Interference No. 105,058
Schaenzer v. Knight
In Paragraph No. 42 of the Standing Order attached to the Notice Declaring Interference
(Paper No. 1), the parties were explicitly advised that affidavits expressing an opinion of an
expert must disclose the underlying facts or data upon which the opinion is based and also that
expert opinions expressed without disclosing the underlying facts or data may be given little or
no weight. Paragraph No. 42 of the Standing Order cites to Rohm and Haas Co. v. Brotech
Co 127 F.3d 1089,1092, 44 USPQ2d 1459,1462 (Fed. Cir. 1997), which states: "Nothing
in the [Federal Rules of evidence] or in our jurisprudence requires the fact finder to credit the
unsupported assertions of an expert witness."
Because the assertion in 18 of the declaration of Richard P. Larson is merely conclusory
and the underlying reasoning has not been disclosed, we decline to give any weight to Mr.
Larson's testimony in that regard, especially in light of what is apparent from Figure 4 of U.S.
Patent No. 5,345,353. Consequently, the parties have failed to demonstrate that Schaenzer's
claims 4-9 should be designated as not corresponding to the count.
As for Schaenzer's claim 3, it is noted that 113 of Richard P. Larson's declaration states:
As one skilled in the art of coil design, I am unaware of any public
disclosure, description, or suggestion of the additional structure claimed in claims
3-9 of the '797 patent prior to January 1, 1998.
Richard P. Larson is not one of the four named inventors on Schaenzer's involved patent, and he
is also a long-time employee of the junior party's real party in interest, Seagate Technology, Inc.
Based on those facts, a question immediately comes to mind, and that is, did the junior party ask
numerous engineers the same question and then simply submit the answer from the one
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