MR. JAMESON: We think federal circuit law is crystal
clear that the Court can receive extrinsic evidence and
testimony as part of the Markman process. The ultimate
question is what weight, value does the Court ultimately
attribute to that extrinsic testimony. And we concede that by
definition under the law, inventor testimony is extrinsic
evidence. But federal circuit authority also makes clear that
with respect to understanding the background of the invention,
the invention itself, and things of that nature, that a court
may find that type of evidence useful.
With respect to an inventor coming into court and
providing an opinion as to how a claim term should be
construed, quite frankly, we agree that that should be off
limits under the law, and we are not going to put Mr. Norris on
the stand, if you allow him to testify, for the purposes of
walking through the claim terms to provide his opinion to you
18 as to what they mean.
THE COURT: Well, counsel, you all have now stipulated
to the admission of Exhibits 1, 2, 3, 3A, 3B, 3C, and 4, right?
MR. JAMESON: Correct.
THE COURT: All right. That includes the prosecution
history and the examiner interview summary, the compilations of
Exhibits A through O to the July 20, 1995 amendment, and
Popular Science 1994 award for audio and video awarded to
Norris Communications.
What is there that Mr. Norris would offer that is not
reflected in the exhibits that you've just stipulated to?
MR. JAMESON: The extrinsic evidence that he would
offer would be some background information about the invention.
And then he would also offer testimony about the Flashback
product, which is an embodiment of the invention; and that is
reflected at figure 3 of the patent. And it is also reflected
in the prosecution history that is part of the intrinsic
record. And I can provide cites to you for that if you would
like cites.
THE COURT: Well, really what I'm asking is, isn't
Mr. Norris's proffered testimony redundant and duplicative of
the record that you've already stipulated to?
MR. JAMESON: Your Honor, we are going to avoid that
as much as possible. I cannot tell you that there would not be
a little bit of overlap, but with respect to the Flashback
product, for example, he will be putting some meat on the bones
with respect to the Flashback product that you will not find in
the four corners of the intrinsic record.
THE COURT: All right. Thank you.
Any reply.
MR. KEVILLE: Your Honor, that's exactly the problem
with Mr. Norris -- what Mr. Jameson said to me. He's Woody in
this case. Put meat on the bones of the Flashback device of a
commercial embodiment in the guise of clarifying what went on
steps outside the public record which is what is important in
this case. The intrinsic record says what happened at the
interview. They had a chance to file an office action
response, add anything they wanted. They filed their response.
Now, 15 years later, Mr. Norris is going to stand up and put
meat on the bones of that interview, and that's improper.
Competitors rely on what's in the patent office file. That's
all we have to rely on.
THE COURT: Thank you.
I'm going to grant this motion and deny this motion in
part.
Mr. Norris may testify with regard to what he saw,
heard, said, or did, or intended at the time that the patent
was submitted to the patent office. He may not testify as to
the device that results from the patent, nor may he testify as
to any opinion by any other person, including someone familiar
in the art as to what the patent means.
