IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Reexamination of US. Patent of:
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`Toshiharu Enmei
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`Control No.: 90/011,691
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`Patent No.: 6,985,136
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`Issued: January 10, 2006
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`For: Portable Communicator
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`vvvvvvvvvv
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`Examiner: Nguyen, Minh
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`Group Art Unit: 3992
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`April 3, 2012
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`DECLARATION OF STEVEN ISAAC UNDER 37 CPR. § 1.132
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`I am of lawful age and if called upon to testify, I could and would competently testify to
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`the facts set for below.
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`1.
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`I am currently the CEO of TouchFire, Inc., a startup company in the tablet computer
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`space.
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`2.
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`In 1979, I was awarded a Bachelor degree in Computer Science from the State
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`University of New York at Buffalo.
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`3.
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`From 1979—1982, I was employed by NCR where I developed firmware for a pre-
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`production NCR minicomputer.
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`4.
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`From 1982-1985, I was employed by Burroughs Corporation where I worked in the
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`semiconductor research division developing an operating system for a new line of reduced
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`instruction set CPUs.
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`EXHIBIT
`Petitioner . Kyocera
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`PX 1044
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`5.
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`From 1985-1988, I was employed by Sun Microsystems where I led a group that
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`ported NFS (Network File System) to non-Sun systems and made NFS an industry standard.
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`6.
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`From 1988-1993, I was employed by GO Corporation (“GO”). I joined GO as the
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`Team Manager for the Filesystem and Connectivity group. GO developed a mobile operating
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`system for portable tablet computers named PenPoint. I was the seventh employee at GO, and
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`my job was to develop the storage and connectivity strategy for PenPoint, and to then implement
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`it. PenPoint was one of the world’s first operating systems specifically designed for mobile
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`operation, and I invented numerous new approaches and technologies that addressed the unique
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`requirements and characteristics of a mobile environment. GO shipped the first version of
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`PenPoint in 1991. I was subsequently promoted to Principal Engineer, which was the title I had
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`until I left GO. When I first joined GO, the company was developing both hardware and
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`software. I participated in some of the connectivity aspects of the hardware design, and I was
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`responsible for the software in this area. Subsequently, GO spun off its hardware group into a
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`separate company, EO, Inc. (“EO”). EO was then acquired by AT&T. Thereafter, EO acquired
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`GO. I worked in the merged EO/GO organization during my last year at the company. EO built
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`two portable tablet computers that ran PenPoint exclusively, namely the EO 440 and 880
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`Personal Communicators. I was responsible for the connectivity aspects of the PenPoint software
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`that ran on these machines.
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`7.
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`From 1993-2000, I was at Microsoft Corporation where I was Group Program
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`Manager for a research project that became Windows CE. I was on the Internet Explorer 1.0
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`team and was responsible for the IE home page. I then published the first MSN.COM, and
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`developed the first customizable home page on the Internet. The technology that my team
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`developed for this became Active Server Pages 1.0. I then went to the Developer Tools Division
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`and managed a group that was responsible for the design time and portions of the runtime for
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`ASP.NET 1.0.
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`8.
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`From 2008-2010, I was at Earth Class Mail as Vice President of Product where I led
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`the product direction for the company. Earth Class Mail gives customers online access and
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`control of their postal mail.
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`9.
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`In 2010, I started TouchFire, Inc. (“TouchFire”). TouchFire is a startup that is
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`developing a product that provides a better way to input information on tablet computers.
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`10.
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`I am named as an inventor or co-inventor on 10 issued U.S. patents: 5,724,492,
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`5,959,621, 6,091,411, 6,216,143, 6,421,694, 6,424,981, 6,632,248, 6,647,531, 6,915,454,
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`7,451,352.
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`11.
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`I have reviewed United States Patent No. 6,985,136, the named inventor of which is
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`Toshiharu Enmei, hereinafter referred to as the “’136 Patent.” The first page of the ‘136 patent
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`shows that a Japanese application was filed on November 9, 1992. For purposes of this
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`Declaration, the term “application date” of the ‘136 patent means November 9, 1992.
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`12. Each of the functional components disclosed and claimed by the ‘136 patent,
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`typically illustrated as simple block diagrams, was well known in the art at the time of the
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`application date. The ‘136 patent merely purports to have invented a multifunctional laptop
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`device aggregated from a multitude of known components and technologies.
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`13. The EO Personal Communicators running
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`the PenPoint operating system
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`implemented the key features described in the ‘136 patent. The EO Personal Communicators are
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`portable, battery operated, handheld devices – for example, the dimensions of the main body of
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`the EO 440 are 10.8" x 7.1" x 0.9", and it weighed 2.3 lbs. The EO Personal Communicators
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`provided both voice and data communication over the analog cellular network that was in use in
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`the 1991 timeframe. Data capabilities included sending and receiving email, sending and
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`receiving faxes, and remote file access to desktop PCs and networks. Voice capabilities included
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`making and receiving voice calls, monitoring roaming status, keeping track of call times,
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`displaying signal strength, managing phone numbers and dialing phone numbers via a built-in
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`address book. For talking and listening to cellular voice calls, the EO Personal Communicators
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`utilized a telephone handset or a headset worn by the user.
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`14.
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`I have reviewed United States Patent No. 5,390,236, the named inventors of which
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`are Klausner et al., hereinafter referred to as “Klausner II.” One of ordinary skill in the art at the
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`time of the application date would understand that the Klausner II reference discloses a telephone
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`apparatus and corresponding cellular phone that may be configured with a touch-screen display
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`for displaying a list of caller names. Specifically, when a user selects a name from the list, using
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`the touch-screen, the telephone will dial the number affiliated with the selected name. Therefore,
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`one of ordinary skill in the art at the time of the application date would have understood that
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`Klausner II plainly illustrates, as claimed by the ‘136 patent, a list display and destination
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`selection device that shows a list of one or more destinations on the display and performs a
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`destination identifying number-setting process when the destination from the list is selected.
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`15.
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`I have reviewed United States Patent No. 4,870,677, the named inventors of which
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`are Di Santo et al., hereinafter referred to as “Di Santo.” One of ordinary skill in the art at the
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`time of the application date would understand that Di Santo teaches a device having a touch
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`screen display configured to display one or more images, specifically a graphic keyboard. The
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`display is also capable of displaying a list of stored telephone numbers, including the name of the
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`individual or company associated with that number. From this list, the user may simply select
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`and automatically dial a selected individual. Di Santo also teaches a series of buttons displayed
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`on the screen that may be utilized to implement operating modes (i.e., applications). Therefore,
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`one of ordinary skill in the art at the time of the application date would have understood that Di
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`Santo plainly illustrates, as claimed by the ‘136 patent, (1) a list display and destination selection
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`device that shows a list of one or more destinations on the display that performs a destination
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`identifying number-setting process when the destination from the list is selected and (2) an
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`application selection screen display device.
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`16.
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`I have reviewed United States Patent No. 5,321,802, the named inventors of which
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`are Furuya et al., hereinafter referred to as “Furuya.” One of ordinary skill in the art at the time
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`of the application date would understand that Furuya teaches an information processing
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`apparatus and associated software methodology for performing a plurality of functions including,
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`for example, facsimile and telephone display and organizational functionality. Furuya further
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`teaches a display enabled to display images, such as a received facsimile, and a GUI interface for
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`managing received data, applications and contacts. Therefore, one of ordinary skill in the art at
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`the time of the application date would have understood that Furuya plainly illustrates, as claimed
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`by the ‘136 patent, (1) a data display process device that shows a list of selectable received data
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`and (2) an application selection screen display device.
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`17.
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`I have reviewed United States Patent No. 5,406,307, the named inventors of which
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`are Hirayama et al., hereinafter referred to as “Hirayama.” One of ordinary skill in the art at the
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`time of the application date would understand that Hirayama teaches a data processing apparatus
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`and associated software methodology for displaying and organizing icon groups that activate
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`various processes. Hirayama also teaches a display for displaying video image data from the
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`CPU. Therefore, one of ordinary skill in the art at the time of the application date would have
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`understood that Hirayama plainly illustrates, as claimed by the ‘136 patent, an application
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`selection screen display device.
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`18.
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`I have reviewed United States Patent No. 5,333,266, the named inventors of which
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`are Boaz et al., hereinafter referred to as “Boaz.” One of ordinary skill in the art at the time of the
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`application date would understand that Boaz teaches an Integrated Messaging System and
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`associated software methodology that integrates mail from a plurality of mail servers handling
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`messages of different media types such as text, voice, facsimile, video and images. Therefore,
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`one of ordinary skill in the art at the time of the application date would have understood that
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`Boaz plainly illustrates, as claimed by the ‘136 patent, (1) a data display process device that
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`shows a list of selectable received data, (2) an application selection screen display device, and
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`(3) a recorded message list screen display device.
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`19.
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`I have reviewed United States Patent No. 4,680,785, the named inventors of which
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`are Akiyama et al., hereinafter referred to as “Akiyama.” One of ordinary skill in the art at the
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`time of the application date would understand that Akiyama teaches software for displaying the
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`name of the other party of a call on the display during a call of the wireless telephone device.
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`Specifically, Akiyama compares an incoming phone number to a stored directory of phone
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`numbers with names. If there is a match, the name is displayed on the display. Therefore, one of
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`ordinary skill in the art at the time of the application date would have understood that Akiyama
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`plainly illustrates, as claimed by the ‘136 patent, a display device that displays the name of the
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`other party of a call during the call.
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`20.
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`I have reviewed United States Patent No. 4,924,496, the named inventors of which
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`are Figa et al., hereinafter referred to as “Figa.” One of ordinary skill in the art at the time of the
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`application date would understand that Figa teaches software for providing an incoming
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`telephone call number display system that detects the telephone number of an incoming caller
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`and then displays the name of the calling party. While the name of the calling party is replaced
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`with a timer upon picking up the receiver (i.e., during a call), it would have been obvious to one
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`of ordinary skill in the art at the time of the application date to keep the caller’s name on the
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`display during a call. Displaying the caller’s name on the display during the call could be easily
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`accomplished by (1) simply omitting the timer display and, instead, continuing to display the
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`name of the calling party, or (2) increasing the screen size to provide sufficient space for both the
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`name and the timer. Therefore, one of ordinary skill in the art at the time of the application date
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`would have understood that Figa plainly illustrates, as claimed by the ‘136 patent, a display
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`device that is capable of displaying the name of the other party of a call during the call.
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`21.
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`I have reviewed United States Patent No. 4,653,094, the named inventor of which is
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`Rasmussen, hereinafter referred to as “Rasmussen.” One of ordinary skill in the art at the time of
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`the application date would understand that Rasmussen teaches software for displaying the status
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`of a call using an LCD display. Specifically, the Rasmussen device displays a first indicia to
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`illustrate that the line is in use and a second indicia when the line is not in use. Therefore, one of
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`ordinary skill in the art at the time of the application date would have understood that Rasmussen
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`plainly illustrates, as claimed by the ‘136 patent, a telephoning status display device.
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`22. While some of previously described references may teach the claimed functionality
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`with regard to a non-portable and/or wired device, the underlying software functionality could
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`have been easily implemented in any portable device having a processor and display, including
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`cellular devices. Therefore, it is my opinion that one of ordinary skill in the art at the time of the
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`purported invention, upon reviewing the various references, would be motivated to implement
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`the underlying software functionality in portable devices. Moreover, one of ordinary skill in the
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`art at the time of the purported invention would have understood that software and software-
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`based functionality may be readily transferred from device to device, regardless of the specific
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`hardware type. For example, software functionality embodied by larger CRT-based devices can
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`easily be adapted for use with smaller portable devices having LCD displays. In fact, one of
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`ordinary skill in the art at the time of the purported invention would have known that replacing a
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`CRT with a compact LCD would both yield a smaller device and reduce energy consumption.
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`For example, the PenPoint operating system that I worked on at GO was specifically designed to
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`work on mobile devices with compact LCD screens. However, the standard software
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`development environment used by all GO engineers and third-party software developers was
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`IBM PC hardware, which used a CRT display. PenPoint interfaced directly with the video card
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`hardware that drove the CRT on the PC and the video display hardware that drove the LCD
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`screen on the mobile device. The only software that changed between these two environments
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`was a single low level screen device driver. There was no other code in PenPoint that was aware
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`of the difference between the two display devices.
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`23.
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`I have reviewed United States Patent No. 5,117,449, the named inventors of which
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`are Smith et al., hereinafter referred to as “Smith.” One of ordinary skill in the art at the time of
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`the application date would understand that Smith teaches a sleep (inactive) mode that may be
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`used to conserve power. Smith notes that the device could be configured to enter sleep mode
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`upon receiving a command from the CPU and to exit sleep mode in response to a button or an
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`incoming signal being received by the modem. Therefore, one of ordinary skill in the art at the
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`time of the application date would have understood that Smith plainly illustrates, as claimed by
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`the ‘136 patent, a power controller that provides power to the display and puts the display on
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`standby.
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`24.
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`I have reviewed United States Patent No. 5,247,700, the named inventors of which
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`are Wohl et al., hereinafter referred to as “Wohl.” One of ordinary skill in the art at the time of
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`the application date would understand that Wohl teaches a standby mode for power conservation.
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`Wohl also teaches that, in the standby mode, the cellular block is active and therefore a cellular
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`phone call may be received. Therefore, one of ordinary skill in the art at the time of the
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`application date would have understood that Wohl plainly illustrates, as claimed by the ‘136
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`patent, a power controller that provides power to the display and puts the display on standby.
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`25. At the time of the application date, providing electronic devices with standby
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`functionality was a well-known power conservation technique. Moreover, it was quite common
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`at the time of the application date to use this known power conservation technique in battery
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`powered devices. In fact, selectively disabling one or more components and/or functions within
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`an electronic device during standby mode was common practice. For example, a power supply to
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`the CPU, RAM and data communication circuitry was commonly maintained while other
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`devices, such as the display, were disabled. Accordingly, devices capable of receiving data
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`and/or calls during standby mode were well known at the time of the application date. Moreover,
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`it was common to use one or more techniques/devices for triggering the standby mode,
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`including, for example, switches, buttons and timers (e.g., those used to determine user
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`inactivity).
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`26. During the early development of the EO machine, we understood the importance of
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`including a power-saving standby mode. For example, in operation, the EO machine’s power-
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`saving standby mode was designed to be triggered in the following ways:
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`a. Hardware button. The EO machine had a hardware power button that put
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`the tablet into standby mode and woke it up from standby mode.
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`b. Software button. The EO machine had a software button that the user
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`could tap on with the pen to put the EO machine into standby mode.
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`c. Timer. The EO machine had an inactivity timer which automatically put
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`the tablet into standby mode after a period of inactivity. The user could set
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`the amount of inactivity time before standby mode was initiated.
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`27. The EO machine could receive incoming faxes and phone calls while in standby
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`mode. These events would wake the machine up from standby mode.
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`28. The EO machine also had the ability to create pre-scheduled work items, such as
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`sending an email or sounding an alarm at a specified time, which would wake the machine up
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`from standby.
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`I declare under penalties of perjury set out in 18 U.S.C. §1001 that the foregoing
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`statements are true and correct to the best of my knowledge.
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`Date : __April 3, 2012___________
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`________________________________
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` Steven Isaac
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