UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
`
`Petitioner,
`
`V.
`
`WASICA FINANCE GMBH &
`
`BLUEARC FINANCE AG,
`
`Patent Owner.
`
`IPR N0. IPR2014-00295
`
`US. Patent No. 5,602,524
`
`DECLARATION OF MELVIN RAY MERCER, Ph.D.
`
`Pet'r Exhibit 1010
`
`Continental v Wasica
`
`IPR2014-00295
`
`Page 000001
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CONTINENTAL AUTOMOTIVE SYSTEMS, INC.,
`
`Petitioner,
`
`V.
`
`WASICA FINANCE GMBH &
`
`BLUEARC FINANCE AG,
`
`Patent Owner.
`
`IPR N0. IPR2014-00295
`
`US. Patent No. 5,602,524
`
`DECLARATION OF MELVIN RAY MERCER, Ph.D.
`
`Pet'r Exhibit 1010
`
`Continental v Wasica
`
`IPR2014-00295
`
`Page 000001
`
`
`
`I, Melvin Ray Mercer, Ph.D., hereby declare under penalty of perjury:
`
`I.
`
`INTRODUCTION
`
`A. Background and Qualifications
`
`1.
`
`My name is Melvin Ray Mercer, Professor Emeritus of Electrical and
`
`Computer Engineering at Texas A&M University.
`
`I am currently President of
`
`Mercer and Associates, an independent consulting firm. In addition to the below
`
`summary, a copy of my current curriculum vitae more fully setting forth my
`
`experiences and qualifications is submitted herewith as Ex. 1011.
`
`2.
`
`I have more than 45 years of dual industrial and academic experience
`
`in Electrical Engineering and Computer Engineering.
`
`I received a BS. in
`
`Electrical Engineering from Texas Tech University in 1968, a Master of Science in
`
`Electrical Engineering from Stanford University in 1971, and a Doctor of
`
`Philosophy in Electrical Engineering from The University of Texas at Austin in
`
`1980. Further, I have authored dozens of published technical papers and delivered
`
`many lectures addressing various aspects of circuit and network design.
`
`3.
`
`From 1968 to 1973, I was a Research/Development Engineer at
`
`General Telephone and Electronics Sylvania in Mountain View, California, during
`
`which time I also completed my MS. in Electrical Engineering from Stanford
`
`University in 1971. During this period, I programmed minicomputer systems
`
`(predecessors to personal computers, smartphones, and modern servers) in machine
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`2
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`Page 000002
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`language, assembly language and various higher-level languages.
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`I wrote simple
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`Operating Systems, and most of the applications involved real-time processing as a
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`significant aspect of the systems design. Much of this work was related to
`
`computer control of data collection and analysis systems used by organizations in
`
`the United States government. These systems involved concepts and utilized tools
`
`of a similar nature to those at issue in this proceeding — e. g. real-time data
`
`collection and communication of physical processes, RF based signals and data in
`
`the presence of significant environmental noise, etc.
`
`4.
`
`From 1973 to 1977, I was a Member of Technical Staff at Hewlett-
`
`Packard’s Santa Clara Division and subsequently at Hewlett-Packard Laboratories
`
`in Palo Alto, California. During this time, I continued to develop application
`
`programs — mostly in the area of real-time data acquisition and control of systems.
`
`In addition to designing the software associated with these systems, I also designed
`
`interface hardware to interact with the software of the computers and accomplish
`
`various tasks. One major project for which I had overall responsibility was the
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`real-time control of environmental test systems for satellites and satellite
`
`components. At HP Laboratories, among other projects, I developed hardware and
`
`software to provide real-time control of manufacturing systems for exotic solid
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`state devices. These systems involved concepts and utilized tools of a similar
`
`nature to those at issue in this proceeding — e. g. the utilization and calibration of
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`sensor systems, software to monitor and control those systems, the monitoring of
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`physical parameters in the presence of high noise and hostile environmental
`
`conditions.
`
`5 .
`
`From 1977 to 1980, I was a Lecturer in the Division of Mathematics,
`
`Statistics, and Computer Science at the University of Texas at San Antonio. As the
`
`director of a laboratory for teaching students to program and build hardware
`
`interfaces and control systems using small computers, I purchased, built, and
`
`operated some of the earliest personal computers. Additionally, I taught courses in
`
`the design of digital systems such as those used in this proceeding, while also
`
`completing my PhD. in Electrical Engineering from the University of Texas at
`
`Austin in 1980.
`
`6.
`
`From 1980 to 1983, I was a Member of Technical Staff at Bell
`
`Laboratories in Murray Hill, New Jersey. My work involved the programming of
`
`computers and the hardware design of components for communication systems. I
`
`was part of a three-person team that designed, tested, and directed the manufacture
`
`of an integrated circuit that was a key component in a digital telephone modem.
`
`The issues in the design, manufacture, and utilization of this (and other) integrated
`
`circuits were very similar to those associated with the integrated circuits used to
`
`realize the system components in this proceeding.
`
`7.
`
`In 1983, I was appointed Assistant Professor of Electrical and
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`Page 000004
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`
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`Computer Engineering at the University of Texas at Austin. In 1987, I was
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`promoted to Associate Professor and Professor in 1991. During this period I
`
`taught Computer Engineering courses at the undergraduate and graduate level, I
`
`directed the research of graduate students, and I consulted with numerous
`
`organizations. These courses, among other aspects, involved the use of digital
`
`machines to monitor and control real-time processes such as those at issue in this
`
`proceeding.
`
`8.
`
`In 1995, I was appointed Professor of Electrical and Computer
`
`Engineering, Leader of the Computer Engineering Group, and Holder of the
`
`Computer Engineering Chair in Electrical Engineering at Texas A&M University
`
`in College Station, Texas. My teaching, my research, my technical publications,
`
`and my supervision of graduate students during this period included the areas of
`
`the design and implementation of control systems using digital hardware and
`
`software systems, and my administrative duties — including the growth and
`
`enhancement of the Computer Engineering Group. As with previous my work (at
`
`The University of Texas at Austin) during this period, I taught courses at the
`
`undergraduate and graduate level, I directed the research of graduate students, and
`
`I consulted with numerous organizations on topics related to the issues in this
`
`proceeding — e.g., the minimization of power consumption of integrated circuits.
`
`I
`
`was also responsible for monitoring controlled experiments to optimize and
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`Page 000005
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`
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`quantify the use of tester time to detect defects in electrical products, and I was
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`part of a team where analytical techniques were used to predict the expected
`
`growth of quiescent currents in MOS transistors as a function of the reduction in
`
`integrated circuit feature sizes.
`
`9.
`
`In September 2005, I retired from my teaching position, and the
`
`Regents of the Texas A&M University System appointed me as Professor Emeritus
`
`of Electrical and Computer Engineering at Texas A&M University.
`
`10.
`
`In 1984, I formed Mercer and Associates, an independent consulting
`
`firm that I have been operating since. Since 1984, I have been providing private
`
`consultation and advice in Electrical and Computer Engineering to numerous
`
`entities, including IBM Corp., Rockwell International, Motorola Semiconductor,
`
`AT&T, Inc. and SigmaTel.
`
`11.
`
`I first served as an expert witness at the request of the Office of the
`
`State Attorney General of Texas in 1984. Since that time, I have been hired by
`
`numerous law firms to provide them and their clients with expert consultation and
`
`expert testimony — often in the areas of patent infringement litigation related to
`
`Electrical and Computer Engineering. Several of these cases were centered in the
`
`technical issues of tire pressure monitors.
`
`l2.
`
`Throughout my career, I have been actively involved in numerous
`
`professional organizations including the Institute of Electrical and Electronics
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`Page 000006
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`
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`Engineers (“IEEE”), and I was recognized as an IEEE Fellow in 1994.
`
`I was the
`
`Program Chairman for the 1989 International Test Conference, which is an IEEE-
`
`sponsored annual conference with (at that time) more than one thousand attendees
`
`and over one hundred presented papers.
`
`I won the Best Paper Award at the 1982
`
`International Test Conference.
`
`13.
`
`I also won a Best Paper Award at the 1991 Design Automation
`
`Conference, an annual conference with (at that time) more than ten thousand
`
`attendees and five hundred submitted papers, many of which related to the design
`
`of integrated circuit based systems. The subject of that award-winning paper
`
`involved trade-offs between power consumption and processing speed in integrated
`
`circuits used for, among other things, real-time process control systems.
`
`14.
`
`I also won a Best Paper Award at the 1999 VLSI Test Symposium.
`
`I
`
`am the inventor of two United States patents that relate to the design of integrated
`
`circuits. I was selected as a National Science Foundation Presidential Young
`
`Investigator in 1986.
`
`15.
`
`Based upon these and other technical activities, and in accordance
`
`with the legal standards as further discussed below, I am familiar with the
`
`knowledge and capabilities of one of ordinary skill in the area of tire pressure
`
`monitor systems in the period surrounding 1992. Specifically, my work with
`
`students, undergraduates as well as Masters and PhD. candidates, with colleagues
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`Page 000007
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`
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`in academia, with engineers practicing in industry, and with lawyers and technical
`
`experts in the Computer Engineering area allowed me to become personally
`
`familiar with the level of skill of individuals and the general state of this art during
`
`this time period.
`
`B. Engagement
`
`16.
`
`I have been retained by Continental Automotive Systems, Inc.
`
`(“Continental”) in connection with the Petition for Inter Partes Review (“IPR”) of
`
`US. Patent No. 5,602,524 (the ’524 patent”), Case No. IPR2014-00295.
`
`I submit
`
`this declaration in support of Continental’s request for IPR of the ’524 patent.
`
`I
`
`understand that my testimony will be submitted for the purposes of IPR2014-
`
`00295 to be considered before the Patent Trial and Appeal Board (“PTAB”).
`
`17.
`
`I am not an employee of Continental, or any affiliate or subsidiary
`
`thereof.
`
`18.
`
`I am being compensated at my normal hourly rate of $650 per hour.
`
`My compensation is in no way dependent upon the outcome of the IPR.
`
`19.
`
`I have been asked to provide my opinions relating to the validity of
`
`the ’524 patent. Specifically, I have been asked to provide my opinion regarding:
`
`(i) the level of ordinary skill in the art to which the ’524 patent pertains, and (ii) the
`
`validity of claims 1 — 21 of the ’524 patent.
`
`20.
`
`The opinions expressed in this declaration are not exhaustive of my
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`Page 000008
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`opinions on the validity of 1 — 21. Therefore, the fact that I do not address a
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`particular point should not be understood to indicate any agreement on my part that
`
`any claim otherwise complies with the validity and patentability requirements.
`
`C. Materials Consulted in Preparation
`
`21 .
`
`In preparing this declaration, I reviewed the following material:
`
`(a)
`
`(b)
`
`(C)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`(h)
`
`The ’524 patent (EX. 1001 or ‘‘Mock”);
`
`The ’524 patent file history (EX. 1002);
`
`Italian Patent No. 1,219,753 (EX. 1003 or “Oselin”);
`
`The English translation of Oselin and Affidavit (EX. 1004);
`
`US. Patent No. 5,109,213 (EX. 1005 or “‘Williams”);
`
`US. Patent No. 5,083,457 (EX. 1006 or c‘Schultz”);
`
`US. Patent No. 4,912,463 (EX. 1007 or “Li”);
`
`US. Patent No. 4,067,376 (EX. 1008 or “‘Barabino”),
`
`US. Patent No. 4,750,118 (EX. 1009 or c‘Heitschel”);
`
`(i)
`
`Select Pages from IEEE Standard Dictionary of Electrical and
`
`Electronics Terms (4th ed. 1988) (EX. 1012);
`
`(k)
`
`Select Pages from Webster’s New World Dictionary of
`
`American English (Deluxe 3d ed. 1991) (EX. 1013); and
`
`(1)
`
`Select Pages from George R. Cooper & Clare D. McGillem,
`
`Modern Communications & Spread Spectrum (1986)
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`Page 000009
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`
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`(EX.lOl4).
`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`A.
`
`Anticipation
`
`22.
`
`I understand that a patent claim is anticipated when a single piece of
`
`prior art describes every element of the claimed invention, either expressly or
`
`inherently, and arranged in the same way as in the claim. For inherent anticipation
`
`to be found, it is required that the missing descriptive material is necessarily
`
`present in the prior art.
`
`23.
`
`I understand that it is acceptable to consider evidence other than
`
`solely the information in a particular prior art document to determine if a feature is
`
`in fact necessarily present in or inherently described by that reference.
`
`24.
`
`I understand that, for the purpose of an inter partes review, prior art
`
`that anticipates a claim can include both patents and printed publications from
`
`anywhere in the world.
`
`B. Obviousness
`
`25.
`
`I understand that a patent claim is unpatentable and invalid if the
`
`subject matter of the claim as a whole would have been obvious to a person having
`
`ordinary skill in the art of the claimed subject matter as of the time of the invention
`
`at issue.
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`10
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`Page 000010
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`26. Unlike anticipation, which allows consideration of only one item of
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`prior art, I understand that obviousness may be shown by considering more than
`
`one item of prior art.
`
`27.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art (“POSITA”) as of the effective filing date of the patent
`
`claim.
`
`28.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the following factors must be evaluated to determine whether the
`
`claimed subject matter is obvious: (l) the scope and content of the prior art, (2) the
`
`difference or differences, if any, between each claim of the patent and the prior art,
`
`(3) the level of ordinary skill in the art at the time the patent was filed; and (4) any
`
`so-called objective indicia of non-obviousness.
`
`29.
`
`I have been informed and I understand that so-called objective indicia
`
`of non-obviousness, also known as “secondary considerations,” include: (1)
`
`commercial success, (2) long-felt but unresolved needs; (3) copying of the
`
`invention by others in the field; (4) initial expressions of disbelief by experts in the
`
`field; (5) failure of others to solve the problem that the inventor solved; and (6)
`
`unexpected results.
`
`I also understand that evidence of objective indicia of non-
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`11
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`Page 000011
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`obviousness must be commensurate in scope with the claimed subject matter.
`
`30.
`
`I also understand that market demands or design considerations may
`
`prompt variations of a prior art system or process, either in the same field or a
`
`different one, and that these variations or “design choices” will ordinarily be
`
`considered obvious variations of what has been described in the prior art.
`
`III. THE ’524 PATENT
`
`A.
`
`Effective Filing Date of the ’524 Patent
`
`31.
`
`The ’524 patent names Markus Mock and Ernst Vollm as its co-
`
`inventors. The ’524 patent states that it was filed as a Patent Cooperation Treaty
`
`application on February 26, 1993, and issued February 11, 1997. The ’524 patent
`
`also states that it was filed as a German application on February 26, 1992. The
`
`’524 patent states no other claims to priority, and therefore, I understand the
`
`earliest possible priority entitlement of the ’524 patent to be February 26, 1992.
`
`B. Overview of the ’524 Patent
`
`32. The ’524 patent generally relates to a tire pressure monitoring device
`
`for monitoring the air pressure in pneumatic tires and communicating pressure
`
`information to the driver of a vehicle. EX. 1001, 1:9-14, 2: 19-24.
`
`33.
`
`The ’524 patent provides a variety of examples of component
`
`arrangements that can be used to monitor tire pressure and relay that information to
`
`a vehicle driver. The primary components in each of these arrangements generally
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`12
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`Page 000012
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`
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`include: (1) a transmitter disposed on each wheel of the vehicle tire, the transmitter
`
`having pressure sensing and signal transmitting components; (2) a receiving unit,
`
`formed either as a single, centrally-located unit or as multiple units located in
`
`proximity to each wheel, having signal receiving and processing components; and
`
`(3) a display unit that indicates pressure conditions to the vehicle driver. Id. at
`
`3 :32-56.
`
`34.
`
`In operation, the transmitters are mounted on the vehicle wheel and
`
`are in communication with a pressure measuring sensor, such as a piezoelectric
`
`sensor. In this case, the piezoelectric sensor would measure the electric charge
`
`generated by the exertion of pneumatic pressure on the sensing membrane.
`
`35.
`
`The pressure measuring sensor converts pressure measurement to a
`
`digital signal representative of the pressure measurement and sends it to a
`
`microprocessor-computer via an electrical connection. The digital signal is
`
`communicated to an emitter, through an antenna, and transmitted to a receiver.
`
`The transmission is carried out by way of an electromagnetic radio wave of
`
`constant frequency where the carrier signal is modulated in a suitable way, such as
`
`using Phase Shift Keying (“PSK”) modulation or similar suitable method.
`
`36.
`
`The transmitted signal is received by the antenna of the receiver,
`
`where it may be amplified or filtered as needed, and then demodulated and
`
`converted back into a digital signal. The digital signal is conveyed to a
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`13
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`Page 000013
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`microprocessor that processes the signal and retrieves the message it contains.
`
`37.
`
`The ’524 patent also describes that the transmitting signal sent from
`
`the transmitter to the receiver contains an identification signal, and that the receiver
`
`is able to compare the identification signal to an identification reference signal
`
`stored in receiver memory, such that processing of the transmitted pressure takes
`
`place only if the comparison confirms that the identification signal and
`
`identification reference signal satisfy a predetermined relationship criteria, for
`
`example being identical.
`
`38. Additionally, the ’524 patent describes that the receiver has a pairing
`
`functionality in which the receiver may be switched into a pairing mode where it
`
`collects the identification signal of the associated transmitters and stores them as
`
`identification reference signals. In some embodiments, the receiver may send a
`
`pairing signal to the device transmitters. The transmitters receive the signal, and in
`
`response, output a signal containing the identification signal for the respective
`
`transmitter. The receiver receives the outputted signal and decodes it to collect the
`
`identification reference signal for each transmitter. The individual identification
`
`reference signals can then be saved to a local memory of the receiver.
`
`C. Prosecution History of the ’524 Patent
`
`39.
`
`I understand that the US. application for the ’524 patent was filed on
`
`February 26, 1993.
`
`I understand that prior to issuance of a first Office action on
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`14
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`Page 000014
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`the application, the Applicant submitted a Preliminary Amendment cancelling the
`
`originally filed claims 1 to 21 and replacing them with new claims 22 to 42. EX.
`
`1002, at 133-39. Claim 22 was the only independent claim submitted for
`
`examination.
`
`40.
`
`Claim 22, as originally submitted in the Preliminary Amendment, is
`
`reproduced below:
`
`A device for monitoring the air-pressure in the air chamber of
`pneumatic tyres fitted on vehicle wheels comprising:
`
`a pressure measuring device mounted on the vehicle wheel which
`measures the pressure in the air chamber of the wheel and outputs an
`electrical pressure signal representative of the pressure;
`
`a transmitter mounted to the vehicle wheel which receives the
`
`pressure signal output from the pressure measuring device and sends
`out a transmitting signal corresponding to said pressure;
`
`a receiver mounted at distance to the vehicle wheel which receives the
`
`signal transmitted from the transmitter;
`
`a display device which is connected with the receiver and displays
`data as numbers or symbols which have been taken from the
`transmission signal received from the receiver,
`
`characterised in that,
`
`the transmitter comprises of an emitter-control device which controls
`the emittance of the transmission signals, the transmitter comprises of
`a signal generator device which generates an identification signal
`which is unique for the individual transmitters and clearly identifies
`
`same,
`
`the control device works such that the identification signal is at least
`transmitted once before or after
`the emittance of the pressure
`transmission signal,
`
`the receiver comprises at
`
`least a memory in which is stored an
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`15
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`Page 000015
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`
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`identification reference signal related to the associated individual
`transmitter in accordance with a predetermined criterion, and
`
`the receiver comprises a comparison device which checks if the
`identification signal transmitted from the transmitter is related to the
`identification reference signal stored in the receiver, and
`
`that a further processing of the signals taken from the receiver only
`takes place if the identification signal received from the receiver and
`the identification reference signal stored in the receiver fulfil
`the
`relationsip [sic] criterion.
`
`41.
`
`The primary components of original Claim 22, thus contained the
`
`following components: 1) a pressure measuring device, 2) a transmitter mounted
`
`on the vehicle wheel having a signal generating device and an emitter-control
`
`device, 3) a receiver mounted at a distance to the vehicle wheel, 4) a display device
`
`connected to the receiver, and 5) a comparison device to compare received
`
`identification signals to stored reference signals.
`
`42.
`
`I understand that the Examiner initially rejected original claim 22 as
`
`obvious over a prior patent issued to Williams (EX. 1005). EX. 1002, at 185.
`
`Specifically, the Examiner found that:
`
`the claimed
`Williams discloses a tire pressure monitor having all
`subject matters, as noted, 1) the claimed pressure measuring device is
`met by the pressure sensors (30,40); 2) the claimed transmitter is met
`by the transmitter (14) in the wheel attachable unit 24 (01); 3) the
`claimed receiver is met by the receiver (61) in vehicle attachable unit
`(60); 4) the claimed display is met by the display (80); 5) the claimed
`emitter-control device and signal generator is met by the encoder (18);
`6) the claimed identification signal is met by the source identification
`(72) and wheel/tire identification (74) and 7) the claimed pressure
`transmission 3 signal is met by the high or low pressure bits (73), see
`
`16
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`Page 000016
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`
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`Figs. 1 and 9-10.
`
`Ex. 1002, at 185-86
`
`43.
`
`I understand that the Examiner further found that Williams “transmits
`
`source identification and wheel/tire identification with high or low pressure
`
`information in between rather than the claimed identification signals being
`
`transmitted once before or after the emittance of the pressure transmission signa
`
`but that this was an “obvious design choice.” Id. at 186.
`
`44.
`
`I also understand that the Examiner found that original claims 33, 34,
`
`and 38-40 were allowable over the prior art. Id. at 189.
`
`45.
`
`I understand that in response to the Examiner’s rejection, Applicants
`
`cancelled original claims 22 — 42 and replaced them with claims 43 — 63. Id. at
`
`202-07. 1 also understand that many of claims 43 — 63 have now been renumbered
`
`to be issued claims 1 — 21.
`
`46.
`
`Issued claim 1 contains many of the same limitations that the
`
`Examiner rejected as obvious over Williams. Specifically, issued claim 1 contains
`
`each of the previously mentioned components: 1) a pressure measuring device, 2) a
`
`transmitter mounted on the vehicle wheel having a signal generating device and an
`
`emitter-control device, 3) a receiver mounted at a distance to the vehicle wheel, 4)
`
`a display device connected to the receiver, and 5) a comparison device to compare
`
`received identification signals to stored reference signals.
`
`47. Additionally, issued claim 1 also incorporated a limitation that was
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`17
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`Page 000017
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`
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`previously recited in original, dependent claim 27. Specifically, issued claim 1
`
`now incorporates the limitation that the identification reference signal stored in the
`
`receiver is changeable such that it matches the identification signal from the
`
`associated receiver. See id. at 188.
`
`I note that the Examiner also rejected original
`
`claim 27 as obvious in view of Williams. Id.
`
`48. Having reviewed original claim 43 (now issued claim 1) and original
`
`claims 22 and 27, the only substantive limitation added to original claim 43 when
`
`replacing original claim 22 was:
`
`the receiver is connected with a switching device which enables the
`
`receiver to switch over from normal operating mode, in which the air
`
`pressure is monitored, to pairing mode, in which the receiver collects
`
`the identification signal of the transmitter and stores this as an
`
`identification signal.
`
`49.
`
`I understand that after Applicants added this limitation and the
`
`limitation from original, dependent claim 27, original claim 43 was allowed by the
`
`Examiner. EX. 1002, at 214.
`
`IV. RELEVANT FIELD OF ART
`
`50.
`
`I have been instructed for purposes of this declaration to opine on the
`
`level of knowledge and understanding of one of ordinary skill in the relevant field
`
`of art as of no later than February 26, 1992, the filing date of the corresponding
`
`German patent application.
`
`18
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`Page 000018
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`51.
`
`Based on my review of the ’524 patent, the relevant field of art relates
`
`to wireless signal transmission systems, including technologies for transmitting tire
`
`pressure signals sent from a transmitter located on a vehicle wheel to a receiving
`
`unit for processing, such as one that may be centrally located on the vehicle. In
`
`particular, the relevant field of art relates to using transmitting devices to send
`
`signals that also contain an identification signal allowing a system to differentiate
`
`its own transmitters from those of another system.
`
`V.
`
`LEVEL OF ORDINARY SKILL FOR THE ’524 PATENT
`
`52.
`
`I understand that a person of ordinary skill in the art (“POSITA”) is a
`
`hypothetical person who is presumed to know the relevant prior art. I have been
`
`advised that factors that guide the determination of the level of ordinary skill in the
`
`art that may include several factors, including: (1) type of problems encountered in
`
`the art, (2) prior art solutions to those problems; (3) sophistication of the
`
`technology; and (4) educational level of active workers in the field.
`
`5 3.
`
`It is my opinion that a POSITA for the ‘524 patent would have had:
`
`(1) at least four years of educational training in fields of engineering or computer
`
`science plus at least two years of experience in the fields of design, development,
`
`engineering or teaching of wireless signal transmission systems; or (2) at least two
`
`years of educational training in fields of engineering or computer science plus at
`
`19
`
`Page 000019
`
`
`
`least four years of experience in the fields of design, development, engineering or
`
`teaching of wireless signal transmission systems.
`
`54. All opinions and statements made for purposes of this Declaration,
`
`unless otherwise noted, reflect the knowledge of one having ordinary skill in the
`
`art as of no later than February 26, 1992.
`
`VI. CLAIMS OF THE ’524 PATENT
`
`55.
`
`The ’524 patent includes 21 claims. Claim 1 is the only independent
`
`claim.
`
`I understand that when one claim depends from another claim, the
`
`dependent claim it is viewed as its own invention, incorporating all of the
`
`limitations of the claim(s) from which it directly or indirectly depends.
`
`VII. CLAIM CONSTRUCTIONS
`
`A.
`
`Claim Construction Standard
`
`56.
`
`I understand that typically, in an inter partes review proceedings,
`
`claims of an unexpired patent are to be given their broadest reasonable
`
`interpretation in view of the specification.
`
`I understand that for expired patents,
`
`however, the claims are to be interpreted in accordance with their plain and
`
`ordinary meaning.
`
`5 7.
`
`I understand that the ‘524 patent will expire on February 26, 2014,
`
`and thus the Petition for Inter Partes Review the ’524 patent will be assessed after
`
`20
`
`Page 000020
`
`
`
`expiration of the ‘524 patent. Accordingly, I understand that claims of the ‘524
`
`patent are to be interpreted in accordance with the plain and ordinary meaning
`
`standard.
`
`58.
`
`I understand that a term’s plain and ordinary meaning is the meaning
`
`that the term would have to a person having ordinary skill in the art at the time of
`
`the invention.
`
`5 9.
`
`I understand the time of the invention of the ’524 patent to be no later
`
`than February of 1992.
`
`60.
`
`I understand that when considering the plain and ordinary meaning of
`
`a term, I look first to the intrinsic evidence, starting with the claims that define the
`
`scope of the patent.
`
`I also understand that I must read the claims in light of the
`
`patent’s specification and prosecution history.
`
`61.
`
`I further understand that the patent’s specification is often the most
`
`significant source of the meaning of a claim term. However, I understand that
`
`when the meaning of a term as it is used in the patent is unclear from the intrinsic
`
`evidence, extrinsic evidence may be consulted, such as dictionaries and learned
`
`treatises.
`
`62.
`
`I understand that extrinsic evidence may be relied up on so long as it
`
`does not contradict any definition found in or ascertained by the intrinsic evidence.
`
`21
`
`Page 000021
`
`
`
`B. The ’524 Patent Claim Terms
`
`“identification reference signal”
`
`63.
`
`Claims 1, 4, 5, 19, and 21 recite an “identification reference signa
`
`Having reviewed the specification and claims, it is my opinion that a POSITA at
`
`the time of the ’524 patent would understand the plain and ordinary meaning of an
`
`“identification reference signal” to be “Data capable of identifying a transmitter.”
`
`64.
`
`The ’524 patent’s specification describes storing an identification
`
`reference signal to the memory of a receiver. See, e. g, EX. 1001, 3:4-15, 8: 10-23.
`
`Accordingly, a POSITA would have understood an identification reference signal
`
`to refer to data, as opposed to a signal per se. Cf. IEEE Dictionary, EX. 1012,
`
`(defining “Signal (circuits and systems)” as “A phenomenon (visual, audible, or
`
`otherwise) used to convey information. The signal is often coded, such as a
`
`modulated waveform, so that it requires decoding to be intelligible”).
`
`65. Additionally, claim 1 of the ’524 patent describes the identification
`
`reference as signal “changeable,” such that it “matches” (i.e., fulfills the
`
`relationship criteria with) a transmitter’s “identification signal.”
`
`“pairing mode”
`
`66.
`
`Claims 1 and 17 recite the claim term “pairing mode.” Having
`
`reviewed the specification and claims, it is my opinion that a POSITA at the time
`
`of the ’524 patent would understand the plain and ordinary meaning of “pairing
`
`22
`
`Page 000022
`
`
`
`mode” to be “A mode of operation that allows an identification signal received
`
`directly from an associated transmitter to be processed and stored as an
`
`identification reference signal in the receiver.”
`
`67.
`
`The ’524 patent’s specification describes the pairing mode as a mode
`
`of operation where identification signals are taken-up from the transmitter and
`
`stored in memory of the receiver. See, e.g., EX. lOOl, 3:8-16, 11:4-16, 12:39-45.
`
`The ’524 patent further juxtaposes pairing to a “normal mode” in which a stored
`
`identification reference signal is being used. E.g., id. at 6:57-7:9, 9:49-60; 10:20-
`
`37.
`
`68. Accordingly, a POSITA at the time of the ’524 patent would
`
`understand that pairing mode refers to the mode of operation when the receiving
`
`device receives the identification signal directly from the transmitter and stores it
`
`as a reference signal, as opposed to using an already stored identification reference
`
`signal.
`
`“normal operating mode”
`
`69.
`
`Claim 1 recites “normal operating mode.” Having reviewed the
`
`specification and claims, it is my opinion that a POSITA at the time of the ’524
`
`patent would understand the plain and ordinary meaning of “normal operating
`
`mode” to be “A mode of operation when the device is not in pairing mode.”
`
`70. As discussed, the ’524 patent describes a pairing mode is a mode that
`
`23
`
`Page 000023
`
`
`
`the device can be switched into from “normal mode.” EX. 1001, 9:57 -60. The
`
`’524 patent also states that “The transmitting device is normally to be found in the
`
`stand-by mode, in which mode only the interval-timer (21) is working .
`
`.
`
`. .” Id. at
`
`6:55-57 (emphasis added).
`
`71. Additionally, the common usage of “normal” at the time of the ’524
`
`patent included “the usual state.” See Webster’s New World Dictionary, EX. 1013,
`
`
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