Aries et al.v.MATLIN et al.

Patent Trials and Appeals Board

Jan 12, 2015

13438572 - (J) (P.T.A.B. Jan. 12, 2015)

BoxInterferences@uspto.gov Paper 552
Telephone: 571-272-4683 Entered: 12 January 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,937 McK
Technology Center 3700
____________________

TAI HOON K. MATLIN and MICHAEL DALE JENSEN,

Patent 8,113,451 B1,
Junior Party,

v.

PAUL A. ARIES and MICHAEL D. SAWFORD,

Application 13/438,572
Patent Application Publication 2012/0187230,

Senior Party.
____________________

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

FRED E. McKELVEY, Administrative Patent Judge.

JUDGMENT

In view of (1) the Decision on Motions (Paper 138, page 5:1 through 1
page 8:1 and Appendix 1), holding that the involved claims of Aries are 2

2

unpatentable under 35 U.S.C. § 102(b), and (2) the Decision on Priority 1
(Paper 551, holding that Matlin is not the first inventor, it is— 2
ORDERED that judgment be entered against junior party Tai Hoon K. 3
Matlin and Michael Dale Jensen for Counts 1, 2, 3, and 4 (Paper 1, pages 7-10); 4
FURTHER ORDERED that claims 1–2, 4–5, 7–8, and 10–11 of junior 5
party’s involved U.S. Patent No. 8,113,451 B1 be CANCELED, 35 U.S.C. 135(a); 6
and 7
FURTHER ORDERED that claims 33–44 senior party’s involved 8
application 13/082,657 be FINALLY REFUSED, 35 U.S.C. 135(a); 9
FURTHER ORDERED that a copy of this judgment be entered in the 10
administrative records of Matlin’s involved U.S. Patent No. 8,113,451 and Aries’ 11
involved application 13/438,572. 12
FURTHER ORDERED that a party seeking judicial review timely serve 13
notice on the Director of the United States Patent and Trademark Office. 14
37 C.F.R. §§ 90.1 and 104.2. We direct the parties’ attention to Biogen Idec MA, 15
Inc., v. Japanese Foundation for Cancer Research, 2014 WL 2167677 (D.Mass. 16
2014). 17

NOTICE: "Any agreement or understanding between parties to an interference, 18
including any collateral agreements referred to therein, made in connection with or 19
in contemplation of the termination of the interference, shall be in writing and a 20
true copy thereof filed in the Patent and Trademark Office before the termination 21
of the interference as between the said parties to the agreement or understanding." 22
35 U.S.C. 135(c); see also 37 C.F.R. § 41.205 (settlement agreements). 23
24

3

cc (via electronic mail): 1
2
Attorney for Aries: 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 Matlin: 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 551
Telephone: 571-272-4683 Entered: 12 January 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Patent Interference 105,937 McK
Technology Center 3700
____________________

TAI HOON K. MATLIN and MICHAEL DALE JENSEN,

Patent 8,113,451 B1,
Junior Party,

v.

PAUL A. ARIES and MICHAEL D. SAWFORD,

Application 13/438,572
Patent Application Publication 2012/0187230,

Senior Party.
____________________

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

FRED E. McKELVEY, Administrative Patent Judge.

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

2

Oral argument was held on 23 October 2014. 1
A transcript of oral argument has been made of record. Paper 550. 2
A. Matlin Motion 10 3
Matlin Motion 10 seeks entry of judgment against Aries based on priority of 4
invention. Paper 145. 5
Aries opposes. Paper 331. 6
Matlin has replied. Paper 333. 7
B. Aries Motion 2 8
Aries Motion 2 seeks entry of judgment against Matlin based on priority of 9
invention. Paper 150. 10
Matlin opposes. Paper 330. 11
Aries has replied. Paper 332. 12
II. The Counts 13
Counts 1 to 4 are involved in the interference. Paper 1 (Declaration), 14
pp. 7-10. 15
A. Count 1 16
A method according to Claim 1 17
of Matlin [U.S. Patent 8,113,451 B1] 18
or 19
a method according claim 33 20
of Aries [application 13/438,572]. 21

3

Aries claim 33 reads (indentation added; limitations in dispute in 1
bold):1 2
A method for operating a shredder comprising a housing 3
having a throat for receiving at least one article to be shredded, 4

a thickness detector for detecting a thickness of the 5
at least one article to be shredded inserted in the throat, and 6

a shredder mechanism received in the housing and 7
including an electrically powered motor and cutter elements, 8

the shredder mechanism enabling the at least one article 9
to be shredded to be fed into the cutter elements and 10

the motor being operable drive the cutter elements in a 11
shredding direction so that the cutter elements shred the articles 12
fed therein; 13

the method comprising: 14

detecting with the thickness detector a thickness of the at 15
least one article to be shredded inserted into the throat; 16

if the detected thickness is less than a predetermined 17
maximum thickness threshold, operating the motor to drive the 18
cutter elements in the shredding direction to shred the at least 19
one article; 20

1 For a description of the invention as set out in the drawings and written
description of the involved Aries application, see Paper 154 (in Interference
105,919), Decision on Motions, Part 1, pp. 8-21.

4

detecting during operation of the motor[2] 1
a performance characteristic of the motor; and 2

reducing the predetermined maximum thickness 3
threshold based on the detected performance characteristic of 4
the motor. 5

Paper 104, Appendix, page 1. 6
B. Count 2 7
A method according to Claim 4 8
of Matlin [U.S. Patent 8,113,451 B1] 9
or 10
a method according to claim 35 11
of Aries [i.e., Application 13/082,657]. 12
Claim 35 of Aries reads (indentation added; differences between Count 1 13
and Count 2 in italics; limitations in dispute in bold): 14
A method for operating a shredder comprising a housing 15
having a throat for receiving at least one article to be shredded, 16

a thickness detector for detecting a thickness of the 17
at least one article to be shredded inserted in the throat, and 18

a shredder mechanism received in the housing and 19
including an electrically powered motor and cutter elements, 20

the shredder mechanism enabling the at least one article 21
to be shredded to be fed into the cutter elements and 22

2 The limitation “during operation of the motor” does not appear in the counts of
Interference 105,919.

5

the motor being operable drive the cutter elements in a 1
shredding direction so that the cutter elements shred the articles 2
fed therein; 3

the method comprising: 4

detecting with the thickness detector a thickness of the at 5
least one article to be shredded inserted into the throat; 6

if the detected thickness is less than a predetermined 7
maximum thickness threshold, operating the motor to drive the 8
cutter elements in the shredding direction to shred the at least 9
one article; 10

detecting during operation of the motor a performance 11
characteristic of the motor; and 12

reducing the predetermined maximum thickness 13
threshold based on the detected performance characteristic of 14
the motor, 15

wherein the performance characteristic is selected from 16
the group consisting of: 17

a temperature of the motor during operation, and 18

current flow through the motor, and 19

wherein the predetermined maximum thickness threshold 20
is stored in a microcontroller processor, and 21

reducing the predetermined maximum thickness 22
threshold is performed by replacing the predetermined 23
maximum thickness threshold in the microcontroller with a 24
reduced predetermined maximum thickness threshold. 25

Paper 104, Appendix, page 2. 26

6

The limitations italicized in Count 2 point out the difference between 1
the subject matter of Count 1 from the subject matter of Count 2. 2
C. Count 3 3
A shredder according to Claim 7 4
of Matlin [U.S. Patent 8,113,451 B1] 5
or 6
a shredder according to claim 37 7
of Aries [i.e., Application 13/082,657]. 8
Claim 37 of Aries reads (indentation added; limitations in dispute in 9
bold): 10
A shredder comprising: 11
12
a housing having a throat for receiving at least one article 13
to be shredded; 14
15
a shredder mechanism received in the housing and 16
including an electrically powered motor and cutter elements, 17
18
the shredder mechanism enabling the at least one article 19
to be shredded to be fed into the cutter elements and 20
21
the motor being operable to drive the cutter elements in a 22
shredding direction so that the cutter elements shred the articles 23
fed therein; 24
25
a thickness detector configured to detect a thickness of 26
the at least one article to be shredded being received by the 27
throat; and 28
29
a controller coupled to the motor and the thickness 30
detector, 31
32
the controller being configured 33

7

1
a) to operate the motor to drive the cutter elements 2
to shred the at least one article, if the detected thickness 3
is less than a predetermined maximum thickness 4
threshold; 5
b) to detect a performance characteristic of the 6
motor; and 7
8
c) to reduce the predetermined maximum 9
thickness threshold based on the detected 10
performance characteristic of the motor. 11
12
Paper 104, Appendix, page 3. 13
Count 3 relates to a shredder, whereas Counts 1 and 2 relate to a 14
method of using a shredder. 15
D. Count 4 16
A shredder according to Claim 10 17
of Matlin [U.S. Patent 8,113,451 B1] 18
or 19
a shredder according to claim 39 20
of Aries [i.e., Application 13/082,657]. 21
Claim 39 of Aries reads (indentation added; differences between 22
Count 3 and Count 4 in italics; limitations in dispute in bold): 23
A shredder comprising: 24

a housing having a throat for receiving at least one article 25
to be shredded; 26

a shredder mechanism received in the housing and 27
including an electrically powered motor and cutter elements, 28

the shredder mechanism enabling the at least one article 29
to be shredded to be fed into the cutter elements and 30

8

the motor being operable to drive the cutter elements in a 1
shredding direction so that the cutter elements shred the articles 2
fed therein; 3

a thickness detector configured to detect a thickness of 4
the at least one article to be shredded being received by the 5
throat; and 6

a controller coupled to the motor and the thickness 7
detector, 8

the controller being configured 9

a) to operate the motor to drive the cutter elements 10
to shred the at least one article, if the detected thickness 11
is less than a predetermined maximum thickness 12
threshold; 13

b) to detect a performance characteristic of the 14
motor; and 15

c) to reduce the predetermined maximum thickness 16
threshold based on the detected performance 17
characteristic of the motor, 18

wherein the predetermined maximum thickness 19
threshold is stored in a microcontroller, and 20

the predetermined maximum thickness threshold is 21
reduced by replacing the predetermined maximum 22
thickness threshold in the microcontroller with a 23
reduced predetermined maximum thickness threshold. 24

Paper 104, Appendix, page 4. 25

9

The limitations italicized in Count 4 point out the difference between 1
the subject matter of Count 3 from the subject matter of Count 4. 2
III. Priority proofs 3
Both parties presented priority proofs. 4
Matlin offered proofs of conception coupled with reasonable 5
diligence. 6
Aries offered proofs of conception and actual reduction to practice. 7
Relevant dates, including conception and actual reduction to practice 8
dates alleged by the parties, are set out in Table 1: 9
10
Table 1
Matlin Patent Date Aries Application
2006-08-15 Aries Rule 41.204(a) priority
statement conception
2006-08-15 Aries Conception 1
2006-09-26 Aries Conception 2
Matlin Rule 41.204(a) priority
statement conception
2006-10-23
Matlin Conception 1 2006-10-23

2006-11-14
Aries Rule 41.204(a) 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

10

Matlin Conception 3 2007-02-19
Matlin Conception 4 2007-03-14
Matlin Conception 5 2007-05-29
2007-08-02 Aries U.K. filing date (Aries
accorded priority benefit date)
Matlin Rule 41.204(a) priority
statement actual reduction to
practice (no proofs offered)

2007-08-09

Matlin “parent” filing date 2007-10-04
2008-04-24 Aries “parent” application
filing date
Matlin filing date 2010-06-16
Matlin issue date 2011-06-07
2012-04-03 Aries application filing date

Matlin was asked to advise the Board what additional issues in this 1
interference would need to be addressed assuming that in Interference 2
105,919 Aries was found to have conceived prior to the earliest conception 3
date alleged by Matlin. Paper 547, page 2. 4
Matlin responded. Paper 549. 5
Matlin identified two additional issues in this interference which 6
Matlin maintains Aries failed to establish as part of its Conceptions 1 and 2: 7
(1) As to Counts 1 and 2, that detecting occurs during 8
operation of the motor and reducing a predetermined maximum 9
thickness threshold based on the detecting occurring during 10
operation of the motor. Paper 549, page 1. 11

11

(2) As to Counts 2 and 4, storing a predetermined 1
maximum thickness threshold in a microcontroller and resetting 2
any reduced maximum thickness threshold in the 3
microcontroller. 4
No additional issues were identified with respect to Count 3. 5
The counts are written in alternative embodiments, one being a Matlin 6
claim and the other being an Aries claim. 7
The essential difference between the embodiments is that Matlin 8
refers to a “memory” while Aries refers to a “microprocessor.” 9
Priority proofs could have been directed to either a “memory” or a 10
“microprocessor.” 11
Aries elected to present proofs related to a “microprocessor.” 12
We will decide the case on the basis of the proofs presented by Aries. 13
IV. Burden and Standard of Proof 14
As junior party, Matlin is presumed to have invented the subject 15
matter of the count after Aries. 37 C.F.R. § 41.207(a). 16
To overcome the presumption, Matlin must establish by a 17
preponderance of the evidence that it made its invention before the filing 18
date accorded to Aries. 37 C.F.R. § 41.207(a)(1)-(2). 19
Matlin attempts to establish that it made its invention prior to Aries. 20
Matlin Motion 10 (Paper 145). 21
Aries attempts to establish a date of conception prior to any date of 22
conception alleged by Matlin. Aries Motion 2 (Paper 150). 23
As in the case of Interference 105,919, if Aries can establish 24
conception prior to any conception alleged by Matlin, then Aries is first to 25

12

conceive and first to reduce to practice and would be entitled to prevail on 1
priority. 2
In filing its motion for judgment, Aries has the burden of proof. 3
37 C.F.R. § 41.121(b). 4
The standard of proof for Aries is preponderance of the evidence. 5
37 C.F.R. § 41.207(a)(2). 6
V. Order of Considering Motions and 7
Specific Issues Raised by those Motions 8

The PTAB may take up motions in any order. 37 C.F.R. § 41.125(a). 9
As in the case of Interference 105,919, we elect to take up Aries 10
Motion 2 first. 11
VI. Conceptions 1 and 2—Aries 12
A. Applicable principles 13
The applicable principles are set out in our Decision on Priority in 14
Interference 105,919 and need not be repeated here. 15
B. Consideration of Aries Motion 2 16
Aries alleges conceptions on August 15, 2006 (Aries Conception 1) 17
and September 26, 2006 (Aries Conception 2). 18
The earliest conception alleged by Matlin is Matlin Conception 1, said 19
to have occurred no later than October 23, 2006. 20
We have considered all activities associated with both Aries 21
Conception 1 and Aries Conception 2 to determine whether Aries conceived 22
no later than September 26, 2006. 23

13

Because Matlin Conception 1 is after Sept. 26, 2006, we need not 1
make a separate determination as to whether Aries conceived on Aug. 15, 2
2006. 3
According to Matlin, Aries conceived only of detecting a 4
characteristic of the motor “while the motor was off . . .” (Paper 330, 5
page 2:19) and not “during operation of the motor . . .” (Paper 549, 6
page 1:13) (underlining in originals). 7
Further according to Matlin, Aries failed to show conception of 8
storing a thickness threshold in a microcontroller. Paper 330, page 16:7-10; 9
Paper 549, page 2:3-6 and 10. 10
C. Witnesses 11
In considering Aries Conceptions 1 and 2, we have considered the 12
testimony of three witnesses. 13
1. Paul A. Aries 14
Inventor Paul Aries testified on behalf of Aries. Ex. 1150. 15
He received a Master’s Degree in New Products Introduction from the 16
University of Central England. Ex. 1150, ¶ 6. 17
As of the date of his testimony, Mr. Aries has been employed by 18
ACCO, the real party in interest, for 18 years and was “currently the New 19
Product Development Director for Shredding” of ACCO. Ex. 1150, ¶¶ 5 & 20
7(d). 21
Matlin did not cross-examine Mr. Aries.3 22

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

14

We find his testimony to be credible. 1
2. Michael D. Sawford 2
Inventor Michael D. Sawford testified on behalf of Aries. Ex. 1151. 3
He received as degree in Industrial Design Engineering (1999) and a 4
Masters in Rapid Product Development (2000) from De Montfort University 5
in Leicester, UK. Ex. 1151, ¶ 5. 6
From 2004 to 2010, Mr. Sawford was employed as a design engineer 7
by ACCO. Ex. 1151, ¶ 7. 8
Matlin elected to cross-examine Mr. Sawford. Ex. 1155. 9
Based on his direct declaration testimony when considered in view of 10
lengthy cross (10:00 am to 2:34 pm), we find his testimony to be credible, 11
particularly with respect to how one skilled in the art would understand the 12
significance of what is described in Ex. 1027. 13
3. Jeremy (“Jez”) Gardner 14
Non-inventor Jeremy Gardner testified on behalf of Aries. Ex. 1152. 15
Mr. Gardner is a co-founder of Design Works Windsor, Ltd. 16
Ex. 1152, ¶ 1. 17
Design Works performed work on behalf of ACCO. Ex. 1152, ¶ 7. 18
His testimony is relied upon to establish corroboration. Paper 150, 19
p. 15:13-15. 20
Matlin did not cross-examiner Mr. Gardner. 21
We find his testimony to be credible. 22

15

D. Aries Activities 1
Resolution of whether Conception 2 is a conception within the 2
meaning of 35 U.S.C. § 102(g) in large measure depends on how one skilled 3
in the art would interpret a diagram of computer logic flow, i.e., Ex. 1027. 4
Ex. 1027 was prepared by inventor Sawford. Ex. 1155 (Sawford 5
cross), page 9:19-23. 6
Ex. 1027 consists of three pages. The first two pages describe flow 7
diagrams. 8
According to Aries, by “August 15, 2006 . . . [inventors Aries and 9
Sawford] had devised computer logic, specifically the diagram of computer 10
logic flow (Exh. 1027) that would adjust paper sheet thickness threshold 11
as a function of [motor] temperature . . .” Paper 150 (Aries Motion), 12
p. 11:13-15; Ex. 1150 (Aries declaration), ¶ 21; Ex. 1151 (Sawford 13
declaration), ¶ 17. 14
A portion of the second page of Ex. 1027 is reproduced below with 15
numerals added by Aries: 16

Depicted is a portion of a schematic diagram
(page 2 of Ex. 1027)

16

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. 1150 (Aries declaration), 5
¶ 22; Ex. 1151 (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. Paper 150 2
(Aries Motion), page 13:3; Ex. 1150 (Aries declaration), ¶ 23(a); Ex. 1151 3
(Sawford declaration), ¶ 19(a). 4

18

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

Ex. 1151 (Sawford declaration), ¶ 19(a) (underlining added). See also 13
Ex. 1150 (Aries declaration), ¶ 23(a). 14
Sawford further explains: 15
Once the optimal sheet capacity threshold setting is stored 16
within the microprocessor, the microprocessor can then 17
compare (in box 426) the thickness actually sensed (as “Value 18
2” in box 500) to the stored optimal capacity threshold value 19
(“Value 1”). The comparison yields a “sheet cap value” (in box 20
426). If that “sheet cap value” is zero or a negative number 21
[i.e., “sheet cap value” ≤ 0], then the set threshold (“Value 1”) 22
equals or exceeds (box 428) the thickness sensed (“Value 2”) 23
and shredding will start (box 430). 24
25
Ex. 1151 (Sawford declaration), ¶ 19(b). See also Ex. 1150 (Aries 26
declaration), ¶ 23(b). 27
While Sawford’s direct testimony talks in terms of a “number,” what 28
Sawford means by “number” is an integer. Ex. 1155 (Sawford cross), 29
page 16:8-9 and page 59:8-12. 30

19

Sawford still further explains: 1
But, if that “sheet cap value is a positive number [i.e., a positive 2
integer—“sheet cap value” > 0,], then the thickness sensed 3
(“Value 2”) exceeds (box 432) the set threshold (“Value 1”) and 4
the shredder will not start (box 434) in Image 9, below. 5

In this instance, the microprocessor illuminates a light (box 6
435) to signal that paper should be removed from the shredder 7
(box 502), and the microprocessor calibrates the thickness-8
sensing mechanism to zero (box 410). Thus, the process of 9
setting the optimal sheet capacity thickness threshold, as 10
described in the diagram, is repeated. 11

20

Ex. 1151 (Sawford declaration), ¶ 19(c). See also Ex. 1150 (Aries 1
declaration), ¶ 23(c). 2
Sawford continues to explain: 3
This is one way the microprocessor substitutes a new, lower (or 4
reduced) optimal sheet capacity threshold setting for the 5
previously-used, higher setting, thereby resetting the higher 6
predetermined maximum thickness threshold with a lower one 7
[i.e., lower maximum thickness threshold]. As this sequence 8
repeats for each shredding cycle, the optimal sheet capacity 9
threshold setting is set and reset, over and over, during the 10
operational life of the shredder. And, this is how the control 11
means (microprocessor) is operable to adjust the controlling 12
thickness threshold automatically as a function of the motor 13
temperature sensed. 14

Ex. 1151, ¶ 19(d) (underlining added). 15
Ex. 1041 is a copy of Ex. 1027 with several additions: (A) on page 1: 16
(1) the “Credit cards” discussion, (2) “Voltage sensing discussion, (3) 17
“Temperature sensing” discussion, (4) “Self Calibration” discussion and 18
diagram, and (B) the comments on page 4. See generally Ex. 1151 (Sawford 19
declaration), ¶ 50. 20
While we have not been able to find a date on Ex. 1027, Ex. 1041 is 21
dated “18/09/2006” which we take to mean Sept. 18, 2006. See page 2. 22
There came a time when ACCO, assignee of inventors Aries and 23
Sawford, engaged Design Works Windsor, Ltd. to prepare a prototype “AJ2” 24
design shredder. Ex. 1151 (Sawford declaration), ¶ 54; Ex. 1150, ¶ 84. 25
A copy of a “brief” (i.e., Ex. 1041) was received by Jeremy Gardner, 26
who worked for Design Works Windsor, Ltd. Ex. 1152 (Gardner 27
declaration), ¶¶ 1 and 6-7. 28

21

The “brief” dated Sept. 8, 2006, was received by Gardner no later than 1
18 Oct. 2006, a date prior to Matlin’s alleged conception date of 23 Oct. 2
2006. Ex. 1152 (Gardner declaration), ¶¶ 6-7; Ex. 1056, p.1. 3
We therefore find that Ex. 1041 was in existence prior to any date of 4
conception alleged by Matlin. 5
Matlin argues that Aries does not rely on Ex. 1041 in its motion for 6
establishing corroboration. Paper 330 (Matlin opposition), p. 15 n.4. 7
However, in addressing corroboration, Aries relies on Gardner’s 8
testimony (Ex. 1152). Paper 150 (Aries motion), page 2:25-27 and 9
page 15:7-8. 10
Gardner’s testimony refers to correspondence between Sawford and 11
Gardner and in one communication Sawford forwarded a copy of what is 12
now Ex. 1041 and Gardner acknowledges receipt of the copy. Ex. 1152, 13
¶ 6. 14
Responding to Matlin’s opposition argument, Aries points out that 15
design and implementation activities at Design Works were based—at least 16
in part—on what is now Ex. 1041, a fact we find consistent with Gardner’s 17
testimony. 18
E. Matlin Opposition—during operation of the motor 19
Matlin has a different view of the significance of Ex. 1027 and 20
Ex. 1041 as applied to “during operation of the motor (Paper 330, 21
page 2:9-10). 22
According to Matlin, Aries at best conceived only of detecting motor 23
temperature while the motor was off. Paper 330, page 2:19. 24
We disagree. 25

22

Matlin maintains that Aries did not mention “during the operation of 1
the motor” in its motion. Paper 330, page 2:8-10. 2
A review of Aries Motion 2 shows otherwise. 3
On page 10:18 through page 14:2 (Paper 150—Aries Motion 2) Aries 4
discusses the logic flow diagram (Ex. 1027). 5
Included in the discussion is a reference to a sensed motor 6
temperature. Page 12:6. 7
Cited in support of the discussion are Aries testimony (Ex. 1150, 8
¶ 23(a)) and Sawford testimony (Ex. 1151, ¶ 19(a)) (quoted earlier in this 9
opinion). 10
The testimony, when considered in light of the logic diagram, explains 11
in detail how the shredder works, including sensing temperature while the 12
motor is operating. 13
Aries also addresses Matlin’s concern in Aries Reply 2. Paper 332. 14
Specifically, Aries calls attention to ¶ 47 of the Aries direct testimony 15
(Ex. 1150) and ¶ 44 of the Sawford direct testimony (Ex. 1151), both of 16
which refer back to ¶ 23(a) and ¶ 19(a) and discuss feature (f) (see, e.g., 17
Ex. 1151, page 28). 18
Based on their discussion, we understand Aries and Sawford to be 19
saying that Ex. 1027 shows that the temperature of the motor is sensed and 20
stored in a microprocessor. When paper is first to be shredded, the stored 21
temperature may be at an ambient temperature of the motor and a paper 22
threshold is established. As paper is shredded, (1) the motor temperature 23
increases, (2) any increased motor temperature is sensed, and (3) the sensed 24
increased motor temperature is now stored in the microprocessor in place of 25

23

the original ambient motor temperature. As the motor temperature 1
increases, the threshold number of pages that can be shredded decreases. If 2
the number of papers to be shredded exceeds the threshold number of papers 3
(either original threshold or re-set threshold), then the shredder will not 4
function. In a case where there are 18 papers to be shredded and the original 5
paper threshold is set at 10 papers, then if 10 papers are shredded and the 6
temperature of the motor increases such that the paper threshold is re-set in 7
the microprocessor to be the equivalent of 7 papers, then only 7 papers can 8
be shredded in the second round. The 18th paper will have to be shredded 9
separately in a third round. 10
The explanation of the significance of the contemporaneous logic 11
chart (Ex. 1027) by Aries and Sawford that measurement of the motor 12
temperature occurs during operation of the motor makes complete sense. 13
No cross-examination undermining in any significant way the clear 14
import of Ex. 1027 as explained Aries and Sawford has been called to our 15
attention. 16
We find that under a preponderance of the evidence standard, Aries 17
has established conception of the “operation of the motor” limitation. 18
F. Matlin Opposition—storing and resetting in a microprocessor 19
According to Matlin, Aries failed to establish conception of storing a 20
predetermined maximum threshold in a microcontroller and thereafter 21
resetting the threshold based on a parameter of the motor. 22
We disagree. 23
Ex. 1027, as explained by Aries and Sawford, plainly shows 24
measuring motor temperature and adjusting the paper threshold as a function 25

24

of motor temperature. If for a given motor temperature there is too much 1
paper, shredding will not occur. Ex. 1027, Sheet 1, Box 7a. On the other 2
hand, if for that given temperature the paper to be shredded is above the 3
threshold, shredding will occur. Id., Box 8. The paper threshold is 4
determined by a motor temperature measurement and followed by certain 5
calculation based on an algorithm within a microprocessor (Ex. 1027, Sheet 6
1, Boxes 5, 6 and 7, and Sheet 2 as explained, e.g., in Ex. 1151, ¶¶ 17-19, 7
particularly 18). 8
VII. Other issues 9
Various other issues are raised and discussed in the motion, 10
opposition, and reply. 11
Those issues have been addressed in our decision in Interference 12
105,919 and need not be repeated herein. 13
VIII. Order 14
Upon consideration of Aries Motion 2 (Paper 150), Matlin Opposition 15
2 (Paper 330), Aries Reply (Paper 332), and the relevant evidence, and for 16
the reasons given, it is: 17
ORDERED that Aries Motion 2 is granted; 18
FURTHER ORDERED that since granting Aries Motion 2 fully 19
answers the question of priority, we do need to consider or decide 20
(1) other issues raised in Aries Motion 2, 21
(2) Matlin Motion 10, 22
(3) Matlin Motion 4 (see Paper 138, page 19:7-15), or 23
(4) Matlin Motion 9 (see Paper 138, page 19:16-25). 24

25

Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single 1
dispositive issue of numerous resolved by the presiding officer; there is no need for 2
the Commission to decide all issues decided by the presiding officer); and 3
FURTHER ORDERED that a judgment is issued as a separate paper 4
(Paper 552). 5
6
cc (via electronic mail): 7
8
Attorney for Matlin: 9

Bryan P. Collins 10
Emily T. Bell 11
Benjamin L. Kiersz 12
Pillsbury Winthrop Shaw Pittman, LLP 13
Email: bryan.collins@pillsburylaw.com 14
Email: emily.bell@pillsburylaw.com 15
Email: benjamin.kiersz@pillsburylaw.com 16
17
Attorney for Aries: 18
19
Sandip H. Patel 20
Jeremy R. Kriegel 21
Michael A. Chinlund 22
Marshall, Gerstein & Borun, LLP 23
Email: spatel@marshallip.com 24
Email: jkriegel@marshallip.com 25
Email: mchinlund@marshallip.com 26

Richard L. Kaiser 27
Michael Best & Friedrich, LLP 28
Email: RLKaiser@michaelbest.com 29
30