FACE et al.v.Face et al. V. Pistor et al.

Patent Trial and Appeal Board

Mar 30, 2015

12399954 (P.T.A.B. Mar. 30, 2015)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: March 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Face International Corporation,
Junior Party
(Patent 7,084,529,
Inventors: Bradbury R. Face, Clark Davis Boyd,
Glenn F. Rogers, Jr., and Gregory P. Thomas;
Application 12/399,954
Inventors: Bradbury R. Face, Clark Davis Boyd,
Glenn F. Rogers, Jr., and Gregory P. Thomas),

v.

EnOcean GMBH,
Senior Party
(Application 10/304,121,
Inventors: Klaus Pistor and Frank Schmidt).

Patent Interference No. 105,755 (RES)
(Technology Center 2600)
_______________
Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI,
Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
JUDGMENT – 37 C.F.R. § 41.127(a)
We have denied Junior Party Face’s motion on priority (Paper 272) in a 1
decision issued simultaneously with this judgment. Because Face did not establish 2
2

a date of invention prior to EnOcean’s accorded benefit date, we award a judgment 1
of priority against Face. 2
Accordingly it is— 3
ORDERED that Judgment on priority is entered against Face for the subject 4
matter of count 2 (Paper 265, p. 2), the sole count, 5
FURTHER ORDERED that Claims 40-56 and 58-59 of Face’s involved 6
Patent 7,084,529 are CANCELED (35 U.S.C. § 135(a) (2011)), 7
FURTHER ORDERED that Claims 40-56 and 58-59 of Face’s involved 8
Application 12/399,954 are finally refused (Id.). 9
FURTHER ORDERED that any decisions on substantive motions in this 10
interference since the remand from the Federal Circuit merge with and become part 11
of this judgment. 12
FURTHER ORDERED that a copy of this judgment shall be entered in the 13
administrative records of the involved patent and the involved applications. 14
FURTHER ORDERED that if a party seeks judicial review, the party must 15
file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of initiating 16
judicial review. 17
FURTHER ORDERED that if there is any settlement agreement or related 18
documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) 19
(2011) and 37 C.F.R. § 41.205. 20
We also direct the parties’ attention to Biogen Idec MA, Inc., v. Japanese 21
Foundation for Cancer Research, 2014 WL 2167677 (D.Mass. 2014). 22
3

Attorney for EnOcean:

George E. Quillin, Esq.
Chase J. Brill, Esq.
Foley & Lardner, LLP
gquillin@foley.com
cbrill@foley.com

Attorney for Face:

Duncan G. Byers, Esq.
Jeffrey D. Wilson, Esq.
Byers Law Group
duncan.byers@byerslawgroup.com
jdwilson@byerslawgroup.com
admin@byerslawgroup.com

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: March 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Face International Corporation,
Junior Party
(Patent 7,084,529,
Inventors: Bradbury R. Face, Clark Davis Boyd,
Glenn F. Rogers, Jr., and Gregory P. Thomas;
Application 12/399,954
Inventors: Bradbury R. Face, Clark Davis Boyd,
Glenn F. Rogers, Jr., and Gregory P. Thomas),

v.

EnOcean GMBH,
Senior Party
(Application 10/304,121,
Inventors: Klaus Pistor and Frank Schmidt).

Patent Interference No. 105,755 (RES)
(Technology Center 2600)
_______________
Before RICHARD E. SCHAFER, DEBORAH KATZ, and
HUNG H. BUI, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.
Decision - Priority - 37 C.F.R. § 41.125(a)
This interference is between Application 10/304,121, assigned to EnOcean 1
GmbH, and Patent 7,084,529 and Application 12/399,954 assigned to Face 2
International Corporation. The latter application is an application for reissue of 3
2

Face’s patent. The parties’ priority motions are before us for consideration. 1
Because Face failed to prove either an actual reduction to practice or a conception 2
of the subject matter of the count prior to EnOcean’s accorded benefit date, we 3
deny Face’s motion and award priority against Face. 4
I. 5
The parties’ invention relates to an electrical switching system that has two 6
basic components: (1) a wireless remote control and (2) a separate receiver unit. 7
The remote includes a piezoelectric generator or actuator that produces an 8
oscillating voltage. The piezoelectric generator provides a source of electrical 9
power and eliminates the need for a more conventional power source such as a 10
battery. The oscillating voltage generates an alternating current. The remote 11
control also includes a rectifier and a voltage regulator. The rectifier converts the 12
alternating current into direct current. The voltage regulator adjusts the direct 13
current voltage to a level appropriate to actuate a radio frequency transmitter also 14
located in the remote. The transmitter sends a radio signal to the receiver unit. 15
Upon receipt of the radio signal, the receiver generates a signal that activates an 16
electrical switch and causes it to change from one position to another. The switch 17
controls a lamp or other electrically powered appliance connected to the receiver. 18
Count 2, which is EnOcean Claim 29, represents the parties’ invention: 19
29. A switching system comprising: 20
[a] an electromechanical generation means for 21
generating an oscillating voltage; 22
[b] a rectifier electrically connected to said generation 23
means; 24
[c] a voltage regulator having an input side and an 25
output side; 26
[d] said input side of said voltage regulator being 27
electrically connected to an output side of said 28
rectifier; 29
3

[e] first signal transmission means electrically 1
connected to said output side of said voltage 2
regulator; 3
[f] said first signal transmission means comprising a 4
first electromagnetic signal generator subcircuit 5
connected to a transmission antenna; 6
[g] signal reception means for receiving first 7
electromagnetic signal transmitted by said first 8
signal transmission means; 9
[h] said signal reception means being adapted to 10
generate a second signal in response to said first 11
electromagnetic signal transmitted by said first 12
signal transmission means; and 13
[g] a switch having a first position and a second 14
position; 15
[h] said switch being in communication with said 16
signal reception means; 17
[i] said switch being adapted to change between said 18
first position and said second position in response 19
to said second signal. 20
Paper 265, p, 2; Paper 6, p. 1 (emphasis and bracketed material added).1 21
II. 22
As a junior party moving for a judgment of priority, Face bears the burden of 23
proof. 37 C.F.R. § 41.121(b). To carry this burden, the motion must provide 24
sufficient evidence that, if unrebutted, would justify the relief sought. 37 C.F.R. 25
§ 41.208(b). To establish priority, Face must provide evidence sufficient to prove 26
either (1) a conception prior to EnOcean’s accorded benefit date of May 24, 2000, 27
coupled with diligence from before that date to a subsequent reduction to practice 28
or (2) an actual reduction to practice prior to that date. 29

1 The bracketed material is reproduced exactly as it is presented in the decision on
motions. Paper 264, pp. 17–18. The typographical errors of the duplication of [g]
and [h] were present in that decision and are retained here for consistency with that
paper.
4

In an interference proceeding, a party seeking to establish an actual 1
reduction to practice must show that the party constructed an embodiment or 2
performed a process that met every element of the interference count. Eaton v. 3
Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). There cannot be an actual reduction 4
to practice of the invention without a physical embodiment that includes all 5
limitations of the count. UMC Elecs. Co. v. United States, 816 F.2d 647, 652 (Fed. 6
Cir. 1987); Correge v. Murphy, 705 F.2d 1326, 1329 (Fed.Cir.1983). An inventor 7
claiming conception of the subject matter of a count must show possession of 8
every feature of the count, i.e., every feature of the count must have been known to 9
the inventors at the time of the alleged conception. Coleman v. Dines, 754 F.2d 10
353, 359 (Fed. Cir. 1985). In evaluating actual reduction to practice and 11
conception, the express limitations of the count may not be ignored. Hitzeman v. 12
Rutter, 243 F.3d 1345, 1354 (Fed. Cir. 2001). Accordingly, all limitations in 13
interference counts “will be regarded as material to the invention covered by the 14
counts.” Id.; Meitzner v. Corte, 537 F.2d 524, 530 (CCPA 1976). 15
“[A]n inventor's testimony must be corroborated by independent evidence.” 16
Cooper v. Goldfarb, 154 F.3d 1321, 1330, (Fed. Cir. 1998). While a “rule of 17
reason” analysis is applied by evaluating all pertinent evidence to determine the 18
credibility of an inventor's testimony, there must be some independent 19
corroboration of the inventor’s testimony. See Reese v. Hurst, 661 F.2d 1222, 20
1225 (CCPA 1981). 21
III. 22
Face alleges both a conception and an actual reduction to practice before 23
May 24, 2000. More specifically, Face alleges that its inventors conceived the 24
invention by May 10, 2000. Paper 272 (Face Motion 5), 13:19–21. It also alleges 25
an actual reduction to practice by May 15, 2000. Id., 14:8–10. 26
5

It is Face’s burden to prove that it is entitled to judgment on priority, the 1
relief requested in its Motion 5. 27 C.F.R. § 41.121(b). To meet that burden Face 2
must establish that its alleged conception and reduction to practice included all the 3
elements of the count. Eaton, 204 F.3d at 1097; Coleman, 754 F.2d at 359. The 4
count requires that the switching system include “an electromechanical generation 5
means for generating an oscillating voltage.” Paper 265, p, 2; Paper 6, p. 1. Face’s 6
motion neither expressly presents argument nor expressly directs us to evidence 7
that establishes that it contemplated or built a signaling system that included an 8
oscillating voltage generator. The only mention in Face’s motion of generating an 9
oscillating voltage is on page 6 where it reproduces the count. Paper 272, 6:14–10
7:11. 11
We have reviewed all the evidence Face has identified as supporting its 12
motion. The only evidence we could find relating to an oscillating voltage was in 13
Bradbury Face’s testimony (Ex. 1140), which we here summarize. He testifies that 14
the inventors’ goal was to duplicate the capabilities of a Radio Shack system “but 15
without the need of a battery in the transmitter.” Ex. 1140, ¶ 11. He goes on to 16
testify that by May 19, 2000, their R&D team had obtained a Radio Shack system. 17
Ex. 1140, ¶ 14: 14–15. He says: 18
The only difference between our Invention and the Radio Shack 19
system was the power source for the transmitter. We 20
incorporated our piezoelectric generator ([a] of the Count) and 21
our standard circuit ([b] and [c] of the Count) so that the output 22
of our voltage regulator provided the electrical power to the 23
signal transmission means ([e] of the Count). The only 24
experimentation required on our part was optimization of the 25
piezo element and the remainder of the transmitter circuit so 26
that the output from the voltage regulator provided sufficient 27
power to the signal transmitter to make our Invention feasible 28
29
6

for everyday use -— over distances and through obstructions. 1
Radio Shack provided [e] through [i] of the Count; Face 2
provided [a] through [d]. 3
Ex. 1140, ¶ 18. 4
He further testifies that by no later than May 19, 2000, Face’s standard 5
circuit for deriving direct current from a “Thunder” piezoelectric actuator had been 6
combined with a rectifier, a voltage regulator, a signal transmitter and an antenna. 7
Ex. 1140, ¶¶ 14–16. With respect to the “standard circuit,” he testifies: 8
[O]ur standard circuit for deriving direct current from a 9
Thunder/Lightning piezoelectric generator incorporated rectifier 10
elements electrically connected to the piezoelectric generator 11
([b] and [a] of the Count). The standard circuit also 12
incorporated a voltage regulator with an input and output, the 13
input electrically connected to the output side of the rectifier 14
elements ([d] and [c] of the Count). The rectifier elements were 15
absolutely necessary and would have been understood by 16
anyone skilled in the art to be necessary because our 17
piezoelectric generators do not produce direct current; by the 18
very nature of their electromechanical design they generate 19
some form of oscillating voltage output that requires a 20
rectifier/diode circuit and a voltage regulator in order to obtain 21
the desired direct current output. 22
Ex. 1140, 3:15–25 (emphasis added). 23
We do not credit his testimony. As an inventor, Bradbury Face’s testimony 24
must be corroborated. Cooper, 154 F.3d at 1330. Face has not directed us to any 25
evidence that corroborates his testimony that one skilled in the art would have 26
understood that the presence of a rectifier and voltage regulator to signify that the 27
Thunder piezoelectric actuator developed an oscillating voltage. Additionally, his 28
testimony on this point is unsupported opinion testimony. We are not required to 29
credit unsupported opinions. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 30
1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal 31
7

Circuit jurisprudence requires the fact finder to credit the unsupported assertions of 1
an expert witness.) 2
Additionally, his testimony to the effect that that the presence of a rectifier 3
and regulator indicates an oscillating voltage is not consistent with the 4
specification of Face’s involved patent. As described below, the patent shows that 5
a rectifier and voltage regulator are used with pulsed as well as oscillating 6
voltages. 7
The patent identifies Thunder as a specific type of piezoelectric generator or 8
actuator that develops an electric voltage when deformed: 9
Referring to Fig. 1: A unimorph actuator called "THUNDER", 10
which has improved displacement, strain and load capabilities, 11
. . . is a unimorph actuator in which a pre-stress layer is bonded 12
to a thin piezoelectric ceramic wafer at high temperature, and 13
during the cooling down of the composite structure 14
asymmetrically stress biases the ceramic wafer due to the 15
difference in thermal contraction rates of the pre-stress layer nd 16
the ceramic layer. 17
Ex. 1002, (Face’s involved patent), 6:38–48. The patent specification and 18
drawings identify the Thunder actuator as Element 12. For example, the patent 19
says: “The THUNDER actuator 12 is as a composite structure, the construction of 20
which is illustrated in FIG. 1.” Id., 6:49–50. 21
The patent also describes two configurations using the Thunder actuator to 22
generate voltage. The first is illustrated by Figures 3–5. In this embodiment, both 23
ends of the Thunder actuator 12 are held in place: 24
Referring to FIGS. 3, 4 and 5: An illustration of prior means 25
generating an electrical pulse by application of mechanical 26
force comprises a switch plate 18 and a plunger assembly 13. 27
The two ends of the piezoelectric actuator are each pivotably 28
held in place within a recess 44 of a switch plate 18. 29
8

Ex. 1002, 9:21–26 (emphasis added). The application of mechanical force is said 1
to cause the actuator to deform, generating a pulse of electrical voltage. Removal 2
of the force causes the actuator to return to its undeformed state producing another 3
electrical pulse of opposite polarity. Ex. 1002, 9:50–67. 4
In the second, and preferred, embodiment, the Thunder actuator 12 is 5
clamped at one end and the other end is free. This embodiment is said to be 6
illustrated by Figure 6: 7
Referring to FIG. 6: In the preferred embodiment of the 8
invention, the actuator 12 is clamped at one end 121 and the 9
mechanical impulse is applied to the edge on the free end 122, 10
i.e., at the end opposite to the clamped end 121 of the actuator 11
12. 12
Ex. 1002, 10:4–8. Applying a force to the free end and then releasing that force 13
causes a vibration that is said to generate an oscillating voltage: 14
By applying the force to the edge on the free end 122 of the 15
actuator 12 and releasing it, the electrical pulse that is generated 16
upon removal of the force is an oscillating wave rather than a 17
single pulse as in the prior actuating means disclosed above. 18
Ex. 1002, 10:8–12 (emphasis added). The “prior actuating means disclosed above” 19
is the first embodiment depicted in Figures 3, 4 and 5. Ex. 1002, 9:21 – 10:3. 20
Thus, as described by Face’s patent, the Thunder actuator 12 can be used as 21
part of a configuration that generates a “single pulse” voltage as in the first 22
embodiment, or an “oscillating voltage,” as described for the second embodiment. 23
Both the pulsed voltage generator of the first embodiment and the oscillating 24
voltage generator of the second embodiment use a rectifier and a voltage regulator 25
to control the output voltage. Ex. 1002, 17:47–57. Thus, the mere use of a rectifier 26
and regulator does not provide a sufficient basis to hold that the inventors 27
contemplated or actually used an electromechanical generation means for 28
generating an oscillating voltage. In this regard, we note that Face has not directed 29
9

us to evidence establishing the characteristics of the electomechanical generator 1
the inventors contemplated for use or they actually used in the alleged reduction to 2
practice. 3
None of the remaining evidence relied upon in Face’s priority motion (Paper 4
272) relates to an “an electromechanical generation means for generating an 5
oscillating voltage.” Faces’ motion fails to direct us to evidence sufficient to 6
establish that the Face inventors either conceived or actually reduced to practice a 7
switching system that included that element. Every element of the count is 8
material. Hitzeman, 243 F.3d at 1354; Meitzner, 537 F.2d at 530. Face’s motion 9
fails to provide sufficient evidence to establish either a conception or actual 10
reduction to practice of an embodiment including every element of the count prior 11
to EnOcean’s accorded benefit date. Face has failed to carry its burden of 12
providing sufficient evidence that, if unrebutted, would justify the relief sought. 37 13
C.F.R. § 41.208(b). We deny Face’s motion for priority. 14
Because Face’s priority motion does not establish a date of invention prior to 15
EnOcean’s accorded benefit date, it is unnecessary for us to address EnOcean’s 16
opposition (Paper 373) or Face’s reply (Paper 379). See Standing Order, Paper 2, 17
¶ 121.3 (A motion that, fails to make out a substantive case may be denied on the 18
merits without consideration of the opposition). Because our decision on Face’s 19
priority motion is dispositive, it is unnecessary to address EnOcean’s priority 20
motion (Paper 365) or Face’s miscellaneous motion (Paper 385) to exclude certain 21
EnOcean evidence. We have considered all the evidence submitted in support of 22
Face’s priority motion (Paper 272) and nonetheless have denied that motion. 23
Accordingly, EnOcean’s miscellaneous motion (Paper 380) to exclude certain Face 24
evidence is moot and we have not considered it is unnecessary to address it. 25
10

Order 1
Upon consideration of Face Motion 5 on Priority (Paper 272) and the 2
evidence relied upon in support, and for the reasons given, it is 3
ORDERED that Face Motion 5 is denied. 4
FURTHER ORDERED that since denying Face Motion 5 fully 5
answers the question of priority, we do need to consider or decide 6
(1) EnOcean Motion 5 (Paper 365) and Motion 6 (Paper 380), or 7
(2) Face Motion 6 (Paper 385). 8
FURTHER ORDERED that a judgment is issued against Face as a 9
separate paper (Paper 409). 10

cc (electronic):

Attorney for EnOcean:

George E. Quillin, Esq.
Chase J. Brill, Esq.
Foley & Lardner, LLP
gquillin@foley.com
cbrill@foley.com

Attorney for Face:

Duncan G. Byers, Esq.
Jeffrey D. Wilson, Esq.
Byers Law Group
duncan.byers@byerslawgroup.com
jdwilson@byerslawgroup.com
admin@byerslawgroup.com