IN THE UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

JENS H.S. NYGAARD, § 

§ 

Plaintiff, § Case No. 6:20-cv-00234-ADA

v. §

§ 

FÉDÉRATION INTERNATIONALE DE § JURY TRIAL DEMANDED

L’AUTOMOBILE, FORMULA ONE § 

MANAGEMENT LTD., FORMULA ONE § 

WORLD CHAMPIONSHIP LTD., § 

MERCEDES-BENZ GRAND PRIX LTD., § 

DAIMLER AG, RED BULL TECHNOLOGY § 

LTD., RED BULL RACING LTD., FERRARI § 

S.P.A., and DALLARA AUTOMOBILI S.P.A., § 

§ 

Defendants. § 

SUPPLEMENT TO DEFENDANT FÉDÉRATION INTERNATIONALE DE 

L’AUTOMOBILE’S MOTION FOR SUMMARY JUDGMENT (ECF NO. 180) 

Defendant Fédération Internationale de l’Automobile (“FIA”) files this supplement to its 

motion for summary judgment that independent claims 1 and 4 of U.S. Patent No. 7,949,178 (the 

“’178 Patent”) are invalid for lack of an adequate written description (ECF No. 180). 

As set forth in the FIA’s summary judgment motion, the following limitations in claims 1 

and 4 lack an adequate written description: (a) “form of a triangular prism which has been sheared 

in a vertical plane” and (b) “form of a truncated sheared triangular prism.” The depositions of Mr. 

Nygaard, and his technical expert, Stephen Syson further confirm that the form limitations in 

claims 1 and 4 lack an adequate written description. See Biogen Int’l GmbH v. Mylan Pharms., 

Inc., 18 F.4th 1333, 1343 (Fed. Cir. 2021) (considering inventor testimony in the written 

description analysis); Noven Pharms., Inc. v. Amneal Pharms. LLC, C.A. No. 18-699-LPS, 2020 

WL 11191445, at *38 (D. Del. Sept. 4, 2020) (same). 

In his deposition, Mr. Nygaard conceded that the form limitations were drafted by his 

attorneys, and he did not (at least initially) understand what those limitations meant: 

FILED

DEPUTY 

CLERK, U.S. DISTRICT COURT

WESTERN DISTRICT OF TEXAS 

BY: ________________________________ April 26, 2022 CV

Case 6:20-cv-00234-ADA Document 328 Filed 04/26/22 Page 1 of 5
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Q. And earlier you said you were surprised by the language that they used

for the shapes in claim 1. 

A. Yes.

Q. Did you not believe that those shapes were part of your invention?

A. I believe those shapes were part of my invention. But I had to look up

a few words. 

Q. Okay.

A. Like sheared and truncated.

Nygaard Dep. Tr. (Sept. 14, 2021) at 50:9-17 (Ex. 1); see also id. at 40:25-41:11. 

Mr. Nygaard was also unable to determine whether a particular figure from his own patent 

had the form of a vertically sheared triangular prism or a truncated sheared triangular pyramid: 

Q. Okay, so in figure 8 strengthening member 2 has the shape of a truncated

pyramid, is that correct? 

A. I don’t know.

Q. Does it have the shape of a triangular prism?

A. I don’t know.

Id. at 30:6-10; see also id. at 44:8-12. 

Nor could Mr. Nygaard determine whether particular strengthening members satisfied the 

form limitations: 

Q. Does this prototype in this photograph take on the form of a triangular

prism that has been sheared in the vertical plane? Yes or No. 

A. I don’t know.

Q. Does this prototype in this photograph take on the form of a truncated

sheared triangular pyramid? Yes or No. 

A. I would say I don’t know.

Nygaard Dep. Tr. (Sept. 15, 2021) at 140:6-12 (Ex. 2); see also id. at 141:25-142:5. 

Case 6:20-cv-00234-ADA Document 328 Filed 04/26/22 Page 2 of 5
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Q. So the same shape can satisfy both a triangular prism which has been

sheared in a vertical plane and a truncated sheared triangular pyramid, is that correct? 

A. In principle. The principal drawing, yes.

Id. at 46:2-5. 

Similarly, Mr. Syson admitted that there was no difference between a sheared truncated 

triangular prism and an unsheared truncated triangular prism: 

Q. And, in fact, any truncated pyramid that you drew, you could always

select any surface and show that some of it had been sheared off correct and it 

would still meet the claim limitation; isn’t that correct? 

A. I think if you—yeah, if you do it from a practical perspective you

probably could. 

Syson Dep. Tr. at 124:1-10 (Ex. 3) (objection omitted). When asked whether “every truncated 

pyramid would satisfy this form limitation,” Mr. Syson claimed that the shape would need to be 

adapted to the vehicle to protect the driver from impacts and rollovers, but ultimately agreed with 

the statement. Id. at 124:22-125:12. Mr. Syson also admitted that there was nothing in the 

specification describing how the shape of the strengthening member needed to be adapted to the 

structural requirements of the vehicle in which it was installed. See id. at 125:14-23. 

The testimony of Messrs. Nygaard and Syson confirms that the form limitations in claims 

1 and 4 are completely indeterminate and a skilled artisan could not “visualize or recognize the 

identify of the subject matter purportedly described” in the ’178 Patent’s specification. See Enzo 

Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). Therefore, claims 1 and 4 

of the ’178 Patent are invalid for lack of an adequate written description. 

Both Messrs. Nygaard and Syson also acknowledged the form limitations’ inherent lack of 

substance. For example, although the pyramid and prism elements are distinct limitations, Mr. 

Nygaard admitted that they do not necessarily cover different shapes: 

Case 6:20-cv-00234-ADA Document 328 Filed 04/26/22 Page 3 of 5
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Respectfully submitted, 

/s/ Claudia Wilson Frost 

Claudia Wilson Frost 

State Bar No. 21671300 

Jeffrey L. Johnson 

State Bar No. 24029638 

Ryan C. Wooten 

State Bar No. 24075308 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

609 Main, 40th Floor 

Houston, TX 77002 

Telephone: 713.658.6400 

Facsimile: 713.658.6401 

cfrost@orrick.com

jj@orrick.com

rwooten@orrick.com

Travis Jensen 

CA Bar No. 259925 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

1000 Marsh Rd. 

Menlo Park, CA 94025 

Telephone: 650.614.7400 

Facsimile: 650.614.7401 

tjensen@orrick.com

Jeffrey T. Quilici 

State Bar No. 24083696 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

300 W. 6th Street, Suite 1850 

Austin, TX 78701 

Telephone: 512.582.6916 

Facsimile: 512.582.6949 

jquilici@orrick.com

ATTORNEYS FOR DEFENDANT 

FÉDÉRATION INTERNATIONALE DE 

L’AUTOMOBILE 

CONCLUSION 

For the foregoing reasons, and the reasons set forth in the FIA’s opening and reply briefs 

on this motion, the FIA respectfully requests that the Court grant summary judgment that claims 

1 and 4 of the ’178 Patent are invalid for lack of an adequate written description. 

Case 6:20-cv-00234-ADA Document 328 Filed 04/26/22 Page 4 of 5
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CERTIFICATE OF SERVICE 

The undersigned certifies that a true and correct copy of the above document was served 

on all counsel of record via the Court’s CM/ECF system on April 22, 2022. 

/s/ Claudia Wilson Frost

Claudia Wilson Frost 

Case 6:20-cv-00234-ADA Document 328 Filed 04/26/22 Page 5 of 5