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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`GORDON HOWARD ASSOCIATES, INC.
`Petitioner
`
`
`v.
`
`
`LUNAREYE, INC.
`Patent Owner
`
`______________________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,484,035
`CASE NO. IPR2014-01213
`______________________________________________________
`
`
`
`
`DECLARATION OF JOSEPH C. McALEXANDER III
`
`
`LUNAREYE EXHIBIT 2031
`
`
`
`1
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`
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`1. My name is Joseph C. McAlexander III. I have personal knowledge of the
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`matters stated herein from my review of the documents cited below and my
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`professional experience.
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`QUALIFICATIONS
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`2.
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`I am a Registered Professional Engineer (#79454) and the President of
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`McAlexander Sound, Inc. I hold a Bachelor of Science degree in Electrical
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`Engineering from North Carolina State University. I have been associated
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`with the integrated circuit and electronics industry as a designer and
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`consultant for the past 42 years and am a named inventor on 31 U.S. patents
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`and a number of foreign patents, many of which are directly related to the
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`design and operation of data sensing and storage devices and data
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`transmission using wireless technology.
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`3. My skills and experience are in areas of software development,
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`management, circuit design and analysis, device fabrication and assembly,
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`testing, marketing, control system design and analysis, manufacturing
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`operations, and respective areas of quality, reliability, and defect/failure
`
`analysis. Specifically, I have:
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`A. designed memories, including Dynamic Random Access Memories
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`(DRAMs), Static Random Access Memories (SRAMs), Charge
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`Coupled Devices (CCDs), Shift Registers (SRs), and functional
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`
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`2
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`
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`
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`
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`circuits including I/O buffers for address and data, decoders, clocks,
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`sense amplifiers, fault tolerant (incorporating both non-volatile
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`EPROM and random access memory components), parallel-to-serial
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`data paths for video applications, level shifters, converters, pumps,
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`and logic, as well as wireless communication systems and MEMs;
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`B. managed operations including engineering, training, and quality
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`assurance for device fabrication, assembly, test, analysis, and
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`reliability assessment, as well as manufacturing control, each of which
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`involved both volatile and non-volatile memory; testing, analysis, and
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`control involved use of mechanical calibration and measuring
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`equipment, including optical, scanning e-beam, IR, capacitive, and
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`laser using phase contrast and FFT for HARI applications;
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`C. taught courses in solid-state device physics, integrated circuit design,
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`integrated circuit fabrication, and statistical control;
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`D. provided expert services, investigating both process and design
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`technologies of various devices (microprocessor and controller,
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`volatile and non-volatile memory, programmable logic, card, tag,
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`module, mixed signal, custom, and other), systems (PC and
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`peripheral, computer, control, laser measurement, switch, architecture,
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`3
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`
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`software, and other), and consumer products (medical, TV, telephone,
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`VCR, facsimile, copier, lighting, game, and other); and
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`E. designed and managed development, testing, and evaluation of
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`memory devices and systems incorporating such devices, including
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`simulation of operation. I have also had experience in programming,
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`erasing, and wearout of electrically programmable and erasable non-
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`volatile memories.
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`4.
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`Because of my background, training, and experience with wireless
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`communication and location tracking devices, I am qualified as an expert to
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`opine as set forth herein. A more detailed account of my work experience
`
`and other qualifications is listed in my Curriculum Vitae attached as
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`Appendix A.
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`OTHER CASES
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`5.
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`A list of the cases during at least the last four years in which I have signed a
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`Protective Order, have testified as an expert either at a trial, hearing, or
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`deposition, or have submitted statements / opinions, is attached as Appendix
`
`A to this report.
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`COMPENSATION
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`6.
`
`Compensation to McAlexander Sound, Inc. (“McASI”) for services I
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`provide is described in Appendix B to this report. My compensation, and
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`
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`4
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`
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`
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`
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`that of McASI, is not contingent upon the outcome of this inter partes
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`review.
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`REVIEW AND USE OF DOCUMENTS AND OTHER MATERIALS
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`7.
`
`I have reviewed and considered, in the preparation of this declaration,
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`A. Lunareye Exhibit 2001, U.S. Patent No. 6,484,035 (“the '035 patent”).
`
`B. Lunareye Exhibit 2014, a document entitled GT Plus Oncore GPS
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`Receiver.
`
`C. Lunareye Exhibit 2028, a document entitled Motorola GPS Products -
`
`Oncore User’s Guide, Chapter 3, obtained from http://www.wa5rrn.
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`com/GPS%20Other/Motorola%20M12/gpsusersguidev5chap3.pdf
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`D. GH Ex. 1007, a document entitled Oncore User’s Guide.
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`E. Lunareye Exhibit 2006, the deposition transcript of Dr. James Janky
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`in IPR2014-00712.1
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`F. Lunareye Exhibit 2024, a document entitled “Memorandum Opinion
`
`and Order Denying Defendant’s Motion for Summary Judgment.”
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`G. GH Ex. 1010, Declaration of James M. Janky in IPR2014-01213.
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`H. Lunareye Exhibit 2019, NMEA 0183 Standard, v. 2.01
`
`
`
`
` 1
`
` I assume that Dr. Janky’s earlier declaration testimony and deposition testimony
`concerning the prior art in IPR2014-00712 remains his testimony.
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`
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`5
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`
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`I. Petition, Paper 1.
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`J. Lunareye Exhibit 2032, the deposition transcript of Dr. James Janky
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`in IPR2014-01213.
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`K. Those documents further cited herein.
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`PERSON OF ORDINARY SKILL IN THE ART
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`8.
`
`For the purpose of my declaration, I have assumed that a person of ordinary
`
`skill in the art on or around December 7, 1998, is as set forth in Ex. 1010,
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`Dr. Janky’s Declaration at ¶¶37–40.
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`9. My analysis herein with respect to a person of ordinary skill in the art is
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`from the time-frame of on or around December 7, 1998.
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`CLAIM CONSTRUCTION
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`10.
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`I understand that the first step in determining validity is to properly construe
`
`the claims to determine claim scope and meaning.
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`11.
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`I understand that claim terms in inter partes review proceedings are given
`
`their broadest reasonable construction in light of the specification as it would
`
`be interpreted by one of ordinary skill in the art.
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`12.
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`I understand that once terms are construed and entered by the Board, I am to
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`adopt each of those opinions for my analysis. However, I reserve the right
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`to revise my opinions subject to an issuance of any additional or revised
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`claim construction. To the extent that the Board has not construed a claim
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`
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`6
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`limitation, I applied in my analysis herein the broadest reasonable
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`interpretation that one skilled in the art would understand in light of the
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`specification. Those most particularly relevant are set forth below.
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`13. For purposes of this analysis I have used the following claim constructions
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`from the Board’s institution decision:
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`A. Term: “reorders the selected location data” — Construction: “arranges
`
`into the desired order for transmission”
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`B. Term: “data selecting device” — Construction: “device capable of
`
`selecting location data to include in the location signal”
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`C. Term: “location data” — Construction: “data generated by the
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`location-signal generating device, which may include, but is not
`
`limited to, GPS data such as latitude, longitude, height, velocity,
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`heading, and time”
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`14. For purposes of this analysis I have used the following claim constructions
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`based on the broadest reasonable interpretation in light of the specification:
`
`A. Term: “produce” — Construction: “output” (e.g, '035 Patent, Fig. 2,
`
`line 52, Cols. 2:1–9, 2:51–63, 6:42–49, 7:4–20, 7:49–62; Ex. 2006,
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`Janky Depo. IPR2014-00712, at 36:22–37:21).
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`B. Terms: “selecting less than all of the location data to include in the
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`location signal” — Construction: “the location signal of ¶ 1 (Claim 3,
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`
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`7
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`
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`Col. 10:32–33), with all of the location data, is processed by the ‘data
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`selecting device’ so that less than all of the location data produced by
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`the GPS or other location-signal generating device is included in the
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`‘location signal’ of ¶ 2 (Claim 3, Col. 10:34–35).” (e.g,, '035 Patent,
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`Figs. 2 (item 52), 5–7, Cols. 2:1–9, 2:51–63, 6:42–49, 7:4–20, 7:49–
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`62, Lunareye Ex. 2017 at 5–8).
`
`15.
`
`In my opinion, a person of ordinary skill in the art would consider the data
`
`selecting device limitations in Claim 3 in light of the specification to refer to
`
`something external to a GPS receiver that operates on the actual output of
`
`the GPS receiver to further select less than all and reorder location data
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`because of the teachings in the '035 Patent referred to in ¶¶13–14 above
`
`which delineate between a data selecting device and the output of a GPS
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`receiver, especially an Oncore GPS receiver.
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`INTERCHANGEABILITY OF ONCORE DEVICES
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`16.
`
`In my opinion, a person of ordinary skill in the art would understand that the
`
`structure described in Lunareye Ex. 2014 as a GT Plus Oncore GPS
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`Receiver to be a GPS Receiver based on the descriptions present in at least
`
`Lunareye Ex. 2014 at 1–2 and GH Ex. 1007 at 3.10, 3.13, 3.16.
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`17.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`GT Plus Oncore GPS Receiver described in Lunareye Ex. 2014 would
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`8
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`output at least NMEA sentences: GGA, GLL, GSA, GSV, RMC, VTG, and
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`ZDA based on the descriptions present in at least Lunareye Ex. 2014 at 1–2
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`and GH Ex. 1007 at 3.10, 3.13, 3.16, 5.7–5.8.
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`18.
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`In my opinion, a person of ordinary skill in the art would understand that the
`
`GT Plus Oncore GPS Receiver (the “GT Plus”) described in Lunareye Ex.
`
`2014 would be mechanically and electrically backwards compatible with a
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`device called a VP Oncore based on the descriptions present in Lunareye Ex.
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`2014 at 1–2 and GH Ex. 1007 at 3.16.
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`19.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`document labeled GH Ex. 1007 describes a family of GPS receivers
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`manufactured by Motorola, including the Basic Oncore receiver (the
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`“Basic”), the XT Oncore receiver (the “XT”), and the VP Oncore receiver
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`(the “VP”). GH Ex. 1007 at 1.1.
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`20.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`term “VP Oncore” used in Lunareye Ex. 2014 would refer to the device
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`described as a VP Oncore receiver in GH Ex. 1007 at 1.1 and 3.16 based on,
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`at least, the similarity of the terms, the same purported manufacturer, the
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`similar functions purportedly performed by the VP and the GT Plus, the
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`similar physical and electrical specifications of the VP and GT Plus, and the
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`similar output produced by the VP and the GT Plus.
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`9
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`21. The documents set forth in Lunareye Ex. 2028 and 2014 are the type of
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`documents (e.g., a chapter from a GPS user manual and specification sheet)
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`that I as an expert would rely upon in determining the properties of GPS
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`receivers.
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`22. The website from which the document set forth in Lunareye Ex. 2028 comes
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`from (as shown above) is the type of a location (e.g., a website collecting
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`GPS receiver information) that I as an expert would rely upon for documents
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`that are copies of true and correct information from a manufacturer
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`concerning the functioning of GPS receivers.
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`23.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`GT Plus Oncore GPS Receiver described in Lunareye Ex. 2014, as well as
`
`the Basic, XT, and VP GPS receivers described in GH Ex. 1007, would all
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`output NMEA sentences on a continuous or poll basis as described in GH
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`Ex. 1007 at 3.10, 3.13, 3.16, 5.7 and in Lunareye Ex. 2014 at 2, and in
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`Lunareye Ex. 2028 at 3.15, 3.37–3.38.
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`24.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`GT Plus Oncore GPS Receiver described in Lunareye Ex. 2014, as well as
`
`the Basic, XT, and VP GPS receivers described in GH Ex. 1007 would be
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`interchangeable in performing the functions required of a GPS receiver in
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`10
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`the '035 patent based on their ability to produce (i.e., output) a location
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`signal containing location data.
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`25.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`Basic, XT, and VP GPS receivers, described in GH Ex. 1007, would be
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`interchangeable with the GT Plus Oncore GPS Receiver described in
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`Lunareye Ex. 2014, in performing the functions described by the '035 patent
`
`with respect to the Motorola GT Plus Oncore GPS Receiver in Col. 7:4–20,
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`etc.
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`DATA SELECTING DEVICE
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`26.
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`In my opinion, a person of ordinary skill in the art would understand that the
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`GT Plus Oncore GPS Receiver, described in Lunareye Ex. 2014, as well as
`
`the Basic, XT, and VP GPS receivers described in GH Ex. 1007, could likely
`
`perform their location calculations and output NMEA sentences in
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`substantially the same manner based on, at least:
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`A. Substantially identical block diagrams and similar processing
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`descriptions set forth in Lunareye Ex. 2028 at 3.4–3.5 and GH Ex.
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`1007 at 3.1–3.2.
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`B. Electrical and mechanical backwards compatibility of the GT Plus
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`Oncore with the VP GPS receiver. Lunareye Ex. 2014 at 1.
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`11
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`C. Substantially similar flowcharts for logic calculations. E.g., Lunareye
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`2028 at 3.42–3.46; GH 1007 at 5.15–5.20.
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`D. Same model family (“Oncore”). Lunareye Ex. 2014, GH Ex. 1007.
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`E. Compliance with NMEA 0183 formats. Lunareye Ex. 2014 at 2; GH
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`Ex. 1007 at 3.10–3.16; Lunareye Ex. 2028 at 3.15, 3.32, 3.37–3.38.
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`F. A subset of identical I/O instructions. Lunareye Ex. 2014 at 1.
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`27.
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`I am unaware of any disclosure of location data in the Oncore nonvolatile
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`memory being used in a NMEA sentence that is output from an Oncore GPS
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`receiver other than possibly a portion of a year value (e.g., ZDA) that is
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`stored (but the underlying implementation for its use is unknown). While
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`the nonvolatile memory stores some position data (e.g., GH Ex. 1007 at
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`5.11), that data is disclosed as being used for satellite tracking, not in NMEA
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`sentence generation.
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`28.
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`In my opinion, the disclosure in GH Ex. 1007 is insufficient to disclose to a
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`person of ordinary skill in the art in what order, if any, exists between the
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`elements of location data as that location data exists in the registers in the
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`MPU or RAM memory because:
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`A. The order, if such existed, would be implementation dependent.
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`B. The underlying implementation within the microprocessor,
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`microcode, or control software, is not disclosed.
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`12
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`C. Any “order” from the use of software structure conventions (arrays,
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`vectors, and other data structures) is not disclosed and not necessarily
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`used. Each piece of location data (latitude, longitude, altitude, etc.) is
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`likely to be calculated and stored independent of any overall software
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`data structure because additional data structures tend to add more
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`computational complexity and overhead which is at odds with the real
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`time calculation demands on a GPS receiver. In other words, each
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`piece of location data could be stored in independent variables in
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`distinct and unordered locations. In such an implementation, the
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`software would not create any order, and the storage in independent
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`locations would preclude any order in the hardware memory (e.g.,
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`memory addresses) for reasons discussed later.
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`D. There is no evidence in Oncore or Mohan of any further processing of
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`the Oncore’s output signals (Oncore) or the processing of GPS signals
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`(Mohan).
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`29.
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`In my opinion, the disclosure in GH Ex. 1007 is insufficient to show that
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`there is a location “signal” (as Dr. Janky used that term for his analysis as set
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`forth in Ex. 2006, Janky Depo. IPR2014-00712, at 20:23–21:3; Ex. 2032,
`
`
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`13
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`
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`Janky Depo. IPR2014-01213, at 8, 12)2 because there is not necessarily a
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`“series” of 1’s and 0’s in any register or block of RAM memory that spans
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`multiple instances of location data.
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`A. By way of simplified example, bits representing longitude could be
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`stored in memory location N1. Bits used in calculating velocity, but
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`never actually output could be stored at memory location N2. Bits
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`representing longitude could be stored in memory location N3. Bits
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`used in calculating altitude, but never actually output, could be stored
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`in memory location N4.
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`B. So among any continuous block of memory N1–N4, there is not
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`necessarily a series of bits representing location data because that
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`“series” is likely broken by other bits of information that are not
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`location data (e.g., temporary or partial calculations, loop variables,
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`constants, variable parameters, dirty memory, empty memory, etc.).
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`30.
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`In my opinion, there need not be an order to a NMEA sentence prior to the
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`actual output of that sentence from the microprocessor to the Data/Power
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`Connector in the function block diagram at GH Ex. 1007 at 3.1 because it is
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` 2
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` I assume that Dr. Janky’s testimony as to the broadest reasonable construction of
`the term “signal” he used was also the same construction used in IPR2014-01213.
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`14
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`substantially faster to simply output unordered location data from the
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`microprocessor to the Data/Power Connector in the order required for each
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`output NMEA sentence in the first instance. Such an implementation is
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`likely in a real time environment like GPS receivers because it saves
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`valuable time that would otherwise be spent on both redundant and
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`comparatively slow I/O activities to and from the RAM bus for multiple
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`NMEA sentences.
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`31.
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`In my opinion, the Oncore user guide (GH Ex. 1007 describing the Basic,
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`XT, and VP) does not disclose “a data selecting device for selecting less
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`than all of the location data to include in the location signal” because the
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`Oncore user guide is plainly silent concerning any device that modifies the
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`structure or contents of the GPS receiver’s digital output signal (without
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`respect to the format of the output, be it NMEA, Loran, or otherwise) after
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`outputting a location signal as required by Claim 3.
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`COMBINING MOHAN AND ONCORE
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`32. Mohan teaches a thin, miniaturized GPS module with power management
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`features suitable for concealed use. E.g., Mohan at Title, Abstract, Fig. 2,
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`Col. 1:66–2:4, 2:23–34, Col. 3:33–4:42.
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`33.
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`In my opinion, a person of ordinary skill in the art seeking to follow the
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`teachings of Mohan would be seeking to create a device between about 2” x
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`15
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`2” x 0.5” to about 3” x 3” x 0.5” (50.8mm x 50.8mm x 12.7mm to about
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`76.2mm x 76.2mm x 12.7mm).3 In doing so, a person of ordinary skill in
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`the art would not exceed a maximal range of +33% on each dimension
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`(yielding maximal dimensions of 101.6mm x 101.6mm x 16.9mm) based on:
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`A. The dimensional teachings at Col. 3:33–3:41 of something 2” x 2” x
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`0.5” “more or less.”
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`B. The dimensional teachings at Col. 4:17–42 of a battery 3” x 3” x
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`0.07” and a GPS antenna of 0.56 to 3.2 in2.
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`C. The teachings of Mohan with respect to thinness. E.g., Mohan at
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`Title, Abstract, Fig. 2, Col. 1:66–2:4, 2:23–34, Col. 3:33–4:42.
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`D. In calculating an upper range, Mohan’s Claim 13 reference to 10
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`cubic inches is slightly exceeded by an extension of 33% in each
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`dimension in 3” x 3” x 0.5” yielding approximately 3.9” x 3.9” x
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`0.67” which is about 10.19 cubic inches.
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`
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` 3
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` I assume that Mohan’s use of the term N “inches square” refers to something N
`inches long and N inches wide. I also assume that Mohan’s use of N “square
`inches” means a length and width whose product is equal to N.
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`16
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`E. The teachings in Mohan to preserve the “thin” (and concealable)
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`nature of the device which is rapidly lost by changing the thickness of
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`the device as opposed to its length or width.
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`34. The Basic is approximately 3.94” x 2.76” x 0.7” or 100mm x 70mm x
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`17.8mm. GH Ex. 1007 at 3.10.
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`35. The XT is approximately 5.5” x 4.2” x 1.25” or 140mm x 107mm x 32mm.
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`GH Ex. 1007 at 3.13.
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`36. The VP is approximately 2.0” x 3.25” x 0.64” or 50.8mm x 82.6mm x
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`16.3mm. GH 1007 at 3.16.
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`37. The Basic, XT, and VP each require an antenna in order to receive GPS
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`signals, and a person of ordinary skill in the art would recognize this. E.g.,
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`Mohan, Col. 4:35–42; GH Ex. 1007 at 1.1; '035 patent, Col. 5:62–6:3, Fig. 2.
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`38. The antenna for each of the Oncore GPS receivers is a short, cylinder or disk
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`like object 101.80mm in diameter and 22.6mm tall (4” diameter, 0.89” tall),
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`with a M12x1.75 thread projecting an additional 14.8mm (0.58”) downward
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`from the center. GH Ex. 1007 at 3.4, 3.16.
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`39.
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`In my opinion, a person of ordinary skill in the art would be strongly
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`discouraged from using the VP, XT, or Basic GPS receiver to create the
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`invention in Mohan because:
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`
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`17
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`
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`A. The shortest of the GPS receiver boards, the VP, is 16.3mm tall and
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`exceeds by almost 30% the height requirement taught in Mohan of
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`12.7mm.
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`B. The VP, at 16.3mm tall, exceeds the 12.7mm suggested height by
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`nearly 30% and consumes almost all (96.44%) of the space allocated
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`towards a maximum height of 16.9mm.
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`C. After accounting for the VP’s height, further height would be
`
`consumed by a battery, processor, casing, GPS antenna, interconnects,
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`lids, and cellular transceiver. Mohan, Fig. 2, Col. 3:33–4:42.
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`D. Given the need for the additional layers as shown in Fig. 2, a person
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`of skill in the art would look to keep each major module (GPS
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`receiver, control and power management processor, and mobile
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`transceiver) as close to 1/4th of the overall height as possible to allow
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`room for lids, interconnects, casing, and as large a battery as possible.
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`E. The XT and Basic are even taller than the VP and are not suitable for
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`at least the same reasons.
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`40.
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`In my opinion, a person of skill in the art would give merely superficial
`
`consideration to the VP based on its dimensions and then set it aside because
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`the VP is not suitably dimensioned for Mohan’s teachings.
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`18
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`41.
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`In my opinion, only hindsight bias that ignores Mohan’s direct teachings
`
`concerning thinness, and/or hindsight bias that forces a person of skill in the
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`art to use oversized, off-the-shelf products with the teachings of Mohan,
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`would motivate a person of ordinary skill in the art to combine Mohan with
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`any of the Oncore devices.
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`42.
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`In my opinion, Oncore teaches a person of ordinary skill in the art away
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`from, and strongly discourages, combination with Mohan because the
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`technical benefits for embedded applications that come from the Oncore
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`device come by way of its “new, low-profile, active microstrip patch
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`antenna” which antenna by itself is substantially larger than the maximum
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`dimensions a person of skill in the art would consider in light of Mohan.
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`GH Ex. 1007 at 1.1; Ex. 1010, Janky Decl. at ¶98.
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`43.
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`In my opinion, Mohan teaches a person of ordinary skill in the art away from
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`creating the invention described in Mohan with an available, off-the-shelf
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`GPS receiver. Rather, Mohan would teach a person of skill in the art that
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`dramatic changes to available off the shelf GPS receiver components were
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`required to make something small enough to be concealed within smaller
`
`objects or worn on the person. Mohan, Col. 1:57–63.
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`44.
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`In my opinion, a person of ordinary skill in the art would not further
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`miniaturize the Oncore VP, XT, or Basic because:
`
`
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`19
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`
`
`
`
`A. The Oncore VP, XT, and Basic are an off-the-shelf product for OEM
`
`integration and not intended to be, and would not be, used in a further
`
`miniaturization, and a person of ordinary skill in the art would
`
`recognize this. GH Ex. 1007 at 1.1.
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`B. A person of ordinary skill in the art would understand that products
`
`such as the Oncore, VP, XT, or Basic are each self-contained
`
`solutions that provide the expected functionality consistent with their
`
`respective disclosed specification. Each such product would be the
`
`culmination of a very long and complex design and manufacturing
`
`process involving component selection, PCB material selection and
`
`layout, computer simulation over numerous operating and
`
`environmental conditions, and in situ testing. Miniaturization of any
`
`one or more of these products using identical underlying components
`
`would necessarily require a complete (and successful) reverse
`
`engineering of those products followed by a repetition of that
`
`underlying design process, including extensive simulation, testing,
`
`and undue experimentation. This process is beyond the skill of a
`
`person of ordinary skill in the art’s generalized knowledge and
`
`familiarity with integrating GPS receiver technology into OEM
`
`products as suggested by Dr. Janky.
`
`20
`
`
`
`
`
`
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`C. A person of ordinary skill in the art’s training would not extend to
`
`miniaturizing the underlying components like RAM, processors,
`
`nonvolatile memory, capacitors, resistors, power regulators, etc.,
`
`because doing so involves multiple other technologies and distinct and
`
`complex arts.
`
`D. Any suggestion to rearrange these products into a miniaturized
`
`solution to achieve the claimed invention is clearly based only on
`
`impermissible hindsight.
`
`E. For at least these reasons, a person of skill in the art at this time would
`
`not anticipate success, nor would that person have a reasonable
`
`expectation of success, in accomplishing a correct reverse
`
`engineering, and much less the entire miniaturization process.
`
`F. For at least these reasons, a person of ordinary skill in the art would
`
`be highly discouraged from further miniaturizing an Oncore product.
`
`45. The NMEA Standard is an industry specification to ensure seamless
`
`communication, interconnection and interoperability of electronic equipment
`
`utilizing GPS, among other things:
`
`NMEA Interface Standards are intended to serve the
`
`public interest by facilitating the interconnection and
`
`interchangeability
`
`of
`
`equipment,
`
`minimizing
`
`
`
`21
`
`
`
`
`
`
`
`misunderstanding and confusion between manufacturers,
`
`and assisting purchasers
`
`in
`
`selecting compatible
`
`equipment.
`
`Ex. 2019, NMEA 0183 (version 2.01) at 1.
`
`46. The NMEA Standard provides for the generation of standardized data in the
`
`various formats (also known as sentences) to achieve interoperability among
`
`communication devices. As the NMEA standard explains: “This standard is
`
`developed to permit ready and satisfactory data communication between
`
`electronic marine instruments, navigation equipment and communications
`
`equipment when interconnected via an appropriate system.” Ex. 2019,
`
`NMEA 0183 (version 2.01) at 2. However, when read in light of the '035
`
`Patent, the NMEA Standard actually teaches away from the inventions
`
`claimed in the '035 Patent.
`
`47. First, the NMEA Standard requires that the data transmitted pursuant to the
`
`specified protocol must be formatted in a standardized fashion to ensure
`
`communication interoperability. Ex. 2019, NMEA 0183 (version 2.01) at 9,
`
`20–39 (setting forth approved sentences).
`
`48.
`
`It is clear from the specification of the '035 Patent that its teachings are not
`
`directed to standardized data transmissions. To the contrary, the teachings of
`
`the '035 Patent are directed to non-standard, proprietary communications
`
`
`
`22
`
`
`
`
`
`
`
`whereby less than all of the data generated by a GPS receiver should be
`
`selected for transmission and then reordered prior to transmission. '035
`
`Patent, Col. 7:4–20.
`
`49. As a practical matter, NMEA Standard-compliant devices would be rendered
`
`inoperable and the stated purposes of the standard – interconnectivity and
`
`interchangeability – would be rendered meaningless if those devices were
`
`designed to select less than all of the location data generated by a GPS receiver
`
`(and then reorder that data) for purposes of transmission.
`
`50. Dr. Janky’s opinions with respect to the Oncore Publication are predicated
`
`upon the Oncore being a device compliant with the NMEA Standard. As
`
`discussed above, the NMEA Standard teaches away from the inventions
`
`claimed in the '035 patent. As a result, the Oncore reference necessarily
`
`teaches away from the inventions of the '035 patent and discourages a person
`
`of ordinary skill in the art from combining Oncore and Mohan.
`
`THE DISCLOSURE OF LEWIS
`
`51. Ex. 1009, U.S. Pat. No. 5,587,715 to Lewis (“Lewis”) is generally directed to
`
`tracking the location of a GPS receiver associated with a vehicle.
`
`52.
`
`I understand that Dr. Janky refers to Lewis, Col. 10:53–56, Col. 11:45–55,
`
`Fig. 2, and so forth to support the statement that “Lewis’s ‘Modem 74’
`
`formats the data received from the GPS receiver for transmission by the
`
`
`
`23
`
`
`
`
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`
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`‘Cellular Transceiver 52.’” in such a way as to select (or discard) some
`
`portion of the location data and reorder the remaining portion. E.g., Ex.
`
`1010, Janky Decl., at ¶¶ 112–127. I disagree with this conclusion.
`
`53.
`
`In my opinion, the “modem 74” in Lewis discloses to a person of ordinary
`
`skill in the art nothing more than a modem that is solely intended to perform
`
`its common, well known purpose—to modulate and demodulate
`
`information. This is shown by, among other things, repeated citations that
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`exclusively describe the modem 74 (and modems generally) as performing
`
`well understood modulation and demodulation functions. E.g., Lewis, Col.
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`14:17–32; Col. 14:53–58; Col. 15:41–44; Col. 16:14–26; Col. 20:51–55;
`
`Col. 23:61–64; etc.
`
`54.
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`In my opinion, a person of ordinary skill in the art would understand that
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`Lewis discloses that the GPS receiver 48 is the structure which has the task
`
`of providing a data message for transmission, and that the Modem 74 and
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`Cellular Transceiver 52 are just pass-through devices performing their well-
`
`known function of preparing data for transmission. This is shown by,
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`among other things, Lewis’ disclosure of a GPS receiver that executes
`
`additional programs and provides location messages to a base station. E.g.,
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`Lewis, Col. 10:36–39 (“The GPS receiver 48 further includes a computer
`
`processing unit (CPU) 156, which executes programs and processes data
`
`
`
`24
`
`
`
`
`
`
`
`stored in the RAM 49.”); Col. 10:4–7 (“The receiver 48 of a vehicle tracking
`
`unit 14 may be prompted by a message transmitted from the command
`
`center 38 to provide a return message bearing an indication of the vehicle
`
`location, speed and direction of movement.”); Col. 12:1–6 (receiver’s RAM
`
`contains message); Col. 16:54–17:23.
`
`55.
`
`In my opinion, the Lewis references does not disclose to a person of
`
`ordinary skill in the art a Modem 74 for performing any function other than
`
`its well-known function of modulating and demodulating signals in a data
`
`link, as described in Lewis, Col. 10:49–56; Col. 23:61–66.
`
`56.
`
`In my opinion, the Lewis reference discloses to one of skill in the art a GPS
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`receiver that provides certain data messages for transfer to a command
`
`center as evidenced by at least Lewis, Col. 10:36–39 (“The GPS receiver 48
`
`further includes a computer processing unit (CPU) 156, which executes
`
`programs and processes data stored in the RAM 49.”); Col. 10:4–7 (“The
`
`receiver 48 of a vehicle tracking unit 14 may be prompted by a message
`
`transmitted from the command center 38 to provide a return message bearing
`
`an indication of the vehicle location, speed and direction of movement.”);
`
`Col. 12:1–6 (“The vehicle tracking unit 14 responds to such an inquiry by
`
`accessing a memory and, in particular, a random access memory (RAM) 49
`
`
`
`25
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`
`
`
`
`
`of the receiver 48 to obtain and transmit a message indicative of 5 the
`
`present location of the vehicle 16 to the command center 38.”).
`
`57.
`
`In my opinion, Lewis’s discussion of the GPS receiver in tracking unit 14,
`
`discloses a GPS receiver that is adapted to output NMEA 0183 version 2.0
`
`compliant sentences. Lewis, Col. 9:19–10:9.
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`58.
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`In my opinion, Lewis’ disclosure of the GPS receiver outputting sentences
`
`that comply with the NMEA standard is a direct disclosure to a person of
`
`ordinary skill in the art that the data packets illustrated in Lewis (sent by the
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`vehicle tracking unit 14 to the command center 38, e.g., Col
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