Filed on behalf of Invensys Systems, Inc.
`By: Jeffrey L. Johnson (Jeffrey.johnson@dlapiper.com )
`DLA PIPER LLP (US)
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MICRO MOTION, INC.
`
`Petitioner
`
`v.
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`INVENSYS SYSTEMS, INC.
`
`Patent Owner
`
`_______________
`
`Case IPR 2014-00393
`
`U.S. Patent No. 7,571,062
`
`____________________________________________________________
`
`DECLARATION OF DR. JEFFREY S. VIPPERMAN IN SUPPORT OF
`PATENT OWNER’S RESPONSE UNDER 35 USC §§ 316(a)(8)
`
`
`
`
`
`Invensys Ex. 2015, page 1
`
`Micro Motion v Invensys, IPR 2014-00393
`
`

`

`I, Jeffrey S. Vipperman, do hereby declare and state, that all statements made
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`herein of my own knowledge are true, and that all statements made on information
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`and belief are believed to be true; and further that these statements were made with
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`the knowledge that willful false statements and the like so made are punishable by
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`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`
`
`Dated: October 10, 2014
`
`
`
`Jeffrey S. Vipperman
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`
`
`
`
`2
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`

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`Table of Contents
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`Page
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`
`I.
`
`BACKGROUND AND QUALIFICATIONS ................................................ 4
`A.
`Scope of Work ...................................................................................... 4
`B.
`Expertise and Basis for Opinion........................................................... 5
`C.
`Patent Cases in Which I Have Offered Expert Testimony or
`Consulting .......................................................................................... 12
`TECHNICAL OVERVIEW OF THE PATENTED TECHNOLOGY ........ 12
`II.
`III. OPINIONS RELATING TO PATENT OWNER’S RESPONSE ............... 15
`A.
`Claim Construction ............................................................................ 15
`1.
`Applicable Legal Standards ..................................................... 15
`2.
`Definition of a Person of Ordinary Skill in the Art ................. 17
`3.
`Proposed Claim Constructions ................................................. 18
`B. Opinions Regarding Validity of the ’062 Patent ................................ 18
`1.
`Applicable Legal Standards ..................................................... 18
`a.
`Anticipation ................................................................... 18
`b.
`Obviousness ................................................................... 20
`Opinion Regarding Whether Claims 1 and 29 Are
`Anticipated by Romano (Ground A) ....................................... 23
`a.
`Summary of Opinion ..................................................... 23
`b.
`Romano’s Microprocessor Uses Only a Single
`Sensor Channel to Generate the Drive Signal ............... 26
`Romano Does Not Compensate For Time Delays
`Associated With Multiple Components ......................... 53
`IV. CONCLUSION ............................................................................................. 58
`APPENDIX A – Curriculum Vitae of Dr. Jeffrey S. Vipperman ......................... 62
`
`APPENDIX B – Relevant Claims of the ‘062 Patent ............................................ 83
`
`APPENDIX C ........................................................................................................ 85
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`2.
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`c.
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`3
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`I.
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
`
`BACKGROUND AND QUALIFICATIONS
`A.
`1.
`
`Scope of Work
`
`I have been asked by Patent Owner’s counsel to analyze claims 1 and
`
`29 of U.S. Patent No. 7,571,062 (“the ’062 patent”; Ex. 1001), and submit this
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`Declaration in Support of Patent Owner’s Response and Motion for Amendment in
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`the instant proceeding, in rebuttal to the Declaration of Dr. Michael D. Sidman
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`(Ex. 1002). In particular, this declaration sets forth my opinion on the following
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`grounds on which trial was instituted for the ’062 patent in this inter partes review:
`
`Ground
`
`Description
`
`A
`
`Claims 1 and 29 as anticipated by Romano under 35 U.S.C. § 103
`
`
`The claims at issue in the ground noted above appear in attached Appendix B.
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`2.
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`The opinions provided are my own and are based on my analysis and
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`work in this case and the education, experience, and skills I have acquired and
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`developed throughout my career.
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`3.
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`4.
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`In reaching my conclusions and opinions, I have relied upon my ex
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`perience and training, and my review of the evidence produced in this
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`proceeding, and I have considered the documents and materials described in
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`Petitioner’s Petition, Patent Owner’s Preliminary Response, and the documents and
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`information referenced in this declaration in the process of forming my opinions.
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`4
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`5.
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`For the time I expend on this case, I am currently being compensated
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
`
`
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`at a rate of $300/hour. My compensation is not in any way dependent on the
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`outcome of the dispute.
`
`B.
`6.
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`Expertise and Basis for Opinion
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`I am an independent consultant. All of my opinions stated in this
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`declaration are based on my own personal knowledge and professional judgment.
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`In forming my opinions, I have relied on my knowledge and experience in smart
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`materials and systems (transducers, measurements, acoustics, vibrations,
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`electronics, signal processing, and embedded systems); software development
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`practices; digital signal processing and programming, including C/C++ and
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`assembler code programming; and on the documents and information referenced in
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`this declaration. I am over 18 years of age and am competent to testify as to the
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`matters set forth herein.
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`7.
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`Details of my professional qualifications and background are set out
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`in my curriculum vitae, a copy of which is attached as Appendix A. The following
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`provides only a brief overview of some of my experience that is relevant to the
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`matters set forth in this declaration.
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`8.
`
`Since 1990, I have designed, developed, and deployed control systems
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`for vibrating or acoustic systems containing electromagnetic and solid state (e.g.
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`piezoceramic) transducers. As such, I have acquired expertise and am an expert in
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`the areas of applied controls, piezoelectric transducers, vibrations, acoustics,
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`electronics, signal processing, and signal analysis. I have also performed
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`embedded systems development and programming on Texas Instruments digital
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`signal processors, PC/104s, Aerotech Soloist™, and Arduino platforms, using
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`various programming languages for the development, design, and deployment of
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`those systems and products. I have been employed by or retained as a consultant,
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`including acting as a litigation consultant, for numerous companies and firms such
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`as Covidien, DLA Piper, Apple Computer, Wilmer Hale, Mosebach
`
`Manufacturing, Inc., MIRATECH Corporation, Siemens Government Services,
`
`Thompson, Coburn and Fagel Haber LLC, Westinghouse Electric Company,
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`National Institute of Occupational Safety and Health, Brashear LP, NASA Langley
`
`Research Center, Duke University, and Sandia National Laboratory.
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`9.
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`As my curriculum vitae shows, I have spent the past 24 years as an
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`applied researcher. The early part of my career (1990-1997) was spent as Graduate
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`Project Assistant, Research Associate, or an Assistant Research Professor. During
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`this time, I have had numerous occasions to develop or review bodies of source
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`code for digital devices. I have developed or analyzed source code written in
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`C/C++, Assembler languages, and MATLAB. Various algorithms related to noise
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`and vibration control were implemented. The goals of active control are similar to
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`those of Coriolis flow meters. The phase and amplitude of harmonic signals are
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`adapted to create a signal that is out of phase to achieve vibration control through
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`superposition (feedforward) or feedback control. As such, the goal was to
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`minimize vibration, rather than increasing or causing vibration, as with Coriolis
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`flow meters. These goals have similarities. For example, feedforward vibration
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`control is achieved when the control input creates a response that has a particular
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`phase relationship to that of the disturbing input (180 degrees out of phase).
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`10.
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`I continue to develop code. For example, I developed a sun avoidance
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`routine that controls large aperture research telescopes and most recently, I have
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`been involved in the development of a noise classifier that was implemented on an
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`embedded Linux platform that has a become a commercial product.
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`11. During my career as a professor (1997-present), I have several
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`relevant professional experiences that demonstrate my expertise in the field of
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`applied control. For example, I have publicly lectured regarding the development
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`of piezoceramic transducer systems for exciting structural vibration while
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`performing health monitoring as well as various feedback and adaptive
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`feedforward control algorithms used to adapt phase and amplitude to achieve
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`structural control. I have also been involved in the development of generators to
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`drive a thermoacoustic refrigerator (TAR) on resonance in various ways, including
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`using phase locked loops (PLL), which include PID control loops. Similar
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`approaches have been used for Coriolis flow meters. The goal of the PLL control
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`7
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`was to drive the phase relationship between the acoustic pressure and speaker
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`velocity to a certain phase relationship, much like the positive feedback or PLL
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`control approaches in Coriolis mass flow meters.
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`12.
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`In the early to mid 2000s I also developed and demonstrated active
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`transducers for energy systems through funding from the US Dept. of Energy,
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`including a piezoelectrically MEMS (microelectromechanical system) microvalve
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`used to meter the hydrogen fuel inside of fuel cells. I also completely developed
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`and fabricated a high-pressure, high-temperature electromagnetically activated
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`valve for gas turbine engines that can restore equivalence ratios when the fuel
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`orifices wear. They were also fast enough to provide active combustion control.
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`13.
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`I have also implemented various feedback approaches, including PID,
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`robust, and optimal control designs. I have also taught for many years in the areas
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`of computer programming, mechanical measurements, vibrations, acoustics, signal
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`analysis, dynamic systems, and controls. These courses include significant
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`amounts of material on electronics and transducers. In addition, I have taught short
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`courses on active control and measurement and analysis of vibration and acoustic
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`signals.
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`14.
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`I have performed system programming assignments with the
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`following operating systems or platforms: MS-DOS, Windows, embedded Linux,
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`and a real time kernel written by a colleague for Texas Instruments TMS320 series
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`of digital signal processors.
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`15.
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`I have authored over 100 technical publications from which at least
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`nine (9) are representative publications relevant to the technology at issue. For
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`example:
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`a) Bucci, B., Cole, D., Ludwick, S., Vipperman, J.S., “A Nonlinear
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`Control Algorithm for Reducing Settling Time in High-Precision Point
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`to Point Motion,” IEEE Transactions on Control System Technology,
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`Issue 99, 10.1109/TCST.2012.2206812, Sep. 11, 2012. In this work, a
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`high performance, nonlinear PID servo control algorithm was
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`developed and implemented on a proprietary embedded system using C
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`language. Note that PLLs can be viewed as a servo control system for
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`signal phase.
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`b) Ryan, T. S., L.A. Schaefer, and J.S. Vipperman, “Control of a Standing
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`Wave Thermoacoustic Refrigerator,” IMECE2010-38966, Proceedings
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`of ASME IMECE-10, November 12-18, 2010, Vancouver, BC, Canada.
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`We developed various generators based upon phase locked loops as
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`well as other techniques to drive a standing wave thermoacoustic
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`system at its primary acoustic resonance (in the same manner as a
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`Coriolis flow meter device). The PLL was realized in software.
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`c) Kuxhaus L, Schimoler PJ, Vipperman JS, Miller MC. “Validation of a
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`Feedback-Controlled Elbow Simulator Design: Elbow Muscle Moment
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`Arm Measurement”. ASME Journal of Medical Devices, 3(3), 7pp.,
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`Sep. 2009.
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`d) Bisnette, Jesse, Adam K. Smith, J. S. Vipperman, and D. B. Budny,
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`“Active Noise Control Using Phase-Compensated, Damped Resonant
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`Filters,” ASME Journal of Vibration and Acoustics 128(2), pp. 148-55,
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`April, 2006. This was a demonstration of positive position control
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`(PPC) on acoustic systems where the speaker phase dynamics were
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`compensated.
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`e) Haljasmaa, Igor V., J. S. Vipperman, Ronald J. Lynn, Robert P.
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`Warzinski, “Control of a Fluid Particle Under Simulated Deep-Ocean
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`Conditions in a High-Pressure Water Tunnel,” AIP Review of
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`Scientific Instruments, 76(2), Feb. 2005, pp. 1-11.
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`f) Cabell, R. H., D. L. Palumbo, and J. S. Vipperman, “A Principal
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`Component Feedforward Algorithm for Active Noise Control: Flight
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`Test Results,” IEEE Transactions on Control Systems Technology,
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`9(1), January, 2001, pp. 76-83. In this project, algorithms were
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`developed for Texas Instruments TMS320 series of digital signal
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`processors (DSPs) in C and assembly languages to lock onto the phase
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`Case IPR 2014-00393
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`of harmonic signals and control them by adapting the phase and
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`magnitude.
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`g) Vipperman, J. S., R. L. Clark, “Multivariable Feedback Active
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`Structural Acoustic Control Using Adaptive Piezoelectric
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`Sensoriactuators,” Journal of the Acoustical Society of America,
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`105(1), Jan. 1999, pp. 219-225. Here is another example of developing
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`an embedded control system on Texas Instruments chips that involved
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`exciting and controlling structural vibration.
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`h) Vipperman, J. S., and R. L. Clark, “Hybrid Model-Insensitive Control
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`Using a Piezoelectric Sensoriactuator,” Journal of Intelligent Material
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`Systems and Structures, 7(6), November 1996, pp. 689-695. This
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`article presented a novel control algorithm to create harmonic signals of
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`the proper phase and amplitude to control structural vibration using
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`piezoceramic self-sensing transducers.
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`i) Vipperman, J. S., R. A. Burdisso, and C. R. Fuller, 1993, "Active
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`Control of Broadband Structural Vibration Using the LMS Adaptive
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`Algorithm,'' Journal of Sound and Vibration. 166(2), Sep. 1993, pp.
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`283-299. The first embedded control system developed on Texas
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`Instruments TMS320 series of digital signal processors to perform
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`vibration control on a distributed structure using piezoceramic
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`actuators.
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`16. My three patents for active transducers are also related to this work:
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`1. Hensel, J.P., N. Black, J.D. Thornton, J.S. Vipperman, D.N. Lambeth,
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`W.W. Clark, “Active Combustion Flow Modulation Valve,” United
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`States Patent Number 8,540,209, Sep. 24, 2013.
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`2. Gemmen, Randall, Jimmy Thornton, Jeffrey S. Vipperman, William W.
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`Clark, “Piezoelectric Axial Flow Microvalve,” United States Patent
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`Number 7,159,841, Jan. 9, 2007.
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`3. Clark, R. L., J. S. Vipperman, and Daniel G. Cole, “Adaptive
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`Piezoelectric Sensoriactuator,” United States Patent Number 5,578,761,
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`Nov. 26, 1996.
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`C.
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`Patent Cases in Which I Have Offered Expert Testimony or
`Consulting
`17. The patent cases in which I have offered expert testimony or
`
`consulting services are set out in my curriculum vitae.
`
`II. TECHNICAL OVERVIEW OF THE PATENTED TECHNOLOGY
`18. The ’062 patent teaches a control and measurement system for a
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`digital flowmeter. A digital flowmeter is one that not only makes measurements
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`digitally—that is generally a given—but also digitally generates a drive signal to
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`control conduit oscillation. (Ex. 1001, 1:58-67, 3:4-14.)
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`19. The ’062 patent discloses multiple embodiments of the mechanical
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`
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`components of a Coriolis flowmeter and digital control and measurement system.
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`(Id. 3:15-7:17.) These embodiments each include (1) a vibratable conduit, (2) a
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`digital controller to measure conduit vibration and to generate a drive signal to
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`control conduit vibration, (3) a sensor between the conduit and digital circuitry to
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`sense conduit vibration, and (4) a driver between the digital circuitry and the
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`conduit to drive conduit vibration based on the drive signal from the digital
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`controller. (Id. at 3:4-14.)
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`20. An exemplary embodiment of the primary components of a digital
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`flowmeter system of the ’062 patent is reproduced below:
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`Case IPRR 2014-003393
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`S. Patent NNo. 7,571,0062
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`U.
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`221. The ddigital controller above may bee comprisedd of “a proocessor, a
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`field-programmabble gate arrray, an ASIIC, other pprogrammaable logic oor gate arraays,
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`or progrrammable logic with a processoor core.” (IId. 8:29-333.)
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`222. The ’’062 patent disclosess multiple ffeatures annd capabilitties createdd by
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`the digital circuitrry that alloww for precise measurrement andd control. FFor examplle,
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`the pateent disclosees the abiliity to digitaally generaate drive siignals usinng multiplee
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`differennt drive moodes. (Ex. 11001, 4:38
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`-58.)
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`223. The ’’062 patent also disclloses the abbility to usse a proporrtional-plu
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`integral (PI) control algorithm to control the motion of the conduit. (Id. 5:10-12.)
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`24. The ’062 patent also discloses a control system capable of “apply[ing]
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`a negative gain to the sensor signal to reduce motion of the conduit.” (Id. 5:43-45.)
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`25. The digital circuitry of ’062 patent also discloses the ability to
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`compensate for a time delay associated with “components connected between the
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`sensor and the driver” in the digital flowmeter. (Id. 7:14-18.)
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`26. Prior flowmeter control mechanisms lacked sufficient control
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`capability, precision and adaptability to adjust the conduit drive signal to overcome
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`problems induced by variations in material flow within the conduit associated with
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`two phase flow. (Ex. 1001, 2:1-6, 47:40-53.)
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`27. Processing separate batches of fluid through the flowtube is another
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`instance in which the digital flowmeter is vastly superior to prior analog
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`flowmeters. (Ex. 1001, 51:5-26.)
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`28. Thus, the digital flowmeters disclosed in the ’062 patent are
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`substantially superior to previous analog drive flowmeters for multiple
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`applications.
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`III. OPINIONS RELATING TO PATENT OWNER’S RESPONSE
`A. Claim Construction
`1.
`Applicable Legal Standards
`It is my understanding that, in an inter partes review, claim terms in
`
`29.
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`an unexpired patent are interpreted according to their broadest reasonable
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`construction in light of the specification of the patent in which they appear. It is
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`also my understanding that under a broadest reasonable interpretation, words of the
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`claim must be given their plain meaning, unless such meaning is inconsistent with
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`the specification, such as where the inventor acted as his or her own lexicographer,
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`used terms without an established plain and ordinary meaning in the art, or
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`redefined a well-known term of art. It is the use of the words in the context of the
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`written description and customarily by those skilled in the relevant art that
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`accurately reflects both the ‘ordinary’ and the ‘customary’ meaning of the terms in
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`the claims. I understand that the plain meaning to one of skill in the art is
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`considered at the time of the invention (i.e., the date the earliest supporting priority
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`application was filed, namely November 26, 1997).
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`30.
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`I further understand that, if there is no plain and ordinary meaning of a
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`claim term, then the construction of the claim term should be derived from the
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`specification. I also understand that the specification plays a crucial role in claim
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`construction, and that the claims must be read in view of the specification of which
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`they are a part. I also understand that the specification may reveal a special
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`definition given to a claim term by the patentee that differs from the meaning it
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`would otherwise possess, and that in such cases the lexicography governs. I further
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`understand that the prosecution history of the patent should also be considered, and
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`that it provides evidence of how the U.S. Patent and Trademark Office and the
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`Case IPR 2014-00393
`U.S. Patent No. 7,571,062
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`inventor understood the patent.
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`31.
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`I further understand that the claim language is to be viewed from the
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`perspective of a person of ordinary skill in the art at the time of invention. When
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`analyzing the ʼ136 patent, the disputed claims, and the prior art, I apply this
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`standard set forth above to reach my conclusions, and any reference to a “person of
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`ordinary skill in the art” below refers to a person of ordinary skill in the relevant
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`art of the ’062 patent at the time of the invention.
`
`Definition of a Person of Ordinary Skill in the Art
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`2.
`I understand that neither the Petitioner nor its expert expressed an
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`32.
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`opinion as to the level of ordinary skill in the art.
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`33.
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`It is my opinion that a person having an ordinary level of skill would
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`have at least the following qualifications: (1) a bachelor’s degree in electrical
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`engineering or the equivalent education through work experience; and (2) three or
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`four years of experience or post-graduate education. This experience would include
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`digital signal processing and control theory. I consider myself to be at least of
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`ordinary skill in the art under this definition, and I have done the analysis
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`supportive of my opinions here in the context of a person having an ordinary level
`
`of skill in the art.
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`3.
`Proposed Claim Constructions
`34. All limitations of claims 1 and 29 of the ’062 patent should be
`
`construed according to their plain and ordinary meaning for the purposes of this
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`proceeding.
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`B. Opinions Regarding Validity of the ’062 Patent
`35.
`I understand that the claims under review in this IPR are claims 1, 29,
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`40 and 45. I have been informed that Patent Owner has decided to cancel claims
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`40 and 45, and thus I have been asked to form an opinion only with respect to the
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`validity of claims 1 and 29 of the ’062 patent.
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`1.
`Applicable Legal Standards
`36. My understanding with respect to construction of the claims of the
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`’062 patent, and my opinion concerning the level of ordinary skill in the art, are set
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`forth above in section III.A.
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`37.
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`I have been informed that, in the context of the inter partes review,
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`the party asserting invalidity of a patent must prove invalidity by a preponderance
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`of the evidence. I have been informed that a “preponderance of the evidence” is
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`evidence sufficient to show that a fact is more likely than not.
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`Anticipation
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`a.
` Patent Owner’s counsel has informed me that a patent claim is invalid
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`38.
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`for lack of novelty, or as “anticipated,” under 35 U.S.C. § 102, if, among other
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`things, (a) the alleged invention was known or used by others in this country, or
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`patented or described in a printed publication in the United States or a foreign
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`country, before the alleged invention thereof by the patent's applicant(s), or (b) the
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`alleged invention was patented or described in a printed publication in this or a
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`foreign country or in public use or on sale in this country, more than one year prior
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`to the date of the application for patent in the United States, or (e) the alleged
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`invention was described in an application for patent by another person in the
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`United States before the alleged invention by the applicant thereof. I have also
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`been informed that an inter partes review is only concerned with the validity of
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`patent claims with respect to patents and printed publications.
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`39.
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` Patent Owner’s counsel has also informed me that references or items
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`that fall into one or more of these categories are called “prior art,” and that in order
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`to anticipate a patent claim pursuant to 35 U.S.C. § 102, a reference must contain
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`all of the elements and limitations described in the claim either expressly or
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`inherently. As such, counsel for Patent Owner has informed me that in deciding
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`whether or not a single item of prior art anticipates a patent claim, one should
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`consider what is expressly stated or present in the item of prior art, and what is
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`inherently present.
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`40.
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` I understand that, to establish inherency, the missing characteristic
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`must be necessarily present in the single reference, and that it would be so
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`recognized by persons of ordinary skill in the art. I also understand that the missing
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`descriptive material cannot merely be probably or possibly present. It is my
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`understanding that one of ordinary skill in the art may not have recognized the
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`inherent characteristics or functioning of the prior art at the time. I further
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`understand that obviousness is not inherent anticipation, and that it is insufficient
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`that a missing limitation is so similar to a limitation actually disclosed in the
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`reference that one of ordinary skill in the art would see the substitution as obvious.
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`I also understand that, if it is necessary to reach beyond the boundaries of a single
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`reference to provide missing disclosure of the claimed invention, the proper ground
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`is not anticipation, but obviousness.
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`41.
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`I understand that invalidity based on anticipation requires that the
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`reference enable the subject matter of the reference and therefore the patented
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`invention without undue experimentation. I also understand that the proper test of a
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`publication as prior art is whether one skilled in the art to which the invention
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`pertains could take the description in the printed publication and combine it with
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`his own knowledge of the particular art and from this combination be put in
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`possession of the invention on which a patent is sought.
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`b. Obviousness
`42. Although not at issue in this IPR in view of Patent Owner’s
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`cancellation of claims 40 and 45 (the only claims for which trial was instituted on
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`an obviousness ground), I understand that a patent claim is invalid because it lacks
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`novelty or is “obvious” under 35 U.S.C. § 103 if the claimed subject matter would
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`have been obvious to a person of ordinary skill in the art at the time the application
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`for patent was filed, based upon one or more prior art references. I understand that
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`an obviousness analysis should take into account (1) the scope and content of the
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`prior art; (2) the differences between the claims and the prior art; (3) the level of
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`ordinary skill in the pertinent art; and (4) secondary considerations, if any, of
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`obviousness (such as unexpected results, commercial success, long-felt but
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`unsolved needs, failure of others, copy by others, licensing, and skepticism of
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`experts).
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`43.
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`I understand that a conclusion of obviousness may be based upon a
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`combination of prior art references. However, I also understand that a patent
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`composed of several elements may not be proved obvious merely by demonstrating
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`that each of its elements was independently known in the art. I further understand
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`that there must be an appropriate articulation of a reason to combine the elements
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`from the prior art in the manner claimed, and obviousness cannot be based on a
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`hindsight combination of components selected from the prior art using the patent
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`claims as a roadmap.
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`44.
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`I understand that the following exemplary rationales may lead to a
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`conclusion of obviousness: the combination of prior art elements according to
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`known methods to yield predictable results; the substitution of one known element
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`for another to obtain predictable results; the use of known techniques to improve
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`similar devices in the same way; and some teaching, suggestion, or motivation in
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`the prior art that would have led one of ordinary skill to modify the prior art
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`reference teachings to arrive at the claimed invention. However, a claim is not
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`obvious if the improvement is more than the predictable use of prior art elements
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`according to their established functions. Similarly, a claim is not obvious if the
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`application of a known technique is beyond the level of ordinary skill in the art.
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`Furthermore, when the prior art teaches away from combining certain known
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`elements, discovery of a successful means of combining them is not obvious.
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`45.
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`I further understand that, to determine obviousness, the courts look to
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`the interrelated teachings of multiple patents, the effects of demands known to the
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`design community or present in the marketplace, and the background knowledge
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`possessed by a person having ordinary skill in the art.
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`46.
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`I understand that a prior art reference must be considered in its
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`entirety, i.e., as a whole, including portions that would lead away from the claimed
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`invention. I also understand that if the proposed modification or combination of the
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`prior art would change the principle of operation of the prior art invention being
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`modified, then the teachings of the references are not sufficient to render a claim
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`prima facie obvious. I further understand that, when considering a disclosure or
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`reference, it is proper to take into account not only specific teachings of the
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`reference but also the inferences which one skilled in the art would reasonable be
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`expected to draw therefrom.
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`47.
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`I understand that, to establish prima facie obviousness of a claimed
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`invention, all the claim limitations must be taught or suggested by the prior art.
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`2. Opinion Regarding Whether Claims 1 and 29 Are
`Anticipated by Romano (Ground A)
`a.
`It is my opinion that claims 1 and 29 are not anticipated by Romano
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`Summary of Opinion
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`48.
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`(Exhibit 1006).
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`49. Claim 1 (from which claim 29 depends) includes a requirement to
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`“adjust a phase of the drive signal to compensate for a time delay associated with
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`components connected between the sensor and the driver.” Ex. 1001 at 55:37-40.
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`This limitation of claim 1 is not disclosed by Romano.
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`50.
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`I have reviewed Dr. Sidman’s opinion concerning Romano and claim
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`1 of the ’062 patent as set out in ¶¶ 186-198 of his expert declaration, Ex. 1002. I
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`note that, in an attempt to show that Romano adjusts a phase of the drive signal as
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`required by the aforementioned limitation of claim 1, Dr. Sidman identified a
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`2π/128 radian phase shift applied to the digitized right channel sensor signal by the
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`microprocessor 330 of Romano’s Fig. 3, and opined that the “right and left channel
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`signals are both used by the microprocessor 330 to generate the drive signal” and
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`“thus the correction of the phase shift in the right channel propagates through as a
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`phase shift of the drive signal.” Ex. 1002 ¶¶ 196-197.
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`51. This 2π/128 radian phase shift is the sole basis identified anywhere in
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`Dr. Sidman’s declaration for asserting that Romano discloses the “adjust a phase of
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`the drive signal to compensate for a time delay associated with components
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`connected between the sensor and the driver” limitation of claim 1 discussed
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`above. There is nothing in Dr. Sidman’s declaration that alleges that this limitation
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`of claim 1 is inherently disclosed in Romano or is obvious over Romano.
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`Accordingly, because Dr. Sidman identified only this basis in his declaration, I will
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`limit my remarks in this opinion to addressing only this basis. I reserve the right to
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`offer additional opinions if additional grounds for