Hyattv.Field

Patent Trial and Appeal Board

Sep 30, 2014

13748723 (P.T.A.B. Sep. 30, 2014)

Boxinterferences@uspto.gov
571-272-4683 Filed: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

PETER FIELD
Junior Party
(Application No. 13/748,723)

v.

RICHARD G. HYATT, JR.
Senior Party
(US 8,141,399 B2)
________________

Interference 105,951 (JGN)
Technology Center 3600
________________

JUDGMENT
Bd.R. 127
________________

Before SALLY GARDNER LANE, DEBORAH KATZ, and
JOHN G. NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.
The Board granted the priority motion of Junior Party Field’s
(“Field”) US Application No. 13/748,723 and denied the priority motion of
Senior Party Richard G. Hyatt, Jr.’s (“Hyatt”) US Patent No. 8,141,399 B2.
It is therefore—

ORDERED that judgment be entered against Senior Party Hyatt for
count 11;

FURTHER ORDERED that claims 1-18 of Hyatt’s involved U.S.
Patent No. 8,141,399 B2 be CANCELED, 35 U.S.C. 135(a)2; and

FURTHER ORDERED that a copy of this judgment be entered in the
administrative records of Hyatt’s involved 8,141,399 B2 patent and Field’s
No. 13/748,723 application.

FURTHER ORDERED that if a party seeks judicial review, the party
must file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of
initiating judicial review.

We also direct the parties’ attention to Biogen Idec MA, Inc., v.
Japanese Foundation for Cancer Research, Civil No. 13–13061–FDS, 2014
WL 2167677 (D. Mass. May 22, 2014).

1 Paper No. 1
2 As was in effect on March 15, 2013. See Pub. L. 112-29, § 3(n), 125 Stat.
284, 293 (2011).

NOTICE: “Any agreement or understanding between parties to an
interference, including any collateral agreements referred to therein, made in
connection with or in contemplation of the termination of the interference,
shall be in writing and a true copy thereof filed in the Patent and Trademark
Office before the termination of the interference as between the said parties
to the agreement or understanding.” 35 U.S.C. 135(c); see also Bd.R. 205
(settlement agreements).

cc (via electronic transmission):
Attorneys for Field:
Joseph A. Hynds
R. Danny Huntington
Rothwell, Figg, Ernst & Manbeck, PC
jhynds@rfem.com
dhuntington@rfem.com

Attorneys for Hyatt:

Robert E. Bushnell
Mark J. Konienczny
R.E. Bushnell & Law Firm
2029 K Street, N.W., Suite 600
Washington, DC 20006
Phone: 202.408.9040
Facsimile: 202.289.7100
rebushnell@aol.com
mail@REBushnell.com

Boxinterferences@uspto.gov
571-272-4683 Filed: September 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

PETER FIELD
Junior Party
(Application No. 13/748,723)

v.

RICHARD G. HYATT, JR.
Senior Party
(US 8,141,399 B2)
________________

Interference 105,951 (JGN)
Technology Center 3600
________________

Decision on Priority—Bd.R. 125
________________

Before SALLY GARDNER LANE, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

Interference 105,951

2

I. Introduction 1
A. Background 2
Interference 105,951 is before a panel of the Board for a decision on the parties’ 3
priority motions. 4
5
Oral argument was requested and granted, and was heard on September 23, 2014.1 6
We have considered the record submitted by the parties. 7
8
B. Parties 9
1. Junior Party 10
The Junior Party is Peter Field (“Field”); the real party-in-interest is Medeco 11
Security Locks, Inc. of Salem, VA, U.S.A.2 12
13
2. Senior Part 14
The Senior Party is Richard G. Hyatt, Jr. (“Hyatt”), who is also the real 15
party-in-interest.3 16
17
C. Subject matter involved in interferences 18
1. The counts 19
Count 1 is the sole count in this interference.4 20
2. Count 1 21
A rotatable lock barrel, comprising: 22
23

1 Paper Nos. 252, 253
2 Paper No. 4
3 Paper No. 275, Ex. 2004
4 Papers No. 1
Interference 105,951

3

an elongated, generally cylindrically shaped barrel having an 1
exterior configured for receipt in a bore of a shell and an interior 2
containing a blocking member, said barrel having a recess formed 3
therein; 4
5
a sidebar borne by said barrel, that travels along a plane that 6
extends approximately radially relative to said barrel; and 7
8
said blocking member being disposed in the recess of the barrel 9
and being substantially entirely contained within the barrel, said 10
blocking member being movable; 11
12
said recess in said barrel being configured to receive at least a 13
portion of said sidebar to permit said sidebar to move into and out of 14
engagement with a cavity in the shell while selectively permitting and 15
blocking rotation of said barrel with respect to the shell; and 16
17
an electrically activated drive mechanism located within and 18
borne by the barrel, said drive mechanism being disposed to move the 19
blocking member to a first position where said drive mechanism limits 20
movement of said sidebar and alternately to a second position where 21
said drive mechanism permits movement of said sidebar. 22
23
or 24
25
A rotatable lock barrel, comprising: 26
27
an elongated, generally cylindrically shaped barrel member 28
having an exterior configured for receipt in a bore of a lock cylinder 29
and an interior containing a locking member, said barrel member 30
having a recess formed therein; 31
32
a detent borne by said barrel member, that travels along a plane 33
that extends approximately radially relative to said barrel member; 34
and 35
36
Interference 105,951

4

said locking member being disposed in the recess of the barrel 1
member and being substantially entirely contained within the barrel 2
member, said locking member being movable; 3
4
said recess in said barrel member being configured to receive at 5
least a portion of said detent to permit said detent to move into and out 6
of engagement with a recess in the lock cylinder while selectively 7
permitting and blocking rotation of said barrel member with respect to 8
the lock cylinder; and 9
10
an electronically powered drive mechanism located within and 11
borne by the barrel member, said drive mechanism being disposed to 12
move the locking member to a first position where said drive 13
mechanism limits movement of said detent and alternately to a second 14
position where said drive mechanism permits movement of said 15
detent. 16
17
The claims of the parties are: 18
Hyatt: Claim 1-18; all corresponding to Count 1 19
Field: Claim 1; corresponding to Count 1 20
21
With respect to count 1, the parties have been accorded the benefit of the following 22
applications: 23
Field: 13/748,723, filed January 24, 2013 24
13/224,907, filed 2 September, 2011 25
12/976,475, filed 22 December, 2010 26
12/724,013, filed 15 March, 2010 27
08/800,742, filed 14 February, 1997 28
29
Hyatt: 10/440,308, filed 19 May, 2003 30
10/061,202, filed 4 February, 2002 31
08/720,070, filed 27 September, 1996 32
60/011,764, filed February 12, 1996, 33
60/004,594, filed September 29, 1995 34
1
2
3
4
5
6
7
8
9
10
11
12
13
14
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Interference 105,951

6

blocking member prevents movement of the sidebar into the recess of the barrel, whereas 1
in the second position the blocking member permits movement of the sidebar (which is 2
spring biased outward) into the recess of the barrel. Consequently, in the first position, 3
the sidebar (which cannot be pushed into the barrel recess) remains engaged with the 4
recess of the cylinder and, therefore, the barrel cannot be rotated in the cylinder. In the 5
second state, because the sidebar can be moved (or “cammed”) into the barrel, the barrel 6
may be rotated within the cylinder. These two positions represent the “locked” and 7
“unlocked” states of the lock, respectively. 8
9
II. Field’s Priority Motion7 10
11
A. 12
Field argues that it was conceived of, and reduced to practice, the invention of 13
count 1 prior to the September 29, 1995 filing date of Hyatt’s U.S. Application No. 14
60/004,594 (the “’594 application”). Motion at 1. According to Field, inventor Peter 15
Field (“Mr. Field”)8 had conceived of the invention by November 28, 1994, as shown by 16
a memorandum of invention signed on that date by Mr. Field. Id. at 5 (see Ex. 20149). 17
Field contends that the memorandum was witnessed on the following day by Andy E. 18
Perkins, a toolmaker at Medeco Security Locks, Inc. (“Medeco”), which employed both 19

7 Paper No. 52
8 Throughout this decision, individuals are identified as “Mr. or Ms. X,” where X is the
surname of the individual, whereas parties are identified by surname alone. Thus “Mr.
Hyatt, Jr.” refers to the individual Richard G. Hyatt, Jr., whereas “Hyatt” refers to the
Senior Party of this interference, as represented through counsel.
9 Paper No. 285
Interference 105,951

7

Messrs. Field and Perkins. Id. at 9 (citing Exs. 2014; Ex. 203710 (the “Perkins 1
Declaration”), ¶¶ 5-7). The memorandum describes: 2
A cylinder comprising a shell and a barrel rotating inside a bore in the shell, 3
with an electro-mechanical release mechanism that is mounted inside the 4
barrel of the cylinder. The release mechanism interfaces with a sidebar 5
extending along the side of a cavity in the shell. The release mechanism has 6
at least one rotating member that in the locked position blocks the movement 7
of the sidebar, and thus blocks the rotation of the barrel in the shell. The 8
rotating member is provided with one or more grooves that can be 9
positioned underneath the sidebar and will allow the sidebar to move into an 10
unlocked position inside the diameter of the barrel. 11
12
The rotating member can be provided with false shallow groves that 13
will not allow the sidebar to move completely inside the diameter of the 14
barrel and unlock. 15
16
Id. at 9 (quoting Ex. 2014). On November 29, 1994, Field contends, Mr. Perkins then 17
fabricated a brass “tool room model,” which was the first physical embodiment of Mr. 18
Field’s invention. Id. at 10 (citing Ex. 2037, ¶¶ 6-7). 19
According to Field, this model included a lock barrel and shell, where the barrel 20
was configured to fit within the bore of the shell, which included a cavity for selective 21
engagement with a sidebar. Motion at 10 (citing Ex. 201511 p. B-1). The barrel had a 22
recess with a number of blocking members (inserts) therein, which was configured to 23
receive at least a portion of the sidebar; however, the release mechanism of the brass 24
model was not electromechanically active as required by count 1. Id. at 10-11 (citing Ex. 25
2015 pp. B-2, B-3). 26

10 Paper No. 306
11 Paper No. 286
Interference 105,951

8

Seeking a source to develop the electromechanical mechanism, and on the advice 1
of Mr. J. Michael Lumpkin, another Medeco employee, Mr. Field contacted Litton Poly-2
Scientific (“Litton”) which was known as a developer and manufacturer of rotary devices 3
and actuators. Motion at 11 (citing Ex. 2009 (the “Field Declaration”), ¶ 21; Ex. 2010 4
(the “Lumpkin Declaration”),12 ¶¶ 9-11). Field relates that Medeco had its first meeting 5
with engineers from Litton at their facilities in Blacksburg, VA on December 19, 2014. 6
Id. (citing Field Decl., ¶ 22; Exhibit 201113 (the “Crockett Declaration”), ¶ 8). At this 7
first meeting, Mr. Russell Crockett of Litton and Mr. Lumpkin of Medeco signed a 8
confidentiality agreement for this project, which recited that Medeco was the owner of 9
“valuable, confidential business and trade secret information … relating to electronic, 10
electro-mechanical, and mechanical locks, and security systems and, according to Field, 11
the project began to progress quickly thereafter. Id. (citing Ex. 201614; Crockett Decl., 12
¶¶ 8-10; Lumpkin Decl., ¶ 12). 13
Field relates that, on January 30, 1995, Medco had another meeting with Litton at 14
their facilities in Blacksburg, VA, at which Mr. Field explained his electromechanical 15
lock to members of the Litton team. Motion at 11 (citing Field Decl., ¶¶ 23, 24; Crockett 16
Decl., ¶¶ 10, 11). According to Field, Mr. Crockett handled the specific design and 17
fabrication of the electromechanical components for Litton under the direct supervision 18
of Mr. Lumpkin. Id. at 12 (citing Crockett Decl., ¶¶ 17-38; Lumpkin Decl., ¶¶ 14-17). 19
In his Declaration, Mr. Crockett states that, on February 3, 1995, he followed up with a 20
fax to Messrs. Field and Lumpkin, with preliminary drawings that he had prepared and 21

12 Paper No. 281
13 Paper No. 282
14 Paper No. 287
Interference 105,951

9

seeking more information from Medeco regarding the dimensional requirements of the 1
recess in the barrel, which would house the rotary locking insert. Crockett Decl., ¶¶ 17-2
18. Mr. Crockett states further that he met with Mr. Lumpkin on February 9, 1995 at 3
which they discussed the use of coils and magnets as a drive mechanism for rotating the 4
buttons of the rotary insert. Id., ¶ 20. According to Mr.Crockett, “[b]y at least this date, 5
we were fully able to move forward on fabricating a working model using an 6
electromechanical rotary device based on Medeco’s lock idea and the brass model.” Id., 7
¶ 21. Mr. Crockett states that he worked on the design and fabrication of the 8
electromechanical prototype lock from early February through April 19, 1995, when the 9
working model had been fabricated and tested. Id., ¶¶ 17-38. 10
Field also adduces documentary evidence of the development process between 11
January and April of 1995, including the Medeco-Litton nondisclosure agreement 12
(Exhibit 203215), Computer Assisted Design (CAD) drawings of lock components 13
prepared in late February by Mr. Crockett (Exhibit 203016; Exhibit 202917; see also 14
Crockett Decl., ¶ 33, 27), the February 23, 1995 fax from Mr. Crockett to Mr. Lumpkin 15
concerning the proposed dimensions of the lock barrel (Exhibits 202818, 202719, 202620, 16
202521; see also Crockett Decl. ¶ 29, 31), and excerpts from Mr. Crockett’s engineering 17
notebook from between early February and April 1995 (Ex. 202122). 18

15 Paper No. 302
16 Paper No. 300
17 Paper No. 299
18 Paper No. 298
19 Paper No. 297
20 Paper No. 296
21 Paper No. 295
22 Paper No. 291
1
2
3
4
5
6
7
8
9
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Interference 105,951

11

a shell and an interior containing a blocking member, said barrel having a recess formed 1
therein” was embodied by: 2
a brass barrel (101) with a recess (102) and the barrel had an exterior 3
configured for receipt in a bore of a shell. The barrel of the model contained 4
two rotary buttons (105, 106) that rotated about a t-shaped brass piece (111) 5
on axial pin (112). These notched buttons, in conjunction with the brass 6
piece, served as a blocking member for the working model. 7
8
Motion at 16 (internal citations omitted). Field also points out, although not explicitly 9
depicted in Exhibit 1009, the barrel 101 was designed to be fitted into a lock cylinder. Id. 10
(citing Crockett Decl., ¶ 12; and quoting Field Decl., ¶30 (“The barrel was specifically 11
designed to fit within a cylinder having a lengthwise groove, such as the cylinder used in 12
my original brass model.”); and quoting Lumpkin Decl. ¶¶ 18-20 (“The working model 13
we tested included a barrel (101), with a recess (102) and shallows (103,104), which was 14
specifically designed to fit within a cylinder...”). 15
Field argues that the second limitation of the count reciting “a sidebar borne by 16
said barrel that travels along a plane that extends approximately radially relative to said 17
barrel” was met by: 18
a locking bar (113) (i.e., sidebar) that was borne by the barrel (101). The 19
sidebar was outwardly biased by two springs (114, 115) and travelled into 20
and out of recess (102) and shallows (103, 104). Thus, the sidebar bar 21
travelled along an approximately radial plane relative to the barrel. 22
23
Motion at 17 (internal citations omitted). 24
The third limitation of the count requires a: “blocking member being disposed in 25
the recess of the barrel and being substantially entirely contained within the barrel, said 26
blocking member being movable.” Field argues that its prototype embodiment meets this 27
limitation: 28
Interference 105,951

12

The blocking member was in the barrel of the working model. See Ex. 2017 1
(the rotary buttons (105, 106) and t-shaped brass piece (111) were located 2
within recess (102) of barrel (101)). The rotary buttons (105, 106) were 3
moveable about the t-shaped brass piece (111) on axial pin (112). 4
Specifically, the notched buttons could move between a first position where 5
their notches (108) were not-aligned and a second position where their 6
notches (108) were aligned with each other and the notch (119) of the t-7
shaped brass piece (111). 8
9
Motion at 17 (internal citations omitted). 10
The fourth limitation of the count requires that the recess in the barrel is 11
“configured to receive at least a portion of said sidebar to permit said sidebar to move 12
into and out of engagement with a cavity in the shell while selectively permitting and 13
blocking rotation of said barrel with respect to the shell.” Field asserts that its functional 14
prototype meets this limitation as well: 15
The recess (102) of the barrel (101) was machined such that it could receive, 16
for instance in shallows (103, 104), at least a portion of the locking bar (113) 17
(i.e., sidebar) to permit it to move in and out of engagement with a cavity in 18
the shell, such as the groove in the shell shown in Exhibit 2015. The sidebar 19
selectively permitted/blocked rotation of the barrel. That is, the barrel could 20
not rotate within the shell when the locking bar (113) could not retract into 21
the recess (102) and out of engagement with the shell. 22
23
Motion at 17-18 (internal citations omitted). 24
The fifth limitation of count 1 requires an: “electrically activated drive mechanism 25
located within and borne by the barrel, said drive mechanism being disposed to move the 26
blocking member to a first position where said drive mechanism limits movement of said 27
sidebar and alternately to a second position where said drive mechanism permits 28
movement of said sidebar.” Field contends that its functional model also meets this 29
limitation: 30
Interference 105,951

13

The model included two wire/iron-core actuator assemblies (109,110) below 1
rotary buttons (105,106) that were an electrically activated drive mechanism. 2
These wire/iron-core actuator assemblies consisted of strands of conductive 3
wire wound around an insulating spool having a centrally located iron core. 4
When a current was applied to the wire-core assemblies (i.e., the electrically 5
activated drive mechanism), each assembly created a magnetic force that 6
repelled the magnets that were placed in the buttons, thereby causing the 7
buttons to rotate. 8
9
This drive mechanism moved the blocking member to a first position 10
that limited movement of the sidebar and to a second position that permitted 11
movement of the sidebar. Absent an applied current to the drive mechanism, 12
the buttons would remain unaligned in a first position, thereby limiting 13
movement of the locking bar (113) (i.e., sidebar). However, when a current 14
was applied to the drive mechanism, the buttons would rotate to a second 15
position such that the notches (108,119) would align, creating a lengthwise 16
cavity that permitted the sidebar to move in and out of the recess (102), for 17
instance, in response to an applied torque. 18
19
Motion at 18-19 (internal citations omitted). 20
Field argues further that both Medeco and Litton independently tested the models 21
to make sure that they worked and would perform repeatedly and robustly within the 22
power constraints that had been provided to Litton. Motion at 19 (citing Field Decl., ¶¶ 23
32-33; Lumpkin Decl., ¶¶ 18-26; Crockett Decl., ¶¶ 40-43). Field asserts that Mr. Field, 24
the inventor, as well as Mr. Lumpkin and Mr. Crockett, each declared that the functional 25
prototype worked for its intended purpose as of April 19, 1995. Id. For example Mr. 26
Field declared that: 27
We performed testing of the model at Medeco to make sure that it worked 28
and would perform repeatedly and robustly within the power constraints we 29
had outlined. I recall the Medeco testing and that the model performed well. 30
We tested the actuator within the barrel and connected two wires to a 31
limiting power supply using alligator clips.… At this point, there was no 32
Interference 105,951

14

question that the prototype worked for its intended purpose as an 1
electromechanical lock. 2
3
Field Decl., ¶ 32. Likewise, Mr. Lumpkin attested: 4
5
These models were completed prior to a status meeting between Medeco and 6
Litton, which took place prior to September 29, 1995. 7
… 8
The model worked for its intended purpose as an electromechanical lock. 9
During testing, it performed as we expected. Also, given my background in 10
electronic access and security, I expected that any necessary control circuitry 11
would be easy to build and integrate. There was still a significant amount of 12
space in the barrel. 13
14
Lumpkin Decl., ¶¶ 18, 24. And Mr. Crockett declared: 15
16
Prior to the meeting described in the visitation report of April 19, 1995, I 17
tested the model to ensure that it functioned for its intended purpose. 18
… 19
The model was a fully functional electromechanical lock barrel. The barrel, 20
including the insert within the recess of the barrel, was specifically designed 21
to fit within a cylinder such as the cylinder shown in Exhibit B, which 22
included a lengthwise groove. The locking bar could move in and out of 23
engagement with the groove of the cylinder depending on the state of the 24
rotary insert. When the rotary buttons were in the first position, unaligned 25
with each other, the base notch, or the shallows, the locking bar could not 26
move and would remain engaged with the cylinder groove and the barrel, 27
thereby preventing rotation. However, when the buttons were in a second, 28
aligned position, the locking bar could move into the recess and out of 29
engagement with the groove in the cylinder, thereby allowing rotation. In 30
other words, rotation of the barrel within the cylinder was controllable by the 31
rotary insert. 32
33
Crockett Decl., ¶¶ 41, 42. 34
Interference 105,951

15

Field thus concludes that the inventor and two corroborating witnesses have 1
testified that the subject matter of the count was reduced to practice by April 19, 1995, 2
and that their testimony is supported by contemporaneous memoranda, engineering 3
drawings, and photographs of the working device. 4
5
B. 6
In response Senior Party Hyatt argues that the two models produced by Field: (1) 7
the brass conception model manufactured by Mr. Perkins; and (2) the functional 8
prototype developed by Mr. Crockett and tested in April 1995, fail to disclose every 9
limitation of the count and that Field has therefore failed to show reduction to practice. 10
Opp.24 at 2-3. 11
Hyatt alleges that the brass model did not include an electronically activated drive 12
mechanism. Opp. at 3-4 (citing Field Ex. 2015). Hyatt also contends that this model did 13
not have a sidebar that travels along a plane that extends approximately radially relative 14
to the barrel, and furthermore, could not be configured to permit a sidebar to move into 15
and out of engagement with a cavity in the shell while selectively permitting and 16
blocking rotation of the barrel with respect to the shell as recited in the count. Id. 17
Moreover, alleges Hyatt, the shell (or cylinder) depicted in the photograph of the brass 18
model (Field Exhibit 2015) lacks “a cavity for selective engagement with a sidebar” as 19
required by the count. Id.. Therefore, argues Hyatt, Field’s model machined by Mr. 20
Perkins failed to include every limitation of the count. 21
Hyatt next argues that the functional prototype built by Mr. Crockett did not have a 22
shell which could accommodate the barrel and consequently could not be configured to 23

24 Paper No. 191
Interference 105,951

16

permit a sidebar to move into and out of engagement with a cavity in the shell while 1
selectively permitting and blocking rotation of the barrel with respect to the shell as 2
required by the count. Opp. at 4 (citing Field Exhibits 2013; 2015; 2017). Hyatt also 3
argues that, in the device depicted in Field Exhibit 2017 (see supra), element 113 cannot 4
be interpreted as a sidebar of the Count, and elements 105, 106, and 111 cannot be 5
interpreted as a locking member of the Count, because the meaning of the terms of the 6
Count cannot properly be satisfied by merely referring to certain mechanical structures 7
without showing or testing the functions of these mechanical structures. Id. at 5. 8
Hyatt argues further that Field failed to determine that the invention would work 9
for its intended purpose. Opp. at 6. According to Hyatt, neither the model machined by 10
Mr. Perkins or the model machined by Mr. Crockett was successfully tested as a rotatable 11
lock barrel or verified to be a working rotatable lock barrel. Id. Hyatt contends that the 12
testing by Mr. Crockett was limited to whether the electromagnetic actuator, which might 13
or might not fit in a cylindrically-shaped barrel, was movable when an external power 14
source was connected to the actuator. Id. (citing Motion at 20-21). Hyatt alleges that 15
Field never tested whether the functional prototype would fit and work in the “shell” of 16
the model machined by Mr. Perkins. Id. (citing Motion at 20-21; Field Exhibits 2013; 17
2015; 2017; 2032; 2034; 2035). 18
Therefore, argues Hyatt, Field has not shown that the model machined by Mr. 19
Crockett would functionally work as a component of a rotatable lock barrel of the Count. 20
Opp. at 7. Hyatt alleges that Field has failed to show that, within the “shell”: (1) that 21
element 113 of Exhibit 2017 could work as a sidebar to travel along a plane that extends 22
approximately radially relative to element 101; (2) the recess numbered 102 by the Junior 23
Party in Figure 2 could be configured to receive at least a portion of the element 113 of to 24
Interference 105,951

17

move into and out of engagement with a cavity in the “shell” (the element on the right 1
side) shown in Exhibit 2015 while selectively permitting and locking rotation of element 2
101 with respect to the “shell” of Exhibit 2015; and (3) the elements 105 and 106 would 3
be movable. Id. 4
Hyatt also argues that the assembled device could not work as a lock or a part of a 5
lock, because there was no keyway in element 101 and there might not be a space to 6
construct a keyway in element 101. Opp. at 7 (citing Field Exhibits 2013; 2017). 7
Furthermore, argues Hyatt, such a device would provide no security, since a 9-V battery 8
could directly, without any security verification, cause the moveable components of the 9
model machined by Mr. Crockett to move. Id. 10
Hyatt next points to the declaration of Mr. Don D. McLoy. Opp. at 7. Mr. McLoy 11
has been a locksmith since 1974 and has testified for the U.S. Department of Defense, 12
Adjutant General’s Office of the United States Air Force, as a civilian expert witness 13
locksmith and as a Locksmith on topics concerning access control generally, and on 14
surreptitious entry into space controlled by devices such as locks generally. Ex. 113825 15
(the “McLoy Declaration”) ¶¶, 4, 11. We have reviewed Mr. McLoy’s declaration and 16
find that he is credible as an expert witness and qualified to opine on the arts of locks and 17
locksmithing. 18
Mr. McLoy declares that: 19
[A]fter consider review of the documents that I have received, 20
including those marked as Exhibits 2014 and 2017, it is my opinion that I 21
cannot in any way state that the devices illustrated by Exhibits 2014 and 22
Exhibits 2017 represent either a lock or an operational component of a lock, 23
in any form. 24

25 Paper No. 144
Interference 105,951

18

1
McLoy Decl., ¶ 14. Mr. McLoy also states that: 2
3
The devices illustrated by Exhibits 2014 and Exhibits 2017 do not provide a 4
user with a portal that shields the structure and mode of operation of the 5
device from observation or from manipulation by either the user or third 6
parties. 7
8
Id., ¶ 16. 9
Hyatt next adduces the Declaration of Mr. Bill Freeman. Opp. at 8. Mr. Freeman 10
has been a professional locksmith since 1969 and has specialized in the study of the 11
structural aspects and features for the manufacture and the process of operation of access 12
control devices such as safes, vaults and highly controlled security containers, and the 13
perfection of tools and techniques for opening locks, safes, vaults and high security 14
containers, by use, for example, of manipulation as well as forced opening when needed. 15
Ex. 1139 (the “Freeman Declaration”)26, ¶¶ 4-5. We have reviewed Mr. Freeman’s 16
declaration and find that he is credible as an expert witness and qualified to opine on the 17
arts of locks and locksmithing. 18
Mr. Freeman declares: 19
It is my opinion that the devices illustrated by Exhibits 2014 and Exhibits 20
2017 do not represent either a lock or an operational component of a lock, in 21
any form; cannot be used to secure any property, volume or area; and cannot 22
be used for or with a lock. 23
24
Freeman Decl., ¶ 8. Mr. Freeman further opines that: 25
26
It is my opinion that I cannot make either of the devices illustrated by 27
Exhibits 2014 and Exhibits 2017 into a lock without first making an 28

26 Paper No. 142
Interference 105,951

19

investment of substantial time and effort, and without making many 1
modifications and without making extensive further inventions to the 2
devices illustrated by Exhibits 2014 and Exhibits 2017. 3
4
Freeman Decl., ¶ 9. 5
Hyatt next argues that it was only the actuator assembly, and not the rotatable lock 6
barrel of the Count, that was worked on by Medeco and Litton. Opp. at 9. Hyatt adduces 7
Field Exhibit 2032 in support of this contention. Id. Exhibit 2032 is the Nondisclosure 8
Agreement between Medeco and Litton, signed by Mr. J. Gregory Schull, Litton’s 9
Contracts Manager on January 31, 1995, and by Len Blackwell, Medeco’s Vice-President 10
for Marketing, on February 3, 1995. Ex. 2032 at 5; see also Ex. 2009, ¶ 25. Exhibit 11
2032 recites, in relevant part: 12
WHEREAS, both parties, for their mutual benefit, anticipate the need 13
to disclose to and receive from the other party information of both a 14
technical and business nature, which the furnishing party considers to be 15
proprietary and which relates to the following products, technologies or 16
services: combination of slip ring/brush and actuator assembly; and 17
18
WHEREAS, the information is disclosed to the receiving party for the 19
stated purpose of: working together to create an actuator assembly for use in 20
a product to be sold to Medeco; 21
22
Ex. 2032 at 1. 23
Hyatt alleges that the language of the Nondisclosure Agreement thus confirms that 24
any evidence directly provided by or associated with Litton or Litton employees shows, 25
at most, that Litton might have constructed an electromagnetic actuator assembly which 26
might, or might not, fit in or be supported by element 101 shown in Exhibit 2017. Opp. 27
at 9. Hyatt asserts that the rotatable lock barrel of the Count was never constructed or 28
tested during the cooperation between Medeco and Litton. Id. 29
Interference 105,951

20

Hyatt also points to Field Exhibit 203527 to reinforce this argument. Opp. at 9-10. 1
Exhibit 2035 is the phase 2A report on the electromechanical lock system, dated April 2
11, 1996. Hyatt points to page 4 of the report, which states, inter alia, that: 3
Electromagnets 4
All 3 of the electromagnetic actuation options look promising. They are 5
substantially different in nature and implementation so need to be assessed 6
separately: 7
… 8
• A Rotary Solenoid - double rotating magnetic disc device (like that 9
breadboarded by Peter Fields) could probably be implemented into the 10
second preferred space volume. This would be a simple, compact device. 11
12
Ex. 2035 at 4. According to Hyatt, the rotary solenoid mentioned supra in Exhibit 2035 13
appears to be the model machined by Mr. Crockett or the electromagnetic actuator 14
included in the model machined by Mr. Crockett. Opp. at 10. Hyatt argues that Exhibit 15
2035 therefore shows that the model machined by Mr. Crockett had not been 16
implemented in a lock device until after April 11, 1996, because Exhibit 2035, dated 17
then, only concluded it “could probably” be implemented into a “locking mechanism.” 18
Id. 19
Hyatt also notes that page 3 of Exhibit 2035 states: 20
Conclusions from this research and studies were: 21
22
• That to research actuator options on their own would not, in itself, yield all 23
the information required to make a comparative assessment of possible 24
‘product’ solutions. It quickly became clear that it would be necessary to 25
include all the mechanism and/or circuitry that would be required to turn an 26
‘actuator possibility’ into a ‘product reality.’ 27
28

27 Paper No. 304
Interference 105,951

21

Ex. 2035 at 3. Hyatt contends that that the rotatable lock barrel of the Count was neither 1
constructed nor tested by Field prior to April 11, 1996. Opp. at 10. 2
3
C. 4
As an initial matter, we must address the evidentiary weight of the declarations of 5
Hyatt’s expert witnesses, Mr. McLoy and Mr. Freeman. In its Reply, Field argues that 6
their testimony should be given little or no evidentiary weight because their testimony 7
was based on only a fraction of the evidence available in this interference. Reply28 at 2. 8
Field alleges that Hyatt withheld important documents and information from them until 9
after they had signed their declarations. Id. 10
Specifically, Field contends that Mr. McLoy and Mr. Freeman considered and 11
relied only on low-quality copies of Exhibit 2014 (the Field conception memorandum) 12
and Exhibit 2017 (the photograph of the disassembled functional prototype). Reply at 2 13
(citing McLoy Decl. at ¶¶ 17, 19; Freeman Decl. at ¶¶ 13-14). Field argues that neither 14
declarant was provided with the following documents for review prior to their 15
declaration: (1) the Field Declaration (Exhibit 2009); (2) the Lumpkin Declaration 16
(Exhibit 2010), the Crockett Declaration (Exhibit 2011); (3) the April 19, 1995 meeting 17
report (Exhibit 2018), which states that the model was evaluated and Medeco was 18
pleased; (4) the set of photographs of the brass tool room model (Exhibit 2015); and (5) 19
the complete set of high quality photographs showing the details of the working model 20
(Exhibit 2013). Id. at 2-3. 21
Moreover, Field argues, because Mr. McLoy and Mr. Freeman were not properly 22
informed as to the subject matter of the Count, the majority of their declarations relates to 23

28 Paper No. 240
Interference 105,951

22

security features that are not part of the Count. Reply at 4 (citing, e.g., Ex. 1139 at ¶ 7 1
(analyzing whether the device shown in Exhibit 2017 included, inter alia, a “[u]nique 2
electronic ID code,” “[d]ecision making circuitry,” a “[k]ey blade,” “[s]oftware,” and “a 3
method of assigning a unique code (electrical or mechanical) to this mechanism”). 4
Additionally, argues Field, Mr. McLoy stated that he based his opinion on the fact that 5
the devices of Exhibits 2014 and 2017 did not “provide a user with a portal that responds 6
to a unique key controlled by the user” or “shields the structure and mode of operation of 7
the device from observation....,” neither of which, contends Field, are elements of the 8
count. Id. (citing Ex. 1138, ¶¶ 15-16). Therefore, argues Field, the Declarations of 9
Messrs. McLoy and Freeman should be afforded little or no evidentiary weight. Id. 10
We have found supra that the professional experiences of Messrs. McLoy and 11
Freeman qualify them to opine as experts with respect to the arts of locks and 12
locksmithing. However, “[a]n expert may base an opinion on facts or data in the case 13
that the expert has been made aware of or personally observed.” Fed. R. Evid. 703 14
(emphasis added); see also Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1321 (Fed. Cir. 15
2014) (“Rule 703 explicitly allows an expert to rely on information he has been made 16
aware of ‘if experts in the particular field would reasonably rely on those kinds of facts or 17
data in forming an opinion on the subject’”) (emphases added). It is evident from the 18
record, and not rebutted by Hyatt29, that neither Mr. McLoy nor Mr. Freeman were given 19
the chance to review a very substantial amount of the critical evidence in this 20
interference, even so far as to include the subject matter of the count itself. 21
We find that the lack of basic and critical information provided to the Declarants 22
by Hyatt severely restricts the evidentiary weight which we can accord their opinions 23

29 Hyatt has not sought to file a sur-reply with respect to this issue.
Interference 105,951

23

concerning count 1 of this interference. Hyatt could have better prepared its Declarants 1
by providing them with the information necessary to offer an informed opinion; it 2
apparently elected not to do so. We consequently accord little evidentiary weight to the 3
McLoy and Freeman Declarations insofar as they apply to the specific subject matter of 4
the interference. 5
The burden of proving prior conception and reduction to practice rests on Field, the 6
junior party in this interference. Conception is the formation, in the mind of the inventor, 7
of a definite and permanent idea of the complete and operative invention, as it is 8
thereafter to be applied in practice. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 9
F.2d 1367, 1376 (Fed. Cir. 1986). Conception must be corroborated by testimony or 10
evidence independent of the testimony of the inventor. Thurston v. Wulff, 164 F.2d 612 11
(C.C.P.A. 1947) 12
Field’s conception memorandum (Exhibit 2014), which describes the invention of 13
the count and is signed and corroborated by Mr. Perkins, a non-inventor, adequately 14
establishes a date of conception of November 29, 1994. The conception memorandum 15
recites: 16
What is claimed in this new invention is: 17
18
A cylinder comprising a shell and a barrel rotating inside a bore in the shell, 19
with an electro-mechanical release mechanism that is mounted inside the 20
barrel of the cylinder. The release mechanism interfaces with a sidebar 21
extending along the side of the barrel and projecting out of the diameter of 22
the barrel into a cavity in the shell. The release mechanism has at least ~ne 23
rotating member that in the locked position blocks the movement of the 24
sidebar, and thus blocks the rotation of the barrel in the shell. The rotating 25
member is provided with one or more grooves that can be positioned 26
underneath the sidebar and will allow the sidebar to move into an unlocked 27
position inside the diameter of the barrel. 28
Interference 105,951

24

1
Ex. 2014. We find, and Hyatt does not dispute, that this memorandum embodies all of 2
the limitations of count 1 and corroborates Mr. Field’s testimony. We therefore conclude 3
that Field conceived of the invention of count 1 on or before November 28, 1994. 4
With respect to Field’s actual reduction to practice, we conclude that the testing of 5
the lock barrel in the cylinder demonstrates effective reduction to practice. “To establish 6
an actual reduction to practice, the inventor must prove that: (1) he constructed an 7
embodiment or performed a process that met all the limitations of the interference count; 8
and (2) he determined that the invention would work for its intended purpose”. Cooper v. 9
Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). 10
Together Field’s Exhibits 2015 and 2017 demonstrate that the functional 11
electromagnetic lock prototype was actually constructed. Specifically, Exhibit 2015 12
demonstrates that the barrel, cylinder and blocking members were constructed as 13
described in count 1, viz., 14
an elongated, generally cylindrically shaped barrel having an exterior 15
configured for receipt in a bore of a shell and an interior containing a 16
blocking member, said barrel having a recess formed therein; 17
18
said blocking member being disposed in the recess of the barrel and 19
being substantially entirely contained within the barrel, said blocking 20
member being movable; 21
22
said recess in said barrel being configured to receive at least a portion 23
of said sidebar to permit said sidebar to move into and out of engagement 24
with a cavity in the shell while selectively permitting and blocking rotation 25
of said barrel with respect to the shell; 26
27
See Exhibit 2015 at B-2, B-3, B-4. Furthermore, the photographs on pages B-3 and B-4 28
depict the limitation of count 1 requiring: “the blocking member [in] a first position 29
Interference 105,951

25

where said drive mechanism limits movement of said sidebar and alternately [in] a 1
second position where said drive mechanism permits movement of said sidebar.” See 2
Exhibit 2015 at B-3, B-4 3
What is not depicted in Exhibit 2015 is the sidebar (detent) and the “electrically 4
activated drive mechanism located within and borne by the barrel, said drive mechanism 5
being disposed to move the blocking member to a first position where said drive 6
mechanism limits movement of said sidebar and alternately to a second position where 7
said drive mechanism permits movement of said sidebar.” However, Exhibit 2017 8
explicitly depicts the sidebar (113) as well as the electrically activated drive mechanism. 9
(106-112, 120). The Crockett Declaration states how the electrically activated drive 10
mechanism depicted in Exhibit 2017 works: 11
When a current was applied to the wire-core assemblies, each 12
assembly created a magnetic force. This force repelled the magnets that were 13
placed in the buttons, thereby causing the buttons to rotate. The travel of the 14
magnets and rotary buttons was limited by the small blocking/limiting pin 15
on the side of the base. The position of the blocking/limiting pin was 16
selected such that when each button rotated its maximum allowed amount, 17
the notches in the buttons would be aligned with each other as well as with 18
the notch in the brass base. Thus, upon application of a current, a lengthwise 19
cavity was created to receive the locking bar. The cavity was formed by the 20
notches and the shallows in the barrel. 21
22
In the absence of an applied current, the buttons would remain in (or 23
return to) their steady-state configuration (unaligned). This was due to the 24
attraction between the magnets in the buttons and the iron core within the 25
wire-core assembly. 26
27
Crockett Decl., ¶¶ 14-15. We find that this corresponds directly to the requirement of 28
count 1 of an “electrically activated drive mechanism located within and borne by the 29
Interference 105,951

26

barrel, said drive mechanism being disposed to move the blocking member to a first 1
position where said drive mechanism limits movement of said sidebar and alternately to a 2
second position where said drive mechanism permits movement of said sidebar.” We 3
therefore conclude that Field constructed an embodiment or performed a process that met 4
all the limitations of the interference count and thus satisfied the first requirement of 5
actual reduction to practice. 6
Field must next demonstrate that the invention would work for its intended 7
purpose. Field also satisfies this requirement. Mr. Field stated that, on or before April 8
16, 1995: 9
We performed testing of the model at Medeco to make sure that it worked 10
and would perform repeatedly and robustly within the power constraints we 11
had outlined. I recall the Medeco testing and that the model performed well. 12
We tested the actuator within the barrel and connected two wires to a 13
limiting power supply using alligator clips. We were interested in observing 14
the amount of current required by the actuator to overcome the magnetism 15
and align the rotating members. The only concern we had regarding the 16
prototype was that the Litton insert was using a little bit more power than we 17
would have liked — .5A from a 5V source. See Exhibit P [Exhibit 2018]. At 18
this point, there was no question that the prototype worked for its intended 19
purpose as an electromechanical lock. 20
21
Field Decl., ¶ 32. Similarly, Mr. Crockett declares that he tested the model, listing the 22
separate actions entailed in that testing: 23
In particular, I had performed at least the following actions with respect to 24
the model shown in Exhibit C [Ex. 2018]: 25
26
(i) retrieved the individual components from the model shop; 27
28
(ii) inserted magnets into the rotating button pieces 29
30
Interference 105,951

27

(iii) hand-wound the coils around the magnetic cores to build the electrical 1
drive mechanism of the base; 2
3
(iv) assembled the two buttons, base, drive mechanism, and support axis, to 4
form the actuator insert; 5
6
(v) supplied power and observed the rotation of the buttons in a counter-7
rotating fashion into a first position that aligned the buttons to form a cavity 8
from the notches in the buttons and the base; 9
10
(vi) removed the power and observed the return of the buttons to a second, 11
steady state position where the notches were not aligned; 12
13
(vii) observed the locking bar moving in and out of the locking insert 14
depending upon whether the buttons were in the first or second position; 15
16
(viii) repeated the power operations to ensure that the device did not stick; 17
and 18
19
(ix) repeatedly shocked the actuator assembly trying to dislodge the magnets 20
and cause a false alignment of the slots to no avail. 21
22
Crockett Decl., ¶ 41. Mr. Lumpkin likewise declared that: 23
I have a clear recollection of the first time Mr. Crockett demonstrated a 24
working model for me. I had visited Mr. Crockett at Litton and we were 25
standing in his cubicle. Using a 9V battery to actuate the release mechanism, 26
he caused the plastic actuator buttons of the release mechanisms rotate in 27
and out of alignment by alternately connecting and disconnecting the 28
battery. He did this many times which illustrated how effective the actuator 29
was. I was excited that his insert worked so well and was impressed that 30
there were no issues with sticking. 31
32
Lumpkin Decl., ¶ 19. Mr. Lumpkin also declared that: 33
I am certain that we placed the barrel (with release mechanism) into an 34
existing lock shell, sometimes referred to as a lock cylinder. We wanted to 35
Interference 105,951

28

verify that the materials used in the rotary insert had low enough friction to 1
release the locking bar when in their unlocked state. Because it was clear 2
that the insert worked well as an electromechanical release, and that the total 3
system functioned as an electromechanical lock, the focus of much of our 4
testing was on power. In order for the prototype to work as a viable product, 5
it needed to work within certain power constraints. 6
7
Lumpkin Decl., ¶ 25. The testimony of the inventor, Mr. Field, and that of Messrs. 8
Crockett and Lumpkin, all confirm that the functional prototype depicted in Ex. 2017 9
worked well for its expected purpose, viz., to move the blocking member to a first 10
position where said drive mechanism limits movement of said sidebar and alternately to a 11
second position where said drive mechanism permits movement of said sidebar. 12
Although both Mr. Field and Mr. Lumpkin express concern that the prototype drew 13
slightly more power than was optimal, the fact that the prototype may not have been 14
“product ready” does not disqualify the invention from having shown that it worked for 15
its intended purpose. “It is well-settled that commercial perfection is not required to 16
prove an actual reduction to practice.” DSL Dynamic Sciences Ltd. v. Union Switch & 17
Signal, 928 F.2d 1122, 1126 (Fed. Cir. 1991). We therefore find that Field has 18
successfully met the second requirement and we conclude that Field actually had 19
successfully reduced to actual practice the invention described in count 1 no later than 20
April 16, 1995. 21
Mr. Field conceived of the invention of count 1, as evidenced by the conception 22
memorandum, on or before November 28, 1994, and Mr. Perkins set to work on building 23
the brass model immediately thereafter. See Perkins Decl., ¶¶ 6-7. Following 24
construction of the brass model, Mr. Field testifies that he began searching for an 25
engineering firm specializing in electromechanical actuators and components and that 26
Interference 105,951

29

Mr. Lumpkin contacted Litton to set up a meeting. Field Decl., ¶ 21; Lumpkin Decl., ¶ 1
10. 2
The meeting took place on December 19, 1994 and, at that meeting, Mr. Crockett 3
and Melissa Vaden of Litton signed a confidentiality agreement with Medeco. Ex. 2016; 4
Field Decl., ¶ 22; Lumpkin Decl., 8. Mr. Crockett continues: “In late 1994, and in early 5
1995, I had many conversations with Medeco regarding Mr. Field’s ideas and design for 6
an electromechanical lock.” Crockett Decl., ¶ 9. A second meeting between Medeco and 7
Litton occurred on January 30, 1995, at which Mr. Field “formally presented the lock 8
assembly brass model shown in Exhibit [2015].” Crockett Decl., ¶ 10. Litton’s design 9
work commenced after the January 30th meeting. Id., ¶ 17. The parties entered into a 10
non-disclosure agreement effective as of that date. Ex. 2032. 11
Mr. Crockett states that “I personally prepared and sent a fax to Mr. Peter Field and 12
Mike Crockett on February 3, 1995, as a follow-up to our meeting” Crockett Decl., ¶¶ 17-13
19. Mr. Crockett states that “[t]he purpose of this fax was to get more information from 14
Medeco regarding the dimensional requirements of the recess in the barrel, which would 15
house the rotary locking insert” and that, at that time, “I had begun the preliminary layout 16
design for the rotary locking insert and was preparing additional drawings for the next 17
meeting.” Crockett Decl., ¶¶ 18-19. According to Mr. Crockett, “[t]he design process 18
was iterative as I received additional information from Medeco.” Id., ¶ 19. 19
On February 9, 1995, a meeting took place at Litton between Mr. Crockett and Mr. 20
Lumpkin, at which the use of coils and magnets as a drive mechanism for rotating the 21
buttons of the rotary insert was discussed. Crockett Decl., ¶ 20. Mr. Crockett adduces 22
his notes of the meeting as corroboration. See Ex. 2021. Mr. Crockett attests that the 23
project was continuous and characterized by regular communications between Litton and 24
Interference 105,951

30

Medeco throughout the design process. Crockett Decl., ¶¶ 23 (“Throughout the design 1
process, I was in regular communication with Mr. Field and Mr. Lumpkin. I 2
communicated my progress to them, and they provided me both drawings and lock 3
components”), 24, 29, 30; see also Lumpkin Decl., ¶ 17 (“Over the next few months Mr. 4
Crockett and I continued to develop the design. We spoke regularly; we also exchanged 5
a number of drawings and designs based on Mr. Field’s ideas”). These drawings have 6
been entered as Exhibits by Field. See Exs. 2025; 2026; 2027; 2029; 2030. 7
Mr. Crockett also declares that “in late February and March 1995, we were 8
working on the exchange of drawings, machining components, assembling devices, and 9
experimenting with their functionality” and that by “late March/early April of 1995, I had 10
finished making and testing the model.” Crockett Decl., ¶¶ 37, 39. Mr. Crockett states: 11
[O]n April 19, 1995, we had a meeting at Litton in Blacksburg, VA, that 12
included Mr. Field and Mr. Lumpkin of Medeco and myself, Ms. Vaden, and 13
Phil Reed of Litton. See Exhibit P. The purpose of the meeting was to 14
discuss the progress that I had made on the rotary locking insert and locking 15
mechanism model for the Medeco Lock Project, as well as to discuss 16
financing for future development of a commercial product. As I recall, Mr. 17
Field and Mr. Lumpkin were both happy with the functionality of the model 18
that I had built. 19
20
Id., ¶ 39. As we have related supra, by April 19, 1995, Field had actually reduced the 21
invention recited in count 1 to practice. 22
We are not, moreover, persuaded by Hyatt’s arguments in opposition to Field’s 23
priority motion. Field has not argued, contra Hyatt, that the early brass model 24
manufactured by Mr. Perkins reduced the invention to actual practice. Rather, it was the 25
functional prototype that was tested in late March and early April 1995 that represented 26
Interference 105,951

31

Field’s reduction to practice. See Field Decl., ¶ 32; Crockett Decl., ¶ 41; Lumpkin Decl., 1
¶ 19, 25. 2
Hyatt’s argument that the cylinder of the brass model lacked a cavity to receive the 3
barrel sidebar lacks merit: a close inspection of the barrel in Exhibit 2015 reveals such a 4
cavity. See Ex. 2015, B-2, B-3, B-4 (edge of cavity visible at approximately the 8 5
o’clock position on the cylinder bore). Hyatt’s arguments that the device could not work 6
as a lock, or as part of a lock, because there was no keyway in element 101 of Exhibit 7
2017, and that device lacked security verification, are irrelevant, since these devices are 8
not within the scope of the count. Likewise, Hyatt’s argument with respect to Field 9
Exhibit 2035 is irrelevant, because the document was produced after the date of Field’s 10
actual reduction to practice and, as we have noted supra, Field is not required to show 11
that its invention, although reduced to practice, was a fully commercially-ready product. 12
DSL Dynamic Sciences, 928 F.2d at 1126. 13
We therefore conclude that Field has shown that it had a conception and actual 14
reduction to practice of an invention of the count prior to Hyatt’s accorded benefit date of 15
September 29, 1995. We do not reach Field’s diligence arguments. Those arguments do 16
not address the appropriate time frame given our holding below regarding Hyatt’s 17
conception date. 18
III. Hyatt’s Priority Motion30 19
A. 20
Hyatt claims a date of conception of on or about February 16, 1987. Hyatt Priority 21
Statement31 at 2. In support of this claim, Hyatt adduces that each constituent limitation 22

30 Papers No. 66-67
31 Paper No. 47
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Interference 105,951

33

1
1. User swipes card or enters PIN in nearby reader or pinpad. 2
3
2. The system access controller board supplies power at all times to 4
padlock PCB. If the person swiping the card is authorized then the 5
controller sends an unlock signal to the padlock PCB. 6
3. Padlock PCB transistor switches power to the rotary solenoid located 7
in the cylinder plug for a few seconds. 8
9
4. The rotary solenoid rotates the rotor so a recess lines up with the 10
locking ball in the plug. 11
12
5. The user turns the thumbturn begin to turn the plug so that the plug 13
locking ball is forced from the recess in the cylinder shell and into the 14
recess in the rotor. 15
16
6. The plug has a cam surface on the end with 2 recesses. 17
18
7. The user rotates the plug until the shackle locking balls may move 19
inward, freeing the shackle to be removed, much in the way American 20
Junior [?] padlocks work. 21
22
The lock body can be laminated or solid. 23
24
The cable connected from the access controller should be armored. 25
26
If the padlock is laminated, then the bottom cover plate can be riveted after 27
components are loaded from the bottom. 28
29
The thumbturn should be shaped so it cannot be gripped by a tool. 30
31
The rotary solenoid must be spring biased so when power is removed it 32
forces plug locking ball into the recess in the shell again. The plug locking 33
ball would be aligned with the recess in the cylinder shell if the shackle is in 34
the locked position with the shackle locking balls in the locking recesses 35
located in the shackle. 36
Interference 105,951

34

1
Ex. 1009. Both pages of the two-page Exhibit paper are signed and dated (“2/16/1987”) 2
at bottom right by the inventor, Mr. Richard G. Hyatt, Jr. and by his father, Mr. Richard 3
G. Hyatt, Sr. 4
Hyatt submits its Appendix III-A34 in support of its argument that this document 5
embodies all of the limitations of count 1. Motion at 13. Appendix-IIIA is organized as 6
a claim chart, comparing the various features of the embodiment depicted in Exhibit 1009 7
with the requirements of count 1: 8

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Appendix IIIA is a comparison of the features of Exhibit 1009 and the 1
count in the form of a claim chart 2
3
Id.; see also Exs. 1009, 1056, ¶¶ 35-39. 4
We have examined Exhibit 1009 and Hyatt’s Appendix IIIA, and after a careful 5
comparison of the elements of the invention depicted in the Exhibit and the limitations 6
recited in count 1, we agree with Hyatt that the invention embodies all of the limitations 7
disclosed in the count. Moreover, we find that Exhibit 1009 demonstrates that Mr. Hyatt, 8
Jr. had formed the idea in sufficiently final form, including a reasonable belief that the 9
invention will work for its intended purpose, so that only the exercise of ordinary skill 10
remained to reduce the invention to practice. See, e.g., Austin Powder Co. v. Atlas 11
Powder Co., 568 F. Supp. 1294, 1303 (D. Del. 1983). We therefore find that Exhibit 12
1009 demonstrates an embodiment of all of the limitations of the count. 13
Conception also requires corroboration past the testimony of the inventors. See 14
Holmwood v. Sugavanam, 948 F.2d 1236, 1239 (Fed. Cir. 1991). The corroborating 15
evidence must be in the form of (1) the testimony of non-inventors who, from discussions 16
with the alleged inventors, understood the claimed invention at the time it purportedly 17
was conceived or (2) from documents created at the time of the alleged conception that 18
show the alleged invention. See Hahn v. Wong, 892 F.2d 1028, 1032-33 (Fed. Cir. 1989); 19
see also Amax Fly Ash Corp. v. United States, 514 F.2d 1041, 1050 (Ct. Cl. 1975). The 20
corroborating evidence must show that the alleged inventor disclosed to others his 21
“completed thought expressed in such clear terms as to enable those skilled in the art to 22
make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). 23
In this instance, Exhibit 1009 provides signed and dated documentary evidence 24
that corroborates the testimony of Messrs. Hyatt, Jr. and Sr. See Ex. 1056 (the Hyatt, Jr. 25
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Declaration”), ¶¶ 33, 39; Ex. 1055 (the “Hyatt, Sr. Declaration”), ¶¶ 16, 17. It is true, as 1
Field observes, that Mr. Hyatt, Jr., in his declaration, admits that he and his father 2
conceived of the electronic padlock concept together. Opp.35 at 2 (citing Hyatt, Jr. Decl., 3
¶ 33). Mr. Hyatt, Jr. also referred to Mr. Hyatt, Sr. as the “co-inventor” of the electronic 4
padlock concept. Hyatt, Jr. Decl., ¶ 39 (“I left the electronic padlock concept, with its 5
documentation and the logo, with my father (the co-inventor), when he bought Security 6
Hardware systems from me in late 1988”). However, Mr. Hyatt, Jr. is listed as the sole 7
inventor on the ’399 patent and on the affidavit of the parent U.S. Application No. 8
10/440,308. We have not been directed to evidence that Mr. Hyatt, Sr. disputes his son’s 9
listing as sole inventor of the invention disclosed in the ’399 patent. Furthermore, Field 10
did not seek authorization to move for unpatentabiliy of the ’399 patent on the ground of 11
improper inventorship during the substantive motions phase of this interference, when 12
such a motion would have been proper, nor at any other time during the course of this 13
interference. We therefore determine that Field has not shown sufficient reason why the 14
testimony of Mr. Hyatt, Sr. may not act as corroborative evidence. The signed and dated 15
document itself, as well as Mr. Hyatt, Sr.’s testimony, provides sufficient corroborative 16
support for Mr. Hyatt, Jr.’s testimony. See Hahn, 892 F.2d at 1032-33; see also Driscoll 17
v. Cebalo v. Hoegerle, 5 U.S.P.Q.2d (BNA) 1477, 1482 (BPAI, 1982) (The filing of a 18
patent application and the accompanying oath or declaration is sufficient evidence to 19
raise a presumption that the person(s) named therein did in fact conceive the invention). 20
Furthermore, Mr. Hyatt, Sr. declared that: 21
We thought about and discussed how we could have the parts of this device 22
made; and, in the meantime, I filed these pages away at Kittle’s. 23

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Unfortunately, by October of 1987, our machinist Pete Brolund fell victim to 1
cancer and passed away before he had the opportunity to start work on 2
constructing the components of our design. 3
4
Hyatt, Sr. Decl., ¶ 17. This at least also suggests that the conceived invention had 5
possibly been disclosed to Mr. Brolund prior to his unfortunate demise.36 6
We consequently conclude that Hyatt and conceived and corroborated a full 7
complete embodiment of the device on or about February 16, 1987. 8
9
B. 10
Here, the trail runs cold for Hyatt. Mr. Hyatt, Jr. states that: “I left the electronic 11
padlock concept, with its documentation and the logo, with my father (the co-inventor), 12
when he bought Security Hardware systems from me in late 1988.” Hyatt, Jr. Decl., ¶ 39. 13
Likewise, Mr. Hyatt, Sr. declares: “We thought about and discussed how we could have 14
the parts of this device made; and, in the meantime, I filed these pages away at Kittle’s 15
.… These drawings [Ex. 1009] remained in that file until now.” Hyatt, Sr. Decl., ¶ 17. 16
Hyatt does not argue that it reduced the invention disclosed in Exhibit 1009 to actual 17
practice prior to the September 29, 1995 filing of Hyatt’s ’594 application. Indeed, Mr. 18
Hyatt, Jr. states that: “Because there were no commercial solutions to solve some 19
applications for electro-mechanical locks for electronic access control systems, I invented 20
two more product concepts, but only prototyped the Russwin, Corbin electrified 21
conversion kit.” Hyatt, Jr. Decl., ¶ 42. Mr. Hyatt, Jr. states further that “[i]n late October 22

36 Furthermore, Mr. Hyatt, Jr., in his Declaration, indicates that Mr. Brolund may have
fabricated certain parts for a potential prototype. See Hyatt, Jr. Decl. ¶ 93 (“On or around
March 1995, I had a machinist modify some parts to adapt this motor to the parts Pete
Brolund36 had made for the padlock”).
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1994, I explained to Peter Field that I had worked on an ‘electronic padlock project’ with 1
my father.” Hyatt, Jr. Decl., ¶ 79 (citing Exhibit No. 1009). Mr. Hyatt, Jr. further 2
declares: 3
Upon returning to the United States from Koln on March 9, 1995, I was 4
feeling quite excited about further developing the ball detent concept 5
prototype that my Father had retained, and I continued to write my patent 6
application to describe the aspects and features of my several concepts for an 7
electromechanical cylinder lock and a cylinder plug for the lock. From my 8
brother at Kittle’s, I obtained an OSI Omnilock and removed the small Swiss 9
made small gear motor. Without having something custom made in the way 10
of a rotary solenoid or motor, it was the smallest that I could quickly 11
procure. Kittle’s had purchased this lock around 1990 and had not sold it. On 12
or around March 1995, I had a machinist modify some parts to adapt this 13
motor to the parts Pete Brolund37 had made for the padlock, completing the 14
prototype of the electronic padlock cylinder. I have found the padlock but 15
not the separate box of parts yet. 16
17
Hyatt, Jr. Decl., ¶ 93. And Mr. Hyatt, Jr. also declares that: 18
During my preparation of my patent application to describe the aspects and 19
features of my several concepts for an electromechanical cylinder lock and a 20
cylinder plug for the lock, I also worked by performing patent searches and 21
reading patents in the Crystal City USPTO Public Search Room on the 22
following dates: 3/16/95, 4/3/95, 5/19/95, 8/11/95, 8/4/95, 8/15195, 8/18/95, 23
9/29/95 and 3/8/96, I also used the patent repository in Manhattan Central 24
Library of the New York Public Library, on 8/30/95 (see Exhibit No. 1029). 25
26
Hyatt, Jr. Decl., ¶ 95. 27

37 Mr. Brolund had passed away approximately 8 years previously. Hyatt, Jr. Decl., ¶ 10;
Hyatt, Sr. Decl., ¶ 17. We assume from this statement that he had fabricated some parts
for a prototype, but that a full model had not been constructed. See Hyatt, Sr. Decl., ¶ 17
(“[Mr. Brolund] passed away before he had the opportunity to start work on constructing
the components of our design”).
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As we have related supra, Hyatt was the first to conceive the invention disclosed in 1
count 1 of this interference in February of 1987. Field subsequently conceived of the 2
invention in November 1994 and reduced it to actual practice in April 1995, prior to 3
Hyatt’s constructive reduction to practice in September, 1995. Although Mr. Hyatt, Jr. 4
declared that a “prototype of the electronic padlock cylinder” was constructed in March, 5
1995, Hyatt provides no corroborative evidence that the prototype was actually reduced 6
to practice or that it would work for its intended purpose, nor does Hyatt even argue that 7
it did. Hyatt, Jr. Decl., ¶ 93. 8
Because Hyatt does not argue that the invention was actually reduced to practice in 9
March, 1995, Hyatt, to prevail, must show that it practiced reasonable diligence during 10
the entire period from before the conception of the invention by Field until its 11
constructive reduction to practice. Brown v. Barbacid, 436 F.3d 1376, 1378 (Fed. Cir. 12
2006) (“The party that is first to conceive the invention in interference, if last to reduce 13
the invention to practice, is entitled to the patent based on prior conception if, as first to 14
conceive, he exercised reasonable diligence from a time before the other party’s 15
conception date to his own reduction to practice date”); see also, generally, Richard H. 16
Stern, Priority Paradoxes in Patent Law, 16 VAND. L. REV. 131 (1962). 17
Diligence involves the continued application of the inventor or his representatives 18
to the task of reducing the conceived invention to practice. Naber v. Cricchi, 567 F.2d 19
382, 385 (C.C.P.A. 1977). The law requires ordinary or reasonable diligence, and the 20
question of diligence is considered in light of all the circumstances. Radio Corp. of 21
America v. Radio Engineering Labs., 293 U.S. 1, 13–14 (1934); Hybritech Inc. v. Abbott 22
Laboratories, 4 U.S.P.Q.2d (BNA) 1001, 1006 (C.D. Cal. 1987), aff’d, 849 F.2d 1446 23
(Fed. Cir. 1988). The “critical period” for demonstrating diligence is the interval between 24
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just before the date of the opponent’s corroborated date of conception until the date on 1
which the party that was first to conceive reduced the invention to practice, whether 2
actually or constructively. 35 U.S.C. § 102(g); see also English v. Ausnit, 38 U.S.P.Q.2d 3
1625, 1638 (B.P.A.I. 1993). 4
This Hyatt does not do. According to the declarations of Messrs. Hyatt, Jr. and Sr., 5
the plans adduced as Exhibit 1009 were left with, and filed by, Mr. Hyatt, Sr. Hyatt, Sr. 6
Decl., ¶ 17; Hyatt, Jr. Decl., ¶ 39. By Mr. Hyatt, Jr.’s own admission, he did not resume 7
work on the project until his return from Köln in early March of 1995, which was 8
subsequent to Field’s November, 1994 conception date. Hyatt, Jr. Decl., ¶ 93 (“Upon 9
returning to the United States from Koln on March 9, 1995, I was feeling quite excited 10
about further developing the ball detent concept”). 11
Hyatt alleges that an injury to Mr. Hyatt Jr.’s back interrupted his reasonable 12
diligence on developing the project, but we are not persuaded. Motion at 8. Mr. Hyatt, 13
Jr. declared, with respect to his back injury: “I blew a lumbar disc carrying the samples 14
unaided and was on medical leave from October 1993 until nearly May 1994, when I had 15
surgery. Medeco was good to pay my salary during that time. I continued with back pain 16
after returning to work” and that “I was absent a great deal from April-August of 1994 17
due to my back injury/surgery, and then began working part time.” Hyatt, Jr. Decl., ¶¶ 18
75, 78. However, by Mr. Hyatt, Jr.’s own admission, he did not sustain his injury until 19
over six years after the date of conception of his invention. Id. And although Mr. Hyatt, 20
Jr. sustained his injury a year prior to commencement of the critical period, Hyatt 21
adduces no evidence that Mr. Hyatt, Jr. was diligent for any period prior to March 1995, 22
including the initial four months of the critical period (November 1994-March 1995), 23
during part of which time, Mr. Hyatt, Jr. was capable of international travel. Mr. Hyatt, 24
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Jr. admits that he returned from medical leave by at least May 1994. Hyatt, Jr. Decl., ¶¶ 1
75, 78. Hyatt did not direct us to sufficient evidence or convincing argument that Mr. 2
Hyatt, Jr. was reasonably diligent in reducing the conceived invention to practice in the 3
interval beginning just before Field’s November 1994 conception date and extending 4
through Mr. Hyatt, Jr.’s return from Köln in March of 1995. 5
Nor are we persuaded by Hyatt’s argument that Mr. Hyatt, Jr.’s patent searches 6
during the interval between March 1995 and March 1996 constitute the requisite 7
reasonable diligence. As an initial matter, the searches conducted by Mr. Hyatt, Jr. 8
subsequent to September 29, 1995 are irrelevant to the question of Hyatt’s diligence, 9
because Hyatt constructively reduced its invention to practice on that date. Furthermore, 10
leaving aside the interval between Field’s conception and the initial search, Mr. Hyatt, Jr. 11
lists only eight days of searching during the critical period. See Hyatt, Jr. Decl., ¶ 95. 12
Moreover, even disregarding the interval between Field’s conception and the 13
commencement of these searches in March, 1995; eight days of patent searching over the 14
course of the critical period does not reasonably constitute the level of diligence required 15
by the law. 16
17
IV. Conclusion 18
In summary, we conclude that Hyatt was the first to conceive of the invention, in 19
February of 1987. Field conceived of the invention in November 1994 and reduced it to 20
practice by April of 1995. Hyatt did not reduce its invention to practice prior to the 21
September 29, 1995 filing date of its ’594 application. Furthermore, Hyatt was not 22
reasonably diligent during the entire period extending from before Field’s conception 23
through Hyatt’s constructive reduction to practice, particularly during the interval 24
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between Field’s conception and Mr. Hyatt, Jr.’s return to developing the device in March 1
of 1995 during which, as far as the record before us shows, Hyatt did not diligently 2
pursue its conceived invention. See Hyatt, Jr., Decl., ¶ 93. 3
We therefore conclude that Field has shown that Hyatt was not the prior inventor 4
of the claimed subject matter. We therefore GRANT Field’s motion for priority and 5
DENY Hyatt’s priority motion. 6
7
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cc (via electronic transmission): 1
Attorney for Field: 2
3
Joseph A. Hynds 4
R. Danny Huntington 5
Rothwell, Figg, Ernst & Manbeck, PC 6
jhynds@rfem.com 7
dhuntington@rfem.com 8
9
Attorney for Hyatt: 10
11
Robert E. Bushnell 12
Mark J. Konienczny 13
R.E. Bushnell & Law Firm 14
2029 K Street, N.W., Suite 600 15
Washington, DC 20006 16
Phone: 202.408.9040 17
Facsimile: 202.289.7100 18
rebushnell@aol.com 19
mail@REBushnell.com 20