Silvav.Franson et al.

Patent Trial and Appeal Board

May 16, 2017

11054476 (P.T.A.B. May. 16, 2017)

BoxInterferences@uspto.gov Filed: May 16, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Tyco Fire Products, LP
(Inventor: Manuel R. Silva, Jr.)

Junior Party
(Patent Application 13/793,392),

v.

Viking Corporation
(Inventors: Scott T. Franson and Andrew T. Thompson)

Senior Party
(Patent 8,636,075).

Patent Interference No. 106,056 (DK)

JUDGMENT
37 C.F.R. § 41.127(a)

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

KATZ, Administrative Patent Judge.
In light of the Decision on Priority (Paper 123), determining that Junior 1
Party, Tyco Fire Products, LP, did not persuade us its inventor either conceived of 2
or reduced to practice an embodiment within the scope of the Count before the 3
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benefit date accorded to Senior Party, Viking Corporation, we enter judgment 1
against Junior Party. 2
It is ORDERED that Junior Party’s application 13/793,392, claims 36-59 be 3
FINALLY REFUSED. 4
FURTHER ORDERED that a copy of this judgment be entered into the 5
administrative record of application 13/793,392 and patent 8,636,075; 6
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) 7
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; and 8
FURTHER ORDERED that a party seeking judicial review timely serve 9
notice on the Director of the United States Patent and Trademark Office; 37 C.F.R. 10
§§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to Biogen 11
Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 12
(Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated for 13
interference proceedings declared after September 15, 2012). 14

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cc (via e-mail):

Attorney for Junior Party Tyco:
John P. Isacson
David W. Laub
PERKINS COIE LLP
dlaub@perkinscoie.com

Attorney for Senior Party Viking:

Ryan W. Massey
George D. Moustakas
HARNESS DICKEY
rwmassey@hdp.com
gmousakas@Hdp.com

W. Todd Baker
OBLON, McCLELLAND, MAIER & NEUSTADT, P.C.
baker_ptab@oblon.com
BoxInterferences@uspto.gov Filed: May 16, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Tyco Fire Products, LP
(Inventor: Manuel R. Silva, Jr.)

Junior Party
(Patent Application 13/793,392),

v.

Viking Corporation
(Inventors: Scott T. Franson and Andrew T. Thompson)

Senior Party
(Patent 8,636,075).

Patent Interference No. 106,056 (DK)

DECISION ON PRIORITY
37 C.F.R. § 41.125(a)

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

KATZ, Administrative Patent Judge.

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I. Introduction 1
A. 2
Junior Party Tyco Fire Products, LP (“Tyco”) is involved in this proceeding 3
based on its patent application 13/793,392 (“the ’392 application”). All of the 4
claims of Tyco’s involved application (claims 36-59) were designated as 5
corresponding to the Count. (See Declaration, Paper 1, at 5.) 6
Senior Party Viking Corporation (“Viking”) is involved in the proceeding 7
based on its patent 8,636,075 (“the ’075 patent”). All of the claims of Viking’s 8
involved application (claims 1-94) were designated as corresponding to the Count. 9
(See Declaration, Paper 1, at 5.) 10
Upon declaration, Tyco was accorded benefit of the filing date of three 11
earlier applications as constructive reductions to practice of an embodiment of the 12
Count. (See Declaration, Paper 1, at 5.) Specifically, Tyco can rely on the filing 13
date of the following applications: 14
application 13/529,033, filed 21 June 2012, 15
application 12/436,290, filed 6 May 2009, and 16
application 11/000,129, filed 1 December 2004. 17
(See id.) Tyco filed a Priority Statement asserting earlier conception by 18
22 March 2002 and actual reduction to practice by 6 November 2002. (See Tyco 19
Priority Statement, Paper 20.) 20
Viking was accorded benefit of the filing date, 9 February 2004, of its earlier 21
application 60/542,901 as a constructive reduction to practice of the Count. (See 22
Declaration, Paper 1, at 5.) In its priority statement Viking asserted conception by 23
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25 September 2002 and an actual reduction to practice by 26 September 2002. 1
(See Viking Corporation’s 37 CFR 41.202 Notice of Basis of Relief, Paper 21.) 2
B. 3
Both parties were authorized to file motions arguing for priority under 4
35 U.S.C. § 102(g)(1).1 (See Order, Paper 19, at 3 and 4.) These motions are 5
currently before us. Although Viking was authorized to file a motion arguing that 6
some of its involved patent claims should not have been designated as 7
corresponding to the Count (see id. at 4), the motion was not filed. Thus, the only 8
issue before us is priority of invention. 9
Both parties asked for oral argument. (See Papers 121 and 122). After 10
reviewing the parties’ briefs, no oral argument was considered to be necessary. As 11
is our discretion, none was scheduled. See 37 C.F.R. § 41.124 (“(c) If a request for 12
oral argument is granted . . . .”). 13
We review the parties’ motions in the order that provides for a just, speedy, 14
and inexpensive resolution of the proceeding. 37 C.F.R. §§ 41.1(b) and 125(a). 15
We determine that Tyco’s Priority Motion fails to prove conception or actual 16
reduction to practice earlier than Viking’s accorded benefit date. Therefore, we 17
need not reach Viking’s Priority Motion to determine that Viking prevails under 18
35 U.S.C. § 102(g)(1). 19

1 Patent interferences continue under the relevant statutes in effect on
15 March 2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
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C. 1
The parties claim dry sprinkler assemblies, which can be used at freezing 2
temperatures because water is not present in the piping until the system operates. 3
These systems have a thermal sensitive trigger, such as a glass bulb. (See Tyco 4
’392 appl., Exh. 1032, at p. 222, ¶ 36; Viking ’075 patent, Exh. 2030, at 4:41-42.) 5
At low temperatures the glass bulb stays intact and a seal is created in the piping to 6
prevent water from entering the sprinkler. At high temperatures, the glass bulb 7
breaks, releasing the seal and allowing water to flow. (See Tyco ’392 appl., 8
Exh. 1032, at p. 22, ¶ 37; Viking ’075 patent, Exh. 2030, at 4:30-33.) 9
Figures 1A and 1D of Tyco’s involved application demonstrate the action of 10
the trigger in the parties’ sprinkler systems. Figures 1A and 1D are reproduced 11
below. 12

2 Page numbers of Exhibit 1032 reflect the page numbers of the exhibit, not the
underlying document.
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Figures 1A and 1D depict two sprinkler assemblies, wherein a trigger (61) is intact 1
in Figure 1A and is broken in Figure 1D. Breaking of the trigger (61) in Figure 1D 2
allows spring (55) to assist in separating the diverter assembly (40) from the inlet 3
fitting (16), allowing a fluid (F), such as water, to flow through inlet (12) to outlet 4
(14). (See Tyco ’392 appl., Exh. 1032, at p. 29, ¶ 50.) Viking’s involved patent 5
provides embodiments with similar mechanisms. (See Viking ’075 patent, 6
Exh. 2030, at 4:30-40.) As explained in Viking’s ’075 patent, an “actuator 7
assembly,” controls the flow of fluid into the sprinkler. (See ’075 patent, Exh.2030, 8
at 3:55-57.) 9
The Count, which sets the scope of admissible proofs on priority (see 10
37 C.F.R. § 41.201), recites: 11
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A dry sprinkler assembly comprising: 1
a housing having an inlet end, an outlet end, and a central 2
longitudinal axis, and said inlet end being adapted for mounting to a 3
fluid supply pipe and having an inlet port for fluid communication 4
with the fluid supply pipe; 5
a sprinkler head assembly having a sprinkler head and a trigger 6
assembly; 7
an actuator assembly, said actuator assembly having a fluid 8
flow passage extending from said inlet end to said outlet end and 9
sealing said inlet port; 10
said sprinkler head being in fluid communication with said fluid 11
flow passage and having an outlet opening; 12
said trigger assembly substantially closing said outlet opening 13
and releasing said closure when a fire condition is present; and said 14
actuator assembly being operatively coupled to said trigger assembly 15
such that said actuator assembly releases said sealing of said inlet port 16
in response to said trigger assembly releasing said closure at said 17
outlet opening, and said actuator assembly moving in a linear path 18
substantially parallel with said central longitudinal axis when 19
releasing said sealing of said inlet port; and 20
wherein said actuator assembly comprises a sealing 21
subassembly, said sealing subassembly comprising a spring plate, said 22
spring plate being axially compressed against an axial end surface of 23
said inlet end surrounding said inlet port, said axial end surface being 24
perpendicular to said central longitudinal axis; and 25
wherein said sealing subassembly includes a projecting boss 26
extending upstream of said spring plate. 27
28
(Declaration, Paper 1, at 4 (emphasis added).) According to the Viking 29
’075 patent, the actuator is an inventive component of the claimed sprinkler 30
assembly because, as specified, it “reduc[es] the drawbacks associated with prior 31
art dry sprinklers in which the internal actuating mechanisms may often interfere 32
with and impede the flow of water suppressant to the sprinkler head,” while 33
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maintaining the flow parameters (K-factor) of the sprinkler. (’075 patent, 1
Exh. 2030, at 3:57-61.) 2
Both parties acknowledge that prior art sprinklers had an actuator with a 3
rotatable seal, which would move into a different position to allow fluid flow after 4
activation of the trigger. (See Tyco Motion, Paper 24, at 8:3-10 (identifying one 5
modification of the prior sprinkler as “[p]reventing the plug from rotating relative 6
to the sprinkler”); see Viking Motion, Paper 55, at 3:4-18.) As an example of this 7
feature in prior sprinkler assemblies, Figure 9 of Viking Exhibit 1006 is 8
reproduced below. 9

Figure 9 depicts a prior art sprinkler system wherein “[i]nstead of rotating out of 10
the waterway, the water flow creates a hydraulic balance in the Belleville seal and 11
supporting structure, preventing the seal from clearing the waterway as intended.” 12
(Golinveaux, Exh. 1006, at 12.) The sprinkler assembly of the Count differs from 13
such prior assemblies at least by requiring an “actuator assembly [that] moves in a 14
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linear path substantially parallel with said central longitudinal axis when releasing 1
said sealing of said inlet port . . .” 2
The Count also recites other elements, including a sealing subassembly with 3
a spring plate and a projecting boss that extends upstream of the spring plate. 4
5
II. Reduction to Practice 6
A junior party that seeks a determination of priority must demonstrate by a 7
preponderance of the evidence either reduction to practice before the senior party's 8
priority date, or prior conception coupled with reasonable diligence in reducing the 9
invention to practice from a time just prior to the senior party's entry into the field. 10
See Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003); 35 U.S.C. § 102(g). To 11
prevail Tyco must show that a preponderance of the evidence proves its inventor, 12
Manuel J. Silva, either reduced to practice an embodiment of the Count before 13
Viking or that he conceived of an embodiment first and was diligent in reducing it 14
to practice. We begin by reviewing Tyco’s evidence of reduction to practice. 15
A. 16
At the outset, we address Tyco’s argument that the declaration of this 17
interference signifies Tyco has established a prima facie case for entitlement to 18
priority. (Tyco Motion, Paper 24, at 7, n. 1.) According to Tyco, the Declaration 19
“means that Tyco has made a showing that, if unrebutted, is sufficient to support a 20
determination of priority in favor of Tyco.” (Tyco Reply, Paper 120, at 1:11-13.) 21
Tyco asserts that because it was not put under an Order to Show Cause, its Priority 22
Motion cannot be deficient on its face as it contains all the proofs set forth in the 23
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Suggestion. (Id. at 1:14-2:2.) 1
Tyco is wrong. The declaration of an interference means only that, in the 2
opinion of the Director3, a claim of a pending application interferes with a claim of 3
another pending application or an unexpired patent and that a proceeding was 4
deemed appropriate. See 35 U.S.C. § 135(a). The fact of declaration indicates 5
nothing about the sufficiency of a party’s showing under 37 C.F.R. § 202 other 6
than that, after being considered, an interference was deemed appropriate. In 7
addition, no legal determination can be drawn from the lack of an order to show 8
cause. The course of each proceeding is determined by the particular facts and 9
situations present. See 37 C.F.R. § 41.104(a) (“The Board may determine a proper 10
course of conduct in a proceeding for any situation not specifically covered by this 11
part and may enter non-final orders to administer the proceeding.”). 12
Once declared, each party presenting a motion carries the burden of proving 13
it is entitled to the relief sought. See 37 C.F.R. §§ 41.121(b) and 41.208(b)(“To be 14
sufficient, a motion must provide a showing, supported with appropriate evidence, 15
such that, if unrebutted, it would justify the relief sought. The burden of proof is on 16
the movant.”). Tyco’s reasoning that its Priority Motion cannot be deficient 17
because it contains all the proofs set forth in its Suggestion is contrary to the 18
determination that Tyco is the junior party in this proceeding. As the junior party, 19
Tyco carries the presumption that its inventors were the last to invent the 20
interfering subject matter. See 37 C.F.R. § 41.207(a). This designation would be 21

3 “An administrative patent judge declares the patent interference on behalf of the
Director.” 37 C.F.R. § 41.203(b)
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meaningless if Tyco’s Priority Motion could never be deficient on its face because 1
of the evidence it presented in its statement under 37 C.F.R. § 202. In contrast, we 2
review Tyco’s Priority Motion for the sufficiency of the evidence it cites therein in 3
support of the relief requested. 4
B. 5
Tyco argues that Mr. Silva began to make a sprinkler according to his 6
improved design by 19 September 2002 and completed an initial test on 7
29 October 2002, with more testing in November 2002. (Tyco Motion, Paper 24, 8
at 7:5-9:11.) To explain these activities, Tyco relies on Mr. Silva’s testimony. 4 9
Mr. Silva discusses Exhibit 2013, which provides a comparison between a 10
figure reported to depict the prior art Tyco DS-1 (Rev C) sprinkler (the figure is 11
actually a combination of Exhibit 2008 and 2009) next to Figure 1D of Tyco’s 12
claimed sprinkler (Exhibit 2012). (Silva Decl., Exh. 2001, at ¶ 13.) Mr. Silva 13
testifies that the comparison shows “there are some components that are identical 14
in the Rev C sprinkler and the claimed sprinkler’ and that “[t]hese identical 15
components are thus . . . shown to have been in my possession as of 16
March 28, 2002 (Ex. 2008) and April 27, 2002 (Ex. 2009).” (Id.) 17
Whether or not isolated components of a sprinkler assembly were in 18
Mr. Silva’s possession as of a certain date is not necessarily relevant to the issue of 19

4 We note that Mr. Silva presents numerous facts in his declaration that are not
discussed in Tyco’s Motion for Priority. “[A] movant bears a burden to establish
its right to any substantive relief requested in the motion. . . . A motion that, while
complying with applicable procedural requirements, nevertheless fails to make out
a substantive case may be denied on the merits.” (Standing Order ¶ 121.3.)
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whether Mr. Silva reduced the invention to practice by a certain date. Having 1
isolated components in one’s possession is not evidence that one actually modified 2
a product with these components at any specific time. Similarly, a side-by-side 3
comparison between a prior art product and a figure from a patent application 4
without further evidence, does not prove that modifications were actually made to 5
the prior art product by any date before the filing date of the application. 6
Mr. Silva testifies that he made three modifications to Tyco’s prior DS-1 7
(Rev C) sprinkler, including (1) adding a shield to the plug assembly, 8
(2) preventing the plug from rotating relative to the sprinkler, and (3) improving 9
the flow through the inlet by changing the inner surfaces of the inlet. (Silva Decl., 10
Exh. 2001, at ¶ 14; see Tyco Motion, Paper 24, at 7:12-8:10.) 11
Mr. Silva testifies that the first modification, addition of a shield, which is 12
reported to be a type of projecting boss, is depicted in element 30 of Figure 1D of 13
Tyco’s involved ’392 application (Exhibit 2012). (See Silva Decl., Exh. 2001, at 14
¶ 15.) We note that Figure 1D does not include an element 30, although 15
Figures 1A and B of Tyco’s ’392 application do (see Exh. 2011). 16
Mr. Silva testifies that the second modification is reflected in a connector 17
labeled as element 33 in Figure 1B of Tyco’s involved ’392 application 18
(Exhibit 20115). (See Silva Decl., Exh. 2001, at ¶ 16.) According to Mr. Silva, in 19
Tyco’s claimed sprinkler, diverter assembly (40) of Figure 1B is prevented from 20

5 Mr. Silva cites to Exhibit 2012, but that exhibit does not include Figure 1B,
which is provided in Exhibit 2011. (See Silva Decl., Exh. 2001, at ¶ 16.)
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rotating around connector 33 because the mounting portion (34) is fixed to the 1
locator (51) with a connector (33). (Id., citing ’392 appl., Exh. 1032, ¶ 44.) 2
Although Mr. Silva testifies that he undertook “Modification 3” of the 3
Tyco DS-1 (Rev C), he also testifies that “the first two modifications are of 4
primary relevance to my claimed invention in the captioned application, but the 5
third modification is discussed to explain the inventive activities I was undertaking 6
at the time and proved to be the most time consuming.” (Silva Decl., Exh. 2001, at 7
¶ 14.) 8
To support his actual work to make these modifications, Mr. Silva testifies 9
that Exhibit 2007 is a copy of a Work Request Form showing he began to work on 10
an embodiment of his invention on 19 September 2002 by machining inlets. (See 11
Silva Decl., Exh. 2001, at ¶¶ 18 and 19.)) Mr. Silva testifies further that 12
Exhibits 2014-2016 are copies of drawings of his design for the shield of his 13
claimed sprinkler assembly. (Id. at ¶ 19.) 14
Even if these exhibits demonstrate the work Mr. Silva asserts, they do not 15
demonstrate that Mr. Silva made a complete sprinkler assembly as recited in the 16
Count. For example, a request to have inlets machined and drawings of isolated 17
shields does not demonstrate actually making a sprinkler with a “sealing 18
subassembly comprising a spring plate, said spring plate being axially compressed 19
against an axial end surface of said inlet end surrounding said inlet port, said axial 20
end surface being perpendicular to said central longitudinal axis,” as required in 21
the Count. (See Decl., Paper 1, at 4.) Similarly, these exhibits do not demonstrate 22
that Mr. Silva actually made an “actuator assembly [that moves] in a linear path 23
substantially parallel with said central longitudinal axis when releasing said sealing 24
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of said inlet port,” as required in the Count. 1
Mr. Silva also cites to Exhibits 2018-2020 and 2024 as evidence of the 2
assembly and testing of a version of the claimed sprinkler. (Silva Decl., 3
Exh. 2001, at ¶¶ 20-28.) Exhibits 2018, 2019, and 2020 are reported to be copies 4
of worksheets with testing results. Exhibit 2020 is reported to be a summary of 5
testing results. Mr. Silva testifies that the sprinkler used in these tests had a shield 6
as depicted in Exhibits 2015 and 2016, a non-rotating connector, and an inlet as 7
depicted in Exhibit 2014. (Id.) 8
The worksheets shown in Exhibits 2018-2020 and 2024 are not persuasive 9
evidence, by themselves, that Mr. Silva reduced an embodiment of the Count to 10
practice by any specific date. Although Mr. Silva testifies that the sprinklers used 11
to produce the results recorded in these worksheets was Tyco’s claimed sprinkler, 12
he testifies to only three characteristics: a shield, a non-rotating connector, and an 13
inlet. No other details of the sprinkler used in the testing are provided. For 14
example, even though Mr. Silva testifies that the tested sprinkler had a shield, Tyco 15
does not direct us to evidence that the shield was part of a sealing assembly that 16
comprised a spring plate, as required in the Count. Similarly, even though 17
Mr. Silva testifies that the tested sprinkler had a non-rotating connector, Tyco does 18
not direct us to evidence that the connector provided for a movement in a linear 19
path substantially parallel with the central longitudinal axis, as recited in the 20
Count. 21
We are also not persuaded by Exhibits 2018-2020 and 2024 because the only 22
evidence of record that the sprinklers used were an embodiment of the Count is 23
Mr. Silva’s testimony. Because Mr. Silva is the named inventor, his testimony 24
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carries little weight without corroboration. See Medichem, S.A. v. Rolabo, S.L., 1
437 F.3d 1157, 1172 (Fed. Cir. 2006) (finding a lack of corroboration where dated 2
data does not corroborate a claimed process because it did not establish whether 3
the sample that was analyzed was actually produced by that process). The exhibits 4
themselves provide only numeric test results without information about the specific 5
features of the sprinklers. Thus, they do not sufficiently corroborate Mr. Silva’s 6
testimony. Tyco does not provide pictures or other evidence of the actual sprinkler 7
used in these tests because it was reportedly lost. (See Silva Decl., Exh. 2001, at 8
¶ 18, n.1.) 9
Tyco does provide the testimony of three witnesses as corroboration (Don 10
Pounder (Exhibit 2026), James Blackwood (Exhibit 2027), and Jules Degraide 11
(Exhibit 2028)), but none of them testify to specific details of the sprinkler tested 12
as corroboration of Mr. Silva’s testimony. For example, although Mr. Degraide 13
testifies in general about testing sprinkler systems at Tyco (see, e.g., Declaration of 14
Jules Degraide, Exh. 2028, at ¶ 16 and 17) and about the sprinkler prototypes on 15
which work was requested (see id. at ¶¶ 18-21), he does not testify that he had 16
knowledge of the specific sprinklers used in the testing that produced the results 17
shown in Exhibits 2018-2020 or 20204. Mr. Pounder’s and Mr. Blackwood’s 18
declarations also fail to mention Exhibits 2018-2020 or 2024 or the specific 19
sprinkler assembly that produced the results shown in those exhibits. 20
Even if the testing about which Mr. Silva testifies was performed on an 21
embodiment of the Count, we agree with Viking that Tyco fails to provide 22
evidence of an actual reduction to practice because there is no explanation or 23
testimony regarding what the results reported in Exhibits 2018-2020 and 2024 24
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mean. (See Viking Opp., Paper 95, at 8.) Mr. Silva testifies that Exhibits 2018-1
2020 demonstrate “improved flow rates” indicated by the recorded K-factor, but 2
these values are not explained further or compared to the K-factor results of any 3
other sprinkler assemblies. (See Silva Decl., Exh. 2001, at ¶ 28.) 4
Viking also notes that on cross-examination, Mr. Silva testified that the 5
results reported in Exhibit 2018 do not necessarily correlate with the work 6
Mr. Silva requested. (Viking Opp., Paper 95, at 8.) 7
Q Does Exhibit 2022 relate to the testing conducted with regard to 8
Exhibit 2018? 9
10
A I believe so. 11
12
Q You did testify to that end, correct, in Exhibit -- I'm sorry, 13
Exhibit 2001, paragraph 20, correct? 20(a). 14
15
A Yes. 16
17
Q Looking at Exhibit 2022, your work order requested testing at 18
various pressures, including 15, 50 and 75, correct? 19
20
A That's correct. 21
22
Q How is that reflected in Exhibit 2018 that testing was done at those 23
various pressures? 24
25
A Unfortunately, Mr. Lee didn't follow directions. He only tested the 26
sprinklers at 100 PSI. 27
28
Q But 100 is not even listed as one of the pressures you requested, 29
correct? 30
31
A That's correct. 32
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1
Q And you don't recall whether or not you actually attended the 2
testing, correct? 3
4
A That's correct. 5
6
Q And it's unlikely you attended because you would have probably 7
informed him to use the correct pressures? 8
9
A That's correct. 10
11
(Silva Depo., Exh. 1036, at 60:15-61:18.) Not only does Mr. Silva indicate the 12
results in Exhibit 2018 were not for the intended tests, he also indicates that he did 13
not have personal knowledge of the actual testing. Mr. Degraide confirmed the 14
lack of correlation between the tests requested and the results reported when he 15
was cross examined. (Degraide Depo., Exh. 1037, at 15:8-21; see Viking Opp, 16
paper 95, at 8-9.) 17
Because Tyco has failed to provide sufficient evidence that the actual work 18
cited by Mr. Silva was done on an embodiment of the Count and because the 19
testing results cited are not explained, we are not persuaded that an embodiment of 20
the Count was actually reduced to practice by Tyco on either 29 October 2002 or 21
later in November 2002. 22
III. Conception 23
Conception is the formation “in the mind of the inventor of a definite and 24
permanent idea of the complete and operative invention, as it is therefore to be 25
applied in practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). To 26
establish conception a party must show possession of every feature recited in the 27
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count and must show that every limitation of the count was known to the inventor 1
at the time of the alleged conception. Id. To prevail on priority, Tyco must show 2
that Mr. Silva conceived of every element of an embodiment within the scope of 3
the Count, before Viking’s inventors. 4
Exhibit 2004 5
Tyco argues that Mr. Silva conceived of an embodiment of the Count on 6
22 March 2002, presenting Exhibit 2004 as evidence. (Tyco Motion, Paper 24, at 7
6:11-12.) The top half of Exhibit 2004, including the portion cited by Tyco is 8
reproduced below. 9

Exhibit 2004 is a copy of a notebook page dated 22 March 2002. The portion cited 10
by Tyco is outlined and reads: “– pin or off center cross bar could be implemented 11
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in Viking.” (Notebook, Exhibit 2004, at 2.) 1
Mr. Silva testifies that Exhibit 2004 memorializes a meeting in which he 2
discussed his conception of a design wherein “the spring seal (Belleville washer) is 3
pinned to the support and the drop position is such that it provides a sufficiently 4
large flow around the Belleville washer to provide the desired performance.” 5
(Silva Decl., Exh. 2001, at ¶ 7a6.) According to Mr. Silva, “this approach would 6
improve Viking’s design, for example.” (Id.) Mr. Silva provides no other details 7
or discussion of “Viking’s design” in either his note book or his declaration. Tyco 8
describes Mr. Silva’s proposal as “modifying a known Viking sprinkler . . .” (Tyco 9
Motion, Paper 24, at 6:13-14), but does not provide any other identification or 10
details about the Viking sprinkler. Although Mr. Silva testifies that he “became 11
aware of a Dry Pendant Drop Sprinkler designed by Grinnell Manufacturing (UK) 12
Ltd.,” referring to Exhibits 2002 and 2003 as diagrams of this sprinkler (called a 13
“Stockport design”) (see Silva Decl., Exh. 2001, at ¶ 5), he does not reference 14
these Exhibits when referring to “Viking’s design.” 15
We agree with Viking that neither Tyco nor Mr. Silva explains how the 16
notebook page of Exhibit 2004 relates to any of the elements of the Count. (See 17
Viking Opp., Paper 95, at 3.) For example, the Count requires that the “actuator 18
assembly,” which seals off the flow of fluid to the sprinkler head, move “in a linear 19
path substantially parallel” to the axis of the assembly when the sprinkler is 20
triggered. Neither Tyco nor Mr. Silva explain how the statement “pin or off center 21

6 The Silva Declaration includes two paragraphs number “7.” The paragraph
referenced here is the second, referred to as “7a.”
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cross bar could be implemented in Viking” would achieve that result. What is 1
pinned? What is the relationship of the actuator to the path of fluid flow as a result 2
of the pin? Did Mr. Silva’s conception include a spring plate or a sealing assembly 3
with a projecting boss extending upstream of the spring plate, as also required in 4
the Count? 5
Tyco supports its argument that Exhibit 2004 is evidence of conception by 6
citing to Exhibit 2005. Exhibit 2005 is reported to be a copy of a memorandum on 7
the problems with existing dry sprinklers due to the orientation of their internal 8
parts. (Tyco Motion, Paper 24, at 6:17-19.) Mr. Silva explains that the 9
memorandum reproduced in Exhibit 2005 provides commentary on UL standards 10
for dry sprinklers, observations about existing dry sprinklers, and 11
recommendations for tests to demonstrate movement of internal parts. (Silva 12
Decl., Exh. 2001, at ¶ 7b7.) Neither Tyco nor Mr. Silva direct us to any discussion 13
of specific elements of a dry sprinkler conceived by Mr. Silva in this 14
memorandum, nor do we discern any such discussion. Exhibit 2005 does not show 15
how the notation “pin or off center cross bar could be implemented in Viking” is a 16
part of a sprinkler assembly within the scope of the Count. 17
In addition to arguing that Tyco fails to explain how Exhibit 2004 relates to 18
limitations of the Count, Viking argues that Mr. Silva’s testimony about 19
Exhibit 2004 contradicts itself, creating more confusion. (See Viking Opp., Paper 20
95, at 4-5`.) Specifically, Viking argues that although Mr. Silva testifies in his 21

7 The Silva Declaration includes two paragraphs number “7.” The paragraph
referenced here is the second, referred to as “7b.”
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declaration that “[p]inning is discussed at line 7 of Ex. 2004” (Silva Decl., 1
Exh. 2001, at ¶ 7a), on cross-examination he testified that reference to “pin” does 2
not indicate the action of pinning a seal plug to a support to prevent rotation. 3
(Viking Opp., Paper 95, at 4.) Mr. Silva testified: 4
Q And that's your understanding of what was meant by pin [in 5
Exhibit 2004]? 6
7
A No, that's not my understanding what's meant by -- here. So 8
what's meant by the word "pin" here, I believe, is actually a verb, not 9
a noun. So it's talking about actually pinning the seal to the center 10
part. And then the second bullet, where it says large enough flow path 11
around the perpendicular Belleville – so essentially it would be to pin 12
-- I believe it would be to pin the button to it and then allow it to drop 13
into a larger flow path or have an off-center crossbar that could knock 14
the button off. 15
16
Sorry. I'm getting confused between the two bullets. 17
18
Q Okay. 19
20
A So the first bullet is actually talking about a pin that sticks out 21
into the waterway or an off-center bar that sticks out into the 22
waterway so that when the sprinkler operated and dropped, the -- that 23
seal member would hit the pin or the crossbar and get knocked off the 24
center support. So that could be implemented into the -- could have 25
been implemented into the Viking design by adding a structure -- a 26
pin or bar somewhere within the -- into the center of the sprinkler to -- 27
that would knock off the seal when the sprinkler operated. 28
29
(Silva Depo, Exh. 1036, at 29:15-30:21.) Thus, after some initial confusion about 30
the meaning of the different items discussed in Exhibit 2004, on cross-examination 31
Mr. Silva testified that the portion of Exhibit 2004 cited by Tyco refers to a 32
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physical “pin.” Because the Count does not recite a “pin” and Tyco has not shown 1
that the Count includes a structure like a pin, we agree with Viking that Mr. Silva’s 2
testimony as a whole emphasizes the questionable relevance of the cited portion of 3
Exhibit 2004 as evidence of conception of an embodiment of the Count. 4
Exhibit 2006 5
Tyco also presents Exhibit 2006, characterized as a drawing by Mr. Silva of 6
his “modification to Viking’s design” on 19 June 2002, as evidence of conception. 7
(Tyco Motion, Paper 24, at 6:19-7:4.) Exhibit 2006 is reproduced below. 8

The figures of Exhibit 2006 depict two sketches of the cross-section of an 9
assembly, labeled “Current Design” and “Proposed Change,” wherein the former 10
includes a dimension of 1/8” and the later includes a dimension of 1/2”. (See 11
Drawings, Exh. 2006.) Exhibit 2006 includes the following text: 12
13
In the current Viking configuration, the Belleville/Plug assembly 14
drops into the øB area, however only about 1/8” below øA. To 15
increase flow around the plug, the drop position could be increased to 16
about a ½” below øA. In this concept, the Belleville plug assembly 17
does not tip or fall off the center support. 18
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(Drawings, Exh. 2006.) No other details of the “current Viking configuration” are 1
provided. 2
Mr. Silva discusses the drawing of Exhibit 2006 in his declaration as 3
follows: 4
In a drawing dated June 19, 2002, I depicted Viking’s existing design 5
and how I would change it. Ex. 2006. In my proposed change, the 6
Belleville washer does not tip or fall off, and the drop would be 7
increased to 1/2" from Viking’s 1/8”. This drawing also depicts a 8
projecting boss, although it is not a shield. 9
10
(Sivla Decl., Exh. 2001, at ¶ 8.) Mr. Silva refers to “Viking’s existing design” in 11
this testimony, but as with his testimony regarding Exhibits 2004 and 2005, 12
Mr. Silva does not provide any details about the product he proposed to change in 13
Exhibit 2006. It is not even clear from Exhibit 2006 that the “current Viking 14
configuration” was a sprinkler assembly. We agree with Viking that Tyco fails to 15
provide sufficient evidence or explanation to show that Exhibit 2006 relates to the 16
sprinkler assembly of the Count. (See Viking Opp., Paper 95, at 6.) 17
Tyco has not presented persuasive evidence to show that Mr. Silva 18
conceived of an embodiment within the scope of the Count before Tyco’s accorded 19
benefit date of 1 December 2004. Accordingly, we need not review Tyco’s 20
evidence of diligence towards a reduction to practice. 21
IV. Conclusion 22
Because Tyco fails to persuade us of a date of conception or reduction to 23
practice earlier than its accorded benefit date, 1 December 2004, which is later than 24
Viking’s accorded benefit date of 9 February 2004, we need not review Viking’s 25
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priority motion (Paper 55). We enter judgment, in a separate paper, against Tyco.8 1

8 Junior Party Tyco has an outstanding request to file substantive motions.
(See Paper 105 “Request.”) Tyco characterizes its paper as written notice to
initiate a conference call, but it contains significantly more than notice by quoting
from testimony, reproducing exhibits, and referring to the substance of claims
involved in the interference. Accordingly, Tyco’s paper is construed to be a
miscellaneous motion. Because Tyco did not indicate its request was unopposed
by Viking, it was filed inappropriately without authorization. (See Standing Order
¶ 121: “All motions require prior Board authorization except unopposed
miscellaneous motions . . . .”)
Furthermore, Tyco’s request is, in part, to argue that Viking’s claims are
unpatentable over the prior art. Tyco previously cited one of the references now
cited (Exhibit 2031) (see Request, Paper 105, at 2:21-22), but the other reference
(Exhibit 1006) is new. Exhibit 1006 is a Tyco publication dated 2002. Tyco
asserts the current request is timely because it was filed after cross-examination of
Viking's inventors (Request, Paper 105, at 1:3-4), but Tyco fails to explain why it
could not have proposed a motion based on its own publication when it filed its
original list of proposed motions (see Papers 17 and 18). Because Tyco proposed
this motion after the time designated to do so (see Declaration, Paper 1, at 2),
Tyco’s current request is not only unauthorized, it is untimely.
Tyco also requests authorization for a motion arguing that the specification
of Viking’s involved patent lacks written description support. Although Tyco
again refers to the testimony of a Viking inventor, it is not clear why inventor
testimony is necessary to prove that the Viking inventors lacked possession of the
claimed subject matter, an issue determined by what one of ordinary skill in the art
would have understood. See Ariad Pharm., Inc., v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010). Because Tyco failed to explain why it could not have
previously requested authorization for this motion, this request is also untimely.
Tyco’s request (Paper 105) is both unauthorized and untimely. Accordingly,
it will be expunged, rendering the request moot.

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cc (via e-mail): 1
Attorney for Junior Party Tyco: 2
John P. Isacson 3
David W. Laub 4
PERKINS COIE LLP 5
dlaub@perkinscoie.com 6
7
Attorney for Senior Party Viking: 8
9
Ryan W. Massey 10
George D. Moustakas 11
HARNESS DICKEY 12
rwmassey@hdp.com 13
gmousakas@Hdp.com 14
15
W. Todd Baker 16
OBLON, McCLELLAND, MAIER & NEUSTADT, P.C. 17
baker_ptab@oblon.com 18