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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SkyHawke Technologies, LLC
`Petitioner
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`V.
`
`L&H Concepts, LLC
`Patent Owner
`
`Cases IPR2014-00437 & IPR2014-00438
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`Patent 5,779,566
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`DECLARATION OF ALAN BALL
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`1
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`L&H CONCEPTS 2014
`SKYHAWKE TECHNOLOGIES v. L&H CONCEPTS
`|PR2014-00437
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`1
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`L&H CONCEPTS 2014
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`IPR2014-00437
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`
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`Attorney Docket No: 30912-0003IP1 & 00031P2
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`Case IPR2014-00437 & 438
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`1.
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`I am making this declaration at the request of the Real Party in Interest
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`L&H Concepts in the matter of Inter Partes Review of US Patent No. 5,779,566.
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`2.
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`I am being compensated for my work. My compensation does not
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`depend on the outcome of this proceeding.
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`3.
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`In forming the opinions I express below, I considered:
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`. The ’566 Patent (Ex. 1001 in lPRs 2014-00437 & 438);
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`. The File Histories for the ’566 Patent (Exs. 1002 and 1003 in IPRs
`2014—00437 & 438);
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`. Petitions by SkyHawke (Paper 1 in IPRs 2014—00437 & 438);
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`. Decision of Institution of Inter Partes Review as to the ’566 Patent in
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`IPR2014-00437 (Paper 7);
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`. Decision of Institution of Inter Partes Review as to the ’566 Patent in
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`[PR 2014-00438 (Paper 7);
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`. Ex. 1005 — 1007 (Palmer, Vanden Heuvel, and Osamu) in IPRs 2014-
`00437 & 438;
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`. Ex. 1012 (Declaration of Carl Gutwin) and supporting exhibits in
`IPRS 2014-00437 & 438;
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`. Ex. 2011 (Deposition of Carl Gutwin) and supporting exhibits in IPRs
`2014-00437 & 438;
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`4.
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`I summarize my relevant knowledge and experience below. My
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`curriculum vitae contains additional information and is Ex. 2013.
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`5.
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`I have almost 30 years’ experience in the product and industrial design
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`field. At the time the ’566 patent was filed, I was the Director of Design for Altitude
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`Case IPR2014-00437 & 438
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`Inc, a company that I founded and worked at from 1992 until 2000.
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`6.
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`7.
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`I am a named inventor on 11 utility patents and 5 5 design patents.
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`I have been member in good standing of the Industrial Design Society
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`of America for over 30 years and a member of Design Management Institute for over
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`10 years.
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`8.
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`I hold a Bachelor’s Degree in Industrial Design from Syracuse
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`University, with a concentration in information science.
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`9.
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`As shown on my CV, I have received numerous product design awards
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`including three IDSA/BusinessWeek IDEA Gold Awards and numerous Silver and
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`Bronze awards.
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`10.
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`I have worked on the design of several different handheld products
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`employing LCD screen-based user interfaces and I am familiar with the state of that
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`art in 1992. In the early 19905, while working as a designer at Design Continuum, I
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`designed microwave ovens for Samsung, including the user interface of a touch pad
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`control panel with LED display. I also designed VCRs' and VCR remote controls for
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`Samsung at this time. Starting in 1992, and for the next 8 years, I designed many
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`handheld/wearable data terminals and barcode scanners for Symbol Technologies.
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`These products featured both graphic and segmented character LCD displays and
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`were to be used in rugged environments both inside and out. In 1997 I designed a
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`handheld medical diagnostic device which features a key/display based user
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`Case IPR2014-00437 & 438
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`interface, and in 2000, I designed an IP telephone handset system which featured a
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`key and scroll wheel based user interface based on a rolodex-like navigation
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`metaphor. In 2003 I designed a handheld electronic Scrabble companion device with
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`key/display based UI, for Franklin Electronic Publishers. In subsequent years I have
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`designed many electronic or electro—mechanical products which feature user
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`interfaces such as kitchen appliances, medical equipment, sporting equipment,
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`laboratory instrumentation, and industrial process equipment. I have seen the state
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`of the art
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`involving displays, switch technology, processing power, battery
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`technology, and UI design change dramatically over the last 27 years.
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`11.
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`I have reviewed the disclosure of the ’566 patent and I concur with the
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`inventor that the field of the ’566 invention is handheld sports, particularly golf,
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`recording devices. Ex. 1001 at 1:8-14 and 2:19—27.
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`12.
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`I am aware that SkyHawke’s expert stated that the relevant field was
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`“human computer interaction,” and I believe that this field is overly broad given the
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`disclosure of the ’566 patent and the state of the art in 1992. I believe that Dr. Gutvvin
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`is using his own hindsight to broaden the field of the ’566 patent beyond what a
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`person of ordinary skill would know at the time of the invention. This broadening
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`is apparent to me in both Dr. Gutwin’s description of the art and his product
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`examples. For example, Dr. Gutvvin incorrectly asserts that a 1990 Sony VCR, a
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`Casio digital watch, a miniature PC, and a pager (at least) were within the same field
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`as the ’566 patent. Ex. 1012 at 111127-29.
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`In 1992, however, watches, VCRS,
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`miniature PCs, pagers, and golf computers were wholly different fields of endeavor
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`with different purposes and goals.
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`13.
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`The VCR originated as an offshoot of camera and Video recording
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`technology. As a shelf top device,
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`its size and weight were not of primary
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`importance. Moreover, as product used exclusively inside, no concern was needed
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`for outdoor use — far different from the ’566 patent.
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`14.
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`Similarly, digital watches were one of many innovations in the
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`centuries long history of watchmaking. As the main function of a watch is telling
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`the time, entry of data is limited to setting the time and simple start/stop operations.
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`Digital watches focused instead on being small enough to be worn on a person’s
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`wrist and being able to work for months at a time on a single set of batteries — also
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`far different than the ’566 patent.
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`15. Miniature PCs of the time, such as the Tandy PDA cited by Dr. Gutwin,
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`were designed to replicate as much as possible the general purpose nature of a
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`computer for a general audience. They typically employed a rudimentary pen-based
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`touch screen interface and a general operating system suitable for a variety of types
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`of software - all far different from the single use handheld sports recording device
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`of the ’566 patent.
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`16.
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`Still different further were early pagers from the 19905, such as the
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`selective call receiver of the Vanden Heuvel reference (Ex. 1007). As the Vanden
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`Heuvel reference itself explains, it was focused on receiving wireless messages over
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`the air and updating internal databases with the newly received wireless information.
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`Ex. 1007 at 2:19-21. Although limited user input was certamly possible with the
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`Vanden Heuvel device, as the title and the numerous figures of Vanden Heuvel
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`show, the focus of the system was providing quick access to wirelessly updated
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`information. Ex. 1007 at Title, Figures 2-4 & 6-8; 2:55-68. The interface design for
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`that purpose is from a far different field from the ’566 patent.
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`17.
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`As I describe further below, Dr. Gutwin’s incorrect evaluation of the
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`field of the ’566 patent directly leads to his flawed determination that one of ordinary
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`skill in the art would have combined the Vanden Heuvel reference with Palmer
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`and/or Osamu. One of ordinary skill in the art in 1992 would not have looked to a
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`pager (a device in a wholly different field of endeavor) when designing a handheld
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`sports recording device as described in the ’566 patent.
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`18.
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`I understand that Dr. Gutwin indicated that the level of ordinary skill in
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`the art in 1992 was exceedingly low, especially compared to today. Ex. 2011 at
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`10020 — 103:2 (conceding that he had not identified minimum levels of formal
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`education or experience for such a person). I agree that in 1992, no secondary school
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`education was required to be one of ordinary skill in the art. However, I believe that
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`an ordinary artisan would have at least some experience working in the field of
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`handheld sport devices either designing or building them.
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`In time, the level of
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`ordinary skill in this area would grow as the technology improved and the number
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`of highly educated individuals in the field increased, but that was several years after
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`1992.
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`19.
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`I was at least one of ordinary skill in the art in 1992. Moreover, I
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`worked with many people of ordinary skill in the art as a product designer, and I am
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`familiar with their knowledge and approach to design challenges in 1992.
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`20.
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`I understand that a patent claim is invalid for obviousness only if the
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`invention described in the claim would have been obvious to a person of ordinary
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`skill in the art at the time the invention was made. I understand that the fundamental
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`question in an obviousness analysis is whether the claimed invention would have
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`been obvious to a person of ordinary skill in the art, taking into account (1) the scope
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`and content of the prior art, (2) the differences between the prior art and the claimed
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`invention,
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`(3) the level of ordinary skill
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`in the art, and (4) any secondary
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`considerations of non-obviousness, including commercial success of products or
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`processes using the invention, long felt need for the invention, failure of others to
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`make the invention,
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`industry acceptance of the invention, and copying of the
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`invention by others.
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`21.
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`I further understand that multiple references can be combined with one
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`another, or with the knowledge of a person of ordinary skill in the art, to render a
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`claim obvious. However, obviousness is, not established simply because all of the
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`elements of a patent claim can be found in the prior art. In fact, a claim is not invalid
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`as obvious solely because it is a predictable use of prior art elements according to
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`their established functions. Rather, I understand that there must be a reason that
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`would have prompted a person of ordinary skill in the relevant field to combine the
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`elements in the way the claimed new invention does.
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`22.
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`In addition, I understand that obviousness of a patent cannot properly
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`be established through hindsight, and that elements from different prior art
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`references, or different embodiments of a single prior art reference, cannot be
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`selected to create the claimed invention using the invention itself as a roadmap. The
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`claimed invention as a whole must be compared to the prior art as a whole, and courts
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`must avoid aggregating pieces of prior art through hindsight which would not have
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`been combined absent the inventors’ insight.
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`23.
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`I understand that the claim terms in this IPR are entitled to their
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`Broadest Reasonable Interpretation. To the extent that a claim term was defined by
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`the Board in the Institution Decisions, I have applied that construction. To the extent
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`that a claim term was not explicitly defined by the Board, I have applied the Broadest
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`Reasonable Construction of that term to my analysis.
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`24.
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`I also understand that the burden to establish that the claims of the ’566
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`patent are obvious rests with the Petitioner, who must show that it is more likely than
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`Attorney Docket No: 30912-0003IP1 & 0003IP2
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`Case IPR2014-00437 & 438
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`not that the claims of the ’566 patent are invalid.
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`25.
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`As I note above, I have reviewed the Petitions, the Institution Decisions,
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`the prior art cited by the Petitioner, and Dr. Gutwin’s declaration and deposition, and
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`I believe that the conclusion of invalidity is flawed.
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`26.
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`First, I reviewed the reasons stated by the Petitioner for combining the
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`Palmer reference with the Vanden Heuvel reference and I find those reasons to be
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`lacking.
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`In particular, Petitioner asserts on page 20 of the 437 IPR and page 27 of
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`the 438 [PR that one of ordinary skill in the an would have modified Palmer in view
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`of Vanden Heuvel to “increase the [Palmer] device’s display size, thereby rendering
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`the device more easily usable on the golf course.”
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`27. However, even a cursory review of the Palmer reference itself shows
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`Petitioner’s reason for combination to be flawed. As I show below, the device of
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`Palmer (as shown below in annotated version of Figure 3 of Pahner), already
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`includes considerable open space for expanding the screen size:
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`Attorney Docket No: 30912-OOO3IP1 & 0003IP2
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`Case IPR2014-00437 & 438
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`Open space enabiing
`;
`W doubling of screen-size
`1
`without increase in devrce
`i,
`footprint
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`""'
`
`"
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`existing footprint
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`Open space enabling
`keyboard to be shifted
`down to permit additional
`space for larger display in
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`28.
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`If an ordinary artisan in 1992 wished to increase the size of the screen
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`of Palmer without changing the device’s footprint, the presence of the keyboard was
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`clearly not a barrier to such an expansion. In fact, the existing footprint of the Palmer
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`device enabled the addition of even more keys if desired.
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`29. Moreover, neither Petitioner nor Dr. Gutwin provides an explanation of
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`how or why increasing the size of Palmer’s screen would make the device “more
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`3
`usable.’ To the contrary, removing one or more of the buttons of Palmer would
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`make the Palmer device less usable. As designed, the Palmer device has single
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`function buttons that enable a user to press a single button to enter the range finder
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`mode, to recall data, to enter a score, etc. The existing Palmer buttons were also
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`capable of selecting data both sequentially (ENTER and RECALL) and non-
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`sequentially (CLUB TIPS, RANGE, and number keys).
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`30.
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`If, as Petitioner proposes, one were to replace these buttons with a
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`screen dependent data entry mechanism, such as used in Vanden Heuvel, the user
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`would be forced to hit multiple buttons multiple times to transverse through multiple
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`menus to either select a feature or enter data. Far from being easier to use, it would
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`actually be more difficult and time consuming to use Petitioner’s modified Palmer
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`device than the original. Clearly, one of ordinary skill in the art would have no
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`reason to modify the Palmer device to make it more difficult to use.
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`31. Moreover, Petitioner also provides no rationale to support its assertion
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`that a larger screen would make the Palmer device more usable besides an implicit
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`assertion that “bigger is better.” While it may be true that bigger is better in certain
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`fields or for certain types of devices, Petitioner identifies no problem or limitation
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`from the screen size in the Palmer reference. Quite to the contrary, the LCD screen
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`shown in Palmer appears more than capable of displaying the types of text data
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`required of it. Ex. 1005 at Figure 3 and pages 8-9. Moreover, a larger screen would
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`be disadvantageously heavier, more fragile, and require more power than the
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`existing screen design.
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`11
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`Attorney Docket No: 30912-0003IP1 & 0003IP2
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`Case IPR2014-00437 & 438
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`32.
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`Even if one of ordinary skill chose to ignore the inefficiencies and
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`disadvantages in removing Palmer’s dedicated keys, replacing those keys with a
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`screen dependent input mechanism would lead to a Palmer device that would be
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`more often than not largely unusable during a game of golf. This is the case because
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`the LCD screens of the time (early 19905) were extremely difficult to read in direct
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`sunlight. Even Dr. Gutwin grudgingly conceded in his deposition that bright
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`sunlight could negatively affect the readability of early 90’s LCD screens. See Ex.
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`2011 at 2383—25.
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`33.
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`This unfortunate feature of early LCD screens was significantly
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`diminished in Palmer though the use of marked keys. A user of the Palmer device
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`did not necessarily need to be able to read the entire screen to enter sports data into
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`the device or to trigger function because the user could use the dedicated marked
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`keys to enter information or make selections even if the direct sunlight was partially
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`or completely obscuring the screen. However, if Palmer were modified to use a
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`screen dependent input mechanism instead of its marked keys, the user would be
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`unable to enter any data without finding shade or going inside. As golf is a game
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`played exclusively outside (and hopefully away from the trees), the modified Palmer
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`device would often times be partially or wholly unusable for a given game of golf.
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`34. Notably, the pager of Vanden Heuvel was not designed for exclusive
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`outdoor use and as such a user of Vanden Heuvel did not have the same concern.
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`When a message is received by the Vanden Heuvel pager, its user could simply take
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`the pager indoors to read it away from direct sunlight. In fact, it appears that Vanden
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`Heuvel was even cognizant of the fact that its screen may be difficult to read and,
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`thus included an “alert device 38 to alert the user that a selective call message has
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`been received.” Ex. 1007 at 4:3 8-42. The alert device is either an LED light or an
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`audio signal ~ neither of which are affected by direct sunlight. Ex. 1007 at 5:14—23.
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`35.
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`The screen dependent
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`input mechanism of Vanden Heuvel would
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`further be unsuitable for use with Palmer because it would reduce the available
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`screen space for the display of golf information, as some portion of that screen space
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`would need to be used for the screen input mechanism. Although Palmer mentions
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`no problems displaying the types of information described in the reference itself, it
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`did not contemplate displaying this information on a screen in which the display
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`space was reduced by on-screen menus and selection mechanisms of the type
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`disclosed in Vanden Heuvel. See ex. 1006 at Fig.9, 13, and 14.
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`36. Next, the disclosures of Palmer, Osamu, and Vanden Heuvel also do
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`not include any provision for displaying pre-game and/or game interactive screens
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`in a sequential fashion or in a logical order.
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`37.
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`First, none of the references disclose the use of pro-game screens at all.
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`One of ordinary skill
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`in the art would understand that the interactive training
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`exercises cited by the Petitioner take place while playing the game of golf. This is
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`13
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`the case because each of them describes information that is displayed when a user is
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`either practicing golf or playing a practice game of golf. They are not a pre-game
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`screen, as recited in the claims. Palmer never describes this activity as a “pre-game”
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`activity, and to the contrary describes a lengthy series of game activities that could
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`easily occupy an entire golf outing. Ex. 1005 at 10—13. As such, the training
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`exercises are not pre-game screens, but rather game interactive screens. See Ex.
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`1001 at 7 :61-66 (describing pre—game screens) and 8:1-10 (describing the tracking
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`of shots on the game interactive screens); Ex. 1005 at 10 and 15.
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`38.
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`Palmer’s “golf course database” is similarly a game interactive screen
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`as it is only described as being used during a game, and thus can also not be a pre-
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`game screen. Ex. 1005 at 15. Further, the ability of the Palmer device to recall the
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`result of a previous game is a post-game screen, as this feature is related to recalling
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`the result after a game has been completed —— not preparing for a new game. See EX.
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`1001 at 8:47-65 (describing post game screens displaying scores).
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`39.
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`Osamu also does not disclose any pre-game screens. The section relied
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`upon by the Petitioner in its Petitions for “pre-game screens” refers to a screen
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`presented when a golfer “comes to a tee shot at each hole,” which makes this screen
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`a game interactive screen because it is displayed while playing golf. Ex. 1006 at
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`18-19.
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`40. Moreover, Palmer, Osamu, and Vanden Heuvel do not disclose
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`displaying the pre-game and/or game interactive screens in a sequential or logical
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`order. Vanden Heuvel makes no mentioning of playing a game, and thus cannot
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`disclose these features. While Palmer and Osamu do make mention of displaying
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`golf related information, neither reference describes presenting pre-game and/or
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`game interactive information in a particular screen or logical order of screens. To
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`the contrary, in its description, Palmer merely provides various lists of the types of
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`information that could be provided to the user with little or no description of how
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`that information would be presented. Ex. 1005 at 10, 14, and 15. Osamu is little
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`better. EX. 1006 at 19 (describing that scores “may be reviewed by displaying on
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`the LCD panel as desired”); see also Ex. 1006 at 20.
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`41.
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`Given the extreme length of the declarations prepared by Dr. Gutwin
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`and the large number of assertions unrelated to the actual assertions of invalidity set
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`forth by Petitioner, 1 have not attempted in this declaration to identify or address
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`every flaw in Dr. Gutwin’s opinions.
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`I have instead focused on providing my
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`opinions regarding the proper analysis to be used in considering the validity of the
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`claims of the SkyHawke lPRs. To the extent I have not addressed a point by Dr.
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`Gutwin, it does not mean that I agree with that point.
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`In many cases, his mistakes
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`simply did not appear relevant enough to the ultimate questions at issue for me to
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`address.
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`I declare under penalty of peljury under the laws of the United States of
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`America that the foregoing is true and correct. Executed this 19th day of December,
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`2014.
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`Alan Ball
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