Aries et al.v.Matlin et al.

Patent Trials and Appeals Board

Dec 22, 2014

11867260 - (J) (P.T.A.B. Dec. 22, 2014)

BoxInterferences@uspto.gov Paper 551
Telephone: 571-272-4683 Entered: 22 December 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,919 McK
Technology Center 3700
____________________

TAI HOON K. MATLIN and MICHAEL DALE JENSEN,

Patent 7,954,737,
Junior Party,

v.

PAUL A. ARIES and MICHAEL D. SAWFORD,

Application 13/082,657
Patent Application Publication 2011/0180641,
Senior Party.
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and HUNG H. BUI,
Administrative Patent Judges.

FRED E. McKELVEY, Administrative Patent Judges.

JUDGMENT
In view of the Decision on Motions, Part 1 (Paper 154) holding that the 1
involved claims of Aries are unpatentable under 35 U.S.C. § 102(b) and the 2
Decision on Priority (Paper 550), holding that Matlin is not the first inventor, it 3
is— 4

2

ORDERED that judgment be entered against junior party Tai Hoon K. 1
Matlin and Michael Dale Jensen for Counts 1 and 2 (Paper 158); 2
FURTHER ORDERED that claims 1-24 of junior party’s involved 3
U.S. Patent No. 7,954,737 be CANCELED, 35 U.S.C. 135(a); and 4
FURTHER ORDERED that claims 18-47 senior party’s involved 5
application 13/082,657 be FINALLY REFUSED, 35 U.S.C. 135(a); 6
FURTHER ORDERED that a copy of this judgment be entered in the 7
administrative records of Matlin’s involved U.S. Patent No. 7,954,737 and Aries’ 8
involved application 13/082,657. 9
FURTHER ORDERED that a party seeking judicial review timely 10
serve notice on the Director of the United States Patent and Trademark Office. 11
37 C.F.R. §§ 90.1 and 104.2. 12

NOTICE: "Any agreement or understanding between parties to an interference, 13
including any collateral agreements referred to therein, made in connection with or 14
in contemplation of the termination of the interference, shall be in writing and a 15
true copy thereof filed in the Patent and Trademark Office before the termination 16
of the interference as between the said parties to the agreement or understanding." 17
35 U.S.C. 135(c); see also 37 C.F.R. § 41.205 (settlement agreements). 18
19

3

cc (via electronic mail): 1
2
Attorney for Matlin: 3
4
Sandip H. Patel 5
Jeremy R. Kriegel 6
Michael A. Chinlund 7
Marshall, Gerstein & Borun, LLP 8
Email: spatel@marshallip.com 9
Email: jkriegel@marshallip.com 10
Email: mchinlund@marshallip.com 11

Richard L. Kaiser 12
Michael Best & Friedrich, LLP 13
Email: RLKaiser@michaelbest.com 14

Attorney for Aries: 15

Bryan P. Collins 16
Emily T. Bell 17
Benjamin L. Kiersz 18
Pillsbury Winthrop Shaw Pittman, LLP 19
Email: bryan.collins@pillsburylaw.com 20
Email: emily.bell@pillsburylaw.com 21
Email: Benjamin.kiersz@pillsburylaw.com 22

BoxInterferences@uspto.gov Paper 550
Telephone: 571-272-4683 Entered: 22 December 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,919 McK
Technology Center 3700
____________________

TAI HOON K. MATLIN and MICHAEL DALE JENSEN,

Patent 7,954,737,
Junior Party,

v.

PAUL A. ARIES and MICHAEL D. SAWFORD,

Application 13/082,657
Patent Application Publication 2011/0180641,
Senior Party.
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and HUNG H. BUI,
Administrative Patent Judges.

FRED E. McKELVEY, Administrative Patent Judges.

DECISION ON PRIORITY

I. Introduction 1
The interference is before a panel of the PTAB for a decision on motions 2
related to priority of invention. 3
Oral argument was held on 23 October 2014. 4

2

A transcript of oral argument has been made of record. Paper 549. 1
A. Matlin Motion 4 2
Matlin Motion 4 seeks entry of judgment against Aries based on priority of 3
invention. Paper 171. 4
Aries opposes. Paper 350. 5
Matlin has replied. Paper 352. 6
B. Aries Motion 5 7
Aries Motion 5 seeks entry of judgment against Matlin based on priority of 8
invention. Paper 172. 9
Matlin opposes. Paper 349. 10
Aries has replied. Paper 351. 11
II. The Counts 12
Counts 1 and 2 are involved in the interference. 13
A. Count 1 14
Claim 1
1
of the Matlin patent [i.e., U.S. Patent 7,954,737] 15
or 16
claim 18 of the Aries application [i.e., Application 13/082,657]. 17

1
In the Declaration (Paper 1, page 5) and the First Redeclaration (Paper 158,
page 2), Count 1 inadvertently refers to Matlin patent claim 18 and Aries
application claim 1. The references should have been to Matlin patent claim 1 and
Aries application claim 18. Count 1 was correctly reproduced in the Decision on
Motions, Part 1. Paper 154, page 3. See also Second Redeclaration (Paper 548).

3

Matlin claim 1 and Aries claim 18 are identical and read (indentation 1
added):
2
2
A shredding machine for shredding sheet material, 3

the machine comprising a feed aperture and a cutting 4
mechanism powered by an electric motor, 5

the feed aperture being arranged to receive sheets for 6
shredding and to direct such sheets to the cutting mechanism 7
for shredding, 8

the machine having means for measuring the thickness of 9
sheet material passed into said feed aperture for shredding 10
which sheet material may comprise a plurality of superimposed 11
sheets which together provide such thickness, 12

said measuring means controlling said cutting 13
mechanism so as to permit energisation of the cutting 14
mechanism where the thickness of sheet material measured 15
thereby is below a controlling threshold and to prevent such 16
energisation where the thickness of sheet material measured is 17
above said controlling threshold, 18

characterised in that the machine includes 19

at least one sensor sensing a variable motor performance 20
parameter relevant to such shredding and 21

control means operable to adjust said controlling 22
threshold automatically in dependence upon the value of the 23
motor performance parameter sensed. 24

2
For a description of the invention as set out in the drawings and written
description of the involved Aries application, see Paper 154, Decision on Motions,
Part 1, pp. 8-21.

4

B. Count 2 1
Claim 19 of the Matlin patent [i.e., U.S. Patent 7,954,737] 2
or 3
claim 36 of the Aries application [i.e., Application 13/082,657]. 4
Claim 19 of Matlin and claim 36 of Aries are the same and read (identation 5
added): 6
A shredding machine for shredding sheet material, 7

the machine comprising a feed aperture and a cutting 8
mechanism powered by an electric motor, 9

the feed aperture being arranged to receive sheets for shredding 10
and to direct such sheets to the cutting mechanism for shredding, 11

the machine having means for measuring the thickness of sheet 12
material passed into said feed aperture for shredding which sheet 13
material may comprise a plurality of superimposed sheets which 14
together provide such thickness, 15

said measuring means controlling said cutting mechanism so as 16
to permit energisation of the cutting mechanism where the thickness 17
of sheet material measured thereby is below a controlling threshold 18
and to prevent such energisation where the thickness of sheet material 19
measured is above said controlling threshold, 20

characterised in that the machine includes 21

at least one sensor sensing a variable motor performance 22
parameter relevant to such shredding and 23

control means operable to adjust said controlling threshold 24
automatically in dependence upon the value of the parameter sensed; 25

5

wherein said measuring means includes 1

an actuating element which is movable from a first limiting 2
position engaging or relatively close to one major wall of said 3
aperture, away from said major wall, against a biasing force acting 4
on said element, and 5

means for measuring displacement of said actuating element 6
from said limiting position; and 7

wherein said means for measuring displacement of said 8
actuating element comprises a marker member provided with a series 9
of markers and optical sensing means sensitive to the passage of said 10
markers past said optical sensing means, 11

said member being part of, or mechanically coupled with, said 12
actuating element so that the displacement of said actuating element 13
will cause said marker member to move so as to cause said markers to 14
traverse said measuring zone. 15

The limitations italicized in Count 2 point out the difference between 16
(1) the subject matter of Count 1 and (2) the subject matter of Count 2. 17
III. Priority proofs 18
Both parties presented priority proofs. 19
Matlin offered proofs of conception coupled with reasonable 20
diligence. 21
Arties offered proofs of conception and actual reduction to practice. 22
Relevant dates, including conception and actual reduction to practice 23
dates alleged by the parties, are set out in Table 1: 24

6

Table 1
Matlin Patent Date Aries Application
2006-08-15 Aries Rule 41.204(c) priority
statement conception
2006-08-15 Aries Conception 1
2006-09-26 Aries Conception 2
Matlin Rule 41.204(c) priority
statement conception
2006-10-23
Matlin Conception 1 2006-10-23
2006-11-14 Aries Rule 41.204(c) priority
statement actual reduction to
practice
2006-11-14 Testing
Matlin Conception 2 2006-11-17
2007-01-10 Aries actual reduction to
practice 1
2007-01-24 Aries actual reduction to
practice 2
Matlin Conception 3 2007-02-19
Matlin Conception 4 2007-03-14
2007-08-02 Aries UK filing date (Aries
accorded priority benefit date)
Matlin priority statement actual
reduction to practice (no proofs
offered)

2007-08-09

Matlin filing date 2007-10-04
2008-07-30 Aries “parent” application
filing date
2011-04-08 Aries involved application
filing date
Matlin issue date 2011-06-07

7

IV. Burden and Standard of Proof 1
As junior party, Matlin is presumed to have invented the subject 2
matter of the counts after Aries. 37 C.F.R. § 41.207(a). 3
To overcome the presumption, Matlin must establish, by a 4
preponderance of the evidence, that it made its invention before the filing 5
date accorded to Aries. 37 C.F.R. § 41.207(a)(1)-(2). 6
Matlin is attempting to establish that it made its invention prior to 7
Aries via Matlin Motion 4. Paper 171. 8
Assuming arguendo that Matlin could be successful in establishing a 9
date of invention prior to the filing date accorded to Aries, then Aries must 10
be afforded an opportunity to establish that it made its invention prior to any 11
date of invention proved by Matlin. 12
The procedural vehicle available for Aries to take advantage of its 13
opportunity is a motion for judgment based on priority. 37 C.F.R. 14
§ 41.121(a)(1)(iii).
3
15

3
We recognize that our reviewing court in Brown v. Barbacid, 276 F.3d 1327,
1333 (Fed. Cir. 2002), held that the burden of proof does not shift to the senior
party. The rationale in support of the court’s holding was a provision in then
applicable Rule 657(a) [37 C.F.R. § 1.657(a) (2002) (“The burden of proof shall be
upon a party who contends otherwise.”)]. The language of Rule 657(a) no longer
appears in the applicable rule today. Instead, it has been replaced with a motions
practice and the motions practice authorizes a senior party to file a motion to
establish a date of invention prior to any date of invention established by a junior
party. If both parties present priority evidence, the PTAB considers all the
evidence and makes a determination as to who is the first inventor.

8

In filing its motion for judgment, Aries has the burden of proof. 1
37 C.F.R. § 41.121(b). 2
The standard of proof for Aries is preponderance of the evidence. 3
37 C.F.R. § 41.207(a)(2). 4
Aries has filed Aries Motion 5 for judgment based on priority as a 5
hedge against Matlin proving a date of invention prior to the filing date 6
accorded to Aries. Paper 172. 7
V. Order of Considering Motions and 8
Specific Issues Raised by those Motions 9

The PTAB may take up motions in any order. 37 C.F.R. § 41.125(a). 10
During a conference call prior to oral argument, counsel and the 11
PTAB agreed that oral argument on specific issues raised in both the Matlin 12
and Aries motions would take place at the times set out in Table 2:
4
13

Table 2
1:00 to 1:10 Introduction; possible new issue in Matlin reply brief
1:10 to 1:25 Aries: Aries conceptions of Aug. 15, 2006 and Sept. 26, 2006
1:25 to 1:40 Matlin: Response
1:40 to 1:55 Aries: Aries actual reductions to practice of Jan. 10 and 24, 2007
1:55 to 2:10 Matlin: Response
2:10 to 2:30 Matlin: Matlin conceptions
2:30 to 2:50 Aries: Response

4
The PTAB expresses its appreciation for many suggestions made by counsel
during the conference call, all of which were adopted.

9

2:50 to 3:00 Matlin: Matlin diligence
3:00 to 3:10 Aries: Response

The reader will note that senior party Aries went first at oral 1
argument—which is somewhat unusual for a senior party given that a junior 2
party has the initial burden of proof on priority. 3
However, it is important to first establish a date of invention by Aries 4
because Matlin’s case for priority vis-à-vis Aries is based on Matlin 5
conception coupled with reasonable diligence. 6
Assuming a Matlin conception and to establish when Matlin’s 7
diligence must begin, it is necessary to determine when Aries entered the 8
field. 9
For this reason, oral argument began with the case for senior party 10
Aries followed by the case for junior party Matlin. 11
As will become apparent, in our analysis of the case we start with a 12
consideration of what we identify in Table 1 as Aries’ alleged Conceptions 1 13
and 2. 14
VI. Conceptions 1 and 2—Aries 15
A. Applicable principles 16
Applicable principles are set out in Eaton v. Evans, 204 F.3d 1094, 17
1097 (Fed. Cir. 2000): priority of invention belongs to the first party to 18
constructively or actually reduce the invention to practice unless the other 19
party can establish that it was first to conceive the invention and that it 20
exercised reasonable diligence from a date prior to the first party’s entry into 21
the field to a later reduction to practice by the other party. 22

10

When a party is first to conceive and first to reduce to practice (either 1
actual or constructive), the party prevails and diligence is not an issue. 2
Rivise & Caesar, 1 INTERFERENCE LAW AND PRACTICE § 173 (1940) 3
(“’[p]riority of invention belongs to the party who was . . . the first both to 4
conceive and reduce to practice . . .” and 3 INTERFERENCE LAW AND 5
PRACTICE § 387 (1943) (“if a person was the first both to conceive and 6
reduced to practice, he is entitled to an aware of priority irrespective of the 7
question of diligence.”). See also Erben v. Yardley, 50 App. D.C. 43 (1920): 8
The Board of Examiners in Chief and the Assistant 9
Commissioner, after a careful analysis of the testimony, reached 10
the conclusion that Yardley was the first to conceive and first to 11
reduce to practice, and we are in accord with those findings. 12
Counsel for appellant contend here, as below, that the mere fact 13
that Yardley was the first to conceive and first to reduce to 14
practice is not sufficient ground upon which to base an award of 15
priority to him. The Assistant Commissioner directed attention 16
in his opinion to the fact that such has been the rule in the 17
Patent Office since 1872,
[5]
and that the rule has received the 18
approval of this court in Hubbard v. Berg, 40 App. D.C. 577 19
[1913] and Thompson v. Storrie, 46 App. D.C. 324 [1917]. We 20
can find no sufficient reason for the overturn of this long-21
established rule and the decisions of this court approving it. 22

Since Aries is first to reduce to practice (by virtue of its U.K. filing 23
date), it follows that if Aries was first to conceive Aries prevails on priority. 24
On the issue of priority the PTAB acts as an impartial adjudicator of 25
the issues raised by the parties. Brand v. Miller, 487 F.3d 862, 869 (Fed. 26

5
See Allen & Moody v. Gilman, 1872 Dec. Comm’r Pat. 204 (1872).

11

Cir. 2007) (the Board's role is one of an impartial adjudicator of an 1
adversarial dispute between two parties). 2
The conception of the invention consists in the complete performance of the 3
mental part of the inventive act. All that remains to be accomplished in order to 4
perfect the act or instrument belongs to the department of construction, not 5
invention. Conception is, therefore, the formation in the mind of the inventor of a 6
definite and permanent idea of the complete and operative invention as it is 7
thereafter to be applied in practice that constitutes an available conception within 8
the meaning of the patent law. See Mergenthaler v. Scudder, 11 App. D.C. 264, 9
276 (1897), followed in numerous decisions of the CCPA and the Federal Circuit, 10
including Dawson v. Dawson and Bowman, 710 F.3d 1347, 1352 (Fed. Cir. 2013). 11
Conception is an issue of law to be resolved on the basis of the relevant 12
underlying facts. Hitzeman v. Rutter, 243 F.3d 1345, 1353 (Fed. Cir. 2001). 13
In resolving an issue of conception, we make a reasoned evaluation of the 14
evidence with the view of reaching a sound determination of the credibility of a 15
party’s story as to whether the party has established that, at the time of conception, 16
the party had possession of every feature recited in the count. Coleman v. Dines, 17
754 F.2d 353, 360 (Fed. Cir. 1985). 18
B. Position of the Parties 19
Aries alleges conceptions on 15 August 2006 (Aries Conception 1) 20
and September 26, 2006 (Aries Conception 2). 21
The earliest conception alleged by Matlin is Matlin Conception 1, said 22
to have occurred no later than 23 October 2006. 23

12

We considered all activities associated with both Aries Conception 1 1
and Aries Conception 2 to determine whether Aries conceived no later than 2
26 September 2006. 3
Because Matlin’s earliest alleged Conception 1 is after 4
26 September 2006, we need not make a separate determination as to 5
whether Aries conceived on 15 August 2006. Paper 549, Transcript of Oral 6
Argument, pages 20:9-21:6 and page 31:1-8. 7
Both Counts 1 and 2 require “control means operable to adjust said 8
controlling threshold automatically in dependence upon the value of the 9
motor performance parameter sensed.” (Italics added). 10
As paper is shredded, the temperature of the shredder motor increases 11
and the power of the motor decreases resulting in a decrease in the thickness 12
of the paper that can be shredded. 13
What the counts require is that a motor performance parameter 14
sensed, e.g., motor temperature, be measured, and in the case of temperature 15
if the motor temperature is too high, then the shredder will not operate if the 16
thickness of the paper to be shredded is too large. 17
The number of pages which can be shredded at any given temperature 18
is referred to as the “controlling threshold.” 19
As the temperature of the shredder motor increases, the controlling 20
threshold of the number of papers which can be shredded at a higher 21
temperature is “adjusted” so that the shredder will operate only if the 22
number of pages of paper to be shredded is below the adjusted threshold. 23

13

According to Matlin, conception proofs offered by Aries fail to show 1
that Aries had possession of “control means operable to adjust.” Paper 349 2
(Matlin Opposition), p. 1:13-21. 3
Specifically, Matlin maintains the Aries conception: 4
relies on a fixed controlling threshold (thickness threshold), and 5
artificially increases or “handicaps” the detected thickness of 6
paper inserted into the shredder to trick the shredder into 7
overstating the paper’s thickness relative to the fixed 8
controlling threshold. Aries’ handicap system relies on a fixed 9
“controlling threshold” that is never “reduc[ed]” as recited in 10
each of Counts 1-2. 11

Paper 349 (Matlin Opposition), p. 2:4-8. 12
Aries disagrees arguing that the Aries inventors had possession of the 13
control means operable to adjust. See, e.g., Paper 172 (Aries Motion), 14
p. 10:11 to p. 14:2; Paper 351 (Aries Reply), pp. 1-2. 15
C. Witnesses 16
We have considered the testimony of three witnesses. 17
1. Paul A. Aries 18
Inventor Paul Aries testified on behalf of Aries. Ex. 1150. 19
He received a Master’s Degree in New Products Introduction from the 20
University of Central England. Ex. 1150, ¶ 6. 21
As of the date of his testimony, Mr. Aries (1) has been employed for 22
18 years by ACCO, the real party in interest, and (2) was “the New Product 23
Development Director for Shredding” of ACCO. Ex. 1150, ¶¶ 5 & 7(d). 24

14

Matlin did not cross-examine Mr. Aries.
6
1
We find his testimony to be credible. 2
2. Michael D. Sawford 3
Inventor Michael D. Sawford testified on behalf of Aries. Ex. 1151. 4
He received as degree in Industrial Design Engineering (1999) and a 5
Masters in Rapid Product Development (2000) from De Montfort University 6
in Leicester, U.K. Ex. 1151, ¶ 5. 7
From 2004 to 2010, Mr. Sawford was employed as a design engineer 8
by ACCO. Ex. 1151, ¶ 7. 9
Matlin elected to cross-examine Mr. Sawford. Ex. 1155. 10
Based on his direct declaration testimony when considered in view of 11
cross (10:00 am to 2:34 pm), we find his testimony to be credible, 12
particularly with respect to how one skilled in the art would understand the 13
significance of what is described in Ex. 1027. 14
3. Jeremy (“Jez”) Gardner 15
Non-inventor Jeremy Gardner testified on behalf of Aries. Ex. 1152. 16
Mr. Gardner is a co-founder of Design Works Windsor, Ltd. 17
Ex. 1152, ¶ 1. 18
Design Works performed work on behalf of ACCO. Ex. 1152, ¶ 7. 19
His testimony is relied upon to establish corroboration. Paper 172, 20
p. 15:13-15. 21
Matlin did not cross-examine Mr. Gardner. 22

6
We have drawn no inference (favorable or adverse) from Matlin’s litigation
decision not to cross-examine Aries.

15

We find his testimony to be credible. 1
D. Aries Activities 2
Resolution of whether Aries has established conception within the 3
meaning of § 102(g) prior to Matlin’s alleged Conception 1 in large measure 4
depends on how one skilled in the art would understand a diagram of 5
computer logic flow, i.e., Ex. 1027. 6
Ex. 1027 was prepared by inventor Sawford. Ex. 1155 (Sawford 7
cross), p. 9:19-23. 8
Ex. 1027 consists of three pages. The first two pages describe flow 9
diagrams. 10
According to Aries, by “August 15, 2006 . . . [inventors Aries and 11
Sawford] had devised computer logic, specifically the diagram of computer 12
logic flow (Exh. 1027) that would adjust paper sheet thickness threshold as a 13
function of [motor] temperature.” Paper 172 (Aries Motion), p. 10:13-15; 14
Ex. 1050 (Aries declaration), ¶ 21; Ex. 1051 (Sawford declaration), ¶ 17. 15
A portion of the second page of Ex. 1027 is reproduced below with 16
numerals added by Aries: 17

16

Depicted is a portion of a schematic diagram
(page 2 of Ex. 1027)
As of the date of the creation of the original version of Ex. 1027, 1
the inventors understood that motor temperature is a motor performance 2
parameter relevant to the operation of shredder. Ex. 1027 reveals that motor 3
temperature is sensed and that a sensor reading 600 is then processed by a 4
control means (i.e., microprocessor) 700. Ex. 1050 (Aries declaration), 5
¶ 22; Ex. 1051 (Sawford declaration), ¶ 18. 6
A portion of the first page of Ex. 1027 is reproduced below with 7
numerals added: 8

17

Depicted is a portion of a schematic diagram
(page 1 of Ex. 1027)
According to Aries, page 1 of Ex. 1027 “summarizes . . . [the 1
inventors’] ideas as to how the shredding operation would occur.” 2

18

Paper 172 (Aries Motion), p. 12:3; Ex. 1050 (Aries declaration), ¶ 23(a); 1
Ex. 1051 (Sawford declaration), ¶ 19(a). 2
Inventor Sawford explains page 1 as follows: 3
[E]ach shredding operation would be initiated with a 4
microprocessor calibrating the thickness-sensing mechanism to 5
zero (box 410), illuminating a light to signal the optimal 6
capacity feature is operational (box 412), checking (at box 413) 7
. . . [a] sensed motor temperature (boxes 418 and 419), and 8
determining (using a predetermined scheme or algorithm 9
[a]ccounting for the sensed motor temperature) the optimal 10
sheet capacity thickness threshold. This determination by the 11
microprocessor results in setting the optimal sheet capacity 12
threshold value that is then stored within the microprocessor (as 13
“Value 1” in box 422). 14

Ex. 1051 (Sawford declaration), ¶ 19(a). See also Ex. 1050 (Aries 15
declaration), ¶ 23(a). 16
Sawford further explains: 17
Once the optimal sheet capacity threshold setting is stored 18
within the microprocessor, the microprocessor can then 19
compare (in box 426) the thickness actually sensed (as “Value 20
2” in box 500) to the stored optimal capacity threshold value 21
(“Value 1”). The comparison yields a “sheet cap value” (in box 22
426). If that “sheet cap value” is zero or a negative number 23
[i.e., “sheet cap value” ≤ 0], then the set threshold (“Value 1”) 24
equals or exceeds (box 428) the thickness sensed (“Value 2”) 25
and shredding will start (box 430). 26
27
Ex. 1051 (Sawford declaration), ¶ 19(b). See also Ex. 1050 (Aries 28
declaration), ¶ 23(b). 29

19

While Sawford’s direct testimony talks in terms of a “number,” what 1
Sawford means by “number” is an integer. Ex. 1151 (Sawford cross), 2
p. 16:8-9 and p. 59:8-12. 3
Sawford still further explains: 4
But, if that “sheet cap value” is a positive number [i.e., a 5
positive integer—“sheet cap value” > 0,], then the thickness 6
sensed (“Value 2”) exceeds (box 432) the set threshold (“Value 7
1”) and the shredder will not start (box 434) in Image 9, below. 8

20

In this instance, the microprocessor illuminates a light (box 1
435) to signal that paper should be removed from the shredder 2
(box 502), and the microprocessor calibrates the thickness-3
sensing mechanism to zero (box 410). Thus, the process of 4
setting the optimal sheet capacity thickness threshold, as 5
described in the diagram, is repeated. 6

Ex. 1051 (Sawford declaration), ¶ 19(c). See also Ex. 1050 (Aries 7
declaration), ¶ 23(c). 8
Sawford continued explaining: 9
This is one way the microprocessor substitutes a new, lower (or 10
reduced) optimal sheet capacity threshold setting for the 11
previously-used, higher setting, thereby resetting the higher 12
predetermined maximum thickness threshold with a lower one 13
[i.e., lower maximum thickness threshold]. As this sequence 14
repeats for each shredding cycle, the optimal sheet capacity 15
threshold setting is set and reset, over and over, during the 16
operational life of the shredder. And, this is how the control 17
means (microprocessor) is operable to adjust the controlling 18
thickness threshold automatically as a function of the motor 19
temperature sensed. 20

Ex. 1051 (Sawford declaration), ¶ 19(d). 21

Ex. 1041 is a copy of Ex. 1027 with at least the following additions: 22
(A) on page 1: (1) the “Credit cards” discussion, (2) “Voltage sensing 23
discussion, (3) “Temperature sensing” discussion, (4) “Self Calibration” 24
discussion and diagram, and (B) the comments on page 4. See generally 25
Ex. 1051 (Sawford declaration), ¶ 50. 26
While we have not been able to find a date on Ex. 1027, Ex. 1041 is 27
dated “18/09/2006” which we take to mean Sept. 18, 2006. See page 2. 28

21

There came a time when ACCO, assignee of inventors Aries and 1
Sawford, engaged Design Works Windsor, Ltd. to prepare a prototype “AJ2” 2
design shredder. Ex. 1051 (Sawford declaration), ¶ 54; Ex. 1050, ¶ 84. 3
A copy of a “brief” (i.e., Ex. 1041) was received by Jeremy (Jez) 4
Gardner, who worked for Design Works Windsor, Ltd. Ex. 1052 (Gardner 5
declaration), ¶¶ 1 and 6-7. 6
The “brief” dated Sept. 8, 2006, was received by Gardner no later 7
than 18 Oct. 2006, a date prior to Matlin’s alleged conception date of 8
23 Oct. 2006. Ex. 1052 (Gardner declaration), ¶¶ 6-7; Ex. 1056, p.1. 9
We therefore find that Ex. 1041 was in existence prior to any date of 10
conception alleged by Matlin. 11
Matlin argues that Aries does not rely on Ex. 1041 in its motion for 12
establishing corroboration. Paper 349 (Matlin opposition), p. 11 n.4. 13
However, in addressing corroboration, Aries relies on Gardner’s 14
testimony (Ex. 1052). Paper 172 (Aries motion), p. 15:13-14. 15
Gardner’s testimony refers to correspondence between Sawford and 16
Gardner. In one communication Sawford forwarded a copy of what is now 17
Ex. 1041 and Gardner acknowledges receipt of the copy. Ex. 1052, ¶ 6. 18
Responding to Matlin’s opposition argument, Aries points out that 19
design and implementation activities at Design Works were based—at least 20
in part—on what is now Ex. 1041, a fact we find consistent with Gardner’s 21
testimony. 22

22

D. Matlin Opposition 1
Matlin has a different view of the significance of Ex. 1027 and 2
Ex. 1041. 3
In Matlin’s opinion, the Aries conception evidence lacks proof that 4
Aries and Sawford had conceived of “adjusting.” Paper 349 (Matlin 5
Opposition), p. 1:13-21. 6
Resorting to what it says “is akin to golf handicap” (Paper 349, 7
p. 2:14), Matlin relies on an annotated version of the Aries logic flowchart. 8
Paper 349 (Matlin Opposition), p. 3. 9

Depicted above is an annotated version of Aries’
Conception Flow Chart (Ex. 1027)

23

According to Matlin, “[a]t steps 4-5, motor temperature and supply 1
voltage measurements are detected and used to create ‘Value 1,’ which 2
varies between 0 and -4 sheets of paper.” Paper 349, p. 2:10-12. 3
On cross-examination, Sawford explained that Value 1 is an integer. 4
Ex. 1155 (Sawford cross), p. 16:8-9. 5
According to Matlin: 6
value 1 = temperature/voltage based handicap for detected paper thickness. 7
8
Paper 349 (Matlin opposition), p. 20. 9
What surfaces from a study of Sawford’s cross-examination is that 10
“value 1” is an integer obtained from measurement of temperature and 11
voltage measurements within the shredder and expressed as a digital 12
representation for use by the microprocessor: 13
Temp reading + Voltage reading = Value 1. 14
Thus, while Value 1 may be a function of the temperature of the 15
motor, it is not per se the temperature of the motor. 16
Value 2 is an integer based on a shredder by shredder basis and is a 17
digital representation of the paper size capacity of the shredder. If the 18
maximum number of papers that can be fed into a shredder is 12, then Value 19
2 = 12. Value 2 depends on the shredder. Ex. 1027 is a general concept 20
based on shredders in general and does not represent an embodiment of a 21
particular shredder handling a specific number of sheets to be shredded. 22
Ex. 1155, p. 18:9 to 19:16; p. 37:18-21; p. 38:10-12. 23
A significant step in the logic design is step 7. 24

24

Step 7 determines whether or not a shredder will run. 1
In step 7 the microprocessor determines a “sheet cap value.” The 2
sheet cap value is compared to a parameter stored in the system. Ex. 1155, 3
(1) p. 23:4-12, (2) p. 41:18-21, (3) p. 45:16-19, and (4) pp. 46:6–47:6. 4
The sheet cap value is calculated by the microprocessor according to 5
the following algorithm: 6
Value 2 - Value 1 = sheet cap value. 7
Based on its “handicap” analogy, Matlin reasons that if a detected 8
paper thickness (Value 2) is 12 and the “handicap” (Value 1) is -4 9
(minus 4), then the handicapped thickness (“sheet cap value”) would be 16 10
sheets: 11
12 - (-4) = (12 + 4) = 16. 12
Paper 349, p. 3:7-11. 13
According to Matlin, Sawford is said to have agreed that the handicap 14
analogy was “logical.” Paper 349, p. 5:4-5. 15
But, as Sawford explained during cross, counsel for Matlin was 16
“being too literal.” Ex. 1155, p. 57:3-4. 17
Sawford goes on to state: 18
What it [Ex. 1027] says is that the [shredder] system will 19
generate a sheet cap value. The logic of the machine allowing 20
itself to start is that that [i.e., the sheet cap value,] must be 21
equated to a value which is less than or equal to the sheet 22
capacity of the machine. You’re filling in—you’re filling in 23
between the two. 24

Ex. 1155, p. 57:4-9. 25

25

Matlin also maintains that according to Ex. 1027 under certain 1
circumstances a shredder could have a negative sheet capacity. Therefore, 2
Value 1 cannot be a controlling threshold. But as Matlin states, “[t]his 3
makes no sense because shredders are designed to shred at least some 4
paper.” Paper 349, p. 7:5-10. 5
Before moving on to Aries Reply (Paper 351), we will note that in our 6
opinion Sawford under no circumstances can be said to have made any 7
“false” declaration (Paper 349, p. 6:8). Likewise Sawford did not 8
“backpedal” (Paper 349, p. 10:11), recant testimony (Paper 349, p. 10:23), or 9
“sidestep the issue” (Paper 349, p. 5:5). Instead, if one considers Sawford’s 10
cross-examination deposition transcript as a whole, it becomes immediately 11
apparent why we find his testimony is highly credible. 12
E. Aries Reply 13
In its reply, Aries addresses Matlin’s “handicap” analogy. 14
Aries indicates: 15
The Matlin Opposition [Paper 349] includes a “practical 16
example” of hot and cold shredder operations to explain 17
Matlin’s understanding of this system, as summarized in the 18
table below (with bold test indicating differences between hot 19
and cold operation. 20
21

26

See Paper 351, p. 2:4-8. 1
Aries points out: 2
Matlin argues that this practical example shows that 3
Aries did not conceive adjusting a controlling threshold based 4
on the value of the motor performance parameter sensed. To 5
the contrary, this example actually illustrates an embodiment 6
that does reduce a controlling threshold based on a value of the 7
motor performance parameter (i.e., motor temperature) sensed. 8
Specifically, according to Matlin’s example, under hot 9
conditions, a shredder with a nominal capacity of 14 sheets has 10
an adjusted capacity (i.e., “maximum thickness threshold”) of 11
less than 12 sheets, so that based on a detected performance 12
characteristic, the shredder will not shred 12 sheets, although 13
under cold conditions the shredder will shred up to 14 sheets. 14
Matlin appears to argue that this example does not satisfy the 15
limitations of the counts because a variable in the flow chart 16
called “sheet capacity” (which refers to the nominal, cold-17
temperature capacity of the shredder) is not adjusted. To the 18
contrary, Matlin’s example shows that the maximum thickness 19
threshold of the shredder is adjusted (from 14 sheets to less
than 12 sheets), based on a sensed motor temperature, as the
counts recite. Accordingly, the flow chart describes an
embodiment within Counts 1 and 2, even under Matlin’s “golf
handicap” interpretation of the flow chart.

27

Paper 351, p. 2:9-22.

We agree with the reply analysis submitted by Aries. 1
F. Analysis 2
Based on our discussion of the motion, opposition and reply we find 3
that Aries and Sawford, as a matter of fact, were in possession of “adjusting” 4
means before any conception date alleged by Matlin. 5
In view of that fact, it is apparent, as a matter of law, that inventors 6
Aries and Sawford had an idea and were aware of a means for putting their 7
idea into practice. 8
Accordingly, we hold that inventors Aries and Sawford were the first 9
to conceive. 10
Since they were the first to conceive and the first to reduce to practice, 11
a judgment on the issue of priority will be entered against Matlin. 12
In reaching our decision, we believe it is important to state the 13
following. 14
Much of the argument presented by Matlin in its opposition is based 15
on short quotes from Sawford’s cross-examination. We cannot 16
overemphasize the fact that our finding that Sawford’s testimony is highly 17
credible is based on a consideration of all of his testimony—not just bits and 18
snippets taken from here and there in a 105 page deposition transcript 19
(Ex. 1155). 20
For example, when asked if paragraph 19(b) of his direct declaration 21
testimony (Ex. 1151) was accurate and Sawford answered “no,” once he 22
realized how counsel for Matlin was confused he provided a cogent 23

28

“correction.” Ex. 1155, p. 31:12 to p. 34:11. Sawford went on to further 1
testify: 2
[Counsel,] [w]hat you're trying—what you're doing is 3
reading this diagram [Ex 1027] in the context of a final 4
embodiment. If I showed this to a circuit designer . . . and said 5
to . . . [the circuit designer] there's a threshold here at this point 6
and the sum of the values that you generate from the 7
mechanism in your circuit design . . . and I ask . . . [the circuit 8
designer] to implement another set of sensors to give me a 9
status of a motor . . . to generate a second set of values . . . [and] 10
what I need from . . . [the circuit designer] is in the machine 11
logic of . . . [the] microprocessor at the point before you allow 12
the auto start sensor to start, this machine compares whatever 13
values you generate there with these values you generate here 14
and compare[s] them to generate a sum and the sum is then 15
compared to a threshold which is then the criteria of the 16
machine starts or doesn't start. 17
18
In other words, Sawford understood that he was testifying about 19
conception and not an actual reduction to practice. 20
VII. Count 2 21
Count 2 has a requirement for an additional element—shown in italics 22
in the reproduction of Count 2, supra. 23
Matlin does not challenge Aries’ case for priority as to Count 2 apart 24
from its challenge to Count 1. 25
In any event, an embodiment of the device describing the italicized 26
elements of Count 2 is 27
(1) shown in Ex. 1023, page 2,
7
28

7
The reader is advised that the original document is color coded.

29

(2) reproduced in Ex. 1051, ¶ 13(a) and on page 8 of 1
Paper 172, and 2
(3) discussed by Aries (Ex. 1050, ¶ 16) and Sawford (Ex. 1051, 3
¶¶ 13(a) to (d) and (e) photo of prototype (Ex. 1051, ¶ 39 after (c) and 4
Ex. 1026)): 5

Depicted is a sensor counter
Operation of the sensor counter is described by Sawford as follows: 6
(b) The image shown above is a thickness measuring device A 7
that includes a member B having an actuating element C, which 8
has a gear end D and a chamfered edge E. The member B also 9
includes a marker member F having a gear end G and an end 10
that includes a series of markers (holes) H. Gear ends D and G 11
mechanically couple the actuating element C and marker 12
member F.I The actuating element C extends through a 13
vertically-oriented slot I in a rear feed wall J, which along with 14

30

front feed wall J', defines a feed passage K. The actuating 1
element C is movable from a first limiting position, relatively 2
close to the front wall J' of the feed passage K. A stack of 3
sheets inserted into the feed passage K may be sufficiently thin 4
to avoid contacting the chamfered edge E and, accordingly, can 5
be shredded by the shredding machine. A thicker stack inserted 6
into the feed passage K, however, may contact the chamfered 7
edge E. In tum, the actuating element C (and its gear end D and 8
chamfered edge E) pivot counterclockwise about pinion L, 9
causing clockwise rotation of marker member F (and its gear 10
end G). accordingly, marker member F and its markers H move 11
clockwise along the blue-colored, dotted path shown and past 12
sensor M. 13

(c) The marker member F moves (or is displaced) as a function 14
of the thickness of the stack of sheets fed, and sensor M 15
measures the movement or displacement of the marker member 16
F and actuating element C from the first limiting position, 17
relatively close to the front wall J' of the feed passage K. 18

(d) More specifically, the marker member F moves through a 19
measuring zone (denoted by the blue-colored dotted path) 20
clockwise relative to counterclockwise movement of the 21
actuating element C in response to a stack of sheets inserted 22
into the feed path K, and contacting the chamfered edge E. 23
The actuating element C and marker member F are shown to be 24
mechanically coupled to each other by cooperating gear ends D 25
and G. The marker member F includes a series of markers 26
(holes) H, each of which is indicative of a number of sheets that 27
has been fed. Sensor M, sensitive to the passage of these 28
markers H, detects the movement of the marker member F 29
through the measuring zone. 30
31
Another embodiment of the device is also shown in Ex. 1041, page 2: 32

31

Depicted is a sensor
VIII. Evidence 1
The parties agreed not to submit any motions to exclude. 2
Nevertheless, Matlin refers to “no admissible . . . evidence” 3
(Paper 349, p. 13:16) and to “hearsay declaration is inadmissible” 4
(Paper 349, p. 14:11). 5
Evidence accompanying a party’s motion is served with the motion. 6
Unless an objection is made by an opponent, the evidence is “admitted 7
in evidence” and will be considered to the extent it is discussed in a motion, 8
an opposition or a reply albeit the weight to be assigned to admitted 9
evidence can nevertheless be argued and decided by the PTAB. 10
An opponent must object within five business days. 37 C.F.R. 11
§ 41.155(b)(1). 12
The party then has ten (10) business days to present supplemental 13
evidence to overcome the objection. 37 C.F.R. § 41.155(b)(2). 14
If at the end of the day the opponent still believes that (1) its objection 15
is proper or (2) the supplemental evidence is also inadmissible or (3) 16
evidence objected to during a deposition (37 C.F.R. § 41.155(a)) is not 17
proper, the opponent must file a motion to exclude. 37 C.F.R. § 41.155(c). 18

32

A party filing a motion has the burden of proof. 37 C.F.R. 1
§ 41.121(b). 2
There is a difference between our procedure and that used in district 3
court. 4
The difference arises because rarely do we hold live trials. 5
Under our procedure, evidence is “admitted” unless there is an 6
objection; in district court the proponent of the evidence must move for its 7
admission and it is not “admitted” until the court rules it admissible. 8
Since no motion to exclude has been filed by the parties, all evidence 9
served and filed in this case is necessarily admitted. 10
The weight to be assigned “admitted” is another matter and even if a 11
party does not move to exclude it may always argue that the evidence is 12
entitled to no weight. 13
To the extent that Matlin has argued that some of Aries’ evidence is 14
“inadmissible,” we have construed that argument to mean that the evidence 15
is entitled to little, or no, weight. 16
IX. Decision 17
Aries and Sawford have established by a preponderance of the 18
evidence that they were (1) first to conceive and (2) first to reduce to 19
practice. 20
Accordingly, they are entitled to a favorable judgment on the issue of 21
priority. 22

33

X. Order 1
Upon consideration of Aries Motion 5 (Paper 172), Matlin Opposition 2
5 (Paper 349), Aries Reply (Paper 351) and the relevant evidence, and for 3
the reasons given, it is: 4
ORDERED that Aries Motion 5 is granted; 5
FURTHER ORDERED that since granting Aries Motion 5 disposes of the 6
question of priority, we do need to consider or decide: 7
(1) other issues raised in Aries Motion 5 or 8
(2) Matlin Motion 4, or 9
(3) Matlin Motion 2 deferred to the priority phase. 10
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single 11
dispositive issue of numerous resolved by the presiding officer; there is no need for 12
the Commission to decide all issues decided by the presiding officer); and 13
FURTHER ORDERED that a judgment will issue in due course as a 14
separate paper (Paper 551). 15
16

34

cc (via electronic mail): 1
2
Attorney for Matlin: 3
4
Sandip H. Patel 5
Jeremy R. Kriegel 6
Michael A. Chinlund 7
Marshall, Gerstein & Borun, LLP 8
Email: spatel@marshallip.com 9
Email: jkriegel@marshallip.com 10
Email: mchinlund@marshallip.com 11
12
Richard L. Kaiser 13
Michael Best & Friedrich, LLP 14
Email: RLKaiser@michaelbest.com 15
16
Attorney for Aries: 17
18
Bryan P. Collins 19
Emily T. Bell 20
Benjamin L. Kiersz 21
Pillsbury Winthrop Shaw Pittman, LLP 22
Email: bryan.collins@pillsburylaw.com 23
Email: emily.bell@pillsburylaw.com 24
Email: Benjamin.kiersz@pillsburylaw.com 25