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.: 90/011,692
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`Patent No.: 7,057,605
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`Issued: June 6, 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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`October 21, 2011
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`DECLARATION OF STEVEN ISAAC UNDER 37 C.F.R.
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`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
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`computer 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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`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. 7,057,605, the named inventor of which is
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`Toshiharu Enmei, hereinafter referred to as the “’605 Patent.” The first page of the ’605 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 ’605 patent means November 9, 1992.
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`12. Each of the functional components disclosed and claimed by the ‘605 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 ‘605 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 ‘605 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 reviewed the Patent Owner’s Statement filed in this reexamination, including the
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`May 13, 2011 Declaration of Michael Kotzin, Ph.D., hereinafter referred to as the “Kotzin
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`Declaration” or simply “Kotzin.”
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`15.
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`I have reviewed an English translation of excerpts of Japanese Patent Publication
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`No. JP H3-235116, the named inventor of which is Inoue, hereinafter referred to as the “Inoue.”
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`16. A person skilled in the art as of the application date would have understood that the
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`Inoue reference discloses a multifunctional laptop word processor equipped with various
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`features, including, for example, a touch screen, floppy disk drive, memory, fax machine,
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`scanner, printer interface, a keyboard and a telephone handset.
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`17. Despite disclosing fax functionality, it is incorrect to suggest that the Inoue
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`reference “requires” fax functionality. Like the device of the ‘605 patent, fax functionality is just
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`a feature of the device. For example, the Inoue Translation discloses the following on Page 5:
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`“E26 is a 1200/300-baud asynchronous communication modem (CCITT V.21, V.22 standards).
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`When this modem board is inserted into a corresponding connector, the public circuit E14 [sic],
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`used for both telephone and fax, can also be used for PC communication.” Thus, fax
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`functionality is clearly not required at all times, since the public circuit can also be used at other
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`times for PC communication.
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`18. The Inoue reference plainly discloses a touch screen display for inputting
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`commands. (Inoue Translation, Page 6.). As was well known in the art as of the application date,
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`commercially available touch-sensitive LCD displays were overlaid with a digitizer (i.e., a touch
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`layer). This is because commercially available LCD displays were not able to detect an input.
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`Commercially available LCD displays as of the application date were unable to receive inputs
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`without a secondary device, such as a digitizer. As a result, the “display device” claimed in the
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`‘605 patent simply cannot be a single device capable of both displaying images and receiving
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`inputs and generating outputs. For this reason, a person skilled in the art as of the application
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`date would understand that the term “display device” claimed in the ‘605 patent would require
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`both a digitizer and a display.
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`19.
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`I have reviewed European Patent Application No. EP0499012, the named inventor
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`of which is Zvi Yaniv, hereinafter referred to as the “Yaniv.”
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`20. The Yaniv reference discloses a hand-held portable communicator enabled for both
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`voice and data transmission (e.g., fax) over a cellular network. To facilitate user input, the Yaniv
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`portable communicator also employs a touch screen display.
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`21. One skilled in the art as of the application date would understand that the Yaniv
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`reference clearly discloses a compact telecommunications system adapted to send and receive
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`information in either voice or facsimile fashion by way of a wireless communication
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`terminal/cellular telephone network. See e.g., Col. 1:3-15.This is confirmed by the Yaniv
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`reference’s statement that the simplest operation of the device is its use as a telephone for voice
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`communication, whereby a microphone and speaker are provided in the device and either hand-
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`held or speakerphone operation can be selected. See Col. 4:39-43.
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`22. Contrary to Dr. Kotzin’s declaration (Kotzin, ¶¶18-25), coupling a fax machine, or
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`fax functionality, with a cellular device for use over cellular channels was well known as of the
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`application date, and would not require detailed knowledge about the cellular telephone’s
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`operation and control. For example, U.S. Patent Number 4,977,609 discloses a simple interface
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`circuit for adapting an existing facsimile machine to successfully operate through an existing
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`cellular mobile radiotelephone.
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`23. Furthermore, the EO 440 and 880 Personal Communicators provided fax
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`capabilities over cellular channels. The EO devices utilized an “off the shelf” third-party cellular
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`modem manufactured by Data Race, Inc., of San Antonio, Texas. This modem interfaced directly
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`to a cellular channel and provided both data and fax capabilities (data throughput rate was
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`14.4kbps, fax throughput rate was 9.6kbps). I had personal experience prior to the application
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`date developing communication software for the EO devices, testing them in the lab and in the
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`field, and using them as an end user. Dr. Kotzin conjectures that the performance of a standard
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`fax machine would be inadequate due to the susceptibility of cellular channels to various forms
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`of interference. However, that was simply not the case in my experience. Fax transmission over
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`cellular channels with an EO device performed quite satisfactorily. The Data Race cellular
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`modem specifically included technology to overcome the issues Dr. Kotzin describes, such as the
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`ability to automatically analyze the quality of the cellular link and dynamically adjust modem
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`speed accordingly.
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`24.
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`I have reviewed United States Patent No. 5,128,981, the named inventor of which is
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`Tsukamoto, hereinafter referred to as the “Tsukamoto.”
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`25. The Tsukamoto reference discloses wireless communicators enabled to wirelessly
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`communicate with a public communication network by way of an office system (“PBX”).
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`26. The Tsukamoto wireless communicators are enabled to communicate with a public
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`telephone network by way of a wireless base station (transmitter/relay) and communication
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`controller that is connected to a public network. See e.g., Col. 5:61-63 and Figure 1.
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`27. One skilled in the art as of the application date would have concluded that
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`Tsukamoto is enabled to communicate with a public network, and that adapting a private
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`network device to operate over a public network would require minimal modifications. For
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`example, U.S. Patent No. 5,127,041 provides a simple system and method for adapting a
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`computer to operate over a cellular network.
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`28.
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`I have reviewed United States Patent No. 5,117,449, the named inventor of which is
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`Metroka, hereinafter referred to as the “Metroka.”
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`29. Metroka teaches an integrated paging and radiotelephone apparatus that combines
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`paging and cellular radiotelephone functions in a single unit. Metroka notes that the apparatus
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`consists of dual receivers allowing reception of paging signals simultaneously with cellular
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`radiotelephone signals. See e.g., Col. 2:10-14.
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`30. ADC incorrectly concludes that the Metroka cellular radiotelephone does not
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`comply with any cellular network because the radiotelephone is user-tunable. Based on this
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`incorrect conclusion, ADC goes on to mischaracterize the Metroka cellular radiotelephone as a
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`“push-to-talk, simplex, radio system known as a ‘walkie-talkie’.” (Patent Owner’s Statement, p.
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`22-23). The Metroka patent, however, clearly states that the Metroka cellular radiotelephone
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`does in fact participate in a standard cellular telephone network - one that provides access to the
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`landline telephone system and charges users for incoming and outgoing calls: “The cellular
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`radiotelephone allows a mobile user to place a call anywhere within an area covered by the
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`cellular communications system antennas. The cellular radiotelephone allows the user to access
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`the landline telephone system to conduct two way telephone conversations. The cellular
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`radiotelephone user can also receive telephone calls on the radiotelephone … the radiotelephone
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`user typically pays for incoming as well as outgoing calls.” Col. 1:39-52.
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`31. Despite the clear teachings in Metroka that it discloses a standard cellular
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`radiotelephone, ADC cites three passages in Metroka to allegedly show that its cellular
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`radiotelephone receiver is user-tunable.
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`1.
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`ADC states that “Metroka describes how the microprocessor controls the
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`“frequency control of the radiotelephone. (Col. 3, Ins. 15-20).” (Patent
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`Owner’s Statement, p. 23) The actual text in the patent is: “The
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`microprocessor (106) handles both the radiotelephone and the paging
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`functions,
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`including
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`frequency control of
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`the
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`radiotelephone.”
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`Cellular networks operate on multiple frequencies and cellular phones are
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`often required to switch frequencies as they travel from cell to cell.
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`However, this occurs without any user intervention; in fact, the user is
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`unaware that this frequency switching is taking place. The microprocessor
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`that controlled a cellular radiotelephone typically performs this frequency
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`switching task, as set forth in Metroka. Notably, Metroka never states that
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`there is any user interaction for the frequency control task.
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`2.
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`ADC states that “Additionally, Metroka explains that “[I]t it is determined
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`that the programming command was input, then flow proceeds from (412)
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`to block (414) where a prompt is displayed on the display (103) asking the
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`user to input the first of a series of programmable radiotelephone
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`parameters(frequency) via the keypad (102).” (Patent Owner’s Statement,
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`p. 23). The actual text of the patent does not contain the denotation
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`“(frequency)” for the first radiotelephone parameter. In fact, there is no
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`mention of a radiotelephone parameter for frequency anywhere in the
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`patent. Also, entering radiotelephone parameters only occurs when the
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`radiotelephone is in a test mode, not when the radiotelephone is in normal
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`operation. This can be seen by reviewing the entire text in Col 7: 1-34, not
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`merely a portion of text taken out of context. This is also shown in Fig. 4.
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`3.
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`ADC states that “The paging system is typically a one-way radio
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`communication system … the keypad can be used to program it via the
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`microprocessor (106) and synthesizer programming bus (201). In this way,
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`the user can change the receiving frequency of the secondary receiver
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`(105) … the first keypad (102) can also program radiotelephone
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`parameters. These parameters include, but are not limited to, the system
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`identification number and the user’s telephone number.” The first two
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`parts of this statement show that the user can change the frequency of the
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`paging receiver (the secondary receiver). However, there is no mention
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`anywhere in the patent that the user can change the frequency of the
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`radiotelephone receiver. The third portion of the statement describes the
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`typical first-time setup for a cellular phone – setting the system
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`identification number and setting the user’s telephone number. The patent
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`allows for other parameters to be set, but never mentions radiotelephone
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`frequency as one of those parameters.
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`32.
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`In summary, the radiotelephone described in Metroka is a standard cell phone that
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`works with a standard cellular network.
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`33.
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`I have reviewed Japanese Patent Publication No. JP H04-116449, the named
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`inventor of which is Yutaka Yamagishi, hereinafter referred to as the “Yamagishi.”
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`34.
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`It is my belief that images displayed by the Yamagishi display would not be
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`distorted. It is common to use layers of different materials when constructing a digitizer overlay
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`for use with an LCD device. For instance, digitizer layers are often formed from two very thin
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`glass layers with top and bottom conductive layers (ITO Glass or Film) placed in between. To
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`protect the outermost glass layer from scratches, it is also common to install a protective layer
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`formed form a third material. Because the various layers are very thin, closely packed and clear,
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`the image being displayed by an LCD panel is not distorted when viewed through the digitizer.
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`35. To maintain the narrow air gap between the conductive layers, small spacer dots are
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`often used. Due to the size and clarity of the spacer dots, they do not have a noticeable impact on
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`the clarity of the LCD image as viewed through the digitizer.
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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 : ____10/21/2011___________
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`________________________________
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` Steven Isaac
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