a concern for you?20

A Well, we're now going back a long time, and as I21

indicated, it might have been in the application and I assumed22

that's where it came from, but I don't recollect.23

Q But I'm just asking whether it raised -- you recall24

having some concern over the fact that you were including in25

HORN - CROSS00127

your expert report a figure that wasn't in the patent?1

A I may very well -- I may very well have asked about it, I2

don't recollect.3

Q Okay. And there are certainly, if you look at your4

expert report on the pages I referred to you, there's5

absolutely no indication in your expert report that this6

figure isn't in the patent, is there?7

A I'd have to review it, but --8

Q Well, I'll represent to you, sir, that I didn't see one.9

I don't know, do you recall seeing one?10

A No, I don't recall.11

Q All right. But, of course, you did study this figure,12

right? Second embodiment, Figure 8?13

A I guess, I just have.14

Q Do you see that there's a magnetic drum that's been drawn15

into this Figure 8, second embodiment?16

A Yes.17

Q Do you see that on this magnetic drum, there is temporary18

storage where the image signals go? Do you see that?19

A The way --20

Q Do you see that it's a multi -- I'll withdraw the21

question, sir.22

Do you see that it's a multi-track magnetic drum, sir?23

A Multi-track drums existed at that time for digital24

storage, and the shape storage, for example, would have been25

HORN - CROSS00128

of that type where you're either saying that a certain shape1

occurs in the letter or does not occur. That doesn't relate2

to analog video recording.3

Q All right. Well, the -- what's shown next to the shape4

storage, sir, is the temporary storage where the output of the5

photocell is stored; right?6

A Well, my recollection is that the output of the photocell7

is not stored directly, but after being turned into a sample8

signal. In other words, we're not recording a continuous9

analog signal. The -- if you look at Figure 2, the disk is10

divided into twelve sectors, and there are twelve readouts,11

one for each sector, and these would be a signal suitable for12

recording on a digital drum or digital --13

Q Well, sir, you also alleged in your expert report,14

though, and in your claim infringement chart that Shepard15

teaches using a conventional television camera to generate the16

image signals that are stored on the drum. Do you recall17

saying that?18

A Yes. That is probably correct. The main embodiment as19

you can see in Figure 1 doesn't work that way, but he does20

have an alternate embodiment which is -- for which there is no21

figure which he describes later.22

Q And you actually pointed that out in connection with your23

claim invalidity charts that a standard or conventional24

television signal -- camera could be -- could replace the25

HORN - CROSS00129

photocell 22, right?1

A Sorry, in which chart?2

Q Excuse me?3

A Could you repeat in which chart I --4

Q Yes, I'm sorry. You asserted in your invalidity charts,5

particularly the ones with Shepard and the one I pointed you6

to at Tab 14, what you asserted was that the Shepard reference7

actually teaches substituting a conventional television camera8

to generate the image signals that are stored on this magnetic9

drum, right?10

A This is a long time ago, and keep in mind that this is11

not a prior art reference I've looked at, so I'd have to read12

it again.13

Q Well, sir, you have the expert report in front of you.14

Would you turn to Tab 14, page --15

THE COURT: Tab 14 of which exhibit now?16

MR. LISA: Of his expert report --17


MR. LISA: -- on invalidity?19


MR. LISA: I believe that would be 196.21

MR. JENNER: Can counsel state which Lemelson patent22

this pertains to because the numbering starts over for each23

patent?24

MR. LISA: The '078 patent --25

HORN - CROSS00130

MR. JENNER: '078?1

MR. LISA: -- page 25 at Tab 14. Don't have a tab?2

MR. JENNER: No, but '078?3

MR. LISA: Do we have an extra copy for counsel with4

tabs, by any chance, of the expert reports? No? I'm sorry,5

we don't have one.6

BY MR. LISA: 7

Q Why don't I just read it for you, sir. Do you have it?8

A Sorry, could you tell me again where this tab what?9

Q Sure. I'll --10

MR. LISA: May I approach the bench, Your Honor?11

THE COURT: Try Tab 14.12

BY MR. LISA: 13

Q Page 25. 14


Q You see that, sir, yet? Have you gotten there?16

A Yes. I think --17

Q Okay. 18

A -- I'm at the right place.19

Q Claim 67 of Mr. Lemelson's '078 patent, and I'll read it20

for the record.21

"A method in accordance with claim 42" -- which you'll22

recall is an earlier independent claim, then it says,23

"wherein detecting radiant energy comprises using a24

camera to measure the intensity of said radiation."25

HORN - CROSS00131

Do you see that?1

A Yes.2

Q So, you recall that in this dependent claim Mr. Lemelson3

was taking a claim element in which he simply said detecting4

radiant energy and now is further defining it to be a camera. 5


A Yes.7

Q All right. And what you said about the Shepard patent8

was, quote:9

"Alternatively, the light source 14 [Glen system 16, 2010

and disk 18' may be replaced by an electronic scanning11

means, such as a standard television camera." 12

And you cite to column 19, lines 15 to 21 of the Shepard13

patent, right?14

A Yes.15

Q So what you had asserted in your invalidity analysis was16

that a person skilled in the art prior to Mr. Lemelson's17

invention would have known to take this second embodiment18

described in the back of Shepard's patent and modify Figure 819

to operate in the manner in which you put forth in Figure 8,20

second embodiment, the figure; right? Isn't that a fair21

statement of what you said?22

A Sorry, it was pretty long. Please --23

Q I'll try it again.24

A Yeah.25

HORN - CROSS00132

Q At least what you said was that a person of skill in the1

art would read this column and line number of the Shepard2

patent and know to substitute a standard television camera for3

the photocell; right?4

A Yes. 5

Q All right. And I take it a standard television camera6

would be a high band with video signal at that time period,7

according to your direct examination, right?8

A That's right.9

Q Whereas a photocell may not be, right?10

A Right.11

Q All right. So, what's shown in Figure 8, or what's shown12

in the -- in the Shepard patent as a photocell would not13

necessarily generate high bandwidth video signals, right?14

A Right.15

Q All right. But a standard television would?16

A Yes.17

Q So, what you said here is that in order to meet the18

limitations of this dependent claim 67, that a person of19

ordinary skill in the art would do what Shepard said to do,20

which was to substitute a conventional high bandwidth21

television camera for the photocell, right?22

A Yes, but note that there's no indication here that you23

would directly record the analog video signal.24

Q Well, that's what you show in Figure 8 modified, second25

HORN - CROSS00133

embodiment, isn't it, sir?1

A Well, it's a schematic, and while there's a photo cell2

with an arrow going to the magnetic drum, there's no way to3

tell whether there's clipping or sampling on the way. And4

going by the way the rest of the pattern works, we're dealing5

with something where we're pulling out discrete information6

from the image signal rather than recording the analog video7

directly on the -- on the drum.8

Q So your point then is that you certainly agree at the9

very least that multitrack magnetic recording drums of the10

form that you drew were included in page -- in Figure 8,11

second embodiment, existed well prior to Lemelson's 195612

application? Is that a fair statement?13

A Computers used a magnetic drum for recording digital14

signals.15

Q Sir, what I'm asking is whether this -- whether you agree16

that the magnetic drum that you put or had in your invalidity17

charts that's in Figure 8, second embodiment, can we agree and18

can the Court find that that type of magnetic drum, multitrack19

magnetic drum, was available and known in the art prior to20

Lemelson's 1954 and 1956 filing dates?21

A Can I --22

Q Can we agree to that?23

A No. And as I stated, we're talking about different kinds24

of drums. There's simply --25

HORN - CROSS00134

Q What I'm asking, sir, is whether --1

MR. JENNER: Counsel -- Your Honor?2

THE COURT: No, let the -- 3

MR. LISA: All right. 4

THE COURT: -- let the witness finish.5

Go ahead. What? 6

THE WITNESS: A --7

THE COURT: The witness has been shown that magnetic8

drum depicted, and how is the magnetic drum depicted in Figure9

8, second embodiment, for the Shepard patent different than10

some other magnetic drum?11

THE WITNESS: The kinds of magnetic drums that were12

available on some computers at the time were suitable for13

recording small amounts of digital data, and that would be my14

interpretation of what we have here. They're not suitable for15

recording analog video high bandwidth information.16

BY MR. LISA: 17

Q Well, sir, you actually applied the Shepard patent18

against the claims that said recording image signals --19

A Which is --20

Q -- didn't you?21

A Which is, of course, different from saying it's recording22

high bandwidth analog. The whole point of Shepard is that he23

extracts information from the image before he records it.24

Q Show me where that is in the patent, sir.25

HORN - CROSS00135

A Well, if we look back at the original figures of the1

first embodiment --2

Q This is the second embodiment, sir.3

A Well, he's defining the second embodiment by saying4

here's a modification of my first embodiment, I mean, he's --5

as you know, most of the patent is devoted to describing the6

first embodiment, and then he says, by the way, you can7

replace certain parts to achieve different results, but8

obviously he's carrying over the notion of extracting9

information from the images and dealing with that rather than10

dealing with the image itself.11

Q Let's go back for a second then.12

THE COURT: Well, just -- I want to make sure I13

understand. In the Shepard patent starting on column 18 at14

the bottom and on to 19, it provides some discussion15

concerning the magnetic drum and perhaps its function, I'm16

sure, and I don't want to try and sit here and read this17

entire patent because I'm sure I would not understand it, but18

you have read the entire Shepard patent, obviously, am I19

correct?20

THE WITNESS: Yes.21

THE COURT: How exactly in addition to what this22

second embodiment figure says, what does Shepard tell us the23

function of the magnetic drum is in the context of this24

particular invention?25

HORN - CROSS00136

THE WITNESS: It's a storage medium for intermediate1

results. His system is based on the notion that you're2

looking for certain subpatterns of complete patterns. So in3

the case of letters, he might look for a horizontal stroke. 4

If that --5

THE COURT: Right. He's talking about a typewriter6

or something? Yeah. 7

THE WITNESS: Exactly.8


THE WITNESS: So, if a stroke is found, then a10

signal is recorded, and in the first embodiment, that might be11

recorded as a relay or some electronic circuit, and when he's12

talking about the drum, he's using the drum to record that13

information. That information is then read back and passed14

through the circuits that say, well, if it has one of those15

and one of those and one of those, then it's probably the16

letter A.17

THE COURT: So, it's recording digital data?18

THE WITNESS: Yes.19

THE COURT: But your testimony is or your opinion is20

that, at least in 1951, there was no technology which would21

permit the storage of analog video on a magnetic drum?22

THE WITNESS: Yes. There wouldn't have been enough23

bandwidth. These drums when used for digital recording had24

very limited capacity the order of if we go back to the [Weik25

HORN - CROSS00137

report which was in evidence here, 2,000 words of 20 bits,1

which is much too little to store an image that might take a2

million bits to store an image.3

BY MR. LISA: 4

Q Well, sir, you certainly know that there were magnetic5

drums available prior to 1957 that stored a single frame of6

image data, don't you?7

A No, actually I don't know that.8

Q And to be clear, that's a critical part of your opinion,9

isn't it, sir?10

A I'm not sure. You'd have to tell me.11

Q Well, I'm asking you the question, sir. Your opinions12

that magnetic drums weren't available in 1956 or earlier13

includes the opinion that no magnetic drums existed that could14

store even a single frame of video, isn't that right?15

A No, no.16

MR. JENNER: Objection, Your Honor. That17

mischaracterizes the testimony which very importantly related18

to multitrack.19

THE COURT: All right. Well, let the witness20

explain. He just started to say no. 21

Go ahead, explain your response?22

THE WITNESS: What I'm saying is that there were no23

magnetic drums that had multiple tracks for recording analog24

video information.25

HORN - CROSS00138

BY MR. LISA: 1

Q You certainly agree that in Shepard, second embodiment,2

there are multiple tracks on a magnetic drum, correct?3

A This is a drum --4

Q Yes or no, sir? There are multiple tracks? That's an5

easy question.6

A There are multiple tracks and they're used for recording7

discrete information, digital information.8

Q And so that we're clear as to what a digital information9

is, would you explain more specifically what signal it is10

that's actually stored on what you identified as the temporary11

storage of this alternative second embodiment? What exactly12

is stored that you have classified as a digital signal?13

A It's the output of the various circuits that replace the14

pieces of the olaria [phonetic] embodiment. Shepard isn't15

very specific in the details of this alternate embodiment, so16

we have to base it on what he said before. 17

So, for example, in Figure 4, you'll see various little18

patterns that are placed over the image and the output of the19

-- the result of placing those patterns produces a signal20

which ways whether that pattern occurs in the letter or not,21

and those are accumulated and remembered, and at the end of22

the process, the results of all of those individual decisions23

are combined to produce an overall decision about what24

character it is.25

HORN - CROSS00139

Q And what I hear you saying then, sir, is that -- well let1

me ask a question. Is what's being recorded whether the2

photocell detects a signal -- whether there's a detection of a3

signal above or below some threshold?4

A Well, right now it's instead talking about detecting5

these specific patterns as indicated in Figure 4 which are6

subpatterns that are then accumulated and analyzed.7

Q And they're painted onto the magnetic drum, right? Isn't8

that what you said in your infringement charts, your9

invalidity charts, sir?10

A Painted on the magnetic drum?11

Q Do you recall that?12

A No, I don't. Here, for example, in Claim 26 I'm saying13

the step of storing reference data in the form of shapes or14

subpatterns includes storing signals to find desirous location15

of the shapes or subpatterns. So, we're talking about these16

things I've just described.17

Q But what you also said is that the photocell generates a18

varying output signal, right?19

A Well, probably.20

Q Page 15. 21

A Now which --22

Q Down on the opposite element C you said, "Photocell 2223

generates a characteristic electrical signal by varying its24

output signal in accordance with the modulated light energy25

HORN - CROSS00140

detected," right?1

A Yes.2

Q Could you explain to the Court what that means?3

A That means there's a signal from the photocell that4

varies with the brightness of the corresponding part of the5

surface.6

Q Then the next thing you said right below it is, "The7

characteristic signals generated by photocell 22 are gated and8

stored in an addressable electronic storage device such as a9

magnetic drum memory," and you cite to column 18, lines 1 to10

39, right?11

A Yes.12

Q So what you assert in your expert report is that as of at13

least 1956, magnetic drums -- multitrack, addressable magnetic14

drums were available that allowed the storage of those types15

of characteristic signals output by a photocell, right?16

A After being gated and processed in some other fashion.17

Q But the answer is after being gated and processed the18

output of the photocell is stored on a multitrack magnetic19

drum, right?20

A It's not an analog video signal.21

Q Sir, yes or no?22

A Excuse me. After processing it's placed on the drum and23

there's no indication that it's an analog video signal.24

Q And then what you said later is that the photocell could25

HORN - CROSS00141

be replaced by a conventional television camera, right?1

A And again you would gate and clip and whatever and sample2

before -- since the drum is a digital drum you'd have to do3

that.4

Q So what we do have then is a multitrack drum that could5

store shape storage or reference data, right?6

A Digital information.7

Q Digital reference data right, sir?8

A Well, digital recordings that were used in computers.9

Q For what purpose here, sir?10

A For storing the results of these preliminary tests to11

determine subshapes, whether certain subshapes were found.12

Q Then the actual output of the photocell, though gated and13

processed, that was stored on yet other tracks, right?14

A Possibly, although that's not really, you know, described15

in detail by Shepard.16

Q But that is what was in this figure that appeared in your17

charts, right?18

A And again to make clear, it's not recording the analog19

video signal.20

Q All right. And what would the bandwidth be for the21

storage of the signals that are generated and stored here by22

Shepard, sir?23

A Well, it's hard to speak of bandwidths since it's a24

digital signal, but those drums could read thousands of words25

HORN - CROSS00142

per second, which sounds high, but it's nothing like the1

bandwidths required for video signals.2

Q All right. Let's move on to one of the other patents.3

THE COURT: Well, this would be a good time to take4

out lunch recess then. We'll be in recess until 1:30.5

(Court recessed at 11:59 a.m. until 1:35 p.m.)6

THE COURT: Have a seat everybody. 7

All right. You may proceed, Mr. Lisa.8


BY MR. LISA: 10

Q Sir, right before the lunch break we were talking about11

the Shepard patent, '758 patent; that's Defendant's Trial12

Exhibit 1474. Do you recall that?13

A Yes.14

Q And you had mentioned the fact that he samples that15

signal before recording it; is that right?16

A Yes.17

Q All right. And in fact, sir, you're familiar with the18

Nyquist theorem, aren't you?19

A Yes.20

Q All right.21

THE COURT: The which theorem?22

MR. LISA: Nyquist.23

THE COURT: N-Y-Q-U-I-S-T?24

MR. LISA: Correct.25

HORN - CROSS00143

BY MR. LISA: 1

Q And what that theory --2

THE COURT: I am not, so, if you can --3

MR. LISA: And I am only marginally. You can4

imagine I've been asked to ask these questions, Your Honor.5


MR. LISA: So that our experts can hear the answers.7

BY MR. LISA: 8

Q In fact, sir, if you sample an analog signal to convert9

it to digital, under the Nyquist theorem you actually increase10

the bandwidth don't you, yes or no?11

A No. We're --12

MR. JENNER: I'm sorry, Your Honor, I couldn't hear13

the question. Could --14

THE COURT: Yeah, restate the question if you can15

convert an analog signal?16

BY MR. LISA: 17

Q Sure. If you sample or convert an analog signal, image18

signal to digital form under the Nyquist theorem, the19

bandwidth actually doubles, doesn't it, sir?20

A No, you can't speak of the bandwidth of a digital signal.21

Q So the bandwidth of the signal that's recorded under the22

Nyquist theorem does not increase, is that right? Your23

testimony?24

A I'm not sure that's a well-formed question, I mean I can25

HORN - CROSS00144

tell you --1

Q What does the Nyquist theorem say, sir?2

A The Nyquist theorem says that if you have an analog wave3

form that contains no signals above a certain bandwidth, say4

B, then you need to sample it only at intervals 1 over 2B. In5

other words, you don't need to sample it at every possible6

point, there's a -- there's a certain minimum interval that7

you can use to sample it. That doesn't help answer the8

question about bandwidth of the digital version, that's not9

a --10

Q But it's your --11

THE COURT: Well, in your judgment does the Nyquist12

theorem in any way address the subject of conversion of analog13

to digital samples or signals?14

THE WITNESS: Precisely, Your Honor. It tells you15

how often you have to look at it to make a measurement.16

BY MR. LISA: 17

Q And if you want to retain the original information you18

sample it at twice the highest bandwidth, right, sir --19

frequency? At twice the highest frequency, right?20

A Yes.21

Q Thank you. Now again, so we're clear 'cause we're going22

to move on now, it is your firm opinion and belief that prior23

to 1957 there was no teaching to a person of ordinary skill in24

the art to record analog video signals on a magnetic drum,25

HORN - CROSS00145

right?1

A That's right. In my search I did not find evidence of2

anything of that type.3

Q Well, in your searches you relied on the Hemstreet patent4

as a source of prior art that you asserted against Mr.5

Lemelson, right? Do you recall that?6

A Right now, no.7

Q All right. Well, that would be Defendant's Trial Exhibit8

1475. And do you recall, sir, now that you had studied and9

reviewed the Hemstreet patent and it was identified by you as10

one of the pieces of prior art that was asserted against the11

Lemelson claims. Do you recall the patent now?12

A They look familiar. As I mentioned you've now delving13

into an area that I haven't looked at for a long time.14

Q Well, sir, did you -- before telling the Court that there15

was no recording of analog video signal on a magnetic drum,16

did you go review the pieces of prior art?17

MR. JENNER: Objection, Your Honor. The testimony 18

-- once again, I make the same objection. It's been on a19

multitrack magnetic medium, not just a drum. Never testified20

to that.21

THE COURT: All right. All right. There were22

references to other forms of -- not confined to a magnetic23

drum.24

MR. JENNER: But that it was multitrack that he25

HORN - CROSS00146

testified about.1

THE COURT: Multitrack, yes. 2

MR. LISA: Okay. That's fine.3

THE COURT: Restate your question.4

BY MR. LISA: 5

Q Sir, before you testified on direct that it was not6

possible to record analog video signals on multitrack magnetic7

drums, did you check to make sure that the prior art that you8

cited in your expert reports didn't disclose that very9

feature?10

A I didn't go and specifically check, but I would have11

remembered if it did.12

Q All right. Well, do you see the filing date on the13

Hemstreet patent, sir?14

A Yes, issued '73, filed originally '53.15

Q All right. Why don't we turn to column 9 of the patent,16

sir.17

THE COURT: Well -- and just so I make sure it also18

cites in the references the Shepard '758 patent, the one we19

were talking about earlier, is that correct? The right column20

below January 21st, '73?21

THE WITNESS: Yes.22

THE COURT: Okay. All right. Go ahead.23


THE COURT: Column 7?25

HORN - CROSS00147

MR. LISA: Column 9, Your Honor.1

THE COURT: Column 9.2

BY MR. LISA: 3

Q Well, actually why don't we start with the figures, sir,4

if you -- the second page of the patent. Do you see on the5

very left-hand side of the figure that there is at box 80,6

"Electronic scanning device"? Do you see that?7

A Sorry, which figure are we on?8

Q The very second page of Exhibit 1475. It's the figure,9

do you see the figure there?10

A Yes.11

Q And on the left-hand side you see a box entitled12

"Electronic Scanning Device" number 80; do you see that? And13

then you see a horizontal scan generator and a vertical scan14

generator; do you see that?15

A Yes.16

Q All right. And can you explain to the Court what the17

horizontal scan generator and vertical scan generators are,18

please?19

A I believe they're driving the electron beam scanning20

device.21

Q All right. And do you see that there is to the right of22

the electron scanning device a video amplifier; do you see23

that?24

A Yes.25

HORN - CROSS00148

Q And then there's a switch there indicated at 82A and 82B;1

do you see that?2

A Yes.3

Q The patent's starting to come back to you now a little4

bit?5

A Actually not, but go ahead.6

Q All right. Well, if you look that then goes to another7

video amplifier and then to one of five inputs on a magnetic8

drum memory, number 74. Do you see that?9

A Yes, do you know whether this is Figure 1 I'm -- I'd like10

to consult the text that goes with that.11

Q Well, it's -- I don't see a figure number on it, sir, so12

my guess is it's Figure 8 -- it is, it's Figure 8 at the sheet13

4 of 9 on the patent.14

THE COURT: Will somebody help me understand this15

then because we're talking about a patent filed in February16

'53 but issued January '73. Is there any way to discern when17

it was that the figure that contains reference to the magnetic18

drum appeared? Do we assume that it was 1953 that magnetic19

drum memory?20

MR. LISA: Your Honor --21

THE COURT: Would it be something provided22

throughout the course of the prosecution of the patent23

application?24

MR. LISA: It issued as an original application,25

HORN - CROSS00149

there are no continuations, continuations in part, filed so1

it's the original application filed in 1953, which is why2

plaintiffs asserted it is prior art.3

MR. JENNER: Your Honor, we would agree with that4

that in all likelihood the figures appeared in the patent5

application as filed in 1953, but of course the public had no6

access to this until 1973. 7

MR. LISA: They're free to argue that point, Your8

Honor.9

THE COURT: All right. All right. No, I10

understand. I understand.11

BY MR. LISA: 12

Q All right. If you'd turn, sir, to column 9 of the13

patent.14

A Yes.15

Q Very top of the patent says: 16

"In these embodiments, which embody a magnetic drum or17

equivalent memory device, the scanning beam must be kept18

in accurate synchronism with the rotation of the magnetic19

drum and the electronic counter must be reset at the20

close of each comparison." 21

Do you see that?22

A Yes.23

Q Okay. One of the things you testified to on direct is24

that cameras don't have external triggers; do you remember25

HORN - CROSS00150

that?1

A The scanning devices I considered to be part of the2

camera.3

Q Sir, did you testify on direct that there wasn't a way to4

synchronize a camera trigger with an external storage device5

such as a magnetic drum or tape. Did you say that?6

A I said that you couldn't trigger a camera at an arbitrary7

point in time.8

Q Well, that's what's happening right here, sir, isn't it?9

A I'd have to read it again.10

Q All right. Well, you -- if you look down below, sir, at11

line 27, see it says the memory device has five reading heads,12

each controlled by one of the channels here marked 77A, 77E,13

77I, et cetera? Do you see that?14

A Yes. I'm trying to recollect what it is that's actually15

recorded on the drum given that it's making comparisons with16

particular avowals. It's not clear to me at the moment what17

form of information is recorded on the drum.18

Q Well, sir, if you look down on line 52 it tells exactly19

what it is. It says, "The scanning signal is carried from the20

scanner 80, see Figure 8, through amplifier 81, to a switch,21

82, having two positions, one of which 82A leads to amplifier22

150 and from there to a switch 76 for selectively connecting23

the scan signal to one of the recording heads at 75A, 75E, et24

cetera." Do you see that?25

HORN - CROSS00151

A Yes.1

Q So the output of this scanning camera is stored through2

amplifiers directly on to any of multiple tracks on a magnetic3

recording device; right, sir?4

A I'm not sure about this and in particular you'll notice5

that because of the switch we're only dealing with one track6

at a time, so there's no ability to read signals from multiple7

tracks in synchrony.8

Q Sir, I'm talking about recording an analog video signal9

on a -- any of a plurality of tracks of a multitrack magnetic10

recording device in a patent that was filed in 1953, sir. 11

That's what it says, right?12

A Well, I'm not sure what the question is that you just13

gave me, but the answer is that it's dealing with one track at14

a time, which --15

Q Sir --16

A -- essentially makes it a one-track device. You can17

select to look at different times at different tracks on18

recording. You're not using it in synchrony of multiple19

tracks.20

Q Sir, this is a magnetic recording drum available prior to21

1956 that has multiple tracks, any one of which can record an22

amplified output of a scanning television camera. Right, sir?23

MR. JENNER: Objection. Objection, the question24

lacks foundation.25

HORN - CROSS00152

THE COURT: Well, overruled if the witness can1

respond. I don't know whether it lacks foundation based upon2

the witness's --3

MR. LISA: I think the foundation is in his prior4

art charts, Your Honor.5

THE COURT: Well, I'm not sure. Let the witness6

answer if he can. If he -- he can either respond in the7

affirmative or negative to your question or I don't -- or I8

don't know.9

THE WITNESS: Well, as I indicated it's a long time10

since I looked at this patent, I don't remember the details. 11

But one thing that is apparent right away is that we're not12

dealing with reproducing multiple tracks in synchrony, this13

simply provides a mechanism for recording on a single track at14

a time, which is different.15

BY MR. LISA: 16

Q Sir, what happens here is a standard analog video signal17

can be recorded on any one of a selected tracks; isn't that18

true, sir?19

A Yes, and again I -- assuming that this actually existed I20

stand by the notion that this is different from the21

requirements and the common specification of a device that can22

reproduce multiple tracks in synchrony.23

Q Now when you testified on direct that multitrack magnetic24

recording devices in the forms of drums didn't record analog25

HORN - CROSS00153

signals, and I believe you said that just a few moments ago --1

I asked you, wasn't it important to your testimony that there2

were no magnetic drums that were available prior to 1956 that3

could record analog video signals, and I think your answer4

was, that's correct. Isn't that so, sir?5

A Well, I'm not quite sure how it was phrased. Sometimes6

to reduce the amount of verbiage we leave out all the7

qualifiers, and I have to say that in my experience that at8

the time was not possible to record full bandwidth analog9

video on multiple tracks of a drum.10

Q Well, sir, you certainly have -- you certainly testified11

that you studied all your prior art charts, reviewed them, and12

approved them; right?13

A Yes.14

Q That you spent the time reviewing each of the references,15

including the Hemstreet reference, right?16

A Yes.17

Q And you know there's prior art charts in there that cite18

to the fact that the Hemstreet patent records an analog video19

signal; right, sir?20

A Well, we have to keep in mind that in those --21

Q Yes or no, sir. Can you please answer my question then22

you can explain?23

A I'm sorry.24

Q All right. Do you know that, sir?25

HORN - CROSS00154

A That -- sorry, do I know what?1

Q That there's prior art charts that you prepared and you2

approved that say that the Hemstreet patent records on its3

magnetic drum analog video signals?4

A I can't remember what exactly they state.5

Q You know what, we'll take that -- to speed things along6

we'll find that at break and we'll point it out to you. All7

right?8

A Well, may I just respond to what you said earlier?9

Q I have no question pending.10

A Okay.11

Q Now, just to make sure we're clear on what type of12

signal's being generated here, if you look at line 36 in13

column 9 of the Hemstreet patent, does it tell you what type14

of a scanning element or scanning device is used?15

A Well, it's not specific. It says it's a conventional16

scanning element.17

Q Thank you. Now, sir, I'm going to hand you next18

Defendant's Trial Exhibit 1489. Do you remember this piece of19

prior art that you had cited and relied upon in your expert20

report?21

A Yes, although this is a somewhat blurred copy.22

Q Excuse me?23

A Yes, this is a hard-to-read copy but I believe that's24

what I'm thinking of.25

HORN - CROSS00155

Q This article by Greanias and Hoppel is one that you cited1

against virtually every single claim that Lemelson asserted,2

right?3

A I'm not sure I'd characterize it that way.4

Q All right. Most of the claims; is that a fair5

characterization, sir?6

A I don't remember the exact number.7

Q All right. Do you remember the article though?8

A Oh, yes.9

Q Okay. And do you remember what the scanning rates of its10

scanning system was? The bandwidth, sir?11

A No, I don't offhand.12

Q Well, I believe you testified on direct that these slow13

scan cameras were the things of amateurs, like ham radio guys14

and things like that, right? Didn't you say something to that15

effect?16

A I said they weren't standardized or in widespread use.17

Q All right. Well, we can certainly agree that slow-scan18

television cameras were in fact known to the person of19

ordinary skill in the art in the mid-1950s; correct?20

A Sorry, say that again.21

Q You can certainly agree that slow-scan or reduced-22

bandwidth television cameras were available and known to the23

people of ordinary skill in the art in the mid-1950s, the time24

of Mr. Lemelson's invention?25

HORN - CROSS00156

A I wouldn't agree with that.1

Q Well, do you know what the date of the Greanias article2

is, sir?3

A November 1956.4

Q It's certainly in the scope of the field of those skilled5

in the art as even you've defined that person, right?6

A No, it isn't. I defined the person skilled in the art to7

be someone with an electrical engineering degree and some8

experience with signal processing and television electronics.9

Q And Greanias, this article wouldn't have been read by10

those people, is that your testimony?11

A This deals with character recognition.12

Q All right. Well, certainly you cited it as prior art,13

right?14

A Well, sure. I'd go looking for all kinds of things.15

Q And, sir, the person of ordinary skill in the art you'd16

agree is deemed to know the literature; right?17

A The person of ordinary skill in the art is deemed to know18

his field; he's not deemed to know everything there is19

anywhere.20

Q All right. Well, certainly this was well known at the21

time, the Greanias work, wasn't it, at IBM, sir?22

A I have no idea.23

Q Okay. Fine.24

A I mean even when I found it I was surprised.25

HORN - CROSS00157

Q And is it your view, sir, that character recognition is1

nonanalogous art to the Lemelson patent claims?2

A There's nothing in Lemelson's patents about recognizing a3

defined symbology 4

Q Sir, that's not what I asked.5

A -- so character recognition is not in that art.6

Q So in your opinion any prior art that existed in the7

fields of character recognition would be fairly outside the8

scope of that that you think a person of ordinary skill in the9

art would look at for purposes of determining obviousness or10

anticipation; is that right?11

MR. JENNER: Objection, compound question.12

THE COURT: Sustained. Rephrase.13

BY MR. LISA: 14

Q All right. How about just obviousness? Is it your15

consideration, sir, and I appreciate you looking at me for16

this if you can instead of a counsel, is it your position,17

sir, that all the art and all the literature that exists in18

the field of character recognition, including those that you19

cited in your expert report, are outside the scope of that20

which would be considered by a person of ordinary skill in the21

art; is that your testimony?22

A Well, I'm not an expert in patent law but I understand23

that the notion of what someone is expected to know is24

different when it comes to enablement or what we're talking25

HORN - CROSS00158

about here, so.1

Q Sir, is character recognition in the field of art or out2

of the field of art, which is it?3

A It is not in the field of the art of a person of ordinary4

skill in the art for the Lemelson specification.5

Q All right. So that we're clear then, it is your opinion6

as a technical expert on behalf of plaintiffs in this case7

that the prior art that you previously cited that relates to8

character recognition, including Greanias, is outside the9

scope of that which would be considered by a person of10

ordinary skill in the art; is that right?11

A Yes, I believe the way it works is that for obviousness12

any paper can be cited, whereas for other purposes the person13

of ordinary skill in the art is not assumed to know every14

possible publication.15

Q So if a person of ordinary skill in the art relating to16

the Lemelson patent was considering the issue of obviousness17

it's your view he would consider the Greanias article; is that18

what you're saying?19


Q And when would one skilled in the art not be deemed to21

know about it?22

A I think for purposes of being able to build what's23

described in the invention, you would be assumed to be a24

person of ordinary skill in the art, not someone who was25

HORN - CROSS00159

extraordinary in having access to all possible publications or1

related material.2

Q Now for the purpose, though, of understanding what3

Greanias describes would you please look at the top of the4

second page and explain, please, what the bandwidth is of the5

scanning signals that are generated by the Greanias system? 6

MR. LISA: It requires a little math, Your Honor,7

and those skilled and expert in this field I think can do the8

math.9

BY MR. LISA: 10

Q Do you see the rate there for vertical scan, sir?11

A Yes. I'm just trying to read the rest of the paragraph. 12

Just an estimate would be a few hundred thousand cycles per13

second.14

Q So that's about 230 kilocycles, is that right?15

A Well, it depends a lot on what exactly the resolution was16

along the vertical scan.17

Q Well, roughly several hundred thousand, right? Several18

hundred thousand right?19

A Yes.20

Q Okay. And that's how many times slower and lower than a21

high bandwidth video signal, sir? About 15?22

A Well, just to be clear we're talking about a flying spot23

scanner used as a -- in a modified way as an input device to a24

digital computer.25

HORN - CROSS00160

Q Sir, I'm --1

A So it's -- so it's not -- let me finish. So it's not2

actually producing the kind of analog video signal we've been3

talking about and --4

Q Okay. 5

A -- so it's not appropriate to compare it.6

Q Well, sir, what it says right over to the right is that7

it's video data; do you see that?8

A That's apparently what he called it.9

Q All right. And what he's using is a thing called a10

flying spot scanner, right?11

A Let me just finish reading the part about the video data12

because in the description I see here, he's talking about the13

actual digital information going into the computer.14

Q Sir, what I'd like to focus on is the bandwidth and the15

output of this flying spot scanner, okay? Let's look at that. 16

You recognize, of course, that Mr. Greanias here had a flying17

spot scanner that generated an analog output signal that18

represented the image the camera was scanning, right?19

A Which is immediately converted to digital form.20

Q Sir, please try and answer my questions first before you21

explain. I'll let you explain but I would just like a clear22

answer for the record.23

A Okay. He has an experimental device --24

Q Sir, let's start over again. I'll ask the question.25

HORN - CROSS00161

MR. JENNER: Your Honor, I object, the witness1

is --2

MR. LISA: I've asked a simple question.3

THE COURT: Hold on, hold on. State your question4

one more time.5

BY MR. LISA: 6

Q Sir --7

THE COURT: Listen to the question, give counsel --8

you know, as with most questions there's four possible9

answers: yes, no, I don't know, or I'm not telling. Just10

pick one of those and then you can explain. Go ahead.11


BY MR. LISA: 13

Q Sir, does in fact what Mr. Greanias describes here in14

this article use a flying spot scanner that generates an15

analog output signal that represents the image that is16

scanned? And I think that can fairly be answered yes or no.17

A Yes.18

Q Thank you. Now --19

THE COURT: Now, go ahead if you need to explain20

that in some fashion. Go ahead.21

THE WITNESS: Thank you, Your Honor. I should point22

out that a flying spot scanner was not a standard device and23

this is a particular one that he built for this purpose. And24

secondly, the signal is immediately converted to digital form25

HORN - CROSS00162

for input to his digital computer.1

BY MR. LISA: 2

Q In fact what has to happen here is this flying spot3

scanner has to be synchronized with a card-punching system. 4


A Well, eventually the information is punched on cards.6

Q All right. And, in fact, do you recall reading in this7

article that one of the things that has to happen is that the8

scanning of each line of data by this flying spot scanner has9

to be externally triggered and synchronized to a card punch;10

do you recall that, sir?11

A Well, that's one of the advantages of the flying spot12

scanner over, say, a vidicon.13

Q I take it that's a yes, first, sir?14

A Yes.15

Q Thank you. Now is it your testimony, sir, that an analog16

image signal generated as a result of scanning at roughly 20017

kilohertz is not a video signal?18

A In the 1950s what video signal meant was the output a19

television camera. Now some later might have generalized the20

term to include signals from other kinds of devices.21

Q Now one of the things you said in your expert report and22

at your deposition was that flying spot scanners were old23

devices that weren't used in the '50s, right? Do you remember24

that?25

HORN - CROSS00163

A Sorry, in my deposition?1

Q Yes, in your deposition when I asked you about flying2

spot scanners you made some comment, for example, that their3

parents or grandparents may have used them, but you doubt they4

would have. Do you recall something to that effect, sir?5

A Vaguely. They were used in the early days of television,6

except for the ones used to reproduce film as we discussed7

earlier.8

Q All right. Now, in this case it's a reflective flying9

spot scanner; right, sir?10

A Yes.11

Q And it's not reproducing film, is it?12

A No, it's reproducing a flat surface, the ink on the flat13

surface.14

Q Right. And it's doing that through thresholding. Do you15

see that above at the top of the first column in the second16

page, sir?17

A Sorry. The first column --18

Q Very first of the line on the second page, talks about19

looking at whether the signal exceeds the threshold. See20

that?21

A Yes.22

Q And one of the other things you said on direct is that23

thresholding doesn't work; right?24

A I wouldn't characterize it that way. I said that if you25

HORN - CROSS00164

use thresholding you're subject to a number of problems such1

as noise, brightness variations, changes in the sensor2

sensitivity and so on.3

Q All right. So then that we're -- so that we're clear4

then, your testimony was that it wouldn't work well. Is that5

right, in your view?6

A No, again that's a mischaracterization. For example, it7

depends on what you're going to do with the signal. Now here8

we're talking about character recognition, and if you look for9

example at -- well, I'm not sure if Figure 2 is the right10

place to look, but Figure 2 gives you an idea that there are11

imperfections in the characters reproduced and you have to be12

able to deal with those imperfections. So in this case the13

thresholding introduces problems of its own, but the basic14

method, in order to work at all, has to be able to accommodate15

variations in character shape and it's designed to do that. 16

Now, in a different situation where you depend critically on17

the exact position of the "inflection" you cannot tolerate18

those problems introduced by thresholding.19

Q Now, sir, is it your view that the system described in20

this Greanias paper wouldn't work?21

A I didn't say that. I just explained that even though22

it's using thresholding because of the way it analyzes the23

information it can probably -- I mean I don't have any24

personal experience, but I have no reason to not believe that25

HORN - CROSS00165

it would recognize characters.1

Q Right. So when Greanias uses thresholding it works, when2

Lemelson does use thresholding it doesn't work; right?3

A Yes, and that's a very important point because they're4

doing different things with the signals afterwards.5

Q Now, you certainly recognize that the problems associated6

with storing video signals on drums and tapes become less7

significant when you reduce the bandwidth of the signal;8

right?9

A Sorry, I recognize --10

Q The problems that you identify with storing video signals11

on magnetic tapes and drums become less significant when you12

reduce the bandwidth of the video signal, right?13

A Well, I don't know if that's true.14

Q Is that --15

A I'm answering, I don't believe it's true, because there's16

a great deal of electronics and machinery you can buy off the17

shelf for standard video where if you depart from that18

standard you've got to start building your own stuff and you19

run into problems that you wouldn't have otherwise.20

Q Well, when you testified on direct over and over again21

that the reason Lemelson couldn't store on tape is because it22

was a high bandwidth standard video signal, you meant a 3 to 423

megahertz signal, right?24

A Yes.25

HORN - CROSS00166

Q And is it your testimony now that if the signal is in the1

range of a couple hundred kilohertz you couldn't store an2

analog video signal on a magnetic disk or drum in the mid-3

1950s?4

A Well, let's first of all say that's certainly not what5

Lemelson tells you and then now we're talking about a disk or6

drum. Are we talking about disk or drum or tape, which is it?7

Q Well, let's start with the question I asked which had8

nothing to do with Lemelson, sir. The question I asked had to9

do with the bandwidth and the video signal. So, again, let's10

try and focus on what I'm asking. Is it your testimony as an11

expert that you could not record analog video signals in the12

bandwidth range of a couple hundred kilohertz on magnetic13

drum, multitrack magnetic drum in the mid-1950s?14

A Well, your question has some contradictions in it. 15

You're talking about video and then you're talking about -- I16

forget how you said it, a few hundred kilohertz.17

Q Let's ask it again then and take that linguistic issue18

away. Is it your testimony, sir, that in the mid-1950s it was19

not possible to store an analog image signal output by a20

camera in the range of several hundred kilohertz on a21

multitrack magnetic drum?22

A Well, during that time audiotape equipment was developed,23

so if you dropped the bandwidth even lower you could record24

low bandwidth signals. Now, you're again bringing in the25

HORN - CROSS00167

video signal. The video signal is a high bandwidth signal.1

Q A signal output by Greanias is not a high bandwidth2

signal, is it?3

A Well, it's fairly high. Not as high as a standard video4

signal.5

Q Well, it's 15 times less than a standard high band with6

video signal right, sir?7

A Well, I don't know that for sure but it's the order of8

magnitude.9

Q It's close, right?10

A It's --11

Q Sir, if you assume it's 230 kilohertz when you do the12

math would you agree that it's about 15 times less than the13

high bandwidth frequencies that you were talking about?14

A Well, I don't have my pocket calculator here, but it15

seems about right.16

Q Thank you. And you saw on the Hemstreet patent that that17

was a full bandwidth signal, right, that was recorded on any18

of multiple tracks of a rotating magnetic drum; right?19

A Well, again, I haven't reviewed this. This is a very20

long patent, it'd take me some time to look at it again.21

Q It says conventional scanning elements right, sir?22

A Well, who knows what that means? He doesn't say23

television camera or vidicon.24

Q Now you were certainly aware of the Greanias article at25

HORN - CROSS00168

the time you gave your testimony, right?1

A Yes.2

Q Now, do you agree, sir, that people at least skilled in3

the character recognition arts knew to use flying spot4

scanners at reduced bandwidths, such as that shown in the5

Greanias article, Exhibit 1489?6

A I'm not sure I'd go that far, there were a few7

experiments of this general type by people at IBM.8

Q Well, you certainly agree that it was published and9

written about in mid-1956, right?10

A It was published, yes.11

Q So people skilled in the art that would include character12

recognition would be deemed to know about this; right?13

A Yes, if we were talking about someone who's skilled in14

the character recognition art they most probably would have15

known about this.16

Q And likewise Hemstreet taught or wrote that in at least17

1953 you could record video signals on multitrack magnetic18

recording drums; right?19

A Well, again, you're rephrasing things. It's important to20

point out that this was a one-track-at-a-time device which is21

completely useless for reproducing synchronous tracks that are22

processed together.23

Q You agree that he could certainly store multiple signals24

or store a -- I'll withdraw the question. You certainly agree25

HORN - CROSS00169

that the Hemstreet patent, Defendant's Trial Exhibit 1475,1

describes that a image signal can be recorded on one track and2

then another image signal recorded on another track; right?3

A Well, as I told you I haven't reviewed this recently. I4

don't know what other qualifications or processing occurred5

here. For example, if he's dealing with character recognition6

he may very well have dealt with a small image area.7

Q So your testimony that recording on a multitrack magnetic8

drum was not possible in the mid-1950s is now limited to the9

situation in which you need to look at more than one signal at10

a time; is that right?11

A No, my review of the state of the art of magnetic drum12

recording in 1950s indicates that they were used in some13

computers for digital recording and they were not able to14

record full bandwidth analog video signals.15

Q That's what Hemstreet does, sir.16

A Well, that's what he says he does, and without reviewing17

it more carefully I can't be sure what the qualifications here18

were on his signals.19

Q Now, you're aware, of course, aren't you, that there are20

other references that describe slow-scan or reduced-bandwidth,21

other articles that were published in the mid-1950s that22

describe slow-scan or reduced-bandwidth cameras; correct, sir?23

A Do you have a specific one in mind?24

Q I'm asking whether you know, sir? You testified on25

HORN - CROSS00170

direct about certain amateur radio things that really don't1

count. Do you recall that?2

A Well, I don't remember saying exactly that.3

Q Well, you made a point of the fact that they were4

amateurs and that those persons really skilled in the arts of5

scanning wouldn't have read those types of articles. Do you6

remember that testimony, sir?7

A Person of skill in the art in -- as I've defined it. Not8

-- you're recharacterizing what I said the person of skill in9

the art was.10

Q I think I -- it's fair to say that what you said on11

direct is that these articles that describe slow-scan cameras12

were directed towards amateurs in the ham radio area. Do you13

recall that?14

A I'm not sure we're talking about slow-scan cameras at the15

time so much as a slow-scan transmission, which is what those16

ham radio articles were about.17

Q Well, how do you take a signal output from a camera at a18

high bandwidth and reduce its bandwidth for transmission, sir?19

A You process it electronically, you sample it, as20

occurred, for example, in this experimental AT&T video phone.21

Q And how was that -- would you explain to the Court your22

understanding as to how that experimental system by AT&T, in23

your view, operated in the mid-1950s?24

A It used a small number of the lines of the full frame and25

HORN - CROSS00171

within each line it sampled only a small number of dots, I1

think it was 40.2

Q So it reduced the image content; is that right, sir?3

A Well, rather dramatically, and it also produced something4

that's in a different form what the input was.5

Q Sir, what it produced was a low bandwidth signal of the6

image that was scanned, right? Yes or no.7

A Well, it produced a sequence of, I forget, 2800 dots of8

varying brightness from a ordinary analog video input, as far9

as I understand.10

Q It took a normal audio analog video input; is that what11

you said?12

A The article suggests that they were using vidicon.13

Q All right. And it did what to it to reduce the14

bandwidth?15

A It essentially sampled it, throwing away a great deal of16

the information.17

Q And that made it a lot easier to handle the signal or18

transmit it over low bandwidth media, right?19

A Yes. And it also made it much less useful because20

there's not much information in that signal.21

Q Sir, the -- again, I just fairly asked for a question22

that could be yes. The "but also" had nothing to do with my23

question, okay?24

A All right.25

HORN - CROSS00172

Q The fact is that what it generated was an analog signal1

that represented the image characteristics at a bandwidth much2

less than your high bandwidth video, right?3

A Yes, although it was a kind of odd analog because it4

divided the line up into 40 elements.5

Q Now is it your view, sir, that the signal generated by6

those systems could not be recorded?7

A Could not be recorded? Those -- no, I'm not saying that.8

Q All right. In fact you know that the signal generated by9

those systems could be recorded on magnetic media that was10

available at that time, right?11

A Yes, I don't know about multitrack, but you could12

certainly at that time get an audiotape recorder.13

Q Well, you know that there were multitrack data recorders14

available, right, at that time?15

A Data recorders.16

Q Sure, multitrack magnetic data recorders. For example,17

like used to monitor all the various inputs of the bombers18

that were being made at the time. Remember reading about19

that?20

A No.21

Q So you have no knowledge or understanding of the types of22

multitrack data recorders that were available in the mid-23

1950s?24

A Well, it was the beginning of stereo recording for audio,25

HORN - CROSS00173

so two tracks certainly were feasible.1

Q Right. And if I -- so to clarify then, the opinions that2

you have formed are based on your understanding that3

multitrack, such as five, six, seven, eight-track, data4

recorders were not available in the mid-1950s; is that right?5

A No, that's not right. What I'm saying is that there was6

no multitrack device that could generate -- that could record7

and reproduce analog video and at the same time various kinds8

of digital signals.9

Q All right. Then I take it you agree that it was known to10

those skilled in the art in the mid-1950s to record analog11

data on multitrack magnetic recorders; right, sir?12

A I don't know that.13

Q All right. And so the opinions that you've formed and14

offered here in court reflect no understanding of whether or15

not those types of multitrack data recorders were available in16

the mid-1950s, correct?17

A No. I'm sorry you're rephrasing what I'm saying.18

Q Well, do you, sir --19

A I said there were --20

Q -- or do you not, sir, know?21

THE COURT: Hold on.22

MR. JENNER: Your Honor, objection.23

THE COURT: Hold on. Hold on. Yeah. Go ahead.24

THE WITNESS: I said there were no multitrack25

HORN - CROSS00174

recorders that could record and reproduce analog video signals1

along with digital signals in synchrony. Now you're talking2

about some other kind of recorder apparently.3

BY MR. LISA: 4

Q Yes, sir, I am. Each question I've asked has not5

included the word "video". The last five questions have not6

said video and I'm excluding your definition of video from the7

question, so I'd like you to focus on my question, sir. Is it8

or is it not correct that the person of ordinary skill in the9

art in the mid-1950s, at the time of Mr. Lemelson inventions,10

knew about multitrack analog data recorders? Did he or did he11

not?12

A I believe there were low bandwidth, such as audio13

recorders that might have had more than one track.14

Q And what's the most number of tracks you knew about at15

the time?16

A Well, there was certainly stereo recording equipment at17

that time.18

Q All right. Could you repeat that, I'm sorry, I couldn't19

hear you?20

A There was certainly audio stereo equipment developed21

around about that time.22

Q And are you aware of the different types of data23

recorders used in the military industry to record, for24

example, stresses on wings and things such as that? On25

HORN - CROSS00175

bombers and fighters?1

A I'm aware of multitrack recorders from Ampex in the 1960s2

for telemetry from rockets or something.3

Q So you agree that the person of ordinary skill in the art4

at the time of Mr. Lemelson inventions knew about multitrack5

analog data recorders, right? We can agree to that?6

A No, I don't. The person of ordinary skill in the art7

would have been in a different area and no business, plus, as8

I mentioned, I believe these Ampex recording systems were9

later.10

Q So the person of ordinary skill in the art, as you've11

defined it, has no knowledge of magnetic recording, sir?12

A Well, they might have some general knowledge, but it's13

not -- it's not part of their -- the definition I gave of the14

person of ordinary skill in the art.15

Q Well, then let's be clear. Your testimony's been16

premised on a definition of the person of ordinary skill in17

the art that does not have skill or knowledge of magnetic18

recording?19

A Well, skill or knowledge to the extent that it existed in20

the mid-1950s.21

Q So that if a person of ordinary skill in the art was22

trying to use Mr. Lemelson's invention, as you defined that23

person, who would he turn to to look for information on24

recording signals?25

HORN - CROSS00176

A Well, that really would be a problem, because you1

couldn't run to the corner store and buy this multitrack2

magnetic tape.3

Q But there were people practicing in the industry of4

magnetic recording at the time; right, sir?5

A Excuse me. There were no suitable devices for doing any6

of this, so it's not as if there was an art that they didn't7

know about, it's there was no such art.8

Q Sir, have you considered the fact that the person of9

ordinary skill in the art is deemed to know literature that's10

published? Has that formed part of your opinion in this case?11

A They would know some of the literature published in their12

area, yes.13

Q All right. And is -- has your testimony been premised on14

the fact that in order for something to be known to a person15

of ordinary skill in the art he has to go get it from a16

commercially available public source? Is that one of the17

requirements you have placed on the person of ordinary skill18

in the art in this case?19

A If you have a system composed of modules there must be20

some way of either getting those modules or descriptions of21

how to build them and Lemelson doesn't tell you how to build22

this multitrack recorder -- 23

Q Sir --24

A -- so you'd have to be able to get it somewhere.25

HORN - CROSS00177

Q Now did -- or you'd have to go to the literature to see1

where it's built; right, sir? To see how to build it?2

A Well, assuming it existed and there was a description of3

how to build it.4

Q Again, if we can at least answer the questions fairly yes5

or no, sir, and then explain. I'll give you the time to6

explain, I'd like a yes or no for the record. 7

A Well --8

Q Is -- I'll ask the question clearly, let's get a clear9

answer, and if you want to explain go ahead. If the -- you10

said that the Lemelson specification does not describe to a11

person how to make or use a multitrack recorder, right?12

A He does not describe how to build or -- yes.13

Q And a person of ordinary skill in the art, as you've14

defined it, doesn't include the person who builds or makes15

magnetic recorders, right?16

A Right.17

Q And yet you recognize that many of the claims call, even18

under your interpretation, for recording magnetic signals,19

right?20

A The problem is --21

Q Yes or no, please, sir.22

A You're taking a whole series of questions and you're not23

giving me an opportunity to tell you that you're putting24

together a number of things that don't make sense.25

HORN - CROSS00178

Q Well, that happens sometimes. If -- I'm asking whether1

you recognize that the claims at issue in this case, even as2

you construe them, call for recording signals on multiple3

tracks of tapes?4

A Yes.5

Q And yet you've defined the person of ordinary skill as6

somebody who has nothing to do with magnetic recording, right?7

A Keeping in mind that this technology did not exist so how8

could someone be skilled in the art of something that doesn't9

exist?10

A Sir, I take it that's a yes and what followed was an11

explanation; is that correct, sir?12

A What did you think I said yes to?13

Q The question was, did you define the person of ordinary14

skill in the art in this case to exclude somebody skilled in15

the recording of signals on multitrack tapes; yes or no?16

A I did not exclude that. I said that the person skilled17

in the art was, you know, what I said.18

Q All right. Then does -- go ahead.19

A And if they knew about magnetic tape they'd know about20

magnetic tape. At the time there was no multitrack magnetic21

tape suitable for recording analog video, so there was no way22

for them to be skilled in that art.23

Q Well, sir, I didn't put a limitation of analog video on24

this, okay?25

HORN - CROSS00179

A Well, you'd need that.1

Q You keep slipping that word in. Let's focus on the issue2

of defining -- of whether the person of ordinary skill in the3

art as you have defined it includes somebody who has knowledge4

or skill in the field of magnetic recording?5

A They --6

MR. JENNER: I object to the question in view of the7

predicate, Your Honor, as ambiguous and indefinite.8

THE COURT: No, overruled. I don't -- I don't think9

it's ambiguous. It's clear that the witness and counsel are10

not communicating on the same wavelength, if you will, on11

this, but restate your question and --12


THE COURT: -- then let's move on. I mean the14

witness is --15

MR. LISA: -- I think, if I may, an important issue16

in this case is how you're going to define the person of17

ordinary skill in the art and the claims have certain elements18

in them that call for recording. We've all seen that.19

THE COURT: Right. And the witness can tell us20

what, and he has, what he uses as his definition for person of21

ordinary skill in the art, and as I understand your22

examination now you're trying to -- accepting what he has said23

as his definition, now carve out those persons of a particular24

skill that either would or would not fall within that.25

HORN - CROSS00180

MR. LISA: If his person of ordinary skill doesn't1

have the skills to practice the claimed elements then Your2

Honor has to look elsewhere for that, and if this witness3

wants to exclude it, that's fine, but let's be clear on it.4

THE COURT: All right. And how many categories of5

persons do you seek to query him further on?6

MR. LISA: As far as skill in the art?7

THE COURT: Yes.8

MR. LISA: Well, one of the other areas is whether9

that person, as he's defined it, knows about computer10

processing or analyzing.11

THE COURT: All right. Ask him one more time about12

the same area we've been on, I'll let you -- you ask it and13

I'll get a yes or no and --14


THE COURT: -- just state it as simply as you can so16

the witness can follow it. 17

He's not talking about video -- analog video, and18

just listen to the question and give him a yes or no. Go19

ahead.20

BY MR. LISA: 21

Q Sir, would the person of ordinary skill in the art, as22

you've defined it and used it in this case, know or have an23

understanding of how to record analog signals on multitrack24

magnetic tapes or drums?25

HORN - CROSS00181

A The person of ordinary skill in the art as I've defined1

it is an electrical engineer who would have come across2

magnetic recording methods in their education. Now you've3

extended it to multitrack analog video and so on; they would4

not have come across that. Now the person --5

THE COURT: I don't think he said analog video in6

his question.7

THE WITNESS: Oh, sorry. I misunderstood then.8

BY MR. LISA: 9

Q You're right, I have extended it to multitrack magnetic10

recording, sir. You're absolutely right.11

A Okay.12

Q Would he or would he not know about recording analog13

signals on multitrack magnetic media, yes or no?14

A I believe magnetic recording would have been taught at15

that time. I don't know if it included multitrack recording16

since even stereo audio only came out in the '50s sometime.17

Q So you don't know; is that right?18

A I'm saying that the person of ordinary skill in the art19

would have known something about magnetic recording but not20

about the kind of magnetic recording required here 'cause it21

didn't exist.22

Q Well, you still keep going back to that, sir, I'm asking23

a very --24

THE COURT: Well, you know, I don't think -- I think25

HORN - CROSS00182

he's given you what he can give you -- 1


THE COURT: -- and I don't think he's going to say3

more. You can make your argument as to what it -- what it4

means, but --5

BY MR. LISA: 6

Q Well, sir, did you happen to notice -- you did review Mr.7

Lemelson's 1956 application, right?8

A Yes.9

Q Okay. And -- 10

MR. LISA: Can I have 1125B, please? And 1146A.11

THE CLERK: Yes.12

BY MR. LISA: 13

Q And do you recall reading at the beginning of Mr.14

Lemelson's 1956 application that he referred to two other of15

his pending applications? Do you recall that in the field of16

video recording? And I'll refer you to the file history,17

1127A, first, sir. Let's go to the file history 1127A, it's18

this big binder I gave you.19

THE COURT: The clerk will hand --20

THE WITNESS: Oh, thanks.21

BY MR. LISA: 22

Q And I think I've tabbed the second tab for you there, Tab23

2, do you see that?24

MR. JENNER: Could we have a minute to get that?25

HORN - CROSS00183

MR. LISA: Sure.1

MR. JENNER: Where are we?2

MR. LISA: Tab 2.3

MR. JENNER: What page?4

MR. LISA: Your Honor, this is a different exhibit5

than you're looking at right now, it's the big thick one.6

THE COURT: Yeah, it's the -- it's the -- it's the7

binder, 1127.8

BY MR. LISA: 9

Q All right. And do you see there on the first paragraph 10

-- let me back up. I think you testified on direct that Mr.11

Lemelson made no suggestion or teaching of how to record12

analog video signals on multitrack drums, do you recall saying13

that, sir?14

A He doesn't explain how to do that in the common15

specification.16

Q All right. Well, let's look at this first -- second full17

paragraph here. It says:18

"It is known in the art to record a series of image si19

gn20

al21

s22

on23

a24

mo25

HORN - CROSS00184

vi1

ng2

ma3

gn4

et5

ic6

ta7

pe8

an9

d10

fo11

r12

re13

pr14

od15

uc16

in17

g18

sa19

id20

si21

gn22

al23

s24

at25

HORN - CROSS00185

es1

se2

nt3

ia4

ll5

y6

th7

e8

ti9

me10

ra11

te12

of13

re14

co15

rd16

in17

g18

to19

cr20

ea21

te22

a23

mo24

ti25

HORN - CROSS00186

on1

pi2

ct3

ur4

e5

or6

vi7

de8

o9

or10

te11

le12

vi13

si14

on15

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fo19

r20

vi21

su22

al23

ob24

se25

HORN - CROSS00187

rv1

at2

io3

n.4

"5

See that?6

A Yes.7

Q And it goes on to say: 8

"My co-pending application, serial numbers 515,417 and9

544,991, describes means for recording a video signal of10

a single frame or screen sweep of a video camera scanning11

beam or flying spot scanner which may be reproduced12

thereafter," et cetera, et cetera. 13

Do you see that?14

A Yes.15

Q Did you go review those two prior pending applications of16

Mr. Lemelson's?17

A I believe I looked at the patents that issued from them.18

Q You did not review those pending applications themselves? 19

Didn't order them and look at them?20

A I don't remember doing that.21

Q Well, we've provided to you an Exhibit 1125A and 1125B,22

excerpts from those file histories.23

THE COURT: I think actually it's 1146A and 1125B.24

MR. LISA: Oops, I'm sorry. You're right, Your25

HORN - CROSS00188

Honor.1

THE COURT: At least that's what was provided.2

MR. LISA: I'm not doing very well on the exhibits3

today. Thank you.4

BY MR. LISA: 5

Q And, if you would, turn to 1125B and you see that this6

application on the second page, if you look up top, has a7

November 4th, 1955 date on it. Do you see that? The second8

page.9

A Well, I can't read the date, but I assume --10

Q Well, it says -- mine says pretty clearly November 4th --11

"Filed complete, November 4th, 1955" right at the top of the12

page. Do you see that?13

A Oh, okay. Over here.14

Q And you -- and I'll represent to you that this is the15

first of those applications, the 544 -- no, sorry, the second16

one, the 544,991 application. All right? And if you turn to17

the third page, sir, you'll see where it states, "This18

invention relates to magnetic recording and is a" -- and it's19

cut off, "uation," it's a -- "which is a continuation in part20

of my pending application entitled 'Computing Apparatus,21

Serial Number 515,417.'" Do you see that?22

A Yes.23

Q All right. So, that's the second one referred to in the24

1956 machine vision spec, right, that we just read a few25

HORN - CROSS00189

moments ago?1

A Well, as long as you take out the acclamation "machine2

vision."3

Q Okay. Mr. Lemelson's 1956 application, right?4

A Yes.5

Q Now do you know whether this application describes6

storing on a magnetic disk or drum?7

A I believe the patent that issued from that describes8

that.9

Q Well, if you look at Figure 6 in the back, the very first10

sheet of figures, you'll see that there's reference to a11

magnetic drum there. Do you see that?12

A I see a drum in Figure 6.13

Q All right. And if you turn to page 8 of the14

specification you see that Mr. Lemelson describes there his15

magnetic drum; do you see that? Now, continuing over to page16

9 it says the drum and you can see that he describes recording17

the multiple magnetic recording areas, A-1, A-2, A-3, A-4 that18

are spaced apart; do you see that?19

A Yes.20

Q So you see that he's describing a multitrack magnetic21

recording device; do you see that?22

A Yes. Of course that doesn't make it a reality.23

Q Sir, I'm just asking whether you see that he's describing24

it there?25

HORN - CROSS00190

A Yes.1

Q All right. And then do you recall reading that what he2

uses to temporarily store the image signal is a storage tube3

in these inventions. Do you recall that?4

A I don't recall specifically, but I believe that's5

correct.6

Q All right. Well, if you look at column -- page 27 you'll7

see that he describes the storage tubes that he was using back8

at that time period.9

A Yes. As far as I remember the way this worked it was a10

way of extracting a single frame from a continuous piece of11

video and recording it.12

Q Is that different from your interpretation of what Mr.13

Lemelson does in the common specification, as you called it?14

A Well, it's different in that there he has a whole slew of15

signals arranged on the same tape and also I'm not sure it's16

restricted to a single frame.17

Q Well, you know, what Mr. Lemelson says over and over18

again in the common specification is that it's a single frame19

that's stored, preferably on a closed loop tape, right?20

A Well, he says that in places; in other places he has21

multiple frames stored.22

Q But what he does say is what he's storing is multiple23

single frames; right, sir?24

A He uses that terminology in places, he's not very clear25

HORN - CROSS00191

in others on what's stored.1

Q And when you showed up on the screen one of the figures2

with two spools under the tape, do you recall that?3

A Yes.4

Q All right. That's not shown anywhere in Mr. Lemelson's5

patent, is it?6

A There's a figure that's similar to that, isn't there?7

Q What he shows, sir, are closed loop tapes; right, sir?8

A I forget what our animation showed.9

Q All right. Well, when you -- the animation showed spools10

underneath instead of a closed loop tape, right?11

A I see.12

Q Yes?13

A Well --14

Q Did it or not; yes or no, sir?15

A I don't recollect but I believe that's correct.16

Q All right. Did you direct that the figure add the spools17

instead of showing a closed loop tape, or was that done for18

you?19

A I probably drew that based on the notion that a closed20

loop tape wouldn't work, given that the RCA reports and the21

other early experiments showed that the tape would pass over22

the head for only that long before it was completely stripped23

of magnetic material.24

Q So you decided to change from a closed loop tape on your25

HORN - CROSS00192

own to a spool?1

A He only mentions the closed loop tape in connection with2

certain of the embodiments, so my understanding was that in3

other cases they might be reel to reel, you know, since in the4

original application he refers to the 1950 RCA tape which was5

a reel-to-reel device.6

Q And nowhere in the Lemelson specification does he say7

that what he's storing is motion picture video, right? He8

doesn't use the words "motion picture," does he, in the common9

specification; right, sir?10

A I don't remember seeing that term used there.11

Q Right. And you also agree that nowhere, not once in the12

specification does he use the words "high bandwidth" either,13

right? Not once.14

A Actually he uses several phrases that indicate high15

bandwidth.16

Q Sir, I'm -- again, please focus on my question. Does Mr.17

Lemelson say anywhere in the common specification that the18

signal that is recorded should be "high bandwidth"? Does he19

say that?20

A I believe in the intrinsic evidence he does actually use21

that term in the prosecution --22

Q Again, sir, let's go back to my question. 23

A Sorry, in the specification again I don't think he uses24

that term explicitly. There are terms such as "microseconds"25

HORN - CROSS00193

and so on that indicate he's talking about high bandwidth.1

Q There's also words like slow scan that indicate he isn't;2

right?3

A A single use of the word "slow."4

Q Right. There's no use of high bandwidth, none. Not a5

single time does high bandwidth appear in the common6

specification, but the word "slow scan" does; right? Yes or7

no?8

A Yes.9

Q Now, going back to this 1955 application that's10

referenced in Mr. Lemelson's 1956 application, I'm referring11

to the Exhibit 1125B, if you look at page 27 Mr. Lemelson12

describes what type of storage tube was available for use at13

that time. Do you see that?14

A I guess I'm having a hard time with this application15

since I'm more familiar with the patents. I'm curious why16

you're referring to this?17

THE COURT: Well, that's all right. Let counsel18

direct his questions to you. Go ahead and state your question19

again.20

THE WITNESS: Which part of the page are we on?21

BY MR. LISA: 22

Q Page 27, the second paragraph.23

THE COURT: The panel control 60?24

MR. LISA: That's correct, Your Honor.25

HORN - CROSS00194


BY MR. LISA: 2

Q And it says down below "The storage device 69 may" -- 3

(Off-record colloquy)4

MR. LISA: Can I ask please, guys.5

MR. JENNER: We're sorry.6

MR. LISA: Thank you. 7

8

BY MR. LISA: 9

Q "The storage device 69 may include one of a number of10

different storage tubes available for the purpose of recording11

video signal." Do you see that?12

A Yes.13

Q All right. Such storage tubes as, (a), a signal14

converter electrical, electrical storage tube, graphicon,15

radicon, et cetera; (b), an iconoscope storage tube, et16

cetera. Do you see that?17

A Yes.18

Q Now you testified on direct unequivocally that Mr.19

Lemelson did not suggest in his application the use of a rate-20

converter storage tube. That's what you said; right, sir?21

A And he doesn't in --22

Q Sir, please. Did you testify that Mr. Lemelson does not23

describe in the common specification that his storage tube24

could be a rate-converter storage tube?25

HORN - CROSS00195

A That is correct.1

Q All right.2

MR. JENNER: Excuse me. Counsel, could you state --3

Your Honor, could counsel state where this is? I can't find4

it.5

MR. LISA: It's on page 27, second full paragraph.6

MR. JENNER: Page 27 of which?7

THE COURT: Page 27 of Exhibit 1125B, the second8

paragraph starting with the sentence, "The panel control 60 is9

switch and relay."10

MR. JENNER: And is -- did I -- did I understand11

counsel to say that this is in the common specification?12

THE COURT: Counsel didn't --13

MR. LISA: Well, counsel said --14

THE COURT: -- counsel didn't say anything about15

that. He asked the question of the witness whether the16

witness said it was not in the common specifications, as I17

understood the question.18

MR. LISA: And the witness said, "Yes."19

THE COURT: And the witness said, yes, it was not in20

the common -- as he recalled in the common specifications.21

BY MR. LISA: 22

Q And yet, sir, in the patent -- the co-pending application23

that Mr. Lemelson referred his readers to, for the purpose of24

storing video, again, "My co-pending patent application25

HORN - CROSS00196

describes means for recording a video signal for a single1

frame," is what he said. Do you recall we read that a little2

bit ago in the 1956 application filed by Mr. Lemelson? The3

machine vision one, sir. Do you recall him saying that, page4

1 of the specification?5

A Well, see the problem I'm having is that in the patent as6

issued the reference is to something else, so I'm not sure how7

someone would find this reference.8

Q Well, sir, I showed you all sorts of requests for access9

and in fact a patent issued off the 1956 application, so the10

file's available. And do you happen to know, by the way, sir,11

the patent that's referenced whether -- how it is that those12

two words got changed?13

A Sorry, which two words?14

Q Those two -- those two numbers, 515,417 and 544,991, on15

page 1 of the 1956 application filed by Mr. Lemelson? Do you16

know how it is that those got changed to refer to --17

A 688,348?18

Q Yes.19

A Actually, I don't.20

Q Thank you. Well, would it surprise you that the 688,34821

application that appears as listed in the common specification22

is a later-filed application based on these two, 1146A and23

1125B?24

A Well, I wouldn't know about that.25

HORN - CROSS00197

Q All right. 1

A About all I can say is that the patent as issued refers2

to the other application which I did look at.3

Q All right. Well, if you looked at the file wrapper you4

would have seen these in there; wouldn't you, sir? Did you5

see these?6

A I don't recall noting these serial numbers, no.7

Q Well, let's assume then that some -- that you did see8

them and you're looking at what I just cited you to, which is9

in Exhibit 1125. Do you agree that what Mr. Lemelson says10

there is that the type of storage tube that can be used for11

recording his video is a rate-converter type of storage tube?12

A He's saying here it could be a signal converter or an13

iconoscope storage tube. I don't know what the latter is.14

Q You know what a signal converter is right, sir?15

A Well, I can guess. He doesn't explain it in more 16

detail --17

Q Well --18

A -- and, again, I'd like to point out that this is a very19

obscure way of getting here. It's not something someone20

looking at the patent would find.21

Q But, sir, somebody who did the research and looked at it22

would see that what Mr. Lemelson says in his referenced co-23

pending application is that the type of storage tube can be a24

signal converter type right, sir?25

HORN - CROSS00198

A Well, I don't sound like -- want to sound like a tape1

recording, but, again, when I picked up the '029 patent I2

looked for 688,348, I didn't look for these two applications.3

Q Well certainly, sir, what's contained on page 27 of4

Exhibit 1125B indicates that at the time Mr. Lemelson was5

certainly aware of signal-converter-type storage tubes, right?6

A Yes, but he nowhere points out that there was any utility7

to him in the common specification or teach you to use them.8

Q All right. So in your view a person skilled in the art9

facing all these problems that you've identified with high10

bandwidth signals and having knowledge as evidenced by 1125B11

of rate converter storage tubes would elect to try and record12

high bandwidth signals all the time? 13

A Oh, yes.14

Q Is that what you testimony is?15

A Because that's what Lemelson tells you to do --16

Q All right. 17

A -- and I'm sorry, but I don't see how this obscure18

reference solves that problem because all it says is it could19

be a signal converter, through a electrical, da-da-dot, and20

iconoscope storage tube without explaining what you do with21

it, how it would fit into the common specification, and, as I22

said, I don't even know what this iconoscope storage tube is. 23

It's -- there's not enough detail given to this --24

Q Well, we'll show you some articles on them, sir, in a few25

HORN - CROSS00199

moments. 1

In the meantime, do you have your highlighted patent2

handy, sir? Exhibit 17A.3

A Yes.4

Q Now you said just a few moments ago that Mr. Lemelson5

doesn't describe anything other than high bandwidth video,6

right? Isn't that right, sir?7

A Well, I'm not sure that's the exact way to characterize8

what I said.9

Q Well, does Mr. Lemelson describe in the common10

specification generating image signals other than high11

bandwidth video?12

A No.13

Q And you testified at length about that on direct and14

cited the various parts of the common specification for that,15

right?16

A Yes.17

Q The one area you didn't cite to was the area in which Mr.18

Lemelson actually defines what this PB signal is that's19

recorded on his magnetic media, right?20

A Yes. Can you point me to the --21

Q Sure. Column 4 beginning at line 59, to the top of22

column 5, line 4. If you want to confirm that, on the back of23

your Exhibit 17A are the column and line numbers you cited for24

scanning and those aren't included.25

HORN - CROSS00200

A Well, there were several places that have that language,1

and I picked the ones that seemed most appropriate.2

Q But the one you didn't pick was the one in the section3

called "Definition of terms" in which he actually sets forth a4

definition of what it is that he's recording on the magnetic5

drum or recording device; right?6

A Yes.7

Q All right. And what he says there we have discussed at8

length in your deposition; didn't we?9

A Well, you were making --10

Q Sir, again, please say yes or no. Did you remember11

discussing this part of Mr. Lemelson's specification in your12

deposition?13

A I was answering that. I remember you were asking me14

about the output of a photomultiplier when you move an object15

in front of it or something --16

Q Well, we asked about more than that. The point is you17

recall me questioning you about this part of the18


A I believe so.20

Q All right. And you also know that Mr. Lemelson's experts21

have repeatedly pointed plaintiff's experts to this part of22

the common specification, right? You've seen it in virtually23

every expert report filed; right, sir?24

A I don't know about that, but it's occurred. It has25

HORN - CROSS00201

occurred.1

Q All right. And you elected not to even talk about it,2

right? Yes or no?3

A I -- well, I didn't talk about it on direct, if that's4

what you mean.5

Q All right. Well, let's look at what this page and column6

and line number says about the kind of signal that can be7

recorded on a magnetic drum. It says, "A picture signal8

preferably derived from beam scanning a fixed image field,9

IF." Do you see that?10

A Sorry. Where are you now?11

Q Right at the first words after the PB-A.12

A I must be in the wrong place, I'm sorry.13

Q Column 4, line 59, sir.14

A Oh, sorry. Up here, yes. Okay.15

Q It says "A picture signal preferably derived from beam16

scanning a fixed image field, IF." Do you see that?17

A Yes.18

Q Sir, you certainly recognize that the word "preferably"19

doesn't mean only, right?20

A Yes, assuming there are alternatives presented.21

Q Right. Well, what he also says is that the signal may be22

amplitude modulated or frequency modulated. Do you see that?23

A Yes, and there's no explanation of what that might be.24

Q He certainly gives two alternatives there, doesn't he,25

HORN - CROSS00202

sir?1

A He gives two alternatives and then he uses the first one2

throughout.3

Q While you've elected to ignore the second one; right,4

sir?5

A There's no further indication of frequency modulation, is6

there?7

Q Right. You didn't bring the Court's attention to that,8

did you?9

A I consider it one of those --10

Q Throwaways, you use the word, right?11

A Well, if you want to characterize it that way because --12

Q That's --13

A -- it doesn't link to anything else in the specification.14

Q Okay. Then it say, "It may be a continuous signal or" --15

A "It may be the output of a conventional television16

scanning camera, flying spot scanner or the like."17

Q Right. And interesting there it says "may be," do you18

see that?19

A Yes.20

Q Okay. Then the next thing it says is "It may be a21

continuous signal"; right?22

A Yeah.23

Q Or may be -- may consist of a multitude of short pulses,24

depending on the type of scanning and signal formation25

HORN - CROSS00203

employed. Do you see those words?1

A Yes, and again there's not much to explain what that is. 2

I read that to mean that the video signal could be somehow3

pulse modulated, just as he also says without explanation4

amplitude modulated or frequency modulated. So it could be5

some kind of a pulse width or, you know, again there's no6

further connection to this concept in the rest of the7

specification and he's, you know, perhaps --8

Q Well --9

A -- just trying to make sure that --10

Q -- we're going to get to the rest of the specification,11

sir. What I'm saying is it certainly gives another12

alternative there, doesn't it?13

A Well, an alternative that's not --14

Q Not in your view described elsewhere?15

A Yeah.16

Q But it is stated in the one place he defines was stored17

on his magnetic media; right?18

A (No audible response)19

Q Now -- the answer's yes?20

A Well, I'm just checking here. I -- this in the21

explanation of what PB is. Right now he's not talking about22

the magnetic medium.23

Q Well, sir, PB, you testified in your deposition, was the24

signal that's recorded and shown as the signal-PB on all the25

HORN - CROSS00204

magnetic recording devices?1

A Yes.2

Q All right. So you certainly agree that what he's talking3

about there is what's being recorded; right?4

A Yes. Although --5

Q All right. Well, let's continue. He says at the bottom,6

line 67, that, "The PB signal may also be derived from the7

output of a fixed photomultiplier tube." Do you see that?8

A Yes.9

Q And, of course, do you recall testifying in your10

deposition that the output of a photomultiplier tube is not a11

full-frame video signal? Do you remember that?12

A Well, you're leaving out the context.13

Q Sir, I'm asking you whether you remember testifying --14

A I would like to --15

Q -- that the output of a photomultiplier tube -- you were 16

asked, page 215 of your deposition, question, line 6:17

"Is the output --"18

MR. JENNER: I'm sorry, which -- excuse me.19

THE WITNESS: Excuse me. You're leaving out the20

context which is that you said --21

BY MR. LISA:22

Q Sir, let's answer the question please. Let's ask the23

question.24

THE COURT: Yeah. Hold on. Hold on.25

HORN - CROSS00205

MR. JENNER: There are three volumes of the1

deposition. Which volume?2

MR. LISA: It's page 215, line 6.3

THE COURT: Of -- all right.4

MS. CURTIN: Should be the end, I believe, of the5

first volume, Mr. Jenner.6

MR. JENNER: Okay.7

THE COURT: All right. Go ahead. Just listen --8

just listen to Counsel as he reads it to you.9

BY MR. LISA:10

Q "Question: Is the output of a photomultiplier tube a11

full-frame video signal.12

"Answer: No."13

Were you asked that question, sir, did you give that14

answer?15

A Yes.16

Q Thank you.17

A Now can I explain?18

Q I have no question pending, sir. Your counsel can handle19

it on redirect.20

THE COURT: Let's wait for that.21

I don't know -- and I know the witness was on direct22

nearly two and a half days. How long do you have on cross?23

MR. LISA: Well, Your Honor, I have a number of24

additional charts and points and inaccuracies to go through. 25

HORN - CROSS00206

Frankly, I think I may need some of tomorrow morning to do1

that.2

THE COURT: All right. All right.3

MR. LISA: And I'll try and move it along, if I can.4

THE COURT: That's fine. Let's push on.5

MR. LISA: Oh. Tomorrow afternoon. I'd be here6

alone in the morning. I think we start at 1:00 tomorrow.7

THE COURT: That's right, we do. We start in the8

afternoon at 1:00 o'clock.9

BY MR. LISA:10

Q All right. Now, in the case of a fixed -- of a PB signal11

being the output of a fixed photomultiplier tube, in that case12

what he says is that, ". . .the image or object being scanned,13

being moved to provide variations in said signal." Do you14

remember we talked about that in the deposition?15

A Yes.16

Q Okay. Have you ever seen scanners, sir, called flatbed17

scanners, where the photodetector sits on top of a stage that18

is moved and scanned underneath a photomultiplier tube? Have19

you ever seen that, sir?20

A The ones I've used have the sensor moving with respect to21

the flatbed.22

Q Well, in this case -- what I'm asking is whether you've23

seen one in which the flatbed moves relative to the sensor.24

A No.25

HORN - CROSS00207

Q All right. And what Mr. Lemelson is describing here is1

that the object or image being scanned is moved to provide the2

variations in the signal, and the multiplier --3

photomultiplier tube is fixed. That's what he says; right?4

A You know, you're interpreting a sentence here the way5

you've interpreted it. I read it differently.6

Q Well, what I --7

A Since -- since we've already established that we're8

talking about television cameras or flying spot scanners, the9

reference to fixed photomultiplier tube to me matches the10

photomultiplier tube that's the pickup in the flying spot11

scanner. Now, you're saying --12

Q With the object or image being moved to generate the13

variations?14

A Well, I didn't understand the reference to "move,"15

particularly since he later abandoned the notion of moving the16

object in the prosecution history.17

Q You sure?18

A I believe --19

Q I didn't hear that on direct. Did you testify about that20

on direct?21

A I'm not sure I did. I believe I did.22

Q Well, looking at the patent specification, what he says23

here is the object is moved; right? That's what he says.24

A Which I had a problem with. Because if you move the25

HORN - CROSS00208

object, the image will be smeared.1

Q Not if it's a fixed photomultiplier tube, sir, that's2

sitting on the top of a flatbed scanner moving back and forth3

to generate the image; right, sir?4

A Does he say that here? Does it fit in with the figures? 5

Can you do that on a conveyor belt?6

Q Well, you'll be able to ask our experts those questions,7

sir.8

Now, the next thing he says right over here, the top of9

column 5, line 1 -- line 2, is that, "For some applications10

the PB signal may be any analog signal derived from scanning." 11

". . .any analog signal derived from scanning." Do you see12

that?13

A Yes.14

Q All right. And it may be "any analog signal derived not15

only from scanning, but from an analog or digital computer or16

computing device." Do you see that?17

A Yes.18

Q Now, do you recall being asked by Mr. Hosier in a19

deposition whether you needed to have a camera or scanner20

always as an input device? And you talked about tomography. 21

Do you remember that? Do you recall that, sir?22

A Only vaguely.23

Q All right. Well, you certainly agree that images can be24

created in other forms than by using scanning devices; right?25

HORN - CROSS00209

A Well, Photo Shop, computer-aided tomography.1

Q Okay. And those image signals or those images created by2

computer tomography are often further analyzed, aren't they,3

sir?4

A Well, typically they're shown to radiologists. What did5

you have in mind?6

Q I'm just asking you, sir, whether it was known at the7

time or whether it is known or whether you would agree. Any8

of those. In fact, strike that. I'll ask it over.9

Certainly, sir, you'd agree that the images created in10

tomography -- 11

Which is by computer, right? Those are computer-12

generated images; right?13

A Yes.14

Q Based on data input from other sources; right?15

A X-ray sensors, yes.16

Q Well, also it could be -- are there -- are there systems17

you're aware of that generate images based on tactile18

measuring devices?19

A Well, I'm not sure you'd call those images. Are you20

talking about three-dimensional shape information, or --21

Q Talking about taking the output of a coordinate measuring22

machine that measures the surface of an object physically by23

moving up and down over the surface -- 24

A Well, it's not an image, is it?25

HORN - CROSS00210

Q -- and -- let me finish -- generates data that then is1

processed by a computer to create a map that shows the surface2

characteristics of the object. Have you seen that before?3

A It's a very tenuous connection to the notion of image. 4

We're talking about three-dimensional shape information.5

Q I wasn't, sir. I was talking about the surface of an6

object.7

A That's what I said, three-dimensional shape information.8

Q And you've not -- you've got no experience and not seen9

where physical measuring devices are input to computers to10

generate an image like a map that can be printed?11

A Well, I have experience with that short of calling the12

output an image. I mean, you have three-dimensional shape13

information, and you can do various things with it, but it's14

not an image.15

Q Well, sir, in your deposition I'd like you to refer to16

page 85, line 7. You were asked this question.17

"In order to get an image do you need something?18

"Answer: You could obtain an image by a number of19

different ways, including a camera with a CCD or CMOS20

sensor. But there are other ways to obtain images."21

"Question: You need something to capture an image if22

you're going to practice machine vision. Is that fair to23

say?24

"Answer: Not really, because images can be computed from25

HORN - CROSS00211

other kinds of measurements. For example, well, in1

tomography you would make density measurement which do2

not directly give you an image, but through a3

computational process such as Forier Transform or Radon4

Transform you can develop an image. So in that case5

there is no camera involved to produce the image."6

Do you see that?7

A Yes.8

Q Were you asked those questions, did you give those9

answers?10

A Yes.11

Q All right. And you would certainly agree that there are12

numerous computational processes in which you can generate13

images; right, sir?14

A I agree there are computational processes that would15

create images that you can display.16

Q And one of the things that Mr. -- and, by the way, is17

there a requirement that those images be high-bandwidth NTSC18

video signals?19

A Well, if you're going to display them on a television20

screen.21

Q What if you're going to analyze them by a computer, sir?22

A They might be other resolution.23

Q What if you're going to print them?24

A Certainly they're not analog video. They're digital25

HORN - CROSS00212

images, for a start.1

Q Now, what Mr. Lemelson says on the top of column 5 is2

that, "For some applications the PB signal may be any analog3

signal derived from scanning, an analog or digital computer or4

other computing device," period; right?5

A Yes. Which is quite puzzling, because the computing6

device wouldn't be producing an analog video signal.7

Q You're not aware of whether computers could convert the8

digital data to an analog signal and output it, sir?9

A I believe at --10

Q That's your testimony?11

A -- that time computers wouldn't have been able to produce12

an analog video signal.13

Q And the opinions offered by you in court are based on14

that conclusion; right, sir?15

A I'm not sure whether that's factored into any opinions or16

not.17

Q Well, if in fact, sir, computers could generate a low-18

bandwidth analog video signal, doesn't Mr. Lemelson say right19

here that it's part of his PB signal to be included in his20

definition?21

A Well, you've now added the low-bandwidth analog signal.22

Q Well, let's make it simpler. I'll make it easier for23

you. Doesn't Mr. Lemelson say right here that, "The PB signal24

can be an analog signal derived from an analog or digital25

HORN - CROSS00213

computer"?1

A Well, he says that, but it's, as I said, puzzling how he2

would do that.3

Q All right. And that's inconsistent with your conclusion4

and definition that the only thing Mr. Lemelson shows in this5

specification is high-bandwidth conventional motion picture6

video; right?7

A No. Because I'd assume that the analog or digital8

computer would be producing ordinary television video.9

Q I thought you said you didn't know that computers could10

generate those signals. So why would you assume that?11

A Because everything else in the specification is organized12

around using television cameras, ordinary video. The13

intrinsic evidence supports that in several places.14

Q All right. Well, this definition here does not; right,15

sir?16

A Well, this definition here doesn't make any sense,17

because there was no means in the 1950s for a digital computer18

to produce an analog video signal that could be used in this19

fashion.20

Q Now, sir, your copy of the patent indicates that your21

notes -- has your handwritten notes next to the part I quoted. 22

It says, "The PB --" it's in the bottom of column of 4,23

line 67. Do you see your red "PB 1" over on the right there?24

A Yes.25

HORN - CROSS00214

Q That certainly means you've read this before; right?1

A Oh, yes.2

Q All right. And the part that you put your note next to3

is that it says, "The PB signal may also be derived from the4

output of a fixed photomultiplier tube"; right?5

A And the PB 1 refers to the fact that in the figure6

there's a PB 1, so I'm assuming that the PB here refers to7

that PB 1.8

Q And the other part where you've got your handwritten9

notes is the top of column 5, right next to the part where Mr.10

Lemelson says, "The PB signal may be any analog signal derived11

from scanning"; right?12

A Well, I probably have that notation everywhere he uses13

"PB" instead of saying "PB 1."14

Q So that meant you read it; right, sir?15

A Yes.16

Q All right. Now, you're aware that Mr. Lemelson says17

elsewhere in his specification that you can use special18

television cameras in addition to conventional ones; right?19

A I believe he uses the term "special" somewhere without20

explaining what that might be.21

Q Right. So a person of ordinary skill in the art at the22

time would have to -- I'm sorry. Strike that.23

The person of ordinary skill in the art reading Mr.24

Lemelson's application is told that he can use a conventional25

HORN - CROSS00215

television camera or a special television camera; right?1

A That's right.2

Q Okay. And I think you testified that, for example, the3

Greanias flying spot scanner was a special type of television4

camera; right?5

A I don't think I used those words.6

Q It's a special type of camera; right?7

A I forget what I said. But it was a flying spot scanner.8

Q Well, Mr. Lemelson says --9

A A particular type of flying spot scanner.10

Q And Mr. Lemelson says to use flying spot scanners, as11

well; right?12

A Yes, television cameras, vidicons, iconoscopes, or flying13

spot scanners.14

Q Now, in addition to saying that Mr. Lemelson doesn't15

describe anything other than high-bandwidth television16

signals, I believe you also testified that Mr. Lemelson never17

suggests anything about a program or making a system18

programmable; right?19

A He uses the word "program" in a number of places, but20

he's not talking about what we consider a program in the21

computer context.22

Q But you didn't say that on direct, sir. What you said on23

direct was that Lemelson never even suggests programs or24

programming; right?25

HORN - CROSS00216

A Yes. Because when I use the term "program" I would use1

it in the normal way. And I want to point out here that even2

though he uses that word, he's talking about something else.3

Q Now let's pick up the 1956 application, which is Exhibit4

1127A. And Tab 6 is an appeal brief which I think you've5

cited on occasion; right? Haven't you cited to this document6

for several purposes, sir, in your review of the intrinsic7

evidence?8

A Yes, I believe I have.9

Q All right. And --10

THE COURT: What tab was that again?11

MR. LISA: It was Tab 6, Your Honor.12

Your Honor, I have an excerpt coming up that may13

make it easier to follow for you.14


BY MR. LISA:16

Q Now, sir, what you -- is it fair to say that you cited17

several times to the 1956 application for the premise that Mr.18

Lemelson described only television video or beam scanning;19

right?20

A Yes.21

Q And did you happen to look at what the subject matter of22

the claims were that were at issue in the 1956 application?23

A I'm sorry. What are you specifically referring to?24

Q Well, did you look to see what the claims that were at25

HORN - CROSS00217

issue that described the invention were in the 19561

application?2

A Yes.3

Q All right. Did you happen to notice that the claims all4

said "electron beam scanning"?5

A I can't recollect right now, but that sounds right.6

Q So would it surprise you, then, that in describing the7

invention during prosecution if the claims all said "electron8

beam scanning" that Mr. Lemelson would refer to them as9

describing electron beam scanning? Does that surprise you?10

A I'm -- I'm not sure what you're getting at.11

Q Well, sir, if an applicant described the invention at12

issue as relating to beam scanning and the claims all say13

"beam scanning," that's not unreasonable, is it?14

A Yes.15

Q All right. Do you know how many of the claims that are16

at issue in this case say "electron beam scanning," sir?17

A No, I don't.18

Q How about none? You know that none of them say that;19

right, sir?20

A And --21

Q Yes or no? You know that none of the claims at issue in22

the case say "electron beam scanning"; right?23

A That's -- that's true, I think.24

Q And you also know that only a few of the claims say25

HORN - CROSS00218

"radiation beam scanning"; right?1

A Yes. But, of course, the claims have to be read in light2

of the specification, and that's what the specification talks3

about.4

Q Right. But one of the things you did in Plaintiff's5

Exhibit 3431 -- I'm sorry -- yes, 3431 -- and that's out of6

your big book.7

A Oh. Thanks.8

MR. LISA: Your Honor, if you'll hold on a minute.9



BY MR. LISA:12

Q Let's do this while we're trying to find that exhibit. 13

If you can go to your big book, 1127A.14

MR. LISA: And I apologize 'cause our exhibits15

aren't in order here, Your Honor.16

BY MR. LISA:17

Q At page 194.18

A I'm sorry. Are you talking about my direct exhibits,19

or --20

Q No, sir. I'm talking about --21

MR. LISA: Your Honor, could we take a short, two-22

minute break here to try and get these exhibits in order? I23

think something --24

THE COURT: Well, yeah. I think we've got 34 --25

HORN - CROSS00219

MR. LISA: '31?1

THE COURT: 3431? I have -- we had that during the2

witness's direct examination, scanning meant using a cathode-3

ray tube, radiation beam. It's just one page. That's it. 4

Yeah, that's it. This is the page. It was a blowup or an5

extract from the '63 file history at page 268.6

BY MR. LISA:7

Q All right. If you look at page 202, sir -- no, 204 --8

MR. LISA: I'm sorry, Your Honor. At the top, page9

204, the top number in the large Lemelson exhibit.10

THE COURT: I don't know if the witness has that11

exhibit in front of him, however.12

MR. LISA: It's the plaintiff's --13

THE COURT: It's plaintiff's binder.14

Donna, do we still have plaintiff's binders from the15

witness's direct exam?16

MR. LISA: I think the witness now has Plaintiff's17

3431. I'm asking him to refer --18

THE COURT: Oh. Do you have 3431?19

THE WITNESS: Yes.20

THE COURT: I'm sorry. I apologize.21

BY MR. LISA:22

Q And I'm referring you to Defendant's Trial Exhibit 1127A,23

which is the big prosecution file history.24

THE COURT: It might be easier if you step up and25

HORN - CROSS00220

show the witness what you've got in your hands there, Counsel,1

so that he can -- he can share it with you. And I have 1127A. 2

I also have 3431.3

MR. LISA: I think we've finally got our act4

together, Your Honor. I'm sorry. I have a highlighted -- an5

excerpted version that makes life a lot easier here. Hand6

that up to Your Honor. Thank you.7

//8

BY MR. LISA:9

Q This is an excerpt that has been highlighted to reflect,10

sir, your -- in pink. And if you look to page 204. This is11

an excerpt of the 1956 file history, 1127A. And if you'd turn12

to page 204 on the top.13

THE COURT: I hate to be picky, but I've been14

provided with two separate 1127A excerpts, and they are15

different.16

MR. LISA: It's the larger one that you need, and17

that was what struck me -- what sent me off in the wrong18

direction, Your Honor. I'm sorry.19

THE COURT: Okay. All right. So on the larger20

excerpt, 1127A, you're at what page?21

MR. LISA: Correct. Page 204, typed from the top.22


BY MR. LISA:24

Q You should have pink highlighting and yellow25

HORN - CROSS00221

highlighting.1

A Well, yeah, except not on 204. It's only got yellow and2

it's right to the end of -- oh. Sorry.3

Q No, sir. The left-hand side.4

A Sorry. I'm reading the numbers at the bottom of the5

page.6

Q And if you look at 3431, which is your exhibit,7

Plaintiff's 3431, you see that's your quote there at the top,8

"Applicant's invention incorporates a deflection control area9

scannable electron beam such as generated by a cathode-ray10

tube." Do you see that?11

A Yes.12

Q And you've inserted there, "TV camera tube." That's not13

in the quote; right?14

A That's correct.15

Q All right. And your intent, as based I guess on the16

summary top of that chart, is that Mr. Lemelson told the17

Patent Office that the invention used a TV camera radiation18

beam. That's what you're trying to convey; right?19

A That it used a cathode -- yes, a cathode-ray tube20

radiation beam.21

Q And my question to you, sir, is what was the invention22

that was at issue in this case, the 1956 case that you're23

citing. What did the claims say about the invention that was24

then at issue?25

HORN - CROSS00222

A Well, the specification was the same, except for the1

added parts later. And the claims would be interpreted in2

terms of that specification.3

Q Well, sir, the claims are what define the invention;4

right?5

A Yes.6

Q And what Mr. Lemelson says at the very top of this page7

is, "The present invention is drawn to," do you see that?8

A Yes.9

Q And then below your quote he's got statements about "One10

form of the invention," that's highlighted in pink; then on11

the next page is "Another form of the invention." Do you see12

that?13

A Yes.14

Q And actually if you look on the next page you'll see15

there's more yellow highlighting. Do you see that?16

A Yes.17

Q And that appears in other of your charts. But what's18

missing, sir, are the areas in pink. But the main question is19

do you know whether all the claims said that what's described20

was an electron beam scanning device?21

A I don't remember if all the claims said that.22

Q Well, if you look at the beginning of the document --23

THE COURT: Well, let me -- let me ask. Is the term24

"TV camera tube" synonymous with "cathode-ray tube"?25

HORN - CROSS00223

THE WITNESS: Your Honor, at that time it was. That1

was the way television cameras worked, using a cathode-ray2

tube with a deflectable electron beam. And there were slight3

variations in exactly how they worked, the vidicon, the4

iconoscope and so on.5

BY MR. LISA:6

Q And if you look at, for example, the second page of the7

thick excerpt 1127A we have highlighted in pink in Claim 578

what Mr. Lemelson says about the scanner that was claimed in9

those claims there at issue. See that? It says, "An electron10

beam scanning apparatus including means for causing an11

electron beam to scan an area of an image field in a single-12

frame sweep," you see that, "to produce a video picture13

signal." Do you see that?14

A Yes. And again, you know, I'm not an expert on patent15

law, as you know, but the way I interpret it is that he used16

the specification to support these claims, and he didn't17

change that specification later. And so the interpretation of18

the claims in terms of the specification would depend on what19

is disclosed in the specification. And it's television20

cameras.21

Q But, sir --22

A Now, even --23

Q -- he certainly changed the claims later, didn't he?24

A He did --25

HORN - CROSS00224

Q The claims -- the claims that are at issue in this case1

say nothing like what's recited here in these claims; right?2

A That's correct.3

Q All right. And so the invention that you put in quotes4

here in 3431 that Mr. Lemelson was discussing in his 19565

application, the intrinsic evidence that you rely on, the6

invention in quotes was the invention defined by the claims7

then pending; right, sir?8

A Well, sorry. Let me just back up to something I said a9

minute ago. You said they're nothing like the other claims,10

and I just gave a blatant no. And, of course, they're11

related. I mean, they're talking about -- they're not the12

same words, they're not the same claims, but they're talking13

about the same general apparatus using, you know, television14

cameras, magnetic tapes, gating, clipping, logic circuits, et15

cetera.16

Q How about programming? If you're saying these are the17

same, do you know that these claims actually refer to18

"programming," sir?19

A I'm not aware of that.20

Q Well, look down at the bottom of Claim 57. "A variable21

programming means for controlling said gating means." Do you22

see that?23

A Yes, uh-huh.24

Q All right.25

HORN - CROSS00225

A Now --1

Q And were you aware of that at the time you told the Court2

that Lemelson doesn't even suggest programming?3

A Oh, yes.4

Q Were you aware of that?5

A Oh, yes. And this is exactly what I was talking about6

earlier. Programming in those days meant putting up a fixed7

sequence using, for example, a plug board. I've used plug8

boards where you set up the sequence of operation say of a9

punch card device by putting a wire from one hole to another,10

much as a telephone operator hooks up connections.11

Q Is that what you think Mr. Lemelson meant here?12

A Yes. He definitely wasn't talking about programming a13

computer.14

Q Well, he was talking about programming his gating15

signals, sir, wasn't he?16

A Well, let me read it in more detail.17

Well, he's saying that programming means controls the18

gating means.19

Q Well, why don't we turn to page 216 and see exactly what20

he said. Top on page 216. It says 216 on the top. And you21

should have some pink highlighting in your document.22

It says there, quote, "Claim 57 and Claims 58 and 59,23

which depend from the former, relate to a video scanning24

apparatus which employs a variable programming means for25

HORN - CROSS00226

controlling the gating means connecting the scanning means1

with the analyzing circuit. None of the references provide2

such a variable programming means which applicant believes to3

be of major importance in rendering the current invention of4

sufficient -- current invention sufficiently flexible to5

permit simultaneous or sequential inspection or measurement of6

a variety of different areas, surfaces, parts, or assemblies7

without the necessity of manually adjusting the apparatus."8

Were you aware of that paragraph?9

A Sure. 'Cause he's talking about just the kind of10

programming I mentioned. He's saying by setting the gating11

signals on the tape, much as you would put the wires in the12

plug board, you can achieve different behaviors suitable for13

different object. This is in no way connected to programming14

a computer.15

Q Well, sir, it certainly does describe that by adjusting16

the placement and width of his gating signals he can vary the17

region of interest in which the analysis takes place; right?18

A Oh, yes. Which, again, has nothing to do with19

programming your computer. I mean, the word "programming," as20

I already mentioned, does occur, and it's used in a different21

meaning than the one we use today.22

Q Well, here what he's saying is you can certainly vary the23

tolerance codes that are stored on tape; right?24

A He doesn't say that here. He's talking about selecting25

HORN - CROSS00227

the regions you're going to analyze by picking the gating1

signals.2

Q By the way, you had given a discussion about this chart3

of pioneering inventions. You remember that? You had that4

chart.5

A I didn't have a chart of pioneering inventions.6

Q Well, you had a list of significant improvements or7

advancements in the machine vision industry. Remember that?8

A Oh, that's different. That's not in the context of9

pioneering patents.10

Q All right. And I didn't see on there any recognition on11

your part for who developed the concept of analyzing regions12

of interests in an image signal. You didn't have anything on13

there about that, did you?14

A Well, I believe that'd be because --15

Q Yes or no? Did you, or did you not?16

A No, I did not have that on the chart.17

Q Thank you. And you certainly agreed that one of the18

things Mr. Lemelson says he programs here is the signals that19

define the regions of interest of the image field; right, sir? 20

That's what he says.21

A He doesn't say anything about regions of interest. And22

the purpose of the gating signal is different from the regions23

of interest in a machine vision system. He explicitly points24

out that the purpose of gating signals is to exclude areas25

HORN - CROSS00228

that would disturb the analysis.1

Q Well, the flip side of that, sir, is it defines the areas2

in which you make the analysis; right, sir?3

A And the use of a --4

Q Yes or no, sir?5

A Oh. Please recite it. Say it again.6

Q The flip side of what you just said is that what the7

gating signals do is affirmatively define the regions of --8

that are actually analyzed in the image signal; right, sir?9

A Yes. But the purpose is entirely different.10

Q Purpose you think is to exclude noise; right?11

A The purpose in Lemelson is to exclude other -- other12

inflections that could disturb the operation of the analyzing. 13

The use of regions of interest in machine vision system14

typically is a matter of efficiency, because you don't want to15

have computations in parts of the image where you know the16

object might not be because of some prior information you17

have.18

Q Well, sir, are you aware of any prior art that defines19

regions of interest on a computer prior to 1956?20

A Well, earlier on I thought you were going to ask the21

question of why I don't list the invention of regions of22

interest, and somehow I didn't get to answer that.23

And my answer would be --24

THE COURT: Hold --25

HORN - CROSS00229

THE WITNESS: Sorry.1

THE COURT: I really don't understand. Restate your2

question.3

MR. LISA: Sure.4

THE COURT: And try not to -- you may be wondering5

about a lot of things, but let's just try and answer Counsel's6

questions. You're going to have a chance to visit with Mr.7

Jenner, and he can go back to things that you are wondering8

about. But let's --9


THE COURT: Let's move on. Ask another question.11

BY MR. LISA:12

Q Sir, do you -- have you identified any prior art that13

you're aware of -- actually, let me ask it differently.14

A I can answer that. I've shown you. Anderson, for15

example, has a gating signal that defines a region where the16

ingot occurs.17

Q And that's, your view, the same thing?18

A Same thing as gating signals in Lemelson.19

Q And does Anderson show how it's programmable, sir?20

A He shows you a trigger circuit and something driven off21

the sweep, which can be adjusted to encompass what he calls22

the long pulse 28.23

Q Show any sort of a magnetic recording member in which you24

can change the length of his gating signals?25

HORN - CROSS00230

A Well, no. He doesn't have to.1

Q Now, if you turn to Plaintiff's Exhibit 3450 in your2

book. This is another chart in which you discuss the 19563

application and this particular appeal brief; right?4

A Yes.5

Q And the heading on this is, "Mr. Lemelson told the PTO6

that his invention analyzes only a portion of the scanning7

signal"; right?8

A Yes.9

Q And if you look at the page number up top, page 205. The10

number on the top.11

MR. LISA: And, Your Honor, sometimes the12

handwritten numbers on the bottom don't actually match the13

numbers of these files. They're either the Bates numbers or14

the production numbers.15

THE COURT: Right. No. I've got it. I've already16

compared it, and there's the pinked paragraph out of the17

blowup. It's in the small blowup to the right or the small --18

MR. LISA: All right. Thank you.19

BY MR. LISA:20

Q All right. And if you look at the first quote on Exhibit21

3450, what you see is you set forth the statement that, "The22

reproduction or the recording signal is also utilized to gate23

only a predetermined portion of the beam generating scanning24

signal." Do you see that?25

HORN - CROSS00231

A Yes.1

Q And what I've shown on my excerpt, 1127A, is that one2

thing you left out of that is that the preceding paragraph is3

referring to another form of the invention. Do you see that?4

A Well, yes. And that -- that's a preface to, "The5

magnetic recording and reproduction techniques they utilize to6

provide a comparison signal for analyzing and comparing the7

characteristics of the signal derived by scanning the image8

field or the area thereof being inspected."9

Q Well, what he's talking about in this paragraph, sir, is10

another form of the invention; right?11

A I'd have to read the context, but yes.12

Q Well, why don't we look at the preceding page, because it13

tells you what the other form -- the first form of the14

invention was. You see there it says at the bottom,15

highlighted in pink, "In one form of the invention"?16

A Yes.17

Q And then the paragraph you cited was "Another form of the18

invention"? Do you see that?19

A Yes.20

Q All right. And --21

A Now --22

Q Let me just ask.23

A Sorry.24

Q Do you see that nowhere in this first paragraph where it25

HORN - CROSS00232

says, "In one form of the invention," has Mr. Lemelson1

referred to using gating signals? You see that?2

A Yes, I see that. I'm not sure whether that's3

significant, because he talks about gating signals in the4

common specification, and I'm not sure that his use of that5

particular sentence in the second paragraph should really be6

read to -- imply it only applies to one particular embodiment.7

Q Well, sir, when you said in your chart, Exhibit 3451,8

that Mr. Lemelson told the PTO that his invention analyzes9

only a portion of the scanning signal, you intended to imply10

that it was all of his inventions; right, sir?11

A Yes.12

Q All right. And yet in the very preceding paragraph,13

where he says, "In one form of the invention," he's talking14

about direct measurements; right?15

A Yes. Now, keep in mind that that wouldn't work without16

gating, either. So the fact that the sentence about gating is17

left out there, again, doesn't indicate that it doesn't apply18

to that.19

Q Well, sir, let's -- while you're talking -- while you20

mentioned it, let's go to column 20 of the patent21

specification. And let's start and look at your Plaintiff's22

Exhibit 17A. I guess the first thing we can agree is that you23

did not elect -- strike that.24

I guess what you're saying is that you didn't view it as25

HORN - CROSS00233

material to inform the Court that Mr. Lemelson was talking1

about alternative embodiments in this quote that you took out2

of the file wrapper; is that right?3

A Well, I don't consider these alternative embodiments. 4

He's got basically two things he does. He can do a point-by-5

point comparison, and he can make these kinds of measurements. 6

But all of them have at their core the same magnetic tape,7

clipping, gating, et cetera. So I didn't view it as being8

limited to a particular aspect of the invention.9

Q Well, sir, you know that Mr. Lemelson's experts have10

pointed you repeatedly to the alternative embodiments11

described at the top of column 20, line 1 through line 50;12

right?13

A Yes.14

Q All right. And in fact in the prepositioning motion that15

was presented to the Court there was a significant discussion16

about the alternative embodiments of Figures 7 and 9 described17

down there in paragraphs (c) and (e) input to the Figures 1B,18

1B', and 1C, in which measurements were made without any19

gating signals whatsoever; right?20

A Yes, there was such a discussion.21

Q And in fact when I asked you about those embodiments22

described here as alternatives in Mr. Lemelson's column 20 in23

your deposition, you indicated that those embodiments were24

inconsistent with your interpretation that every embodiment25

HORN - CROSS00234

required gating signals; right?1

A I believe that's what I indicated.2

Q All right. So that we're clear, then, you are in fact3

agreeing that the alternative embodiments described in column4

20 with respect to Figures 7 and 9 are described by Mr.5

Lemelson as operating without gating signals; right? Yes or6

no?7

A Doesn't explicitly say that here, but if you follow8

through the circuits, they seem to go counter to what he9

explicitly tells you to do and what is also necessary to do. 10

Because it won't work without gating signals.11

Q Well, sir, what he -- the circuits you're saying to12

follow through are the circuit connections that he tells you13

to make; right?14

A Yes. And in some cases he doesn't tell you why or what15

purpose that would serve.16

Q And again, the reason -- one of the reasons you say it17

won't work is your insistence that the only type of signal18

described in this patent is a high-bandwidth motion picture19

video signal; right?20

A No. There are other reasons. And, if you like, I can go21

into them now.22

Q But one of them, sir -- answer the question. One of the23

reasons you say it won't work is your insistence that the only24

type of video signal described is a high-bandwidth25

HORN - CROSS00235

conventional television -- motion picture video signal; right?1

A Actually, I'm not sure what the connection is between2

that and the absence of gating.3

Q But the one thing you do agree is that Mr. Lemelson tells4

you expressly and explicitly that you can hook up Figure 7 and5

Figure 9 as shown in the chart right in front of you, which is6

Exhibit 2168A.7

A And which, as I indicated, makes no sense. Because if8

you don't limit the attention of the system by gating, you9

will not get a useful result. For example, during the fly-10

back period --11

Q All I asked is whether he says to do it. I don't ask --12

didn't ask you whether you thought it was useful. I'm asking13

whether we can agree for the record that Mr. Lemelson gives14

you explicit direction on how to hook up the circuits in a way15

to make measurements without gating signals. Does he do that?16

A In this column he gives you a number of suggestions of17

connecting various things to various other things, not always18

in conjunction with an explanation of what the purpose is.19

THE COURT: Is that no, he does not do that, then?20

THE WITNESS: He does tell you in (c) --21

THE COURT: Well, no. Is it -- does he do that, or22

does he not?23

THE WITNESS: He does in (c) and (e) provide circuit24

connections that do not directly involve gating.25

HORN - CROSS00236

BY MR. LISA:1

Q And if the Court were to construe the claims as requiring2

gating, it would exclude those two alternatives, wouldn't it,3

sir?4

A Yes. Unfortunately, they don't work.5

Q And you knew about those two embodiments and those two6

alternatives well prior to giving your testimony on direct,7

didn't you?8

A They're in contradiction --9

Q Sir, yes or no? Did you know about those alternative10

embodiments prior to giving your testimony on direct?11

A They're not enabled. They're not working embodiments. 12

They go counter --13

THE COURT: No, I think -- I think the question was14

were you -- had you not read those (c) and (d) [sic] or were15

you aware of them.16

THE WITNESS: Your Honor, I -- I did read them.17

BY MR. LISA:18

Q And in fact you also read -- if you look at your notes,19

on your column 20 of your version of the patent you've got20

your handwritten notes right next to these very paragraphs in21

column 20 of Exhibit 17E; right?22

A Indicating description of certain figures.23

Q And that you read it; right, sir? That's what it meant?24

A Yes, I read it.25

HORN - CROSS00237

Q All right. And you also read Dr. Williamson's lengthy1

explanation in his expert report about how these embodiments2

operate in a manner not to require gating; right?3

A Yes, I've read it. And I don't agree with it.4

Q Now, on that same note, sir, you testified in your5

deposition that a -- the output of the photomultiplier tube is6

not a high-bandwidth video signal; right?7

A Again, you're leaving out the context. The context was8

you said, what if I move an object in my hand with respect to9

a photomultiplier tube.10

Q Actually, sir, what I was asking you was whether you11

moved an object relative to a photomultiplier tube.12

A Oh. Sorry. What did I say?13

Q You said move my hand.14

A Well, an object in your hand --15

Q All right.16

A -- at the time you moved your hand around.17

Q All right. So if you have a fixed photomultiplier tube18

and move the object with my hand by the photomultiplier tube19

in scanning motion, that would be a low-bandwidth signal;20

right?21

A I don't know what it would be, because you would get a22

signal out of the --23

Q Sir, it's not a high-bandwidth signal; right?24

A Aside from the noise in it.25

HORN - CROSS00238

Q It's not a high-bandwidth motion picture video signal;1

right?2

A It's definitely not a television video signal.3

Q Sir, it is not a high-bandwidth video signal; right?4

A Unless you're moving incredibly fast.5

Q Sir, can you just answer simply, like you did in the6

deposition.7

A I just want --8

Q The output of a fixed photomultiplier tube with an object9

moved by it in a scanning motion is not a high-bandwidth video10

signal, is it, sir?11

A It's not a high-bandwidth signal. But it's important to12

get the qualifications in.13

Q Now, if the Court finds that Mr. Lemelson described his14

picture signal to be a fixed photomultiplier tube with the15

object moved relative to the photomultiplier tube to generate16

a scanning signal, then that would include in his17

specification a scanning system that is not high bandwidth;18

right? If the Court were to so find.19

A Sorry. If it were to find what?20

Q Sure. If the Court finds that Mr. Lemelson's21

specification described what we just described a moment ago,22

which is a fixed photomultiplier tube with an object scanned23

by it. All right?24

A But that's absurd. It doesn't generate a picture signal25

HORN - CROSS00239

or anything.1


THE WITNESS: Okay. It's not a -- not -- it would3

not produce a high-bandwidth video signal. It wouldn't4

produce anything else useful, but --5

BY MR. LISA:6

Q In your view it wouldn't produce anything useful. And7

that's fine, sir. But if the Court were to construe the8

claims -- I'm sorry. Strike that.9

If the Court were to find that Mr. Lemelson describes10

such a system, which you view to be useless, then to construe11

the claims as requiring only high-bandwidth video signals12

would exclude that embodiment; right, sir?13

A I guess.14

Q Now, sir, you're also aware, are you not, that there was15

a significant presentation by -- or lengthy presentation by16

Lemelson's experts on why it is that these alternative17

embodiments in column 20 regarding Figures 7 and 9 enable18

scanning systems without prepositioning; right?19

A Yes, I saw that representation.20

Q And when you testified on direct that every single21

embodiment of Mr. Lemelson's requires without a doubt22

prepositioning, you knew about these two other embodiments23

described on column 20, paragraphs (c) and (e); right? You24

knew they were there?25

HORN - CROSS00240

A And they require prepositioning.1

Q You didn't even talk about them, sir, did you?2

A Because I believe they require prepositioning.3

Q And you're aware that Mr. Lemelson's experts have4

explained why they don't require it; right?5

A They've expressed their views.6

Q And if these signals -- if these two alternatives perform7

scanning operations without gating, then there's no8

requirement, is there, that the object appear within the9

specific area in which a gating signal occurs; right?10

A Well, it wouldn't --11

Q Yes or no, sir?12

A Sorry. I lost the polarity.13

Q Sir, one of the reasons why you said over and over and14

over again that Mr. Lemelson requires prepositioning is15

because of these gating signals; right?16

A No. Mr. Lemelson requires prepositioning so that the17

inflections occur in the right point in the image. The gating18

signals are there to remove signals from other inflections19

that are not to be analyzed.20

Q Well, sir, you realize, of course, that you can operate21

these alternative embodiments described in column 20 to make22

what Lemelson's experts have referred to as relative23

measurements; right?24

A Absolutely not.25

HORN - CROSS00241

Q You're aware that Mr. Lemelson's experts have set forth1

their reasons as to how it is that these alternative2

embodiments allow just such a measurement; right?3

A Yes. And they're not enabled, because there's no4

mechanism for sequential subtraction, there's no mechanism for5

taking ratios, there's no dividing circuit, there's no way to6

exclude background that will corrupt the measurement.7

Q But you didn't elect to address these particular8

embodiments that don't require gating in your direct9

testimony; right?10

A I did not. And I can explain why.11

Q I don't need an explanation, sir.12

Now, sir, if we can, let's turn back to 1127A, the large13

version.14

MR. LISA: Trying to find it, Your Honor. I'm15

sorry.16

BY MR. LISA:17

Q If you look at the claims, sir, that appear on pages 19618

on, did you happen to notice whether or not the claims that19

Mr. Lemelson had filed and were pending at that time actually20

described expressly gating?21

A Well, I'd have to read it really carefully again. But22

the claims have to be interpreted in terms of the23

specification, and the specification is about using gating24

signals.25

HORN - CROSS00242

Q Well, sir, I'll represent to you that each of the1

independent claims does refer to gating. That's my point. 2

Did you know whether or not at the time that Mr. Lemelson was3

discussing the -- what his then pending invention was, did you4

know whether or not the claims expressly called for gating?5

A I forgot about this. I'm sorry.6

Q Well, when you cited parts of the 1956 application for7

intrinsic evidence for the purpose that all of Lemelson's8

inventions, all of them, require gating, you didn't point out9

that the claims then at issue actually said "gating"; right?10

A Well, again, I don't think that limits what I said,11

because he explicitly tells you to gate, and you need to gate.12

Q If you could start with a "yes," sir. You didn't point13

that out, did you?14

A I did not specifically refer to the text of the claims.15

Q How many of the claims that have been asserted against16

Symbol and Cognex actually say "gating" in them?17

A I don't know for sure, but probably none.18

Q All right. So what you did was take a statement by Mr.19

Lemelson in an application in which all of his claims related20

to electron beam scanning and gating and programming, you left21

out the programming, and then generalized to all of his22

inventions the gating and electron beam requirements; right? 23

Yes or no?24

A Yes. And I think that's fully justified. Because what25

HORN - CROSS00243

ties it together is the common specification, which is what is1

needed to interpret all of the claims, these and the later2

ones.3

Q So what you're asking the Court to do is to ignore the4

differences in the many claims that have been asserted in this5

case against Cognex and Symbol?6

A No. What I'm saying is that here he's given a tremendous7

amount of detail, and in each claim reciting all of the8

different aspects. These were all later dropped, and the9

claims were broadly generalized, and all the details, such as10

gating and clipping, were left for someone to figure out by11

looking in the specification.12

Q Well, sir, the one thing you did is you don't want the13

current claims to have any programming in them, do you?14

A I don't want?15

Q Right. You said there's no programs; right?16

A Well, if you -- if by programming you mean what is meant17

in the 1950s, such as we discussed, plug boards, permanent18

memory in one of the patents I referred to, Rochester, then,19

sure, you can claim that you can have different kind of gating20

signals, if you want to call that programming. It's got21

nothing to do with programming a computer.22

Q But what you're asking the Court to do is to treat every23

single claim, every single one, regardless of whether it says24

"gating" or not, to include a gating limitation; right?25

HORN - CROSS00244

A No. Well, excuse me. Every claim?1

Q Yes, sir. Every claim asserted against Symbol and2

Cognex, whether it says "gating" in it or not, you're asking3

the Court to read that limitation into it; right?4

A Yes, in essence. Because, as we go through the claim5

elements, there's always one element that refers to an6

analyzing step that refers to gating and clipping.7

Q And you're doing that in part based on comments made by8

Mr. Lemelson in an application in which his claims expressly9

said "gating"; right?10

A Here he expressed everything --11

Q Yes, sir, or no, sir?12

A Yes. He talks about gating in the specific claims.13

Q And then when we turn to the 1963 application, you cited14

to the -- what you called the intrinsic reference evidence15

there repeatedly for the proposition that Mr. Lemelson said16

computers weren't important to his invention; right?17

A Yes.18

Q And you said he said that over and over again; right?19

A Well, several times, yes.20

Q All right. And did you happen to look at the claims at21

issue in that case to see whether those claims had anything to22

do with computers, sir?23

A I don't -- I looked at them. I don't recollect now what24

they were.25

HORN - CROSS00245

Q Do you recall, sir, that not one claim, not one claim1

pending in the 1963 case even mentioned the word "computer"? 2


A Well, that would make a lot of sense, because that was4

added very much later, when computers were part of the machine5

vision scene.6

Q Well, you certainly recognize that the later claims say7

"computer processing" and "computer analyzing"; right?8

A They're talking about a totally different --9


A Yes. They talk about a totally different type of11

computer from the computer in the common specification.12

Q All right. So when Mr. Lemelson makes comments about13

claims that don't have anything about computing, you told the14

Court in your charts that that was how he defined the15

invention; right?16

A Yes. I -- I see the common specification as the core of17

the invention. All the claims have to be interpreted in terms18

of that. And that's the common thread.19

Q All right. So in contrast to where you're asking the20

Court to read in the gating limitation even though it's not21

there, you're asking the Court to ignore the computer22

addressing and storage elements claimed in later claims;23

right?24

A It has to be interpreted in what's in the specification.25

HORN - CROSS00246


A Sorry. I'm --2

Q If you can answer the question first. You're asking the3

Court with respect to the computer limitations to now ignore4

the express words of the claim; right?5

A Not really. I'm saying that "computer analyzing" means a6

certain thing. I'm not saying ignore the word "computer." 7

I'm expressing an opinion on what that means.8

Q Well, you never took issue with Dr. Williamson's ordinary9

and plain meaning of the word "computer," did you?10

A I don't think I did, because the meaning of "computer" in11

the context of the common specification is clear and12

different.13

Q Well, sir, were you instructed in forming your claim14

construction that the starting point for claim construction is15

the ordinary and accustomed meaning of the terms?16

A Yes; unless it's contradicted by what's in the intrinsic17

evidence.18

Q And Dr. Williamson provided an explicit claim19

construction on what -- excuse me -- what that ordinary and20

accustomed meaning is; right?21

A Yes. And again, the patentee has the option to define22

the terms the way he wants.23

Q All right. And what you're asking the Court to do is to24

ignore the plain and ordinary meaning that Dr. Williamson25

HORN - CROSS00247

provided for the claims; right? Yes?1

A To ignore the implication that "computer" means --2

Q Sir, yes or no? Please. Just answer the question.3

A I'm sorry.4

Q We'll go more quickly.5

A Repeat it.6

Q Are you asking the Court to ignore Dr. Williamson's plain7

or ordinary meaning?8

A Yes.9

Q And yet you don't take issue with his plain and ordinary10

meaning, do you?11

A Well, I don't have a problem saying that that is the12

plain and ordinary meaning. I have a problem saying that13

that's what Lemelson's talking about.14

THE COURT: All right. That'd be -- that'd be a15

good point to break.16

MR. LISA: Okay. Thank you, Your Honor.17

THE COURT: We'll break until 1:00 o'clock tomorrow. 18

There will be -- well, there won't be court in the morning, so19

your materials will be perfectly -- perfectly safe here. All20

right.21


(Court recessed at 4:03 p.m., until the following day,23

December 10, 2002, at 1:00 p.m.)24

* * * * * * * * * *25

HORN - CROSS00248

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00249

WITNESS INDEX AND EXHIBIT LIST

WITNESS INDEX

PLAINTIFF'S WITNESSES: PAGE

DR. BERTHOLD HORNCross-examination (Continued) by Mr. Lisa 8

DEFENDANT'S WITNESSES:

None

EXHIBIT LIST

PLAINTIFF'S EXHIBIT NO. ADMITTED

None

DEFENDANT'S EXHIBIT NO.

None

00250

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001 United States District Court District of Nevada SYMBOL...

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