Schwindt et al.v.Miller et al.

Patent Trials and Appeals Board

May 7, 2013

09707022 - (J) (P.T.A.B. May. 7, 2013)

BoxInterferences@uspto.gov Paper 240
Tel: 571-272-4683 Filed: May 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

JEFFREY SCHWINDT, MICHAEL E. MILLER, JOSEPH L. MARK,
JOHN P. HANCOCK and CHARLES BUTCHER

Junior Party
(Application No. 10/936,395),
v.
MICHAEL E. MILLER, JOSEPH L. MARK,
JOHN P. HANCOCK and CHARLES BUTCHER

Senior Party
(Patent No. 6,758,824).
_______________
Patent Interference No. 105,805 (DK)
(Technology Center 3700)
_______________

Judgment 1 

Before RICHARD TORCZON, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

2 

Further to the Decision on Motions (Paper 239), finding that Mr. Schwindt is 1 
not entitled to be named as an inventor of the subject matter of the Count 1 or 2 
Count 2, it is Ordered that judgment is awarded against Schwindt. 3 
Further Ordered that claims 1-37 of Schwindt application 10/936,395 are 4 
finally refused. 35 U.S.C. § 135(a). 5 
Further Ordered that attention is directed to 35 U.S.C. § 135(c) and Bd.R. 6 
205 regarding the filing of settlement agreements. 7 
Further Ordered that a copy of the Judgment shall be placed in the files of 8 
(1) Schwindt application 10/936,395 and (2) Miller patent 6,758,824. 9 

3 

cc (via electronic transmission):
Attorney for Schwindt:
David Oskin, Esq.
Caliber IP, LLC
david@caliberip.com

Robert Schulman, Esq.
Hunton and Williams
rschulman@hunton.com

Attorney for Miller:
David L. Cavanaugh, Esq.
Jane M. Love, Ph.D., Esq.
Wilmer, Cutler, Pickering, Hale and Dorr, LLP
David.Cavanaugh@wilmerhale.com
Jane.Love@wimerhale.com

BoxInterferences@uspto.gov Paper 239
Tel: 571-272-4683 Filed: May 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

JEFFREY SCHWINDT, MICHAEL E. MILLER, JOSEPH L. MARK,
JOHN P. HANCOCK and CHARLES BUTCHER

Junior Party
(Application No. 10/936,395),
v.
MICHAEL E. MILLER, JOSEPH L. MARK,
JOHN P. HANCOCK and CHARLES BUTCHER

Senior Party
(Patent No. 6,758,824).
_______________
Patent Interference No. 105,805 (DK)
(Technology Center 3700)
_______________

Decision on Motions – Bd.R. 125(a) 1 
2 
Before RICHARD TORCZON, SALLY GARDNER LANE, and 3 
DEBORAH KATZ, Administrative Patent Judges. 4 
5 
KATZ, Administrative Patent Judge. 6 

2 

I. Statement of the Case 1 
Issue 2 
The issue before us is inventorship of U.S. Patent 6,758,824 (“the Miller 3 
‘824 patent”). (See Order – Bd.R. 104(a), Paper 86: “As discussed, the central 4 
issue to be determined during the “priority phase” is inventorship.”) Schwindt1 5 
and Miller2 disagree about whether Jeffrey Schwindt should have been named as 6 
an inventor on the Miller ‘824 patent. 7 
Schwindt Substitute Substantive Motion 2 (“Schwindt Motion 2,” Paper 8 
159) is pending. Schwindt styles Motion 2 as “For Judgment on Priority” and 9 
“requests judgment against Miller on priority based on an earlier conception 10 
coupled with an earlier reduction to practice.” (Schwindt Motion 2, Paper 159, at 11 
7:4-6.) In the Order of 11 April 2012, though, Schwindt was authorized to file one 12 
motion addressing the issues of derivation and inventorship. (Order – Bd.R. 13 
104(a), Paper 86 at 2:11-12.) Schwindt was not authorized to file a motion for 14 
judgment on priority (see also Order – Motion Times, Paper 38, at 2:5-12, not 15 
authorizing any priority motions) and we do not find a request by Schwindt on the 16 
record to file a priority motion (see Schwindt List of Motions, Paper 28). Nor do 17 
we find a Priority Statement filed by Schwindt that proffers evidence of the dates 18 
Schwindt alleges in its Motion 2 at the appropriate time during the Interference 19 
(Time Period 1). (See Bd.R. 204(a): “Priority statement. (1) A party may not 20 
submit evidence of its priority in addition to its accorded benefit unless it files a 21 
statement setting forth all bases on which the party intends to establish its 22 
entitlement to judgment on priority.”) 23 

1 Tissue Extraction Devices, LLC is the real party-in-interest of Schwindt. 
2 Suros Surgical Systems, Inc., which is a wholly owned subsidiary of Hologic,
Inc., and NICO Corporation, are the real parties-in-interest of Miller.  
3 

Accordingly, we do not consider arguments put forth by Schwindt relating to 1 
priority of invention. Because Schwindt was authorized to file a motion addressing 2 
derivation and inventorship (Order, Paper 86 at 2:11-12), we review Schwindt 3 
Motion 2 on these grounds only. See Sewall v. Walters, 21 F.3d 411, 415 (Fed. 4 
Cir. 1994) (distinguishing between an inventorship contest and a priority contest, 5 
when the issue is who conceived of the invention); see also Chou v. University of 6 
Chicago, 254 F.3d 1347, 1358 n.2 (Fed. Cir. 2001) (a means for a putative inventor 7 
to assert inventorship rights is to file a patent application and seek to have the PTO 8 
declare an interference in order to establish inventorship). 9 
Subject Matter 10 
The dispute is framed around two counts: Count 1, to which claims 1-27 and 11 
33-37 of both parties correspond, and Count 2, to which claims 28-32 of both 12 
parties correspond, the claims of both parties being identical. (See Redeclaration, 13 
Paper 85.) 14 
The subject matter of these counts is a biopsy or tissue cutting device that 15 
has two cannulas: (1) an outer cannula that has an opening to receive tissue and (2) 16 
an inner cannula that has a cutting edge to server tissue projecting through the 17 
opening in the outer cannula. (See Miller ‘824 patent, Exh. 1002, abstract.) The 18 
cutting device is powered by a hydraulic system, wherein a rotary and 19 
reciprocating hydraulic motor control the inner and outer cannulas, respectively, 20 
allowing them to move against each other and to cut tissue that projects through 21 
the opening. (Id.) 22 
Count 1 is Miller claim 1 or Schwindt claim 1, both of which recite: 23 
A tissue cutting device comprising: 24 
an outer cannula defining an outer lumen and a tissue-receiving 25 
opening adjacent a distal end of said outer cannula communicating 26 
with said outer lumen; 27 
4 

an inner cannula slidably disposed within said outer lumen and 1 
defining a inner lumen from an open distal end to an open opposite 2 
proximal end, said inner cannula defining a cutting edge at said open 3 
distal end operable to sever tissue projecting through said tissue 4 
receiving opening; 5 
a first hydraulic rotary motor operably coupled to said inner 6 
cannula to rotate said inner cannula within said outer cannula; 7 
a second hydraulic reciprocating motor operably coupled to said 8 
inner cannula to translate said inner cannula within said outer cannula 9 
while said inner cannula rotates; and 10 
a hydraulic system connecting said first and second hydraulic 11 
motors to a source of pressurized fluid. 12 
13 
(Redeclaration, Paper 85, at 2; Miller Clean Copy of Claims, Paper 5; Schwindt 14 
Clean Copy of Claims, Paper 12.) 15 
Count 2 is Miller claim 28 or Schwindt claim 28, both of which recite: 16 
The tissue cutting device of claim 1 further comprising: 17 
a tubular axle having a distal end and a proximal end; and 18 
a coupler connecting said distal end of said tubular axle to said 19 
proximal end of said inner cannula, wherein said first hydraulic rotary 20 
motor is coupled to said tubular axle to rotate said axle and said inner 21 
cannula therewith. 22 
23 
(Id.) 24 
After reviewing the evidence before us, we conclude that Schwindt failed to 25 
meet its burden to show that Mr. Schwindt should have been named as an inventor 26 
on the Miller ‘824 patent or that the claimed subject matter was derived from him. 27 
Though the parties disagree as to whether Schwindt was required to prove its case 28 
with a preponderance of the evidence or with clear and convincing evidence (see 29 
Schwindt Motion 2, Paper 159, at 9:18, and Schwindt Reply 2, Paper 175, at 5:20-30 
24; Miller Opp. 2, Paper 161, at 12:4-11), Schwindt failed to meet its burden 31 
under either standard. 32 
33 
5 

II. Inventorship 1 
Inventorship is determined by who conceived of the claimed subject matter, 2 
that is, who completed the mental part of invention. Burroughs Wellcome Co. v. 3 
Barr Laboratories, Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). Conception is 4 
“the formation in the mind of the inventor, of a definite and permanent idea of the 5 
complete and operative invention, as it is hereafter to be applied in practice.” 6 
Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 7 
(Fed.Cir.1986). An inventor completes conception when one of ordinary skill in 8 
the art could construct the apparatus without “unduly extensive research or 9 
experimentation.” Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Thus, 10 
Schwindt carries the burden of proving with clear and convincing evidence that 11 
Mr. Schwindt contributed to a definite and permanent idea of the complete and 12 
operative tissue cutting device. If, for example, Mr. Schwindt merely assisted the 13 
named inventors after those of skill in the art could have made the device without 14 
extensive research or experimentation, he is not entitled to be named as an 15 
inventor. Id. at 416-17. 16 
To meet this burden, Schwindt cannot rely only on Mr. Schwindt’s 17 
testimony alone, but must provide corroborating evidence. See Price v. Symsek, 18 
988 F.2d 1187, 1194 (Fed.Cir.1993) (“an inventor's testimony respecting the facts 19 
surrounding a claim of derivation or priority of invention cannot, standing alone, 20 
rise to the level of clear and convincing proof.”). Whether the inventor's testimony 21 
has been sufficiently corroborated is evaluated under a “rule of reason” analysis, in 22 
which “[a]n evaluation of all pertinent evidence must be made so that a sound 23 
determination of the credibility of the [alleged] inventor's story may be reached.” 24 
Id. at 1195. 25 
6 

Findings of Fact 1 
The following findings of fact are supported by a preponderance of the 2 
evidence on the record before us. 3 
1. Michael E. Miller and Joseph L. Mark, named inventors of the Miller 4 
‘824 patent testify that they worked for Promex, Inc. in the 1990s and founded a 5 
company called Suros Surgical Systems, Inc. in 2000. Mr. Miller and Mr. Mark 6 
refer to both companies as “Promex” in their testimony. (Declaration of Joseph 7 
Mark, 12 October 2012 (“Mark Decl.”) Exh. 1054, ¶ 5; Declaration of Michael E. 8 
Miller, 12 October 2012 (“Miller Decl.”), Exh. 1055, ¶ 5.) 9 
2. Mr. Miller and Mr. Mark both testify that they planned on powering 10 
the tissue cutting device pneumatically beginning in early 1998. (Mark Decl., Exh. 11 
1054, ¶ 9; Miller Decl., Exh. 1055, ¶ 9.) 12 
3. Mr. Mark testifies that he was previously a sales engineer for 13 
Davidson, Inc., which, according to Mr. Mark, was in the business of selling 14 
pneumatic and hydraulic components, as well as creating pneumatic and hydraulic 15 
circuits that used these components. Mr. Mark testifies that while at Davidson, he 16 
sold pneumatic components and assisted in the design and layout of pneumatic and 17 
hydraulic circuits. (Mark Decl., Exh. 1054, ¶ 13.) 18 
4. Mr. Mark testifies that he was confident that making a pneumatic 19 
system for the breast biopsy device would be a “simple matter.” (Mark Decl., Exh. 20 
1054, ¶ 13.) 21 
5. Mr. Miller and Mr. Mark testify that they decided to retain a firm to 22 
build and manufacture the system they wanted. (Mark Decl., Exh. 1054, ¶ 17; 23 
Miller Decl., Exh. 1055, ¶ 16.) 24 
6. Mr. Miller and Mr. Mark testify that Mr. Mark contacted Karl Fancher 25 
to inquire about quickly assembling the system they desired and manufacturing it. 26 
(Mark Decl., Exh. 1054, ¶ 18; Miller Decl., Exh. 1055, ¶ 17.) 27 
7 

7. Mr. Fancher testifies that he is the Vice President of C.M. Buck and 1 
Associates, and has worked there since 1983. (Declaration of Karl Fancher 2 
(“Fancher Decl.”), Exh. 1057, ¶ 1.) 3 
8. Mr. Fancher testifies that in early 2000, Mr. Mark called him and told 4 
him that he was looking for someone to assemble and manufacture a pneumatic 5 
logic circuit console for a breast biopsy device. (Fancher Decl., Exh. 1057, ¶ 6.) 6 
9. Mr. Fancher testifies that because his company did not have the 7 
technical capability to build a pneumatic logic circuit console, he referred Mr. 8 
Mark to Mr. Schwindt of Air Systems Engineering (“ASE”). (Fancher Decl., Exh. 9 
1057, ¶ 7.) 10 
10. Mr. Mark and Mr. Schwindt agree that they first met on 16 March 11 
2000 to discuss a breast biopsy device. (Declaration of Jeffrey R. Schwindt, 21 12 
August 2008 (“Schwindt Decl.”), Exh. 2018, ¶ 13; Mark Decl., Exh. 1054, ¶ 19; 13 
Miller Decl., Exh. 2055, ¶ 18.) 14 
11. Mr. Miller and Mr. Mark testify that Mr. Miller was also at the 15 
meeting on 16 March 2000. (Mark Decl., Exh. 1054, at ¶ 20; Miller Decl., Exh. 16 
1055, ¶ 18.) 17 
12. Mr. Schwindt testifies that Mr. Mark discussed a concept for a 18 
handheld breast biopsy device at the meeting on 16 March 2000. (Schwindt Decl., 19 
Exh. 2018, ¶ 13.) 20 
13. Mr. Miller and Mr. Mark testify that Mr. Mark described the breast 21 
biopsy device, including the sequence of operations needed for the pneumatic 22 
control system at the meeting on 16 March 2000. (Mark Decl., Exh. 1054, ¶20; 23 
Miller Decl., Exh. 1055, ¶ 19.) 24 
14. Mr. Miller and Mr. Mark testify that they showed the prototype device 25 
they had constructed to Mr. Schwindt and asked him to build a pneumatic circuit to 26 
control it. (Mark Decl., Exh. 1054, ¶20; Miller Decl., Exh. 1055, ¶ 19.) 27 
8 

15. Mr. Schwindt testifies that he saw a prototype of a biopsy device that 1 
was made by personnel of Promex from the housing of a Maglite flashlight and 2 
included an air cylinder and battery powered electric motor with an offset gear 3 
drive to spin an inner cannula. (Schwindt Decl., Exh. 2018, ¶ 18.) 4 
16. Mr. Schwindt testifies that he suggested that electric or pneumatic 5 
controls were options for the device that Mr. Mark proposed. (Schwindt Decl., 6 
Exh. 2018, ¶ 14.) 7 
17. Mr. Schwindt testifies that Mr. Mark “was hoping I’d come up with 8 
some kind of a – of a pneumatic system to do – to operate the device.” (Schwindt 9 
Dep., Exh. 1049, at 53:20-23.) 10 
18. Mr. Schwindt testifies that he understood that neither Mr. Miller nor 11 
Mr. Mark had any experience with pneumatic controls or air motors. (Schwindt 12 
Decl., Exh. 2018, at ¶ 22.) 13 
19. Mr. Schwindt testifies that after the initial meeting with Mr. Miller 14 
and Mr. Mark, Mr. Schwindt produced a flowchart describing a sequence of 15 
operations using pneumatic timers to step the handheld biopsy device through a 16 
cycle. (Schwindt Decl., Exh. 2018, ¶ 17; flowchart, Exh. 2019.) 17 
20. Mr. Schwindt testifies that he did not design any of the individual 18 
components of the pneumatic control circuit himself. (Schwindt Deposition, 19 
5 September 2012 (“Schwindt Dep.”), Exh. 1049, at 64:12-65:23; 67:17-68:6.) 20 
21. Mr. Schwindt testifies that he built a prototype of the biopsy device 21 
using commercially available pneumatic components that were “generally 22 
considered in the industry to be building block logic components, and are often 23 
used to create specific sequences similar to the use of individual components in the 24 
design and development of electrical circuits.” (Schwindt Decl., Exh. 2018, ¶¶ 27-25 
28.) 26 
9 

22. Mr. Schwindt testifies that he made circuit diagrams for the hydraulic 1 
system of the biopsy device. (Schwindt Decl., Exh. 2018, ¶ 16-17 and 35- 37; Exh. 2 
2019, 2020, 2023, 2024, 2033, and 2034.) 3 
23. John P. Hancock is a named inventor on the Miller ‘824 patent and 4 
testifies that he was a manufacturing engineer at Promex beginning in 1998. 5 
(Declaration of John P. Hancock (“Hancock Decl.”), Exh. 2028, ¶¶ 3 and 4.) 6 
24. Mr. Hancock testifies that “Promex,” meaning the personnel at 7 
Promex, wanted the biopsy system they were developing in 2000 to be a pneumatic 8 
system with a pneumatic control system. (Hancock Decl., Exh. 2028, ¶¶ 25 and 9 
26.) 10 
25. Mr. Hancock testifies that he could not have “done an entire 11 
pneumatic circuit as was needed” and that another engineer at Promex, Dan 12 
Ireland, was also incapable of creating an entire pneumatic circuit. (Hancock 13 
Decl., Exh. 2028, ¶¶ 28 and 29.) 14 
26. Mr. Hancock testifies that “[n]o one at Promex could have created the 15 
pneumatic circuit that was shown in Figures 10 and 11” of the Miller ‘824 patent. 16 
(Hancock Decl., Exh. 2028, ¶ 37.) 17 
27. Richard M. Wollard, Sr. testifies that he worked on a contract basis at 18 
Promex beginning in March 2000 and with Suros Surgical Systems in 19 
approximately March 2001. (Declaration of Richard M. Wollard, Sr., undated 20 
(“Wollard Decl.”), Exh. 2030, ¶¶ 8-9.) 21 
28. Mr. Wollard testifies that he worked on a prototype of the breast 22 
biopsy device in the summer of 2000 and that he knew of Mr. Schmidt’s work on 23 
the “air logic system” for the device. (Wollard Decl., Exh. 2030, ¶¶ 10, 11, and 24 
14.) 25 
10 

29. Mr. Wollard testifies that “Mike Miller and Joe Mark knew what the 1 
air logic system needed to do, but they depended on Jeff Schwindt’s expertise to 2 
create it.” (Wollard Decl., Exh. 2030, ¶ 16.) 3 
30. Mr. Wollard testifies that Mr. Schwindt was the “sole architect of the 4 
air logic system,” which Mr. Wollard considers to be a critical component of the 5 
breast biopsy device. (Wollard Decl., Exh. 2030, ¶¶ 15 and 17.) 6 
31. Jeffrey W. Stark testifies that he is a founder of JWS Machine, a “job 7 
shop/machine shop” and was contacted by Mr. Schwindt about creating “an air 8 
manifold and a pinch valve that could be used in the pneumatic circuit that 9 
Schwindt had brought to us.” (Declaration of Jeffery W. Stark (“Stark Decl.”), 10 
Exh. 2029, ¶¶ 3 and 6-9.) 11 
32. Miller relies on the testimony of Thomas J. Labus. (Declaration of 12 
Thomas J. Labus, 12 October 2012 (“Labus Decl.”), Exh. 1056.) Mr. Labus 13 
testifies that he was a Professor of Mechanical Engineering at the Milwaukee 14 
School of Engineering from 1991 to 2012, when he became a Professor Emeritus. 15 
(Id. ¶¶ 11-12.) He testifies further that he obtained a B.S. degree in Aeronautical 16 
Engineering from Purdue University in 1968 and a M.S. degree in Theoretical and 17 
Applied Mechanics from the University of Illinois in 1971 and that he undertook 18 
further studies, including mechanical engineering with an emphasis on high-19 
pressure fluid jet systems at the University of Wisconsin-Milwaukee. (Id. ¶ 4.) 20 
Mr. Labus testifies that he held research engineer positions from 1968 to 1985 that 21 
involved research, design, and development of pneumatic and hydraulic systems. 22 
(Id., ¶¶ 5-9.) Mr. Labus testifies that he has authored or co-authored 48 papers, 23 
most of which concern hydraulics, pneumatics, and high-pressure water jetting, 24 
and is a reviewer of a journal about dynamic systems and controls. (Id., ¶ 13.) Mr. 25 
Labus is qualified to testify about pneumatic systems. 26 
11 

33. Mr. Labus testifies that in 2000 it took only ordinary skill in 1 
pneumatics to build most pneumatic logic circuits. (Labus Decl., Exh. 1056, ¶ 17.) 2 
34. Mr. Labus testifies that, based on Mr. Schwindt’s statements in cross-3 
examination, he appears to have followed standard practice in building a 4 
pneumatic control system for the biopsy device in 2000, citing to a treatise (Exh. 5 
1041) on the ways to establish the objectives of a control system,. (Labus Decl., 6 
Exh. 1056, ¶¶ 19-20, citing Exh. 1049 at 64:12-65:1.) 7 
35. Mr. Labus testifies that nothing in the procedures used or flowcharts 8 
prepared by Mr. Schwindt shows anything more than ordinary skill. (Labus Decl., 9 
Exh. 1056, ¶ 22.) 10 
36. Mr. Labus testifies that an engineer of ordinary skill, given the 11 
functional requirements of the system, would easily be able to draw the flowcharts 12 
provided by Mr. Schwindt and that doing so would not be inventive. (Labus Decl., 13 
Exh. 1056, ¶ 22.) 14 
37. Mr. Labus testifies that building a pneumatic control system to meet 15 
the functional requirements of the Mr. Schwindt’s flowcharts would require only 16 
standard parts combined in a routine and predictable way. (Labus Decl., Exh. 17 
1056, ¶ 24.) 18 
38. Mr. Labus testifies that 19 
The reciprocal air cylinder and vacuum generator would each have a 20 
pneumatic valve that allowed them to be controlled. The footswitch 21 
would connect to a pneumatic valve to allow depression of the 22 
footswitch to control other parts of the system. The system would 23 
also have a timer to control the advancement of the inner cannula, and 24 
logic to cause the air cylinder to cycle while the footswitch was 25 
depressed. Finally, these pneumatic valves would be connected using 26 
standard pneumatic tubing, configured in a routine manner. Although 27 
more than one possible circuit configuration of the circuit exists, the 28 
total number is limited by the specific functional requirements of the 29 
system. In other words, form would follow function. 30 
12 

1 
(Labus Decl., Exh. 1056, ¶ 24.) 2 
3 
39. Mr. Labus testifies that “[t]o a person of ordinary skill, using off-the-4 
shelf parts to make a relatively simple pneumatic circuit to meet well-defined 5 
specifications would have been straightforward. Mr. Schwindt did not create 6 
anything novel in assembling the first pneumatic logic circuit.” (Labus Decl., Exh. 7 
1056, ¶ 26.) 8 
40. Mr. Labus testifies: 9 
In October 2000, Schwindt drew several pneumatic circuit schematics 10 
that used only off-the-shelf components. (See Exhibit 2018, Schwindt 11 
Decl. ¶¶ 36-37, 40.) The functional needs of Mr. Mark and Mr. Miller 12 
governed which components were used—form followed function. 13 
Such schematics were routine. Moreover, the particular circuits here 14 
are relatively simple and contain no unique components, features, or 15 
logic. There is nothing inventive in these schematic drawings, and 16 
only ordinary skill would have been required to construct these 17 
circuits to meet the functional requirements of Mr. Mark and Mr. 18 
Miller. 19 
20 
(Labus Decl., Exh. 1056, ¶ 31.) 21 
41. Mr. Labus testifies that the circuit depicted in Mr. Schwindt’s 22 
drawings is only one possible configuration that would have satisfied Mr. Mark’s 23 
and Mr. Miller’s needs, and that other possible configurations could have met the 24 
same needs. According to Mr. Labus, there is nothing unique about Mr. 25 
Schwindt’s particular configuration. Mr. Labus gives the example of substituting a 26 
sequence valve and a bypass check valve for the pressure switch in Mr. Schwindt’s 27 
configuration. (Labus Decl., Exh. 1056, ¶ 32.) 28 
42. Mr. Labus cites to a pneumatic logic circuit drawing with pneumatic 29 
system connecting a pneumatic rotary motor and a pneumatic reciprocating motor 30 
to a source of pressurized fluid that was published in 1979. (Labus Decl., Exh. 31 
13 

1056, ¶ 28, citing to Rohner, Fluid Power Logic Circuit Design: Analysis, Design 1 
Methods and Worked Examples 180-183 (1979) (Exh. 1043, “Rohner”).) 2 
43. Mr. Labus testifies that the type of pneumatic logic circuit described 3 
in Rohner had been used to power medical devices prior to 2000, citing to a patent 4 
application published in 1999 (Exh. 1044). (Labus Decl., Exh. 1056, ¶ 29.) 5 
6 
Analysis 7 
Schwindt argues that Mr. Schwindt “is the inventor of the hydraulic circuit 8 
of Count I,” explaining that the circuit includes the count elements of “at least the 9 
first hydraulic rotary motor and the hydraulic system connecting the first and 10 
second hydraulic motors to a source of pressurized fluid.” (Schwindt Motion 2, 11 
Paper 159, at 8:19-9:10.) According to Schwindt, the other named inventors were 12 
incapable of developing a pneumatic system and required Mr. Schwindt’s help. 13 
(Id. at 14:1-16.) 14 
Schwindt argues that Mr. Schwindt thought of a biopsy device or a hydraulic 15 
circuit for a biopsy device after the initial meeting on 16 March 2000 with Mr. 16 
Mark and Mr. Miller. (Schwindt Motion 2, Paper 159, at 12:1-10.) The record 17 
shows, though, that before the 16 March 2000 meeting, Mr. Miller and Mr. Mark 18 
had thought of a hydraulic system. (See Miller Opp., Paper 161, at 14:3-15:11.) 19 
Mr. Fancher’s testimony (FF3s 7-10; Fancher Decl., Exh. 1057, ¶¶ 1, 6, and 7) 20 
corroborates Mr. Miller’s and Mr. Mark’s testimony (FF 2; Mark Decl., Exh. 1054, 21 
¶ 9; Miller Decl., Exh. 1055, ¶ 9) that they had thought of a pneumatic system 22 
before meeting Mr. Schwindt. Mr. Mark’s undisputed experience with pneumatic 23 
and hydraulic systems from his previous employment (FF 3; Mark Decl., Exh. 24 
1054, ¶ 13) also supports Mr. Miller and Mr. Mark’s testimony of an earlier 25 

3 “FF” indicates Finding of Fact.
14 

conception. Thus, the evidence, when viewed as a whole, indicates that Mr. Miller 1 
and Mr. Mark conceived of hydraulic control of the tissue cutting device 2 
independently of Mr. Schwindt. 3 
Miller does not dispute that Mr. Schwindt designed a hydraulic system after 4 
the 16 March 2000 meeting. Indeed, Miller agrees that Mr. Schwindt was 5 
contracted to develop it. (Miller Opp. 2, Paper 161, at 4:17-21.) Miller admits, 6 
too, that Mr. Schwindt regularly provided drawings of pneumatic systems to 7 
Promex while he was working on the project. (Miller Opp. 2, Paper 161, at 5:16-8 
19.) Nor does Miller dispute that these drawings were used in the Miller ‘824 9 
patent. (See Miller Opposition 2, Paper 161, at 7:7-10.) 10 
The issue of inventorship, then, turns on whether Mr. Schwindt’s 11 
contribution of designing the hydraulic circuit entitles him to be named as an 12 
inventor. (Schwindt Reply 2, paper 175, at 4:13-15.) If Mr. Schwindt merely 13 
assisted Mr. Mark and Mr. Miller after they conceived of the device he is not 14 
entitled to be an inventor. See Sewall, 21 F.3d at 416-17. One who simply 15 
provides the inventor with well-known principles or explains the state of the art 16 
without ever having “a firm and definite idea” of the claimed combination as a 17 
whole does not qualify as a joint inventor. Ethicon, Inc. v. U.S. Surgical Corp., 18 
135 F.3d 1456, 1460 (Fed. Cir. 1998). 19 
Schwindt argues that the inventors named on the ‘824 Miller patent were 20 
incapable of designing or building a hydraulic control system, based on the 21 
testimony of Mr. Hancock and Mr. Wollard. (See Schwindt Motion 2, Paper 159, 22 
at 12:19-20, 14:1-9, 21:13-15; FFs 17-18.) According to Schwindt, Mr. Miller and 23 
Mr. Mark asked Mr. Schwindt to design the hydraulic system because they could 24 
not. (Schwindt Motion 2, Paper 159, at 14:10-11; FFs 23-28.) We are not 25 
persuaded, though, that even if Mr. Miller and Mr. Mark lacked sufficient 26 
15 

knowledge and skills to design and manufacture hydraulic systems and hydraulic 1 
motors, Mr. Schwindt’s contribution entitles him to be named as an inventor. 2 
First, according to Mr. Labus, Miller’s witness, it would have required no 3 
more than the ordinary skill in the art at time of filing to make the flowchart and 4 
circuit diagrams attributed to Mr. Schwindt. (FFs 33-36; Labus Decl., Exh. 1056, 5 
¶¶ 17, 19, 20, and 22.) Specifically, Mr. Labus testifies that the functional needs of 6 
the device described by Mr. Mark and Mr. Miller governed which components 7 
were used and that the particular circuits allegedly developed by Mr. Schwindt 8 
were relatively simple, containing no unique components, features, or logic. (FFs 9 
37-40; Labus Decl., Exh. 1056, ¶¶ 24, 26, and 31.) Mr. Labus testifies that there is 10 
nothing inventive or unique about the schematic drawings allegedly made by Mr. 11 
Schwindt and that other possible configurations could have met the same needs. 12 
(FF 41; Labus Decl., Exh. 1056, ¶ 32.) 13 
For example, in contrast to Schwindt’s argument that Mr. Schwindt must 14 
have conceived of pneumatic rotation in the claimed motors (“hydraulic rotary 15 
motor”) because the Promex prototype lacked rotation (Schwindt Reply 2, Paper 16 
175, at 6:16-23, citing Deposition of Michael Miller, 12 November 2012, Exh. 17 
2063, 82:23-83:4, 86:9-16, and 127:25-128:8), Mr. Labus testifies that pneumatic 18 
systems of reciprocating motors connected to rotary motors were known in the art 19 
and used in medical devices before 2000. (FFs 42 and 43; Labus Decl., Exh. 1056, 20 
¶¶ 28 and 29.) 21 
Schwindt casts doubt on Mr. Labus’s overall conclusions (Schwindt Reply 22 
2, Paper 175, at 8:6-7), but does not provide evidence to contradict him. Instead, 23 
Schwindt admits that Mr. Schwindt used parts that were widely recognized to be 24 
building blocks for pneumatic circuits to make a circuit within the scope of the 25 
Counts. (Schwindt Motion 2, Paper 159, at 15:8-13.) This fact supports Mr. 26 
Labus’s testimony that designing and building a hydraulic circuit was within the 27 
16 

skill of ordinary artisans in 2000 and could have been achieved with readily 1 
available parts. 2 
These facts are in contrast to those of Ethicon, on which Schwindt relies. 3 
(Schwindt Reply 2, Paper 175, 8:10-17.) In Ethicon, there was no evidence 4 
presented that the unnamed inventor’s contribution was simply a reduction to 5 
practice of the broader concept conceived by the named inventors. See Ethicon, 6 
135 F.3d at 1463-64. 7 
Similarly, Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 8 
(Fed. Cir. 2004), on which Schwindt also relies (Schwindt Reply 2, Paper 175, at 9 
8:18-9:2) makes it clear that a significant contribution entitling one to be named as 10 
an inventor “requires more than merely exercising ordinary skill in the art-‘a 11 
person will not be a co-inventor if he or she does no more than explain to the real 12 
inventors concepts that are well known [in] the current state of the art.’” Id. at 13 
1377, citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). 14 
Where one does more than simply provide well-known principles or explain the 15 
state of the art, he or she may contribute to a conception if the contribution is 16 
significant. See Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). But, 17 
if one only provides what the ordinarily skilled artisan could provide, the 18 
contribution does not rise to the level of inventorship, regardless of how much 19 
information was provided. 20 
Thus, though Schwindt points to the drawings and parts lists attributed to 21 
Mr. Schwindt as evidence of his conception of the hydraulic circuit (Schwindt 22 
Motion 2, Paper 159, at 15:22-20:12; FF 22; Schwindt Decl., Exh. 2018, ¶¶ 16-17 23 
and 35-37, Exhs. 2020, 2023, 2024, 2033, and 2034), Schwindt does not direct us 24 
to evidence to rebut Mr. Labus’s testimony that others of ordinary skill in the art 25 
would not have been able to provide the same thing, even if the named inventors 26 
could not. (See FF 40.) “An inventor ‘may use the services, ideas, and aid of 27 
17 

others in the process of perfecting his invention without losing his right to a 1 
patent.’ ” Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 2 
(Fed.Cir.1985) (quoting Hobbs v. U.S. Atomic Energy Comm'n., 451 F.2d 849, 864 3 
(5th Cir.1971)). 4 
We also note that the details in the drawings are not recited in Count 1 or 5 
Count 2. (Miller Opposition, Paper 161, at 15:12-21.) Schwindt does not direct us 6 
to evidence showing that these diagrams represent the only embodiments of the 7 
devices recited in Counts 1 and 2, even if some of them are similar to figures in the 8 
Miller ‘824 patent. Instead, Mr. Schwindt admitted that there were “a hundred” 9 
ways to build the hydraulic system (Schwindt Deposition, Exh. 1049, 63:12-16 ) 10 
and Mr. Labus, Miller’s witness, agrees (Labus Decl., Exh. 1056, ¶ 32). (Miller 11 
Opposition, Paper 161, at 15:22-16:9.) Thus, even if Mr. Schwindt created the 12 
figures in the Miller ‘824 patent, he is not necessarily an inventor of the device as 13 
claimed. See Ethicon, 135 F.3d at 1460 (“depending on the scope of a patent’s 14 
claims, one of ordinary skill in the art who simply reduced the inventor’s idea to 15 
practice is not necessarily a joint inventor, even if the specification discloses that 16 
embodiment to satisfy the best mode requirement.”). 17 
Schwindt also argues Mr. Schwindt was the first to conceive of the “manual 18 
switch,” the “first and second pressure activated switches,” and the “oscillating 19 
switch.” (Schwindt Motion 2, Paper159, at 25:1-26:2; Schwindt Reply 2, Paper 20 
175, at 12:5-10.) Although Schwindt characterizes these elements as part of the 21 
device of Count 1, they are not recited in Count 1. These elements are recited in 22 
dependent claims 34 and 37. Schwindt never argued that this subject matter 23 
required a separate count. (See Redeclaration – Bd.R. 203(c), Paper 39, at 1:2-3, 24 
noting that the parties agreed to substitute all of the original counts, which recited 25 
each of the 37 claims independently, for the current two counts.) 26 
18 

Count 2 1 
Schwindt argues that Mr. Schwindt conceived of the rotary motor and 2 
tubular axle of Count 24. (See Schwindt Motion 2, Paper 159, 28:10-30:7.) 3 
Mr. Schwindt testifies only that he recommended a “vane type” air motor 4 
and that he recommended a specific placement, which was in contrast to the offset 5 
placement in the Promex prototype he had viewed. (Schwindt Decl., Exh. 2018, 6 
¶¶ 22 and 23.) These specific features of the rotary motor, though, are not recited 7 
in either Count 1 or Count 2.5 8 
Schwindt points to the Declaration of Jeffrey W. Stark (Exh. 2029, ¶¶ 6-9), a 9 
purchase order for a rotary motor (Exh. 2040), and the “Rose-Hulman Ventures 10 
report” (Exh. 2050), as corroboration of Mr. Schwindt’s testimony. (See Schwindt 11 
Motion 2, Paper 159, 29:8-30:2; SMF6s 81-83) 12 
We are not persuaded that any of this evidence would be sufficient to 13 
corroborate Mr. Schwindt’s testimony, even if his testimony was directed to the 14 
claimed rotary motor. For example, Mr. Stark testifies about a meeting between 15 
himself and Mr. Schwindt in the summer of 2000 to discuss an air manifold and a 16 
pinch valve that could be used in a pneumatic circuit (FF 31, Stark Decl. Exh. 17 
2029, ¶¶ 6-9.) Schwindt does not provide sufficient explanation of how these 18 
features demonstrate conception of the claimed rotary motor. Furthermore, Mr. 19 
Stark does not testify that he had firsthand knowledge of Mr. Schwindt’s role in the 20 
Promex project or the roles of the other named inventors and the interactions 21 
between them. Thus, we are not persuaded that Mr. Stark had sufficient 22 

4 The “first hydraulic rotary motor” recited in Count 2 has antecedent support in
Claim 1, which is Count 1. Though Schwindt only argues that this element was
invented by Mr. Schwindt in regard to Count 2, the arguments should also apply to
Count 1.
5 We do not find the element of a “vane type” motor in any of the involved claims.   
6 “SMF” indicates Schwindt Material Fact.
19 

knowledge of the contributions of any of the named inventors or of Mr. Schwindt 1 
to support Schwindt’s arguments. 2 
Schwindt also relies on a copy of a purchase order for an air motor dated 3 
7 June 2000 (Exh. 2040) and a copy of a consulting report by Rose-Hulman 4 
Ventures regarding air motors for Suros (Exh. 2050). None of this evidence 5 
discusses Mr. Schwindt’s role in developing the claimed air motor. That Mr. 6 
Schwindt ordered an air motor does not indicate that he conceived of it in the 7 
claimed tissue cutter. Similarly, even if the Rose Hulman report confirms the 8 
superiority of a rotary motor (Schwindt Motion 2, Paper 159, at 29:13-14), 9 
Schwindt does not point to any portion of the report, and we do not find any, which 10 
discusses Mr. Scwhindt’s role in conception of the rotary motor. 11 
Thus, the evidence that Schwindt presents is not persuasive that Mr. 12 
Schwindt conceived of the claimed rotary motor. Schwindt has not met its burden 13 
regarding this aspect of the device recited in Counts 1 or 2. 14 
Schwindt does not offer separate evidence regarding the “tubular axle” 15 
recited in Count 2. Thus, we are not persuaded that Mr. Schwindt conceived of 16 
this element either. 17 
18 
III. Derivation 19 
Schwindt argues that Miller derived the hydraulic circuit, tubular axle, and 20 
rotary motor from Mr. Schwindt. (Schwindt Motion 2, Paper 159, at 30-32.) To 21 
prove derivation in an interference proceeding, the person attacking the patent 22 
must establish prior conception of the claimed subject matter and communication 23 
of the conception to the adverse claimant. Price v. Symsek, 988 F.2d 1187, 1190 24 
(Fed. Cir. 1993). Because the facts on the record before us do not support 25 
Schwindt’s argument that Mr. Schwindt conceived of the subject matter of either 26 
20 

Count 1 or Count 2 before the inventors named on the Miller ‘824 patent, the 1 
named inventors could not have derived the subject matter from Mr. Schwindt. 2 
3 
IV. Conclusion 4 
Because we conclude that Mr. Schwindt is not entitled to be named as an 5 
inventor on the Miller ‘824 patent, or that named inventors derived the invention 6 
form Mr. Schwindt, Schwindt Motion 2 is denied. 7 
In addition, Miller Miscellaneous Motion 3 to exclude evidence (Paper 172) 8 
is determined to be moot because even when we consider the evidence that Miller 9 
seeks to exclude, we deny Schwindt Motion 2. 10 
Judgment will be entered separately. 11 

21 

cc (via electronic transmission):
Attorney for Schwindt:
David Oskin, Esq.
Caliber IP, LLC
david@caliberip.com

Robert Schulman, Esq.
Hunton and Williams
rschulman@hunton.com

Attorney for Miller:
David L. Cavanaugh, Esq.
Jane M. Love, Ph.D., Esq.
Wilmer, Cutler, Pickering, Hale and Dorr, LLP
David.Cavanaugh@wilmerhale.com
Jane.Love@wimerhale.com