Ghosh et al.v.Morgan V. Ghosh et al. V. Ghosh et al.

Patent Trial and Appeal Board

Sep 14, 2015

12207346 (P.T.A.B. Sep. 14, 2015)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: September 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Morgan Solar, Inc,
Junior Party
(Application 13/028,957,
Inventor: John Paul Morgan),

v.

Banyan Energy, Inc.,
Senior Party
(Patents 7,664,350; 7,672,549; and 7,925,129
Inventors: Shondip Ghosh and David Sheldon Schultz).

Patent Interference 105,972 (RES)
(Technology Center 2800)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.

Judgment - Priority - 37 C.F.R. § 41.127
In a decision issued simultaneously with this judgment, we have denied 1
Junior Party Morgan’s motion on priority (Paper 279). Because Morgan did not 2
establish a date of invention prior to Senior Party Banyan’s accorded benefit date, 3
we award a judgment of priority against Morgan. 4
2

Accordingly it is— 1
ORDERED that Judgment on priority is entered against Morgan for the 2
subject matter of Count 1 (Paper 1, p. 3); 3
FURTHER ORDERED that Claims 1-57 of Morgan’s involved Application 4
13/028,957 are finally refused (35 U.S.C. § 135(a) (2011)); 5
FURTHER ORDERED that a copy of this judgment shall be entered in the 6
administrative records of each of the involved patents and the involved application; 7
FURTHER ORDERED that if there is any settlement agreement or related 8
documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) 9
(2011) and 37 C.F.R. § 41.205; and 10
FURTHER ORDERED that if a party seeks judicial review, the party must 11
file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of initiating 12
judicial review. 13
We also direct the parties’ attention to Biogen MA, Inc., v. Japanese 14
Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015). 15

3

cc (email):

Counsel for Morgan Solar :
Jonathan Cutler , Esq.
BCF LLP (Morgan Solar)
1100 Rene-Levesque Blvd. West
Suite 2500
Montreal QC H3B 5C9 CA
CANADA
Email: jonathan.cutler@bcf.ca

Jeffrey D. Karceski, Esq.
Thomas & Karceski PC
888 16th St. NW, Suite 800
Washington, DC 20006
Tel.: 202-349-9868
Fax.: 202-318-8300
Email: jkarceski@ip-counsel.net
Counsel for Banyan Energy
George E. Quillin, Esq.
Foley & Lardner LLP
3000 K Street N.W., Suite 600
Washington DC 20007-5109
gquillin@foley.com

Matthew E. Martin, Esq
Foley & Lardner LLP
321 North Clark Street, Suite 2800
Chicago, IL 60654
mrechtin@foley.com
memartin@foley.com

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: September 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Morgan Solar, Inc,
Junior Party
(Application 13/028,957,
Inventor: John Paul Morgan),

v.

Banyan Energy, Inc.,
Senior Party
(Patents 7,664,350; 7,672,549; and 7,925,129
Inventors: Shondip Ghosh and David Sheldon Schultz).

Patent Interference 105,972 (RES)
(Technology Center 2800)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.

Decision - Priority - 37 C.F.R. § 41.125(a) 1
This interference is between Morgan Application 13/028,957 and Banyan 2
Patent Nos. 7,664,350; 7,672,549; and 7,925,129. Junior Party Morgan’s motion 3
for priority and Banyan’s motion to exclude certain Morgan evidence are before 4
2

us. Although authorized to do so, Banyan did not file a motion for priority, instead 1
electing to oppose Morgan’s motion and rely on its earliest accorded benefit date. 2
No oral argument was held.
1
3
Because Morgan has failed to establish (1) an actual reduction to practice of 4
an embodiment meeting all the limitations of the count prior to Banyan’s accorded 5
benefit date or (2) an earlier date of conception coupled with diligence from before 6
Banyan’s accorded benefit date to a subsequent reduction to practice, we deny 7
Morgan’s motion. We dismiss Banyan’s evidentiary motion without prejudice as 8
moot. 9
A judgment against Morgan will issue in a separate paper. 10
I. 11
The parties claim a solar energy concentrator system in which the energy is 12
directed by a plurality of collectors that focus and direct the energy into a 13
waveguide. The waveguide delivers the concentrated energy to photovoltaic cells 14
or for other uses. E.g., Ex. 2034 (Morgan involved application), ¶ 7 and Fig. 2 15
(showing light 106 directed by deflector section 102 into optical waveguide section 16
104); Ex. 2000 (Banyan Patent 7,672,549), 1: 23-36 and Fig. 1 (showing “incident 17
light” directed by concentrating element 12 into optical waveguide 22). 18
The parties’ invention is represented by Count 1: 19
Claims 1 or 10 of [Banyan] Patent 7,664,350 or Claims 1 20
or 32 of [Banyan] Patent 7,672,549 or Claims 1, 12, or 13 21
of [Banyan] Patent 7,925,129. 22
Paper 1, 3:30-32. 23

1
While both parties requested oral argument (Papers 268and 269), upon review of
the Motions, Oppositions and Replies, the Board determined that an oral argument
was not necessary to decide the issues raised.
3

Morgan directs its arguments and evidence for priority to the Count 1
alternative of Claim 12 of Banyan’s ’129 patent. We reproduce that claim below 2
with some indenting and paragraphing added: 3
12. A optical concentrator, comprising: 4
a plurality of optical elements 5
disposed adjacent each other 6
with each of the plurality of optical elements 7
including a concentrator element for 8
collecting and repositioning input light; and 9
the optical concentrator further including: 10
a waveguide comprised of 11
a plurality of portions with each of the 12
portions associated with one of the 13
concentrating elements, 14
each of the waveguide portions further 15
having a feature associated with 16
receiving the output light from the 17
concentrating element, 18
the waveguide aggregating the light from the 19
plurality of optical elements; 20
wherein the plurality of optical elements and the 21
waveguide each form contiguous horizontal 22
layers disposed in a vertical stack. 23
Paper 8 (Banyan Clean Copy of Claims), p. 16-17. 24
II. 25
Morgan alleges three actual reductions to practice of an embodiment within 26
the scope of the Claim 12 prior to Banyan’s September 10, 2007 accorded benefit 27
date. Morgan refers to these as the “First,” “Second” and “Third” “Working 28
Models.” The First Working Model is said to have been reduced to practice on 29
June 23, 2007. The Second is said to have been made on July 10, 2007, and the 30
Third during the first two weeks of August 2007. Paper 172, 14:1-6, 21:3-5, 31
24:12-13. 32
4

A. 1
To prove an actual reduction to practice, Morgan must establish 2
(1) construction of an embodiment that met all the limitations of the Count, 3
(2) successful testing showing that the embodiment worked for its intended 4
purpose, and (3) sufficient evidence to corroborate the inventor testimony 5
regarding those events. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. 6
Cir. 2006). The sufficiency of the corroboration is judged under a “rule of reason.” 7
Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993); Berges v. Gottstein, 618 8
F.2d 771, 776 (CCPA 1980). The rule of reason analysis does not require every 9
disputed fact to be corroborated. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. 10
Cir. 1998). However, there must be sufficient corroboration to support the 11
inventor’s testimony. Id. 12
B. 13
In its Reply (Paper 236) to Banyan’s Opposition (Paper 191), Morgan raises 14
the issue of the appropriate standard to be applied in interpreting the count of this 15
interference. Morgan argues that Banyan’s opposition inappropriately applied 16
claim construction principles rather than those applicable to construing counts. 17
Paper 236, 2:1-24. In Morgan’s view, Banyan’s opposition applied the standard of 18
Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2006). Under that 19
standard, claim terms are given their “ordinary meaning” by a person skilled in the 20
art when read in the context of the entire patent, including the specification. 21
Paper 236, 2:18-25. On the other hand, according to Morgan, counts in an 22
interference are interpreted differently because they are not claims. Counts are to 23
be considered as a whole, the count language is given the broadest reasonable 24
interpretation it will support, and only when the count language is ambiguous, may 25
reference be made to the specification. Paper 235, 2: 4-16. 26
5

However, the count in this interference is specific claims of the Banyan 1
patents. Thus, the count recites: 2
Claims 1 or 10 of [Banyan] Patent 7,664,350 or Claims 1 3
or 32 of [Banyan] Patent 7,672,549 or Claims 1, 12, or 4
13 of [Banyan] Patent 7,925,129. 5
Paper 1, 3: 30-32 (emphasis added). To understand the scope of the count subject 6
matter, reference must necessarily be made to the language of the recited claims. 7
That language may only be understood in light of the specification of which they 8
form a part, as well as other suitable evidence. It is appropriate therefore, under 9
the facts and circumstances of this interference, that the language of the claims 10
identified as the Count, should be given its ordinary meaning to one skilled in the 11
art in light of the specification and other evidence that may be appropriate. The 12
rule relating to ambiguity, while applicable to other count forms, such as purely 13
textual statements of the interfering subject matter not expressly tied to the parties’ 14
claims, makes no logical sense with respect to the type of count here.
2
15
C. 16
While Morgan’s evidence appears to show that “working models” were 17
made, we are not convinced that Morgan has established by a preponderance of the 18
evidence that the models included all the elements of the Claim 12 alternative of 19
the Count. Specifically, Morgan has not established that the working models 20
included a waveguide having “a feature associated with receiving the output light 21
from the concentrating element.” 22

2
The Notice of Declaration gave the parties the opportunity to request
authorization to file motions. Paper 3 (Scheduling Order), 1:1 – 2:2. Such motions
include those to change the subject matter of the interference by substituting or
adding counts. 37 C.F.R. § 41.208(a)(2); Paper 2 (Standing Order), ¶ 208.2.
Morgan did not seek to file a motion to substitute or add counts with respect to the
currently involved application and patents. Paper 22 (Order Authorizing Motions),
2:1-6:18.
6

Morgan relies on the testimony of John Paul Morgan (John Paul), Nicholas 1
Morgan (Nicholas), Peter Chang and Dr. R. John Koshel. John Paul is the sole 2
named inventor of the involved Morgan Application. At the time of his testimony, 3
he was the Chief Technology Officer of Morgan Solar Inc., the assignee of 4
Morgan’s involved application. Ex. 2055, ¶ 2. Nicholas is John Paul’s brother. At 5
the time of his declaration he was, Vice-President, Business Development, for 6
Morgan Solar. Ex. 2059, ¶¶ 2-3. Chang, at the time of his testimony, was an 7
Engineer working for Morgan Solar. Ex. 2060, ¶ 1-2. At the time of his 8
testimony, Dr. Koshel was the Associate Dean of Academic Programs and a 9
Professor in the College of Optical Sciences at the University of Arizona. 10
Ex. 2049, ¶ 5. He testifies that he has a Bachelor of Science Degree and a Ph.D. in 11
Optics from the University of Rochester. Ex. 2049, ¶¶ 6-7. He is qualified by 12
knowledge, skill, experience, training, and education to express opinions related to 13
the subject matter of this interference. 14
D. 15
The parties dispute the meaning of the “feature” limitation as used in 16
Claim 12. Morgan argues that as understood by a person skilled in the art the 17
“expression reads on any element that in any way relates to receiving the 18
converging output light from the concentrating element.” Paper 172, 18:19-21. 19
Morgan relies on Dr. Koshel’s testimony (Ex. 2049), specifically directing us to 20
¶¶ 34-35 and 38-39. Paper 172, 18: 21. Dr. Koshel testifies with respect to the 21
Claim 12 limitations in general that “a person skilled in the art would not be able to 22
attribute any meaning to the claimed expressions other than their plain and 23
ordinary meaning in the general context of the specification.” Ex. 2049, ¶35. He 24
also testifies that the phrase “each of the waveguide portions further having a 25
feature associated with receiving the output light from the concentrating element” 26
would be understood “according to its plain and ordinary meaning.” Ex. 2049, 27
7

¶ 38. Dr. Koshel then testifies that “those skilled in the art would conclude that 1
this expression reads on any element that in any way relates to receiving the 2
converging output light from the concentrating element.” Ex. 2049, ¶ 39. 3
Banyan’s witness, Dr. Zane Coleman, also provides testimony on the 4
meaning of the limitation. Dr. Coleman has a Ph.D. in Physics from 5
Loughborough University (UK). He testifies that he has been designing optical 6
components and systems for more than twenty-one years. Ex. 1001, ¶ 8. At the 7
time of his testimony, he was a named inventor on 33 patents and over 8
40 additional applications in the field of optics and optical devices. Ex. 1001, ¶ 8; 9
Ex. 1002, pp. 2-5. He is qualified by knowledge, skill, experience, training, and 10
education to give opinions related to the subject matter of this interference. 11
He testifies that the waveguide “feature” as used in Claim 12 refers to a light 12
altering part or component: 13
It is my opinion that a person of ordinary skill in the art would 14
understand the “feature” limitation of Claim 12 by its plain and 15
ordinary meaning. In other words, the layman’s definition of 16
“feature” is “a prominent part or characteristic.” Ex. 1003, 17
Merriam Webster, p. 458. Key to this plain and ordinary 18
meaning, particularly for those skilled in optics, is that it must 19
be “part” of something. In the express language of the Banyan 20
claims and the context of the specification, the prominent part 21
or characteristic would be understood to connote that light is 22
altered, i.e. a benefit to the system is imparted, and the “part” 23
being of the portion. 24
Ex. 1001, ¶ 30. Dr. Coleman supports his opinion with the Merriam Webster 25
Dictionary, Ex. 1003, and with examples of the use of “feature” in publications in 26
the optics field (Ex. 1001, ¶ 31) and how that word was used in Banyan’s 27
specification (Ex. 1001, ¶ 32). 28
We accept Dr. Coleman’s testimony that the feature-limitation, in the 29
context of the count (Banyan’s Claim 12) and Banyan’s written description, 30
8

requires a part or characteristic that both receives the light from the concentrator 1
element and redirects or alters the direction of that light. Ex. 1001, ¶ 32. We 2
credit his testimony over Dr. Koshel’s because the latter’s opinion is not supported. 3
Nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires 4
a fact finder to credit the unsupported assertions of an expert witness. Rohm and 5
Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also, 6
Phillips v. AWH Corp., 415 F.3d at 1318 (“[C]onclusory, unsupported assertions 7
by experts as to the definition of a claim term are not useful to a court)” and 8
Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1360-61 9
(Fed. Cir. 2013) (an explanation of only “how” a person of ordinary skill would 10
understand a claim term without an explanation of “why” is “not useful” and 11
should be discounted). 12
On the other hand, Dr. Coleman has directed us to credible evidence 13
supporting his proffered definition. He relies on a general dictionary definition of 14
“feature” (Ex. 1001, ¶ 30): 15
1a: the structure, form, or appearance esp. of a person b obs: 16
physical beauty 2 a: the makeup or appearance of the face or its 17
parts b: a part of the face : LINEAMENT 3 a: a prominent part 18
or characteristic b: any of the properties (as voice or gender) 19
that are characteristic of a grammatical element (as a phoneme 20
or morpheme); esp: one that is distinctive 4: a special attraction: 21
as a: a featured motion picture b: a featured article, story, or 22
department in a newspaper or magazine c: something offered to 23
the public or advertised as particularly attractive (one of the 24
car's most popular ~s>. 25
Ex. 1003, p. 6. He also relies on how the word is used in publications describing 26
optical systems. Ex. 1001, ¶ 31. We have reviewed each of the referenced exhibits 27
(Exs. 1008 and 1014-1018) and find that the use of “feature” is consistent with 28
Dr. Coleman’s definition that the feature as used in the count must be a light 29
altering part of the optical system. The construction that the feature must be a light 30
9

altering component is also consistent with the use of “feature” in Banyan’s 1
specification. In describing Figure 25 Bayan’s written description states: 2
In FIG. 25, a curved concentrating element 12 directs the 3
light 14 onto (the redirecting component 18) which passes the 4
light 14 into the waveguide 22. The concentrating element 12 5
and the redirecting component 18 are shown as two different 6
features on the same physical part, while the waveguide 22 is 7
shown as a second physical part coupled to the first. In 8
FIG. 26, a curved concentrating element 12 directs the light 14 9
onto two reflectors (the redirecting component 18) acting in 10
sequence which pass the light 14 into the waveguide 22. The 11
concentrating element 12, the redirecting component 18, and 12
waveguide 22 are all shown as separate physical parts coupled 13
together. 14
Ex. 2002, 8:11-25 (emphasis added). Each feature alters the path of the light. The 15
concentrating element gathers and concentrates the light and the redirecting 16
element reflects and directs the concentrated light into the waveguide.
3
We 17
reproduce Banyan’s Fig. 25 below: 18

3
While Fig. 25 shows the redirecting feature 18 as separate from the waveguide,
Banyan’s Fig. 2 shows the redirecting/reflective feature as part of the waveguide.
Ex. 2002, p. 3, Item 32 and 5:48-60.
10

Banyan’s Figure 25 depicts a schematic of a solar
concentrator having curved concentrating elements,
redirecting elements and a waveguide. Ex. 2002, p. 24.

We construe the limitation “each of the waveguide portions further having a 1
feature associated with receiving the output light from the concentrating element” 2
as connoting an identifiable physical part or structure in the waveguide which 3
receives and redirects or alters the light coming from the concentrating element. 4
E. 5
Morgan alleges that John Paul made the first working model on 6
June 23, 2007. Paper 172, 14:5-7. 7
John Paul testifies that he made a first working model by hand from a 8
2.5 mm thick acrylic sheet. Ex. 2055, ¶ 21. Certain portions of the sheet were said 9
to have been cut out using a Dremel tool following a “design template.” Id. A 10
scaled-down version of the template is said to have been reproduced in the 11
testimony. Id. We reproduce that version below: 12
11

The Figure is said to depict a scaled down version of the
template used to make the First Working Model. Ex. 2055, ¶ 21.
John Paul testifies that the white portions represent air gaps that were to be 1
cut out with the Dremel tool and the black portions represent areas of the 2
remaining acrylic. Id. 3
Morgan directs us to an annotated version of Figure 15 taken from page 19 4
of Exhibit 2054. Paper 172, 14:15-16. Exhibit 2054 is a document titled “Morgan 5
Solar Panels” showing the author to be John Paul Morgan and bearing the date 6
March 21, 2007. The document predates the alleged date of the First Working 7
Model (June 23, 2007). 8
John Paul testifies on the annotated version of Figure 15. In addition to 9
letters identifying regions of the deflector, a surrounding rectangular box was 10
added which was not part of original Figure 15. Compare Ex. 2054, p. 19. He 11
testifies that he modified Figure 15 “to aid in explaining how the first working 12
model functions.” Ex. 2055, ¶ 22. We reproduce Morgan’s annotated Figure 15 13
below: 14

12

The Figure depicts an annotated schematic of a solar
collector appearing in Paragraph 22 of Ex. 2055
John Paul testifies on the drawing and the meanings of the annotations. 1
Ex. 2055, ¶¶ 22-25. He identifies “F” as representing the waveguide, the region 2
“M” as identifying the lower portion of the waveguide, the locations “Gx” (i.e., G1-3
G4) as identifying portions of the waveguide and the locations identified by Hx (H1-4
H4) as “apertures” at the focal point of the parabolic surfaces Cx. Ex. 2055, ¶¶ 23-5
25. John Paul testifies that 6
[t]he focal point of each parabola is located at an aperture “Hx” 7
forming an opening between the optical concentrator element 8
“Bx” . . . and the waveguide “F” . . . and thus being a part of 9
both the optical concentrator element “Bx” and the waveguide 10
“F”. 11
Ex. 2055, ¶ 23. 12
Morgan also relies on Nicholas Morgan’s testimony. For the most part 13
Nicholas’ testimony repeats John Paul’s testimony relying on modified Figure 15 14
13

to explain how the “solar panel technology works.” Ex. 2059, ¶ 10. His testimony 1
does not provide any additional insights relating to the apertures. 2
Morgan argues that the apertures “H” meet the Claim 12 limitation of a 3
“feature associated with receiving the output light from the concentrating 4
element:” 5
[T]hose skilled in the art would recognize that each of the 6
waveguide portions ‘G1’, ‘G2’, ‘G3’, ‘G4’, ‘G5’... ‘Gn’ includes 7
an aperture ‘H1’, ‘H2’, ‘H3’, ‘H4’, ‘H5’... ‘Hn’ (respectively) 8
through which light having been collected and repositioned by 9
the concentrator element ‘C1’, ‘C2’, ‘C3’, ‘C4’, ‘C5’... ‘Cn’ 10
(respectively) is received. 11
Paper 172, Motion, 18:21 – 19:4. 12
Morgan relies on Dr. Koshel’s testimony for support. He testifies: 13
With reference to [the annotated figure], I prepared the 14
following claim chart. The claim chart illustrates that those 15
skilled in the art would understand that the scope of the Count 16
encompasses the embodiment shown above, as reproduced 17
from paragraph 22 of [John Paul’s testimony,] Exhibit 2055. 18
Ex. 2049, ¶ 209. The claim chart correlates the elements of Claim 12 with the 19
components of the modified Figure 15 said to show that element. Ex. 2049, ¶ 209. 20
The “feature” limitation is said to be met by apertures “H”, as indicated in the 21
portion of Dr. Koshel’s claim chart reproduced below: 22
Count 1 (Claim 12 of the ‘129 Patent) Embodiment Illustrated in Paragraph
22 of Exhibit 2055
. . . . . .
each of the waveguide portions further
having a feature associated with
receiving the output light from the
concentrating element,
Each of the waveguide portions ‘G1’,
‘G2’, ‘G3’, ‘G4’, ‘G5’... ‘Gn’ includes an
aperture ‘H1’, ‘H2’, ‘H3’, ‘H4’, ‘H5’...
‘Hn’ (respectively) through which light
having been collected and repositioned
by the concentrator element ‘C1’, ‘C2’,
‘C3’, ‘C4’, ‘C5’... ‘Cn’ (respectively) is
received..
14

Ex. 2049, ¶ 209. Dr. Koshel further testifies that the focal point of each 1
concentrator “Cx” is located at “aperture Hx.”. The apertures Hx are said to be the 2
physical connection between the optical concentrators and the waveguide and thus 3
forms a part of both: 4
The focal point of each parabolic is located at an aperture “Hx” 5
forming a opening between the optical concentrator element 6
“Bx” … and the waveguide “F” … and thus being a part of 7
both the optical concentrator element “Bx” and the waveguide 8
“F”. 9
Id. at ¶210. He then testifies that “[o]nce the collected and repositioned light ‘E’ 10
passes through the aperture ‘Hx,’ it enters the waveguide ‘F.’” Ex. 2049, ¶ 211. 11
F. 12
Assuming that the modified Figure 15 accurately represents the First 13
Working Model,
4
we are not convinced that that the “apertures” meet the “feature” 14
limitation of Claim 12. We held above that the feature limitation of Claim 12 15
connotes an identifiable physical part of or structure in the waveguide which 16
receives and redirects or alters the light coming from the concentrating element. 17
To the extent the apertures would be considered physical parts of the waveguide, 18
they have not been shown to change the direction or alter the focused light beam. 19
They merely allow the focused beam to pass into the waveguide unaltered. Indeed, 20
the photograph reproduced as part of ¶ 47 of John Paul’s testimony appears to 21
show that the focused light is not altered by the aperture “H.” Ex. 2055, ¶ 47. 22
That photograph is said to show light traveling through a solar collector made 23
using the same design template used to make the First Working Model. Ex. 2055, 24
¶¶ 37 and 46. In the photograph, the light appears to simply converge to a focus 25
and then diverge unaltered as would be expected of light passing through a focal 26

4
In this regard we note that neither John Paul nor Nicholas expressly testify that
annotated Figure 15 was an accurate representation of the First Working Model.
15

point. Ex. 2055, ¶ 47. It does not show that the aperture itself redirects or alters 1
the light as required by the “feature” limitation of Claim 12. 2
We have considered Dr. Koshel’s opinion testimony on this point, but do not 3
give it any weight. His opinion is based on assigning a too broad meaning to the 4
“feature” limitation of Claim 12. He testifies that the limitation “reads on any 5
element that in any way relates to receiving the converging output light from the 6
concentrating element.” Ex. 2049, ¶ 39. As we stated above, to be a “feature” in 7
the context of Claim 12 and the remainder of Banyan’s disclosure, there must be a 8
component that is a physical part of the wave guide that alters the light coming 9
from the concentrating element. Under this definition, we find unconvincing 10
Dr. Koshel’s testimony that one skilled in the art would understand the “apertures” 11
said to be shown in annotated Figure 15 are the “features” required by Claim 12. 12
Morgan has not met its burden of proving that the First Working Model met 13
all the limitations of Claim 12. 14
G. 15
Morgan also relies on two additional working models as actual reductions to 16
practice. They are said to have been made on July 10, 2007, and during the first 17
two weeks of August 2007. Paper 172, 21:1-30:16. Those working models appear 18
to be based upon essentially the same design and have essentially the same 19
structure as the First Working Model. Ex. 2055, ¶ 31-33 and 37. 20
We have reviewed Morgan’s evidence and arguments. However, we have 21
not been directed to anything that shows that the waveguide of the Second and 22
Third Working Models differs in structure from the waveguide of the First 23
Working Model. Specifically, the evidence does not establish that the waveguides 24
of the Second and Third Working Models include a waveguide “further having a 25
feature associated with receiving the output light from the concentrating element” 26
16

in the sense used in Banyan’s Claim 12. For the reasons stated above, we are not 1
convinced that Morgan’s “aperatures” meet the “feature” limitation of that claim. 2
Morgan has failed to meet its burden of establishing that its Second and 3
Third Working Models were an actual reduction to practice of the subject matter of 4
the count. 5
III. 6
Morgan alleges a date of conception of January 3, 2007. Paper 172, 8:21-23. 7
A. 8
A junior party may prevail on priority if it proves conception before that 9
senior party’s filing date coupled with reasonable diligence from just before that 10
date to the junior party's own filing date. Oka v. Youssefyeh, 849 F.2d 581, 11
7 USPQ2d 1169 (Fed. Cir. 1988). In proving diligence, the Junior Party must 12
account for the entire period from just before the filing date until the reduction to 13
practice. Griffith v.Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). 14
B. 15
We previously held that Morgan was not entitled to the benefit of the filing 16
dates of any earlier applications. Paper 141, pp. 2-17. We held above that Morgan 17
had not established an earlier actual reduction to practice. Banyan’s accorded 18
benefit date, i.e., its accorded constructive reduction to practice date, is September 19
10, 2007, the filing date of its Application 11/852,854. Banyan has not filed a 20
motion attempting to establish any earlier date of invention. Thus, in order to 21
prevail on priority based upon prior conception and diligence, Morgan must prove 22
a conception prior to that date, as well as diligence from before that date to its own 23
reduction to practice. Thus, to prevail, Morgan must establish a prior conception 24
coupled with reasonable diligence from before Banyan’s September 10, 2007, 25
effective filing date until the Morgan filed its own application on 26
February 13, 2011. While, Morgan’s motion directs us to an alleged earlier 27
17

conception, it does not present an explanation or direct us to evidence supporting 1
diligence for the period from just before September 10, 2007, to 2
February 13, 2011, Morgan’s constructive reduction to practice date. Nor did 3
Morgan’s motion provided a diligence chart as required by Standing Order 4
(Paper 2), ¶ 208.6. 5
Morgan has failed to meet its burden of establishing an earlier conception 6
and diligence. 7
IV. 8
Banyan has filed a motion to exclude Morgan Exhibits 2037, 2049, 2053, 9
2057 and 2059-2061. Paper 272. We dismiss the motions as moot. 10
Each of the Exhibits were relied upon as part of Morgan’s motion for 11
judgment based on priority. Paper 172. We have considered all of Morgan’s 12
evidence, but have determined that Morgan has failed to prove priority. Because 13
Banyan has not been prejudiced by our consideration of all of Morgan’s evidence, 14
it is unnecessary to evaluate whether the exhibits should be excluded. 15
Banyan’s motion is dismissed without prejudice. 16
V. 17
It is 18
ORDERED that Morgan Revised Substantive Motion 3 (Paper 172) 19
seeking a judgement based upon priority of invention is DENIED; and 20
FURTHER ORDERED that Banyan Miscellaneous Motion 3 21
(Paper 272) to exclude certain of Morgan’s evidence is dismissed without 22
prejudice. 23

18

cc (email):

Counsel for Morgan Solar :
Jonathan Cutler , Esq.
BCF LLP (Morgan Solar)
1100 Rene-Levesque Blvd. West
Suite 2500
Montreal QC H3B 5C9 CA
CANADA
Email: jonathan.cutler@bcf.ca

Jeffrey D. Karceski, Esq.
Thomas & Karceski PC
888 16th St. NW, Suite 800
Washington, DC 20006
Tel.: 202-349-9868
Fax.: 202-318-8300
Email: jkarceski@ip-counsel.net
Counsel for Banyan Energy
George E. Quillin, Esq.
Foley & Lardner LLP
3000 K Street N.W., Suite 600
Washington DC 20007-5109
gquillin@foley.com

Matthew E. Martin, Esq
Foley & Lardner LLP
321 North Clark Street, Suite 2800
Chicago, IL 60654
mrechtin@foley.com
memartin@foley.com