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