Krisko et al.v.Brown et al.

Patent Trial and Appeal Board

May 22, 2018

10587766 (P.T.A.B. May. 22, 2018)

BoxInterferences@uspto.gov Filed: 22 May 2018 Tel: 571-272-7822 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Baldwin Filters, Inc., Junior Party (Application 13/042,859, Inventors: Gene W. Brown and Steven J. Merritt), v. Donaldson Company, Inc., Senior Party (Patent 7,674,308 Inventors: William J. Krisko, Wayne R. W. Bishop, Steven S. Gieseke, and Benny K. Nelson.) Patent Interference No. 106,021 (DK) (Technology Center 1700) Judgment 37 C.F.R. § 41.127(a) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. Interference 106,021 2 We denied the Priority Motion of Junior Party Baldwin Filters, Inc. 1 (“Baldwin”). (See Decision on Priority, Paper 819.) Accordingly, the claims of 2 Baldwin application 13/042,859 that correspond to Counts 2 and 3 are finally 3 refused. See 35 U.S.C. § 135(a).1 4 In addition, during the first phase of this proceeding, Baldwin Motion 5 was 5 granted-in-part, holding certain of claims of Senior Party Donaldson, Inc. 6 (“Donaldson”) unpatentable over the prior art (see Decision on Motions, Paper 7 535, 25-55) and Donaldson Motion 7/8 was granted-in-part, holding certain of 8 Baldwin’s claims unpatentable over the prior art (see id. at 58-68). Claims of both 9 parties were also held to be unpatentable for failure to rebut the presumption of 10 cross-applicability created by their respective motions under 37 C.F.R. § 41.207(c). 11 (See id. at 68-74.) 12 Accordingly, it is ORDERED that all of the claims of Baldwin’s involved 13 application 13/042,859, i.e., claims 1-9 and 11-41, are FINALLY REFUSED; 14 FURTHER ORDERED that claims 1-8, 11-13, and 16-24 of Donaldson’s 15 involved patent 7,674,308, be CANCELED; 16 FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) 17 and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; 18 FURTHER ORDERED that a copy of this judgment shall be entered into the 19 administrative record of involved application 13/042,859, and patent 7,674,308; 20 FURTHER ORDERED that, if a party seeks judicial review, the party must 21 file a notice with the Board within seven days of initiating judicial review. 22 37 C.F.R. § 41.8(b). We direct the parties’ attention to Biogen Idec MA, Inc., v. 23 Japanese Foundation for Cancer Research, 785 F.3d 648, 657 (Fed. Cir. 2015). 24 1 Any reference to a statute is to statute that was in effect on March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011). Interference 106,021 3 cc (via email): Counsel for Junior Party Baldwin Richard Neifeld NEIFELD IP LAW, PC rneifeld@neifeld.com Andrew J. Heinisch REINHART BOERNER VAN DEUREN P.C. aheinisch@reinhartlaw.com Counsel for Senior Party Donaldson W. Todd Baker OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP tbaker@oblon.com Dennis R. Daley MERCHANT & GOULD P.C. ddaley@merchantgould.com BoxInterferences@uspto.gov Filed: 22 May 2018 Tel: 571-272-7822 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Baldwin Filters, Inc., Junior Party (Application 13/042,859, Inventors: Gene W. Brown and Steven J. Merritt), v. Donaldson Company, Inc., Senior Party (Patent 7,674,308 Inventors: William J. Krisko, Wayne R. W. Bishop, Steven S. Gieseke, and Benny K. Nelson.) Patent Interference No. 106,021 (DK) (Technology Center 1700) Decision - Priority 37 C.F.R. § 41.125(a) Before SALLY GARDNER LANE, JAMES T. MOORE, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. Following a decision on the parties’ preliminary motions (see Decision - 1 Motions 37 C.F.R. § 41.125(a), Paper 535), which determined that many of the 2 parties’ claims and the subject matter of the original count are unpatentable, this 3 Interference 106,021 2 interference was redeclared with Count 2 and Count 3. (See Redelcaration, Paper 1 536, 1-4.) The determination of benefit in the redeclaration accorded Junior Party 2 Baldwin Filters, Inc. (“Baldwin”) the filing date of its earlier applications 3 11/939,662, on 14 November 2007, and 10/979,876, on 2 November 2004, for both 4 Counts 2 and 3. (See id. at 5.) Senior Party Donaldson Company, Inc. 5 (“Donaldson”) was accorded benefit of its international application 6 PCT/US05/09813, field 23 March 2015, and its provisional application 7 60/556,133, filed 24 March 2004, for both Counts 2 and 3. (See id.) 8 The interference is now before us for consideration of the parties’ priority 9 motions.1 (See Baldwin Motion 1 (Priority) (“Baldwin Priority Motion”), Paper 10 567, and Senior Party Donaldson Priority Motion, Paper 709.) Baldwin fails to 11 persuade us that its inventors reduced to practice or conceived of the subject matter 12 of either count before Donaldson’s accorded benefit date. Accordingly, we deny 13 Baldwin’s motion for priority and need not consider Donaldson’s motion. 14 Baldwin Priority Motion 15 To be sufficient Baldwin’s motion must provide a showing supported by 16 appropriate evidence such that, if unrebutted, would justify the relief sought. The 17 burden of proof is on Baldwin. 37 C.F.R. § 41.208(b). Specifically, Baldwin must 18 show either a reduction to practice earlier than Donaldson’s earliest accorded 19 benefit date or an earlier date of conception and reasonable diligence towards 20 reduction to practice. See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 21 1998) ([P]riority of invention goes to the first party to reduce an invention to 22 practice unless the other party can show that it was the first to conceive of the 23 1 Both parties requested oral argument. (See Papers 812 and 814.) After review of the record, it was determined that oral argument is not necessary in this case. The requests are therefore denied. Interference 106,021 3 invention and that it exercised reasonable diligence in later reducing that invention 1 to practice.”). 2 Baldwin does not assert an actual reduction to practice earlier than 3 Donaldson’s earliest benefit date (24 March 2004). (See Baldwin Priority Motion, 4 Paper 567, 5:4-8 (“Some time between 10/29/04 and 11/5/2004, Baldwin had 5 produced about twenty CA4700 filters.”).) Accordingly, we first consider 6 Baldwin’s evidence of conception. 7 Conception requires more than “a general goal or research plan”; it requires 8 a “definite and permanent,” “specific, settled idea,” namely, the idea defined by the 9 count at issue. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 10 (Fed. Cir. 1994). A party must show possession of every limitation recited in a 11 count and the limitations must have been known to the inventor at the time of the 12 alleged conception. See Davis v. Reddy, 620 F.2d 885, 889 (CCPA 1980). 13 Conception is the complete performance of the mental part of the inventive act, 14 wherein all that remains is construction. It is the formation in the mind of the 15 inventor of a definite and permanent idea of the complete and operative invention, 16 as it is to be applied in practice. See Coleman v. Dines, 754 F.2d 353, 359 (Fed. 17 Cir. 1985) (quoting Gunter v. Stream, 573 F.2d 77, 80, (CCPA 1978).) 18 Conception must be proved by corroborating evidence showing that the 19 inventor disclosed to others his “completed thought expressed in such clear terms 20 as to enable those skilled in the art” to make the invention. Field v. Knowles, 183 21 F.2d 593, 601 (CCPA 1950). An inventor’s testimony must be corroborated by 22 independent evidence in order to guard against the temptation to mischaracterize 23 the events of the past for the inventor’s benefit. See Mahurkar v. C.R. Bard, Inc., 24 79 F.3d 1572, 1577 (Fed. Cir. 1996). Corroboration is determined under a rule or 25 reason analysis, taking into account all of the pertinent evidence. See Price v. 26 Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). 27 Interference 106,021 4 Count 2 1 Count 2 recites: 2 An air filter cartridge comprising: 3 (a) a fluted filter media pack comprising 4 fluted media secured to facing media; 5 the media pack having an inlet flow face, an outlet flow 6 face, and an axial length between the inlet flow face and outlet 7 flow face; 8 the media pack defining a longitudinal axis; and 9 (b) a shell and a seal arrangement; 10 the shell having a sidewall and a portion that is canted 11 relative to the longitudinal axis of the media pack; 12 the shell sidewall circumscribing the media pack; 13 the media pack being secured within the shell; 14 the seal arrangement being molded to the canted portion. 15 (Redeclaration, Paper 536, 2.) To prove earlier invention of an embodiment of 16 Count 2, Baldwin bears the burden of presenting persuasive evidence that its 17 inventors conceived of an air filter cartridge with a media pack having fluted media 18 and a shell with a portion of its sidewall “canted” relative to the longitudinal axis 19 of the media pack. 20 Baldwin argues that conception of Count 2 is demonstrated “[1] not later 21 than 5/1/2003 based upon Option 9; [2] not later than 5/12/2003 based upon Option 22 8 and Option 9; [3] not later than 1/14/2004 based upon the early CA4700 design; 23 and [4] not later than 2/24/2004 and 2/25/2004 based upon Concepts L and P.” 24 (Baldwin Priority Motion, Paper 567, 1:5-8.) Because Baldwin asserts a different 25 date by which conception occurred based on each document, we evaluate the 26 evidence provided for each asserted date separately. Baldwin does not provide any 27 other explanation showing that the documents interrelate to show a single 28 conception of the entire subject matter of Count 2. Thus, we evaluate whether the 29 preponderance of the evidence supports Baldwin arguments that [1] conception 30 was complete by 1 May 2003 based on documents showing Option 9; [2] that 31 Interference 106,021 5 conception was complete by 12 May 2003 based on the documents showing 1 Option 8 and 9; [3] conception was complete by 14 January 2004 based documents 2 showing the CA4700 design; or [4] conception was complete by no later than 25 3 February 2004 based on arguments regarding Concept L and P.2 4 1. 1 May 2003 - Option 9 5 Baldwin argues that “Option 9” shows the Baldwin inventors conceived of 6 an embodiment of Count 2 no later than 1 May 2003. (Baldwin Priority Motion, 7 Paper 567, 1:5-6.) Baldwin fails to explain in its motion how documents depicting 8 Option 9 support its arguments, stating only that “Steve Merritt shows that Options 9 8 and 9 read on count 2” and citing to paragraphs 5-42 of his declaration (Exhibit 10 2615). (Baldwin Priority Motion, Paper 567, 3:1-2.) A motion must include “[a] 11 full statement of the reasons for the relief requested, including a detailed 12 explanation of the significance of the evidence and the governing law, rules, and 13 precedent.” 37 C.F.R. § 41.121(c)(iii). Mere reference to the declaration of an 14 inventor does not satisfy this requirement. See also Standing Order, Paper 2, 15 ¶ 106.2 (“Incorporation by reference and combined papers are prohibited to reduce 16 the chance risk of overlooking an argument and to improve the efficiency of 17 decision making. Incorporation of arguments by reference amounts to a self-help 18 increase in the length of the brief and a pointless imposition on the Board's time. 19 Each motion, opposition, and reply must make all arguments accessible to readers, 20 2 Baldwin asserts that conception occurred not later than 24 February 2004 and 25 February 2004 based upon Concepts L and P. (Baldwin Priority Motion, Paper 567, 1:7-8.) Because conception requires a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice,” Hybritech Inc. v. Monoclonal Antibodies, Inc. 802 F.2d 1367, 1376 (Fed. Cir. 1986), it occurs on the day when the concept is complete, not the day it began. Thus, we consider only the later of these two dates, 25 February 2004, in regard to Concepts L and P. Interference 106,021 6 rather than ask them to play archeologist with the record. DeSilva v. DiLeonardi, 1 181 F.3d 865, 866-67 (7th Cir 1999).”).) On this basis alone, we could determine 2 that Baldwin fails to fulfill its burden of showing that Option 9 is evidence of 3 conception on any date. Even when we consider inventor Merritt’s testimony, 4 though, we are not persuaded that Option 9 provides evidence of conception of 5 Count 2. 6 We are not persuaded that Option 9 demonstrates conception of an air filter 7 cartridge with a shell having “a sidewall and a portion that is canted relative to the 8 longitudinal axis of the media pack.” Specifically, we are not persuaded that Mr. 9 Merritt uses a reasonable interpretation of the term “canted” to identify the portion 10 of Option 9 he asserts shows conception of that element of the count. 11 Mr. Merritt cites Exhibit 21473, which is reproduced below. 12 3 Baldwin cites several exhibits as depicting Option 9, including: Exhibit 2258, page 18; Exhibit 2148, page 11; Exhibit 2251, page 11, Exhibit 2252, page 163, and Exhibit 2089. (See Baldwin Priority Motion, Paper 567, at 1:19-21.) A different exhibit, Exhibit 2147 is referenced by Mr. Merritt in his declaration regarding conception based on Option 9. (See, e.g., Steve Merritt Declaration, Options 8 and 9 Conception of Count 2 (“Merritt Decl. Options 8 and 9”), Exh. 2615, ¶ 5.) Exhibit 2147 appears to be a marked-up copy of Exhibit 2148, page 11. Neither Baldwin nor Mr. Merritt explain other differences between all of the exhibits cited as depicting Option 9. Although the inconsistency between Baldwin’s arguments and Merritt’s testimony could render the testimony irrelevant, the numerous exhibits cited for Option 9 appear to depict the same diagram. We refer to Exhibit 2147 for clarity. Interference 106,021 7 1 Exhibit 2147 depicts a portion of a filter design with different parts labeled, 2 including bends in the “Gasket/Frame Interface” identified as “[6]” and “[7]”. 3 Merritt provides a “snippet” of the filter of Option 9, rotated 90o to the left, in order 4 to identify the canted portion of the sidewall. (See Steve Merritt Declaration, 5 Options 8 and 9 Conception of Count 2 (“Merritt Decl. Options 8 and 9”), Exh. 6 2615, ¶ 8.) The “snippet” is reproduced below. 7 8 (See id.) According to Mr. Merritt, the thin wavy red line points to the “canted” 9 portion. (See id.) We are not persuaded that the bend in the gasket/frame is 10 “canted” under a reasonable interpretation of that term. 11 First, to the extent we understand his testimony, Mr. Merritt asserts that the 12 lack of certain features characterizes a canted element because both Option 9 and 13 Interference 106,021 8 certain Donaldson embodiments lack these features. In Mr. Merritt’s opinion, the 1 portion of Option 9 identified in the “snippet” above “equates with the canted 2 portion in Donaldson’s involved patent, which is Donaldson’s funnel surface 64 3 shown in Ex. 1001, Fig. 8.” (Id. at ¶ 6.) We disagree. 4 Figure 8 of Donaldson’s involved patent 7,674,308 is reproduced below with 5 element 64 circled. 6 7 8 Figure 8 depicts the interaction between a gasket member mounted on the primary 9 filter cartridge and structural members on certain housing components. (See ’308 10 patent, Exh. 1001, at 2:53-56.) According to Mr. Merritt, surface 64 of Donaldson 11 Figure 8 defines a canted element similar to the bend he identifies in Option 9. 12 (See Merritt Decl. Options 8 and 9, Exh. 2615, ¶ 9.) Specifically, Mr. Merritt 13 testifies that 14 like Donaldson's "funnel transition portion 64," Option 9's canted portion 15 opposes a surface extending parallel to the axis of the filter. That is, neither 16 Donaldson nor Baldwin's canted portion has an opposing surface that is also 17 canted relative to the axis of the filter. In other words, the cant in each of 18 Donaldson and Baldwin's canted portions is defined by a single canted 19 surface. 20 Interference 106,021 9 1 (Merritt Decl. Options 8 and 9, Exh. 2615, ¶ 9.) 2 Initially, Mr. Merritt’s reasoning is not persuasive because he relies on 3 features that are not relevant (an opposing surface that is also canted) to define 4 “canted.” We fail to see how an opposing canted surface would be a requirement 5 of Count 2. 6 We also fail to see a similarity between element 64 of Donaldson Figure 8 7 and the features of Option 9 identified as canted by Mr. Merritt. Element 64 8 extends as a straight line for a finite length and is neither parallel nor perpendicular 9 to a relevant longitudinal axis,4 while the portion of Option 9 identified by Mr. 10 Merritt has neither of these characteristics, being bent abruptly internally at 90o, 11 and radially externally, to change the direction from parallel to perpendicular. 12 Thus, we are not persuaded by Mr. Merritt’s testimony that the identified portion 13 of Option 9 is a canted portion as required in Count 2 because of Baldwin’s 14 identification of perceived similarities to element 64 of Donaldson’s Figure 8. 15 Baldwin argues, correctly, that the term “canted” in Count 2 must be given 16 its broadest reasonable interpretation. (See Baldwin Priority Reply, Paper 757, at 17 5:5-7.) We determine the preponderance of the evidence supports Donaldson’s 18 argument that the broadest reasonable interpretation of the term “canted” in the 19 counts is of an element that at least extends as a straight line for a finite length. 20 (See Donaldson Opp., Paper 730, 8:3-5, citing Adamek Decl., Exh. 1238, ¶¶ 49 21 and 51.) For example, Donaldson and Baldwin agree that Baldwin’s own 22 application describes a “canted” feature. (See Donaldson Priority Opp., Paper 730, 23 4 We do not reach, and therefore offer no opinion on, the issue of whether element 64 of Donaldson Figure 8 depicts “a portion that is canted relative to the longitudinal axis of the media pack” as required in Count 2. Interference 106,021 10 8:5-8; see Baldwin Priority Reply, Paper 757, 4:24-5:3.) Specifically, Baldwin’s 1 involved ’859 application provides Figures 1A, 2A, and 3A, which depict partial 2 cross-sectional views of a filter element that can be inserted into a housing and its 3 seal support frame. (See ’859 apl., Exh. 2002, ¶¶ 53-55.) Portions of Figure 1A 4 and Figure 2A are reproduced below with element 114A circled. 5 6 7 8 9 Figures 1A and 2A are described in the ’859 application as having a “canted 10 annular extension 114A.” (’859 appl., Exh. 2002, ¶ 143.) In addition, Figure 3A is 11 reproduced below, with elements 114A and 122A circled. 12 Interference 106,021 11 1 2 Element 122A of Figure 3A is described in the ’859 application as an “inwardly 3 canted intermediate annular segment 122A extending between the first end 116A 4 of the canted annular extension 114A . . . .” (Id. at ¶ 143.) In addition to Figures 5 1A and 2A, Baldwin cites to paragraph 141 of its application, which explains that 6 [t]he term "oblique," is used herein in accordance with the 7 common dictionary meaning of that word to indicate that the canted 8 annular extension 114A extends at an angle, with respect to the 9 longitudinal axis 112A, which is neither parallel nor perpendicular to 10 the longitudinal axis 112A. 11 12 (Id. at ¶ 141 (emphasis added); see Baldwin Priority Reply, Paper 757, 4:24-5:3.) 13 The figures and descriptions in the involved Baldwin ’859 application above 14 depict “canted” elements as extending in a straight line for a finite length and being 15 neither parallel nor perpendicular to a longitudinal axis. The feature identified as 16 “canted” is not bent. (See Donaldson Opp., Paper 730, 8:3-5.) In contrast, the 17 feature identified by Mr. Merritt in Option 9 as the canted portion of the sidewall 18 Interference 106,021 12 does not extend for a finite length, but bends to change the direction of the wall 1 90o. 2 Baldwin argues that both of Donaldson’s witnesses, Mr. Adamek and Mr. 3 Barkimer admitted that a radius5 can be a canted portion, thus admitting that 4 Option 9 shows a canted portion. (Baldwin Reply, Paper 757, 4:12-20.) We do 5 not agree that the testimony Baldwin cites supports this argument. 6 The portion of Mr. Adamek’s cross-examination cited by Baldwin refers to a 7 hypothetical situation, not Option 9. Mr. Adamek testified: 8 Q. Okay. I have a hypothetical for you to consider, all right? 9 So, consider hypothetically, and take this as an assumption, given 10 assumption, that a radius is a canted portion, okay? So, a canted portion 11 includes within its definition a radius, okay? Do you have that assumption 12 in mind? 13 *** 14 Q. . . . Let's assume that the hypothetical includes a portion of the 15 radius, finite portion. 16 A.· So, if your hypothetical definition was a finite portion of a radius 17 is a cant, then the radius shown would have a cant. 18 19 (Adamek Depo., Exh. 1242, 49:18-51:18.) We are not persuaded that this 20 testimony is a concession by Mr. Adamek that Option 9 discloses a canted portion, 21 as Baldwin argues, because the testimony is about a staged hypothetical and not 22 about Option 9. 23 Similarly, the portion of Mr. Barkimer’s deposition cited by Baldwin is 24 about Figure 3 of the Ramos patent (No. 6,179,8906), not Option 9. (See Baldwin 25 5 We understand the parties to use the term “radius” to mean a rounded corner or edge on a machine or case piece of metal. 6 The transcript of Mr. Barkimer’s cross-examination refers to Ramos as patent no. 6,479,890, but this appears to be an error. The Ramos reference cited by Donaldson in its Motion 7/8 is patent 6,179,890. (See Donaldson Motion 7/8, Paper 339, 1:18.) Interference 106,021 13 Priority Reply, Paper 757, 4:15-20, citing Barkimer Depo, Exh. 1036, 93:2-97:13, 1 citing Exh. 2452.) The questions asked of Mr. Barkimer relate more to the 2 relationship of different parts of that specific figure, not whether a certain part was 3 canted or not. Mr. Barkimer testifies: 4 Q· · So it's your testimony that you think that the figure shows -- get it 5 straight now.· That the element identified by 282, which is the seal, 6 it's shown extending into contact with the surface of Region 253, 7 that's the canted surface region? 8 A· · Yes.· Yes.· If I include the radii as part of that canted surface 9 there, yes, I'd say it could. 10 Q· · What do you mean by "radii"? 11 A· · The curves that form, you know, the canted portion.· The radii 12 that, you know, forms that bend -- 13 Q· · Ah. 14 A· · -- is the... 15 16 (Barkimer Depo., Exh. 1036, 96:25-97:13.) Although Mr. Barkimer indicated that 17 the radii in the Ramos figure at issue could be considered part of a canted surface, 18 we do not consider this testimony to be an admission that Option 9 depicts a canted 19 portion, in the manner that Baldwin argues. We are not persuaded that Mr. 20 Barkimer testified that, in general, a radii would have been considered by one of 21 ordinary skill in the art to be canted. Instead, Mr. Barkimer included the condition 22 “[i]f I include the radii as part of that canted surface . . . .” to his testimony. The 23 testimony cited by Baldwin does not persuade us that a reasonable interpretation of 24 the term “canted” is broad enough to include the element identified by Mr. Merritt 25 in Option 9. 26 We note that when cross-examining Mr. Barkimer, counsel for Baldwin 27 repeatedly referred to element 253 of Ramos Figure 3 as a “canted” portion. (See, 28 e.g. Barkimer Depo., Exh. 1036, 93:17-18 (“Q. . . . There’s a fairly canted portion, 29 253”), 96:3-7 (“Q. . . The circled region that you've identified here, as element of 30 Interference 106,021 14 the frame in contact with the seal, include any of the region of element 253, which 1 is the portion of the frame having the canted surface?”).) The relevant portion of 2 Figure 3 of the Ramos patent (6,179,890) is reproduced below with element 253 3 circled. 4 5 (Exh. 2452) We note that element 253 is neither parallel nor perpendicular to the 6 axis of the media pack and extends as a straight line for a finite length. We are not 7 persuaded that Baldwin’s argument about radii being canted can be reconciled with 8 counsel’s use of the term in this part of Barkimer’s cross-examination. 9 Baldwin argues further that its argument regarding a canted feature in 10 Option 9 is “not inconsistent with the APJs summary of the parties’ understanding 11 of ‘cant’ in the prior interference,” referring to Interference 105,799. (Baldwin 12 Priority Reply, Paper 757, 4:22-23.) In that proceeding, the panel noted that “[t]he 13 parties appear to agree that ‘canted’ and ‘oblique angle’ in Count 2 (and Count 4) 14 refer to an angle that is neither parallel nor perpendicular to a relevant longitudinal 15 axis (id. at p. 8; Ex. 2007, col. 4, ll. 4-8).” (Decision on Motions in Interference 16 105,799, Paper 771, 8:18-20.) We note that the construction of “canted” as 17 Interference 106,021 15 extending in a straight line for a finite length in addition to being neither parallel or 1 perpendicular, is similarly not inconsistent with this statement. Thus, the decision 2 in the prior interference does not support Baldwin’s argument about the broadest 3 interpretation of the term. 4 Baldwin does not direct us to other evidence, such as examples in relevant 5 literature or dictionary definitions, that persuade us the feature of Option 9 6 identified is “canted” under a broad but reasonable interpretation of that term. We 7 do not find a similarity between the radius of Option 9 and the other features 8 identified by Baldwin as canted and we are not persuaded that Donaldson’s 9 witnesses admitted the identified feature of Option 9 is canted. Thus, the 10 preponderance of the evidence does not show that Option 9 includes a “shell 11 having a sidewall and a portion canted relative to the longitudinal axis of the media 12 pack” as recited in Count 2. Accordingly, we are not persuaded that Option 9 13 demonstrates the Baldwin inventors conceived of an embodiment of Count 2. 14 Count 2 also requires “a fluted filter media pack comprising fluted media 15 secured to facing media; the media pack having an inlet flow face, an outlet flow 16 face, and an axial length between the inlet flow face and outlet flow face . . . .” 17 (See Redeclaration, Paper 536, 2.) Mr. Merritt testifies that the inventors “were 18 intending to use fluted media” because prior to 12 May 2003, a team “dedicate[d] 19 their time to research manufacturing filters to compete in the aftermarket, with the 20 Donaldson PowerCore filters.” (Merritt Decl. Options 8 and 9, Exh. 2615, ¶ 14.) 21 In addition, Mr. Merritt testifies that Exhibit 2258 shows work on fluted media that 22 was secured to facing media for the Option 9 project and that Exhibit 2137 shows 23 that inventor Gene Brown was working on single faced media for the 24 “Honeycomb” project as early as January 2003. (See id. at ¶ 15.) 25 Merritt’s testimony about the media depicted in Exhibits 2258 and 2137 is 26 not persuasive because it is not clear how these exhibits relate to Option 9. Mr. 27 Interference 106,021 16 Merritt explains that the information in Exhibit 2258 and Option 9 both relate to 1 the “Honeycomb” project, but merely being part of the same project does not 2 indicate that the inventors necessarily conceived of using them together as a 3 complete and operative invention that could be applied in practice. Mr. Merritt 4 does not cite evidence of the scope of the “Honeycomb” project or of a specific tie 5 between the media in Exhibit 2258 and the seals, gaskets, and frames shown for 6 Option 9. A general research suggestion, whatever its role in an obviousness 7 analysis, does not establish conception. See Cumberland Pharm. Inc. v. Mylan 8 Institutional LLC, 846 F.3d 1213, 1219 (Fed. Cir. 2017). 9 Instead, as Donaldson notes, Mr. Merritt admitted in a different proceeding 10 that Option 9 fails to disclose anything about the media. (See Donaldson Priority 11 Opp., Paper 730, 15:11-14, citing Merritt Depo. in Interference 105,799, Exh. 12 1217, 65:20-23 (“Q. Okay. Option 9 gives us no details about what that media 13 pack should be or would be, right? A. That is correct.”).) 14 To the extent that Baldwin argues that Mr. Adamek, Donaldson’s witness, 15 admitted on cross-examination that Baldwin intended to use fluted media 16 exclusively in its Channel Flow filters, we are also not persuaded. (See Baldwin 17 Priority Reply Brief, Paper 757, 3:10-14, citing Adamek Depo., Exh. 1242, 18 33:11-41:22.) The portion of testimony cited includes a review of evidence by 19 Baldwin’s counsel, but no interpretation by Mr. Adamek of an intent about air 20 filter media or anything else. Mr. Adamek’s testimony does not persuade us that 21 the Baldwin inventors conceived of using fluted filter media with an air filter 22 having features shown in Option 9 or that the Baldwin inventors conceived of a 23 complete air filter cartridge within the scope of Count 2. 24 Because Baldwin has not persuaded us that Option 9 demonstrates 25 conception of an air filter cartridge with “a fluted filter media pack comprising 26 fluted media secured to facing media” and “a shell having a sidewall and a portion 27 Interference 106,021 17 that is canted relative to the longitudinal axis of the media pack,” we are not 1 persuaded that Option 9 demonstrates conception of an embodiment of Count 2. 2 Accordingly, we are not persuaded that the Baldwin inventors conceived of an 3 embodiment of Count 2 by 1 May 2003. 4 2. 12 May 2003 - Option 8 and Option 9 5 Baldwin addresses Option 8 along with Option 9 in its Priority Motion, 6 although no separate arguments are made. Thus, as explained in regard to Option 7 9, Baldwin’s Priority Motion is insufficient to meet its burden. See 37 C.F.R. 8 § 41.121(c)(iii) and Standing Order ¶ 106.2. Option 8 is addressed separately in 9 Mr. Merritt’s declaration. (See Baldwin Priority Motion, Paper 567, 3:1-3, citing 10 Merritt Decl. Options 8 and 9, Exh. 2615, ¶¶ 5-42.) 11 The relevant portion of Option 8, including annotations by Mr. Merritt, is 12 reproduced below. 13 14 (Merritt Decl. Options 8 and 9, Exh. 2615, at ¶ 29, providing marked up copy of 15 Exhibit 2148, at 10.) Option 8 depicts a schematic diagram with numbers 16 indicating certain features, including “1” indicating a media pack, “2” indicating 17 the portion of the frame structure circumscribing the media pack, and “3” 18 indicating a shell portion that is canted relative to the longitudinal axis of the 19 Interference 106,021 18 media pack.7 (See id. at ¶ 29.) 1 Mr. Merritt testifies that Option 8 shows the Baldwin inventors conceived of 2 “a fluted filter media pack comprising fluted media secured to facing media; the 3 media pack having an inlet flow face, an outlet flow face, and an axial length 4 between the inlet flow face and outlet flow face . . .” as required in Count 2, by 5 referring to his testimony regarding Option 9. (See Merritt Decl. Options 8 and 9, 6 Exh. 2615, ¶¶ 30-31.) As explained above, we are not persuaded by his testimony 7 because it does not show that the Baldwin inventors necessarily conceived of using 8 a fluted media pack with the seals, gaskets, and frames shown for Option 8 in one 9 complete and operative invention that includes all the elements of Count 2. 10 Accordingly, we are not persuaded that Option 8 in combination with Option 11 9 demonstrates conception of an embodiment within the scope of Count 2. 12 3. 14 January 2004 - CA4700 13 Baldwin argues that the CA4700 design is evidence of a conception of an 14 embodiment of Count 2. (See Baldwin Priority Motion, Paper 567, 3:4-4:16.) 15 Baldwin cites to both Exhibit 2601, page 7, and Exhibit 2602, page 8, for features 16 of the CA4700 design to demonstrate conception of each element of Count 2. 17 Specifically, Baldwin argues that Exhibit 2602 shows all the elements of Count 2, 18 except the canted portion, the seal molded to the canted portion, and the seal flow 19 apertures and that the right hand side of Exhibit 2601 shows the canted portion, the 20 7 We note that although Option 8 includes portions of the shell that are radii similar to the radius identified by Mr. Merritt as the canted element in Option 9, Mr. Merritt identifies a different portion as demonstrating conception of this element in Option 8. (See Merritt Decl. Options 8 and 9, Exh. 2615, at ¶ 36, identifying feature “3” as canted.) To the extent that this portion is “canted relative to the longitudinal axis of the media pack,” which we need not decide, we note further that the portion Mr. Merritt identifies in Option 8 (feature “3”) extends neither parallel nor perpendicular in a straight line for a finite length. Interference 106,021 19 seal molded to the canted portion, and the seal flow apertures. (See Baldwin 1 Priority Motion, Paper 567, 3:9-12.) 2 As with Options 8 and 9, Baldwin’s Priority Motion fails to provide any 3 explanation of how Exhibits 2601 and 2602 demonstrate conception, relying 4 instead on the testimony of inventor Merritt. (See Baldwin Priority Motion, Paper 5 567, at 4:6-10, citing Steve Merritt Declaration, CA4700 Conception, Counts 2 6 and 3 (“Merritt Decl. CA4700”), Exhibit 2611, ¶¶ 46-87.) Even if this were 7 sufficient under 37 C.F.R. § 41.121(c)(iii) and Standing Order ¶ 106.2, we are not 8 persuaded by Mr. Merritt’s testimony that a single embodiment of an air filter 9 cartridge within the scope of Count 2 was conceived by the Baldwin inventors. 10 Baldwin fails to direct us to evidence showing that the two exhibits were 11 considered by the Baldwin inventors to be part of one air filter cartridge. 12 Mr. Merritt testifies that Exhibits 2601 and 2602 are both “pdf” versions of 13 slide presentations, but he reports that they come from different files (Exhibit 2602 14 from “010904 Sam to Board Slides.ppt” and Exhibit 2601 from “010904_3 Sam to 15 Board Slides.ppt”). (See Merritt Decl. CA4700, Exh. 2611, ¶¶ 21-22.) Although 16 the file names are similar, they do not persuade us that they necessarily relate to a 17 single conception of an air filter. 18 In addition, the pages of Exhibit 2601 and Exhibit 2602 do not appear on 19 their face to be part of the same slide presentation because they have very different 20 formats: Exhibit 2602 contains many text slides with bullet point topics, while 21 Exhibit 2601 includes only diagrams with no explanation. There is no cross 22 reference to either document or overlap in the slides. Thus, the pages of the 23 exhibits themselves further do not persuade us that they are related to a single 24 conception. 25 Mr. Merritt also testifies that Exhibit 2602, page 8, “shows an exploded 26 view, 5 at a non detailed level, of the Baldwin design contemplated at that time.” 27 Interference 106,021 20 (Merritt Decl. CA4700, Exh. 2611, ¶ 33.) This is consistent with the pictures and 1 labeling on page 8 of Exhibit 2602, which is reproduced below. 2 3 4 Page 8 of Exhibit 2602 shows separate features of an air filter, identified with 5 labels. 6 In contrast, neither Baldwin nor Mr. Merritt explain exactly what is shown 7 in Exhibit 2601, page 7. The relevant portion of Exhibit 2601, page 7 is 8 reproduced below. 9 10 Mr. Merritt testifies that this picture “shows a portion of the resulting seal and 11 frame structure” and that the seal “is represented by the darkest gray between the 12 Interference 106,021 21 pinch points [identified with red lines in his declaration].” (Merritt Decl. CA4700, 1 Exh. 2611, ¶ 65.) Because there is no labeling in the diagram itself, Mr. Merritt’s 2 testimony is not corroborated. Mr. Merritt does not explain how he determined 3 which part is the seal and the diagram does not make it clear to us. Mr. Merritt’s 4 determinations are also not particularly helpful because he fails to explain what the 5 other shading in the picture represents. Thus, we are not persuaded that Exhibit 6 2601, page 7, shows the media pack and shell of Count 2. 7 In addition to Exhibits 2601 and 2602, Mr. Merritt testifies that a third 8 exhibit, Exhibit 2614, also demonstrates conception of Count 2. (See id. at ¶ 4.) 9 The inclusion of Exhibit 2614 in the evidence of conception is not wholly 10 consistent with with Baldwin’s argument in its Priority Motion that Exhibit 2601 11 and Exhibit 2602 demonstrate every element of Count 2. (See Baldwin Priority 12 Motion, Paper 567, 3:9-12.) Nevertheless, even if we consider the substance of 13 Mr. Merritt’s testimony regarding 2614, we find it unpersuasive. 14 First, as with Exhibits 2601 and 2602, it is unclear how Exhibit 2614 relates 15 to the other two. (See Donaldson Priority Opp., Paper 730, 21:14-22.) Mr. Merritt 16 explains that BX-02477 is an engineering drawing he found on Baldwin’s 17 computer file server and that “Ex 2614 is a pdf [he] created by opening the same 18 BX-02477.dft file in Solid Edge and exporting the opened file to pdf format.” 19 (Merritt Decl. CA4700, Exh. 2611, ¶¶ 3 and 4.) Although Mr. Merritt spends a 20 considerable amount of his testimony discussing the date of the existence and 21 manipulations of Exhibit 2614 (see id. at ¶¶ 6-19), he provides only the 22 uncorroborated statement: “I know that we at Baldwin contemplated the 23 engineering drawing in Ex 2614 and the exploded view shown in Ex 2602 page 8 24 to be views of the same embodiment back in January 2004” (id. at ¶ 35). 25 Elsewhere, though, Mr. Merritt testifies “[t]he design shown in Ex 2614 is also a 26 different embodiment than the embodiment eventually used in the commercially 27 Interference 106,021 22 released CA4700 filter.” (Id. at ¶ 17.) It is thus unclear whether Exhibit 2614 is 1 part of the same air filter cartridge as Exhibit 2602, which reportedly depicts the 2 CA4700 design. 3 It is also unclear how Exhibit 2614, a file Mr. Merritt found in a recent 4 search of the Baldwin computer server, necessarily depicts any component of the 5 CA4700 designs Baldwin puts forth as a conception of Count 2. Mr. Merritt 6 testifies that page 8 of Exhibit 2602 “does not show the shell ‘portion that is canted 7 relative to the longitudinal axis of the media pack,’” but that Exhibit 2614 does. 8 (Id. at ¶ 60.) To relate these two exhibits, Mr. Merritt testifies that “[Exhibit] 2614 9 on the left and page 8 of [Exhibit] 2602 identify the same housing bottom element 10 of the same filter design” because both depict a flange with three screw holes, a 11 shell having a sidewall, and “the same four lines on the outer surface of the 12 sidewall . . . .” (Id. at ¶ 61.) Regardless of how similar the shell of Exhibits 2602 13 and 2614 appear, Mr. Merritt’s testimony does not persuade us that they are part of 14 a single air filter cartridge conceived by the Baldwin inventors. 15 We are also not persuaded by Mr. Merritt’s testimony that Exhibit 2602, 16 page 8, demonstrates conception of a fluted media pack comprising fluted media 17 secured to facing media, as required in Count 2. (See id. at ¶¶ 50-55.) Mr. Merritt 18 does not identify any specific portion of the diagrams in either Exhibit 2601, page 19 7, or Exhibit 2602, page 8, that show fluted media secured to facing media, but 20 testifies instead that it had been a goal of Baldwin to compete with Donaldson’s 21 “PowerCore” brand filters by producing a filter with fluted media secured to a 22 facing in the media pack. (See id. at ¶ 52.) Mr. Merritt references Baldwin memos 23 (Exhibits 2030, 2137, 2220, and 2304) and a presentation (Exhibit 2618) to support 24 his testimony that he “know[s] that making and using this single face media was 25 our goal, all along.” (See id.) Mr. Merritt fails to direct us to anything in the 26 memos or presentation that mention the diagrams in Exhibits 2601 or 2602. Thus, 27 Interference 106,021 23 even if his testimony that Baldwin desired to make fluted media secured to facing 1 media in general is supported, Mr. Merritt does not cite to evidence that this was a 2 specific goal of using fluted media in the air filter cartridges shown or suggested in 3 Exhibits 2601 or 2602 or in the CA4700 design. (See Donaldson Priority Opp., 4 Paper 730, 23:17-22.) 5 Mr. Merritt also testifies that Exhibit 2601 shows an example of fluted 6 media secured to a flat facing media on page 3 and that this was the media “we 7 wanted to make for the Channel Flow filters.” (Merritt Decl. CA4700, Exh. 2611, 8 ¶ 53.) Mr. Merritt testifies that Exhibit 2601 provides other pages related to fluted 9 facing media. (See id. at ¶ 55.) Even if other pages of Exhibit 2601 show fluted 10 media, it is still unclear how these pages relate to page 7, which was cited by 11 Baldwin as the evidence, in part, of conception of an embodiment of Count 2. The 12 lack of labeling in the diagram on page 7 makes it unclear where fluted media 13 would be used. (See Donaldson Priority Opp., Paper 730, 8-16 and 24:10-12.) It 14 is unclear how the different pages of Exhibit 2601 tie together, because they seem 15 to be merely a collection of photographs and drawings. 16 Accordingly, we are not persuaded by either Baldwin’s argument, Mr. 17 Merritt’s testimony, or the evidence to which we have been directed that the 18 Baldwin inventors conceived of a fluted filter media pack comprising fluted media 19 secured to facing media, as required in Count 2. 20 Baldwin fails to direct us to a clear explanation, supported by appropriate 21 evidence, that the depictions of Exhibit 2614 were used in the design of Exhibit 22 2602 or 2601, which Baldwin presents as a conception of the air filter cartridge of 23 Count 2. Baldwin also fails to direct us to a clear explanation, supported by 24 appropriate evidence, that Exhibit 2601, page 7, and Exhibit 2602, page 8, are 25 necessarily related to the conception of a single embodiment of an air filter 26 cartridge conceived by the Baldwin inventors. Accordingly, we are not persuaded 27 Interference 106,021 24 the Baldwin inventors conceived of an embodiment of Count 2 by 14 January 1 based on this evidence. 2 4. 25 February 2004 - Concepts L and P 3 Baldwin asserts that “Count 2 reads on Concepts L and P,” which reportedly 4 are depicted in Examples 2254 and 2255, respectively. (Baldwin Priority Motion, 5 Paper 567, 4:18-19.) Again, Baldwin provides no explanation of these exhibits 6 and how they relate to Count 2 in its Priority Motion, referring instead to several of 7 Mr. Merritt’s declarations. (See id. at 4:19-22, citing Exhibits 2616, 2329, and 8 2611.) 9 Count 2 recites an air filter with “(a) a fluted filter media pack comprising 10 fluted media secured to facing media . . . .” (Redelcaration, Paper 536, 2.) The 11 media pack of Count 2 must also have an inlet flow face, an outlet flow face, and 12 an axial length between the inlet flow face and outlet flow face . . . .” (Id.) 13 Neither Baldwin nor Mr. Merritt identify a media pack comprising fluted 14 media secured to a facing in either Exhibit 2254 or Exhibit 2255. Mr. Merritt 15 refers to an annotated reproduction of part of Exhibit 2254, page 11, which is 16 depicted below. 17 18 (Steve Merritt Declaration, Concepts L and P Conception of Count 2 (“Merritt 19 Decl., Concepts L and P”), Exh. 2616, ¶ 11.) The part of Exhibit 2254, page 11, 20 Interference 106,021 25 discussed by Mr. Merritt provides handwritten numbers 1-4 labeling parts of the 1 diagram, with number 3 reportedly identifying the media pack. (See id. at ¶ 7.) 2 Similarly, Mr. Merritt also includes an annotated reproduction of Exhibit 2255, 3 page 15, with the number 3 labeling the “media pack.” (See id.) Both features 4 identified as a media pack are represented in Exhibit 2254 and 2255 as a cross-5 hatched triangle. 6 We agree with Donaldson that neither Exhibit 2254 nor 2255 demonstrates 7 conception of an air filter cartridge with a media pack having the elements required 8 in Count 2. (See Donaldson Priority Opp., Paper 730, 28:11-29:7.) The portions 9 of the diagrams from Exhibits 2254 and 2255 that Mr. Merritt highlights do not 10 show any specific features of a media pack. Because Exhibits 2254, page 11, and 11 2255, page 15 are diagrams of only a part of an air filter, neither depicts an inlet 12 flow face, and outlet flow face, and an axial length between the inlet flow face or 13 the outlet flow face, as required in Count 2. The media pack is only identifiable in 14 the diagrams from Mr. Merritt’s labeling, not from the diagrams themselves. 15 When Mr. Merritt was questioned about the media pack in Exhibit 2254, 16 page 11, he testified: 17 Q. Does Exhibit 2254 identify PowerCore or Honeycomb or 18 Channel Flow anywhere? 19 A. Had we known they would be used in this, in, in this thing, 20 probably would have done -- had better documentation, like everyone 21 else. But no, I don't see that on there; but then, again, the people that 22 were working on it knew exactly what it meant. 23 And clearly, there's a lot of comparison to, to a, to a Donaldson 24 product that just happens to have the same features and everything as, 25 as the Donaldson PowerCore product. So it's fairly clear that, I mean, 26 that they’re for fluted. 27 28 (Merritt Depo., Exh. 1222, 68:21-69:7.) Thus, Mr. Merritt admitted that there is 29 no identification of the type of media used in Exhibit 2254. Mr. Merritt testifies 30 Interference 106,021 26 that fluted media was intended in Exhibit 2254 because it would be known by 1 others what was meant and because it was shown in comparison to a Donaldson 2 product. (Id.) Similarly, in his declaration, Mr. Merritt testifies that the features of 3 the media pack not shown in Exhibits 2254 and 2255 were “generic” to Baldwin’s 4 filter development. (See Merritt Decl., Concepts L and P, Exh. 2616, ¶ 11.) 5 We are not persuaded by Mr. Merritt’s testimony that either Exhibit 2254 or 6 2255 demonstrates conception of an air filter cartridge with a fluted filter media 7 pack as required in Count 2. The only evidence of such filter media is Mr. 8 Merritt’s uncorroborated testimony of what was meant by the diagrams and what 9 others would have understood from them. As explained above in regard to Mr. 10 Merritt’s testimony about fluted filter media in the Option 9 exhibits, we are 11 unpersuaded by the uncorroborated testimony of an inventor. 12 We are also not persuaded by Baldwin’s argument that Donaldson’s witness 13 Mr. Amadek admitted on cross-examination that Exhibit 2257 shows Concept L 14 and P to disclose fluted media. (See Baldwin Priority Reply, Paper 757, 3:14-15, 15 citing Adamek Depo., Exh. 1242, 131:4-142:22.) We note, initially, that although 16 Baldwin refers to Exhibit 2257 in its Priority Motion, it does so only as being cited 17 within Mr. Merritt’s declaration. (See Baldwin Priority Motion, Paper 567, 5:1-3.) 18 Mr. Merritt, in turn, refers to Exhibit 2257 in regard to the asserted proof of dating 19 of Concepts L and P8. (See Merritt Decl., Concepts L and P, Exh. 2616, ¶¶ 4-6.) 20 Mr. Merritt does not refer to the substance of Exhibit 2257 when explaining how 21 Concept L or P demonstrates conception of an air filter cartridge within the scope 22 8 We note that Baldwin asserts dates of 24 February 2004 and 25 February 2004 for conception of Count 2 based on Concepts L and P. (See Baldwin Priority Motion, Paper 567, 1:7-8.) Mr. Merritt, though, asserts that Exhibit 2257 is dated 4 March 2004. (See Merritt Decl. Concepts L and P, Exh. 2616, ¶¶ 4-6.) Thus, Exhibit 2257 is not persuasive evidence of conception by 25 February 2004. Interference 106,021 27 of Count 2. Baldwin also fails to explain how Exhibit 2257, or specifically page 1 1 of Exhibit 2257, shows conception of any subject matter. Thus, we are not 2 persuaded that the substance of Exhibit 2257 is part of Baldwin’s priority case. 3 Furthermore, Mr. Adamek’s testimony does not persuade us that the 4 depictions of Concepts L and P Baldwin did cite in its priority case necessarily 5 show a filter with fluted media secured to a facing media as required in Count 2. 6 In part, the cited testimony regarding Exhibit 2257 is reproduced below. 7 Q.· And you see the media pack for the Donaldson design is shown 8 exactly the same as the media pack for the Baldwin design, the blue 9 cross lines, same graphical representation indicating the same type of 10 media, correct? 11 A.· They're using the same color and same cross-hatching. 12 Q.· And that typically means the same thing, correct? 13 A.· That would be an assumption. 14 Q.· Is it a valid assumptions? 15 A.· It is one of many assumptions you could·make. 16 Q.· Is it the assumption you would make? 17 A.· Not necessarily. 18 Q.· What else could it be? 19 A.· That it's generic -- that it represents generically a media pack 20 without any definition of what type. 21 Q.· Well, how about the fact that this drawing here, Concept P, and 22 all the others, are in a document that starts off with the design 23 requirements, which identifies fluted media, item 1, design 24 requirements, page 1, “to funnel filtered air from flutes close to the 25 outside of the filter towards the center.” Right, it's fluted media we're 26 talking about? 27 A.· Requirement 1 talks about fluted media. 28 Q.· Yes, it's a design requirement in a document that lists a bunch 29 of concepts, yes? So, those concepts incorporate -- logically 30 incorporate the design requirements specified in page 1? 31 A.· The design requirement is that there is a funnel shape at outside 32 edge. 33 Q.· To funnel filtered air from flutes? 34 A.· Correct. 35 Q.· Which implies that the media must have flutes? 36 Interference 106,021 28 A.· I would not assume that. 1 Q.· Why not? 2 A.· Because if there was flutes, then a funnel -- then the discussion 3 about funnel would be relevant.· If there was not flutes, then the 4 design requirement would not be relevant. 5 DR. NEIFELD:· Can you repeat the question and answer, please. 6 · · · · · (Read back.) 7 BY DR. NEIFELD: 8 Q.· I'm not sure I understand your answer. Can you repeat it and 9 try to explain to me what you're trying to convey? 10 A.· So -- so, bullet 1, I do not read to say there must be flutes.· It 11 says that there must be a funnel shape, et cetera, et cetera, to funnel 12 filtered air from flutes, which tells me that this is contemplating, if 13 there was flutes, then additional requirements are in place. 14 Q.· Does it use the word “if”? 15 A.· “If” is not in that sentence. 16 Q.· Do you see any conditional language whatsoever in line 1? 17 A.· No. 18 Q.· So, it says “to filter funneled air from flutes,” correct? 19 A.· Yes. 20 Q.· It doesn't say “to funnel air if there are flutes,[”] correct? 21 A.· Correct. 22 Q.· Thank you? 23 24 (Adamek Depo., Exh. 1242, 139:25-142:22.) We do not interpret Mr. Adamek’s 25 answers to counsel’s questions to be an admission or to show that one of ordinary 26 skill in the art would necessarily understand page 1 of Exhibit 2257 to indicate the 27 media on page 12 (Concept L) or page 16 (Concept P) was necessarily fluted 28 media secured to facing media, as required in Count 2. Although Baldwin’s 29 counsel may have been trying to prove a point, which was not developed in either 30 Baldwin’s priority motion or by Mr. Merritt, we read Mr. Adamek’s testimony as 31 making an effort to deny that point, not admitting it. (See Adamek Depo., Exh. 32 1242, 141:13-15 (“Q.·Which implies that the media must have flutes? A.·I would 33 not assume that.”).) 34 Interference 106,021 29 Because Baldwin has not shown that either Exhibit 2254 or Exhibit 2255 1 demonstrates a conception of each and every element of the air filter cartridge 2 recited in Count 2, we are not persuaded that the Baldwin inventors conceived of 3 an embodiment within the scope of Count 2 by 25 February 2004. 4 5 Count 3 6 Count 3 recites: 7 An air filter cartridge comprising: 8 (a) a fluted filter media pack comprising 9 fluted media secured to facing media; 10 the media pack having an inlet flow face, an outlet flow face, 11 and an axial length between the inlet flow face and outlet flow face; 12 (b) an impermeable shell having opposite ends and a sidewall 13 extending therebetween; 14 the shell sidewall circumscribing the media pack; 15 the shell includes a first end having: 16 (i) a sidewall portion; and 17 (ii) a transition portion canted relative to the sidewall portion 18 the media pack being secured within the shell; 19 the shell having a seal support; 20 the seal support defining a plurality of seal flow apertures 21 therethrough; 22 (c) grid work extending over at least one of the inlet and outlet 23 flow faces; and 24 the grid work and the seal support are at opposite ends of the 25 shell 26 (d) a seal arrangement secured to the seal support; 27 the seal arrangement molded to the seal support and 28 extending through the seal flow apertures. 29 30 (Redeclaration, Paper 536, 2-3.) 31 Baldwin argues that the “early CA4700 design” demonstrates conception of 32 Count 3 no later than 14 January 2004. (Baldwin Priority Motion, Paper 567, 1:8-33 9.) Baldwin cites to the same exhibits, Exhibits 2601, page 7, and 2602, page 8, 34 right side, as support for its argument, and cites to Mr. Merritt’s declaration for 35 Interference 106,021 30 explanation. (See Baldwin Priority Motion, Paper 567, 3:5-15, citing Merritt 1 Decl., CA4700, Exh. 2611, ¶¶ 46-87.) 2 We are not persuaded by Mr. Merritt’s testimony or by Exhibits 2601, page 3 7, and 2602, page 8, for the reasons explained above. Briefly, even if the isolated 4 elements of Count 3 are depicted in these exhibits, we are not persuaded that the 5 diagrams presented on these pages are necessarily part of a single, complete 6 embodiment of an air filter cartridge conceived by the Baldwin inventors. 7 Furthermore, we are not persuaded that each and every element of Count 3 is 8 depicted by these exhibits. Mr. Merritt refers to his testimony for Count 2 in 9 regard to the element of “a fluted media pack comprising fluted media secured to a 10 facing media” when explaining the evidence of conception of that element of 11 Count 3. (See Merritt Decl. CA4700, Exh. 2611, ¶ 70.) As explained above, we 12 do not find that testimony persuasive because Mr. Merritt refers to pages of Exhibit 13 2601 other than page 7 and to other exhibits to show this element. Neither 14 Baldwin nor Mr. Merritt directs us to persuasive, corroborated evidence that these 15 other exhibits are related to Exhibit 2601, page 7, or showing that the Baldwin 16 inventors intended to use the recited media in an embodiment of the air filter 17 cartridges of Count 3. 18 Motions to Exclude 19 Baldwin argues that all of the testimony by Donaldson’s witness, Mr. 20 Adamek, in Exhibits 1238 and 1242 asserting that Baldwin intended to use pleated 21 media instead of fluted media secured to a facing media be excluded. (Baldwin 22 Motion to Exclude, Paper 810, 1:2-15.) Specifically, Baldwin requests that we 23 exclude Exhibit 1238, paragraphs 13, 18, 19, 20, 23-27, 29, 31, and 32, and 24 Exhibit 1242, page 117:24-121:19. (See id.) 25 Baldwin fails to identify where in the record the objected evidence was 26 relied upon by Donaldson. For this reason, we deny the motion. (See Standing 27 Interference 106,021 31 Order ¶ 155.2.2 (“A motion to exclude evidence must . . . identify where in the 1 record the evidence to be excluded was relied upon by an opponent . . . .”).) In 2 addition, we did not rely on any of the cited testimony to reach our decision. 3 Accordingly, Baldwin’s request is moot because even if we excluded this 4 testimony, we would reach the same decision. 5 Donaldson requests that we exclude testimony of Mr. Merritt. (See 6 Donaldson’s Motion to Exclude, Paper 813.) 7 Donaldson also fails to identify where in the record the objected evidence 8 was relied upon by Baldwin. For this reason, we deny the motion. (See Standing 9 Order ¶ 155.2.2.) In addition, because we do not find Baldwin’s arguments 10 regarding priority to be persuasive even when we considered the cited testimony, 11 we need not consider whether to exclude it. 12 Conclusion 13 We are not persuaded by the evidence Baldwin cites that it conceived of an 14 embodiment of either Count 2 or 3 before the benefit dates accorded to Donaldson. 15 Accordingly, we deny Baldwin’s priority motion. In the absence of an earlier 16 conception, we need not consider Baldwin’s arguments and evidence regarding 17 diligence. 18 In addition, we need not reach Donaldson’s priority motion because as 19 Senior Party its accorded benefit dates indicate it was the first to invent an 20 embodiment of Counts 2 and 3. We enter judgment against Baldwin in a separate 21 paper. 22 23 24 25 26 27 Interference 106,021 32 cc (via email): Counsel for Junior Party Baldwin Richard Neifeld NEIFELD IP LAW, PC rneifeld@neifeld.com Andrew J. Heinisch REINHART BOERNER VAN DEUREN P.C. aheinisch@reinhartlaw.com Counsel for Senior Party Donaldson W. Todd Baker OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP tbaker@oblon.com Dennis R. Daley MERCHANT & GOULD P.C. ddaley@merchantgould.com