Interference No. 105,058
Schaenzer v. Knight
any means to the one he had indicated that he could and would make on behalf of the junior
party's real party in interest, i.e., Seagate Technology, Inc. The representation is of no value
since the issue is non-obviousness or patentable distinction based on the particular features
recited in the body of Schaenzer's claims 3 and 4 and not anticipation of the entire combination.
The failure by junior party's counsel to submit the representation as had been agreed to
during the telephone conference on September 12, 2003, i.e., changing the focus from the
structural details recited in the body of claims 3 and 4 to the entire combination inclusive of the
elements of claims I and 2, raises some serious questions, both as to the issue of potential
selective production of testimony as discussed earlier, and as to whether Richard P. Larson,
when making reference in his declaration to "the additional structure claimed in claims 3-9 of
[Schaenzer's involved patent]," was actually contemplating the entire combination resulting from
the added structure. Based on counsel for counsel forjunior party's submitting a representation
that is far different from one he had agreed to make and without first informing the board that the
representation forthcoming is not the one the administrative patent judge had specifically asked
for, the junior party has lost credibility with the board. We decline to give junior party the
benefit of the doubt that Richard P. Larson meant to refer only to the particular features recited
in claims 3 and 4, i.e., mesa on a slider, which includes a plateau adapted to couple light to the
data surface through an evanescent field (claim 3), and mesa on a slider, which has a tapered side
wall (claim 4), and not the entire combination resulting from adding these particular features.
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