The Huff affidavit is not signed under 18 U.S.C. § 1001, and is therefore an out of court
statement submitted for the truth of the matter asserted and is hearsay. Accordingly, the Huff
affidavit is fatally flawed. Even considering the Huff affidavit, the affidavit is insufficient to
support the argument made - that the intent of the parties was to prevent Baldwin from filing an
application with claims drawn to the same patentable invention as the ‘006 patent. Huff states
that it is his understanding that the parties intention, at the time of settlement was to settle all
disputes against the ‘006 patent, including priority of invention (Frohlich Ex. 2001, ¶ 8). Huff
fails to provide a factual basis for his understanding. Huff does not state what his role was
during the settlement process, or how he knew the intent of the parties. Was Huff in a meeting
when the terms of the agreement were discussed? Was he involved in drafting the agreement?
We don’t know. Huff does not tell us. As such, we cannot and will not simply take his word as
to the intent of the parties. Accordingly, Huff’s affidavit is not credible. See Rohm and Haas
Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997) (nothing in
the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit
the unsupported assertions of an expert witness).
The district court order dismissing the parties’ claims with prejudice is based on the
settlement agreement. The order itself does not indicate that the parties intended to prevent
Baldwin from filing an application having claims to the same patentable invention as Frohlich’s
involved claims. Even if we were to assume that the dismissal with prejudice applied to a claim
of prior invention, such dismissal does not prevent the board from determining, as between
Frohlich and Baldwin, who was the first to invent the interfering subject matter. Frohlich
recognizes that issue preclusion requires privity of the causes of action. Yet, Frohlich fails to
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007