UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
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`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00230
`
`Patent No. 7,463,245
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`
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`DECLARATION OF PENG LIM
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`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
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`TABLE OF CONTENTS
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`Page
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`Background & Qualifications ....................................................................................... 1
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`A.
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`B.
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`C.
`
`D.
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`Executive Summary ............................................................................................ 1
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`Education................................................................................................................. 2
`
`Relevant Industry Experience ........................................................................ 2
`
`Disclosure ................................................................................................................ 8
`
`Legal Framework ............................................................................................................ 11
`
`A.
`
`B.
`
`Scope and Content of the Prior Art............................................................. 11
`
`Differences Between the Art and the Invention ................................... 13
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`
`
`
`I.
`
`
`
`II.
`
`
`
`C.
`
`D.
`
`The Level of Skill in the Art ............................................................................ 16
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`Objective Indicia ................................................................................................. 16
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`III. Opinion ............................................................................................................................... 18
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`Background of the Technology .................................................................... 18
`
`
`A.
`
`1.
`
`2.
`
`The History of the Tablet Computer ............................................. 18
`
`The History of Gaming Devices ....................................................... 21
`
`The History of Touchscreen for Gaming ...................................... 24
`
`Level of a Person Having Ordinary Skill in the Art .............................. 26
`
`The ’245 Patent ................................................................................................... 26
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`3.
`
`B.
`
`C.
`
`
`1.
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`Prior Art Analyzed ................................................................................ 32
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`

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`D.
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`Andrews is Not Analogous Art for the ’245 Patent ............................. 40
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`1. Different Field of Endeavor ............................................................... 40
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`Problems and Solutions of Andrews are not
`Pertinent to the ’245 Patent .............................................................. 41
`
`2.
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`
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`3. Additional Differences that Make Andrews
`Unrelated to the ’245 Patent ............................................................ 42
`
`E.
`
`Not Obvious to Add Games to Liebenow in View of Andrews ........ 44
`
`
`1. Vertical Market Versus Entertainment Market (Gaming is
`Forbidden Fruit in Vertical Corporate Market) ....................... 45
`
`2. Opinion of Non-Obviousness Based on Market Needs .......... 46
`
`Loading Games into Liebenow Without Andrews’ External
`Peripherals will Not Yield Predictable Results ......................... 50
`
`3.
`
`
`
`4. Making Liebenow a Gaming Platform is Complex, and
`Requires Significant Modifications to the Hardware and
`Software .................................................................................................... 52
`
`
`F.
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`Even if One Did Combine the Teachings of Andrews and Liebenow,
`it Would Not Result in the ’245 Patent Claimed Invention .............. 57
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`Conclusion ......................................................................................................................... 61
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`IV.
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`

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`
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`I. BACKGROUND & QUALIFICATIONS
`
`A.
`
`Executive Summary
`
`1.
`
`I have twenty-five years of senior level executive experience in
`
`Fortune 500 and start ups. I served as a member of the board of directors,
`
`CEO and senior-level executive in mobile computing, consumer electronics,
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`wireless communications, green technology, instrumentations and ODM
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`(Original Design Manufacturer) industries.
`
`2.
`
`During my career, I have been responsible for developing many of
`
`the best-selling handheld devices, tablet and laptop computers in the world.
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`Some of these products helped my companies capture number-one worldwide
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`market shares in PDA, pen-based computing and handheld operating systems,
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`and others are within the top ten in the wireless device and portable
`
`computer industries.
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`3. My expertise is in breakthrough new product development,
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`engineering management, ODM, global partnerships, and domestic and
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`international product/business development.
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`4. My educational background, relevant industry experience and
`
`qualifications are summarized as follows:
`
`
`
`1
`
`

`
`B.
`
`Education
`
`
`
`5.
`
`I received my BS and MS in Electrical Engineering from the
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`University of Windsor in Canada in 1985 and 1987 respectively. I received a
`
`Master’s degree in Engineering Management from Northwestern University in
`
`1991. I am also an alumnus of the Stanford University Graduate School of
`
`Business, where I completed the Executive Program for Growing Companies
`
`in 1998.
`
`C. Relevant Industry Experience
`
`6. My relevant industry experience consists of more than twenty-
`
`five years of senior executive positions in handheld device, PDA, wireless,
`
`tablet and laptop/portable computer industries.
`
`7.
`
`I have been working in the high-technology industry since 1985.
`
`From 1985 to 1991, I was a lead engineer working on various challenges in
`
`hardware security and flat panel display technologies.
`
`8.
`
`From 1991 to 1993, I was the Director of Engineering for Dauphin
`
`Technologies. Dauphin was one of the first companies in the personal
`
`computer industry to develop small and portable tablet computers. One of the
`
`products, the Dauphin DTR-1, was awarded Pen Magazine’s "Best Pen
`
`Palmtop" and Mobile Office’s 1993 pen-based PC of the year.
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`
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`2
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`

`
`Sample products from Dauphin Technologies
`
`
`
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`
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`
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`Dauphin DTR-1 (1993)
`(Source: http://www.oldcomputers.net/dauphin-dtr-
`1.html)
`
`Dauphin DTR-1 with keyboard
`(1993)
`(Source: http://www.oldcomputers.net/dauphin-dtr-
`1.html)
`
`
`
`9.
`
`I was recruited from Dauphin to Zenith Data Systems in 1993.
`
`From 1993 to 1996, I was the Director of Mobile Systems and Advanced
`
`Portable Engineering at Zenith. At Zenith, I introduced important innovations
`
`in state-of-the-art portable computers that were among the top ten best-
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`selling computers in the world. These products include the Z-Note GT, the
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`product that was named 1995 Fall Comdex "Best-of-Show" finalist and
`
`awarded "The Perfect Mobile Office" by PC Today. I was also responsible for
`
`CruisePad; the world’s first wireless-LAN (Wi-Fi) mobile pad/terminal. This
`
`product was selected for demonstration at the G7 (group of the seven most-
`
`industrialized countries) Ministerial Conference on the Information Society,
`
`1995. It was also voted “Best Wireless LAN Product” by Mobile Insights ’95,
`
`“Best Product” by VAR Vision and awarded Gold Medal by PC User.
`
`
`
`3
`
`

`
`Sample products from Zenith Data Systems (ZDS)
`
`
`
`
`
`Zenith CruisePad (1995)
`(Source:http://www.pcmag.com/slideshow_viewer/0,3
`253,l=25552&a=25552&po=11,00.asp)
`
`Zenith Z-Note GT (95)
`(Source: http://www.noet.at/sss/zds/
`notebooks/9.htm)
`
`
`
`
`
`10. From 1996 to 1997, I served as Engineering Platform Director at
`
`Texas Instruments. At TI, I was responsible for the TM6160, the first notebook
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`computer to include a high-speed 56Kbps internal modem with X2
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`technology, which was also one of the world’s first notebook computers to
`
`incorporate a MMX 166 MHz Pentium CPU.
`
`
`
`Texas Instruments TravelMate 5000/6000
`(1995/1997)
`(Source: https://www.youtube.com/watch?v=w6IVhfF5kWo)
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`4
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`

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`
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`11.
`
`I was recruited by Fujitsu in 1997 as the Vice-President of
`
`Engineering at Fujitsu Personal Systems, the leading company in pen-based
`
`tablet computing. From 1997 to 1999, my team introduced best-selling pen-
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`based and wireless tablet computers that captured 55% of the worldwide
`
`market share (source: IDC, 1999; Pen Computing Magazine, April, 1999).
`
`During my tenure, Fujitsu held the world’s number one market share in pen-
`
`based tablet sales.
`
`Sample products from Fujitsu
`
`
`
`
`Fujitsu Stylistic 1200/2300
`(1997, 1999)
`(Source: http://www.fujitsu.com/au/Images/Fujitsu-
`Tablet-PCs-Whitepaper_tcm98-874981.pdf)
`
`
`
`
`Fujitsu Stylistic Point 510/1600
`(1997, 1999)
`(Source: http://www.fujitsu.com/au/Images/Fujitsu-
`Tablet-PCs-Whitepaper_tcm98-874981.pdf)
`
`12. With success at Fujitsu, I was recruited to serve as the head of
`
`Worldwide Product Development for Palm Computing, the world’s leading
`
`company in PDA and handheld devices from 1999 to 2001. At Palm, I was
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`responsible for directing the entire life cycle of product development and
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`engineering for Palm hardware and software products, including handheld
`
`and wireless devices as well as operating systems and application software.
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`5
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`

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`13. While at Palm, I helped capture 77.5% of the worldwide handheld
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`operating systems and PDA market shares. Ex. 2032, PDA Sales Soar. During
`
`my tenure, Palm was recognized as the top PDA company in the world. I was
`
`also a member of the senior executive team that led Palm to a successful IPO
`
`in 2000.
`
`Product examples from Palm, Inc.
`
`Palm Inc. Palm
`V/Vx (1999)
`
`
`
`Palm Inc. M505
`(2001)
`
`
`
`
`
`
`Palm
`M100/M125
`(2000)
`
`
`
`Palm Inc Palm
`IIIc (2000)
`
`14.
`
`I left Palm to start Tapwave, Inc. in 2001. As the President, CEO
`
`and a member of the Board of Directors of Tapwave from 2001-2005, I was
`
`behind the development of the Zodiac, a portable electronic multimedia and
`
`3D gaming device that won multiple prestigious awards, including 1st place in
`
`PC Magazine’s “Last Gadget Standing” competition at CES 2004, Time
`
`Magazine’s “Best Gear 2003”, Handheld Computing’s “Most Innovative PDA for
`
`2003”, Mobiletrax’s Mobility Award, CNET’s Editor’s Choice Award, PC
`
`
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`6
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`

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`
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`World’s 2004 Next Gear Innovations Award, Popular Science’s BOWN (Best of
`
`What’s New) Award, and many other prestigious awards.
`
`
`
`Product example from Tapwave Inc.
`(2003)
`(Source:
`http://pdadb.net/index.php?m=specs&id=1232&c=tapwave_zodiac_2)
`
`
`
`15.
`
`In addition to my fulltime employments, I also held various Board
`
`of Directors/Advisors positions. From 2001 to 2007, I served as a member of
`
`the Board of Directors at Novatel Wireless (Nasdaq: NVTL), a leading 3G
`
`wireless solutions company. Novatel supplied PCMCIA and USB wireless
`
`modems to carriers such as Verizon, AT&T, Orange, etc. around the world. I
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`was also on the Board of Advisors for Inventec Appliances (public Taiwan
`
`Exchange), a multi-billion-dollar handheld device and laptop computer
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`manufacturing company, from 2007 to 2010. Inventec Appliances
`
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`7
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`

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`
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`manufactures handheld and portables devices for various Fortune 500
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`companies such as Apple, HP, Texas Instruments, and others.
`
`16. From 2006-2012, I was the CEO and Chairman for MTI, an
`
`instrumentations and fuel cells company.
`
`17.
`
`I am currently the Founder and CEO of Amplim, LLC, a
`
`smartphone and computer accessories manufacturer since 2012.
`
`Sample products from Amplim (Source: Amplim, LLC)
`
`AlloyDura 5C
`(Source: Amplim/Amazon)
`
`
`
`Pellucid Alloy 6
`(Source: Amplim/Amazon)
`
`
`
`Alloy FS
`(Source: Amplim/Amazon)
`
`
`
`
`
`18.
`
`In summary, over the span of more than two decades, I have
`
`helped grow the portable computer, pen-based tablet and handheld PDA
`
`industries from their infancy to multi-billion dollars industries.
`
`D. Disclosure
`
`19.
`
`I have been retained by the patent owner as an expert in this
`
`proceeding. I have reviewed the Petition and the following documents:
`
`
`
`
`
`8
`
`

`
`
`
`Exhibit 1001 U.S. Patent 7,463,245
`
`Exhibit 1003
`
`U.S. Patent Application Publication No. 2002/0118175 to
`Liebenow et al.
`
`Exhibit 1004
`
`International Publication No. WO2000/59594 to Andrews
`et al.
`
`Exhibit 1010 Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 1013
`
`Jenny Preece, Yvonne Rogers, Helen Sharp, David Benyon,
`Simon Holland, and Tom Carey, Human-Computer
`Interaction, Addison-Wesley (1994)
`
`Exhibit 1014
`
`More calculators thinking Polish as a famous pioneer faces
`some rough competition, IEEE Spectrum p. 77 (April 1975)
`
`Exhibit 1015
`
`Michael McCandless, The PalmPilot and the handheld
`revolution, IEEE Expert pp. 6-8 (November/December
`1997)
`
`Exhibit 1016 PalmPilotTM Handbook, 3Com Corporation (1997)
`
`Exhibit 1017
`
`Neil J. Salkind, PalmPilotTM and PalmTM Organizers! I Didn’t
`Know You Could Do That...TM, Sybex Inc. (2000)
`
`Exhibit 1018 U.S. Patent No. 5,543,588 to Bisset et al.
`
`Exhibit 1019
`
`Ivan Poupyrev, Shigeaki Maruyama, Jun Rekimoto, Ambient
`Touch: Designing Tactile Interfaces for Handheld Devices,
`UIST’02 October 27-30, 2002 ACM, Volume 4, Issue 2, pp.
`51-60
`
`Exhibit 1020
`
`C. Verplaetse, Inertial proprioceptive devices: Self-motion-
`sensing toys and tools, IBM Systems Journal, Vol. 35, Nos.
`3&4, 1996, pp. 639-650
`
`Exhibit 1021 U.S. Patent No. 5,878,276 to Aebli et al.
`
`Exhibit 1022
`
`Microsoft Computer Dictionary 5th Edition, Microsoft
`Corporation (2002)
`
`
`
`9
`
`

`
`
`
`Exhibit 2023 Excerpt from The History of Tablet Computers – a Timeline,
`http://www.zdnet.com/article/the-history-of-tablet-
`computers-a-timeline, accessed 8/4/15
`
`Exhibit 2024
`
`Fujitsu Sylistic 2300, Pen Computing Magazine, April 1999
`
`Exhibit 2025 A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2026 Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`magazine, March 23, 2013
`
`Exhibit 2027 Wikipedia entry on “Touchscreen” at
`https://en.wikipedia.org/wiki/Touchscreen, accessed
`8/1/2015
`
`Exhibit 2028 History of the Touch-Screen,
`http://compsci02.snc.edu/cs225/2010/touchScreen/histo
`ry--evolution.html, accessed 8/1/2015
`
`Exhibit 2029 Touch Controls (/touch-controls/3015-256/), Games that are
`controlled partially or entirely with a touch screen,
`www.giantbomb.com, accessed 8/1/2015
`
`Exhibit 2030
`
`Inspiring Quotes and Words of Wisdom from Steve Jobs by
`Parin, http://www.thegreatnessmind.com/
`2011/09/29/inspiring-quotes-and-words-of-wisdom-from-
`steve-jobs, accessed 8/4/2015
`
`Exhibit 2031 N-Gage Sales Goal at http://www.ign.com/articles/2003/
`10/09/n-gage-sales-goal, accessed 8/5/2015
`
`Exhibit 2032 PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld,
`January 26, 2001
`
`10
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`

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`
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`II. LEGAL FRAMEWORK
`
`20. Counsel has informed me that a patent claim is obvious if the
`
`differences between it and the prior art are such that it would have been
`
`obvious at the time the invention was made to a person having ordinary skill
`
`in the relevant art. To determine obviousness I must consider:
`
`
`
`
`
`
`
`
`
`the scope and content of the prior art,
`
`the differences between the prior art and the claimed
`
`invention,
`
`the level of ordinary skill in the field of the invention, and
`
`any relevant objective considerations of nonobviousness.
`
`21.
`
`I have taken each of these factors into account in my analysis
`
`below.
`
`A.
`
`Scope and Content of the Prior Art
`
`22.
`
`I am informed that prior art for obviousness purposes is limited to
`
`art that is analogous.
`
`23. Art can be analogous if it comes from the “same field of endeavor”
`
`as the invention. I understand that determining the field of endeavor requires
`
`consideration of the problem the inventor was trying to solve. Two pieces of
`
`art that relate to the same general subject matter are not necessarily in the
`
`same field of endeavor.
`
`
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`11
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`

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`
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`24.
`
` For instance, beverage containers, blender containers, and food
`
`processor containers are all basically food containers. But that does not mean
`
`that all of them are in the same field of endeavor as a patent directed to
`
`solving problems with blending liquids. Similarly, memory circuits used on
`
`large industrial computers and compact, modular memories are both basically
`
`computer memory. But that does not mean that they are both in the same
`
`field of endeavor for a patent directed to creating small, replaceable memories
`
`for personal computers. In order for art to be considered part of the same
`
`field of endeavor, there must be some reason why a person of skill in the art,
`
`wanting to solve the problems the inventor was trying to solve, would look to
`
`it to discover a solution. If there is no sufficient rationale for doing so, the art
`
`must not be considered part of the same field of endeavor.
`
`25.
`
`I am further informed that another way that art can be considered
`
`analogous is if it is “reasonably pertinent” to the patent. A reasonably
`
`pertinent reference is one that might logically would have commended itself
`
`to an inventor's attention in considering his problem at the time of the
`
`invention. If there is no sufficient reason for the inventor to have done so, the
`
`art is not analogous.
`
`26. For instance, an inventor trying to improve flow patterns inside a
`
`whirling blender may not have had any reason to consult art relating to
`
`
`
`12
`
`

`
`
`
`ordinary beverage containers because flow patterns are not a consideration in
`
`designing ordinary beverage containers. An inventor trying to create compact
`
`and modular memories may not have had any reason to consult memories
`
`built for large industrial machines which could not be used for personal
`
`computers because such memories are built without consideration to their
`
`size.
`
`27. Even when art is analogous, however, that does not mean all
`
`permutations of its individual elements are obvious. I understand it is also
`
`important to consider the differences between the art and the invention as
`
`claimed and whether there was a motivation to combine the references in the
`
`manner of the claim.
`
`B. Differences Between the Art and the Invention
`
`28. Most inventions are an assembly of pre-existing technology. It is
`
`therefore not proper to say that an invention was obvious merely because it is
`
`a recombination of the prior art. Such an invention might be perfectly obvious
`
`in hindsight, but that is not the test for validity purposes. Rather, the test is it
`
`would have been obvious at the time of the invention to a person of ordinary
`
`skill who did not have the benefit of the inventor’s teachings. Moreover,
`
`sometimes it is the recognition of the problem to be solved, rather than the
`
`claimed solution, that was non-obvious.
`
`
`
`13
`
`

`
`
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`29. A reason to combine references might come from one of various
`
`sources. For instance, there might be a specific marketplace pressure or
`
`existing design demand that would motivate a person of ordinary skill in the
`
`art to make the combination. It does not matter what the source of the reason
`
`to combine is. What is important is clearly to identify a reason that a person
`
`of skill in the art at the relevant time would have appreciated. Otherwise, the
`
`combination is obvious only in hindsight.
`
`30. As an example, telephone service providers for many years have
`
`offered automatic call back services that can inform callers when a busy
`
`phone line frees up. I understand further that more recently, many firms have
`
`been manufacturing remote telepresence robots that allow remote users to be
`
`represented by a physical avatar at a distance. I am also informed that some
`
`of these robots are set up for multiple users to share. That does not
`
`necessarily mean, however, that it is obvious to equip a remote telepresence
`
`robot with an automatic call back-like service to alert unsuccessful operators
`
`that a robot frees up. It would not be sufficient that both robots and phones
`
`work over the Internet. Nor would it be sufficient to say merely that the
`
`combination would have provided the benefit that the invention says it
`
`provides. I understand rather that there has to be some set of facts – apart
`
`from the teachings of the patent itself – to provide the glue to combine the art
`
`
`
`14
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`

`
`
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`in the manner of the claims. One cannot simply put together pieces of art like
`
`a jigsaw puzzle using the patent as the picture on the puzzle box lid. That is
`
`impermissible hindsight.
`
`31.
`
`I understand that it can also be pertinent whether there was a
`
`reason in the art not to make the claimed combination. It could be that a
`
`person of ordinary skill would have considered the combination difficult to
`
`make. For example, some phones have microprocessors and some have
`
`cameras. That does not necessarily mean that it would be obvious to a person
`
`of ordinary skill in the art to make a phone having a microprocessor adapted
`
`to control the operations of the camera or processes image information. If a
`
`person of skill in the art would have considered it a real challenge to make a
`
`microprocessor control a camera in the manner of the claims, then the
`
`combination might not have been obvious. I understand that is true even
`
`when the technique for improving the prior art was known, provided that the
`
`actual application of the technique was beyond the technical ability of a skilled
`
`artisan at the relevant time.
`
`32.
`
`I understand that another situation when a claimed combination
`
`is one that conventional wisdom would hold was impractical or otherwise
`
`unattractive. For example, in an invention relating to a user interface for a
`
`computerized trading system having predefined on-screen data entry tools
`
`
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`15
`
`

`
`
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`such as a graphical keyboard, a menu, and a calculator, it may not be obvious
`
`to include a handwriting recognition system if people working in the field
`
`believed such systems to be impractical. That could be true even if on-screen
`
`handwriting recognition systems were well-known. Trading may require a
`
`very high-speed, low error rate user interface. If handwriting recognition had
`
`already been tried and in the art and found wanting, that could support the
`
`conclusion that a person of skill in the art would not have had reason to
`
`include such a slow data entry means in a combination of prior art.
`
`C.
`
`The Level of Skill in the Art
`
`33.
`
`I am informed that obviousness is to be judged from the
`
`perspective of a person of ordinary skill, not the perspective of an expert.
`
`Even if the invention would have been obvious to the brightest minds in the
`
`field, that does not render it unpatentable. I understand that highly educated
`
`and trained individuals know that more and more inventions are obvious to
`
`them. On the other hand, individuals with little education or training would
`
`have more difficulty in making connections and therefore fewer inventions
`
`would be obviousness to them.
`
`D. Objective Indicia
`
`34. Finally, I am informed that one should take into account any
`
`objective evidence that suggest that the invention may have been obvious or
`
`
`
`16
`
`

`
`
`
`nonobvious. For instance, if many different inventors came up with the same
`
`combination around the same time, that may suggest that it was an obvious
`
`combination to make. On the other hand, if the elements of the invention
`
`were around for a long time without anyone making the combination, that is
`
`an objective fact suggesting that the combination may not have been so
`
`obvious. As an example, if the benefits of a combination skin treatment were
`
`known for a decade before anybody in the art tested it for shelf stability, the
`
`time lapse may suggest that a shelf-stable preparation of the treatment was
`
`not obvious.
`
`35.
`
`I understand that there is no exhaustive list of objective factors. I
`
`understand that courts have considered the commercial success of the
`
`invention to prove nonobviousness, because it is likely that people of skill in
`
`the art would have been highly motivated to make the combination had it
`
`been obvious. If many in the industry have tried and failed to make a
`
`particular combination, or if the combination fulfilled a long-felt need, these
`
`facts may also tend to prove the invention was nonobvious. As another
`
`example, if a well-resourced corporation, preeminent in the relevant field,
`
`took two years to develop a product with the claimed combination, that could
`
`tend to prove nonobviousness. Industry skepticism that would have
`
`discouraged the combination might also suggest nonobviousness.
`
`
`
`17
`
`

`
`
`
`36.
`
`I am informed that the ultimate purpose of the objective indicia
`
`prong is to act as a check on hindsight bias. Knowing that the inventor
`
`succeeded in making the patented invention, a fact finder might develop a
`
`hunch that the claimed invention was obvious, and then construct a selective
`
`version of the facts that confirms that hunch. To avoid that trap, it is
`
`important to take into account any observable objective considerations that
`
`might tend to show that what looks in hindsight to have been “common sense”
`
`was really a nonobvious advance in the art.
`
`III. OPINION
`
`A. Background of the Technology
`
`1.
`
`The History of the Tablet Computer
`
`37. While the idea of the tablet computer was featured on the Star
`
`Trek series as early as 1966, the first tablet computer prototype, Dynabook,
`
`was shown by Alan Kay in 1972.
`
`Star Trek: PADD, 1966
`(Source: ZDNet: The History of Tablet Computer)
`
`
`
`Alan Kay: Dynabook, 1972
`(Source: ZDNet: The History of Tablet Computer)
`
`
`
`
`
`18
`
`

`
`
`
`
`
`38. An early entry in the tablet computer world was GRiD Systems.
`
`GRiD introduced the GRiDPad to the market in 1989. An executive at GRiD, Jeff
`
`Hawkins, later founded Palm Computing, the company that popularized the
`
`PDA in late 1990’s.
`
`39. Tablet computers starting to appear on the market starting in the
`
`90’s with the introduction of the NCR 3125 in 1991, the IBM Thinkpad 700T in
`
`1992, the Fujitsu 325 Point in 1993, the Apple Newton MessagePad in 1993,
`
`and the Fujitsu Stylistic 500 in 1994. Ex. 2023 at p. 2, ZDNet: The History of
`
`Tablet Computers.
`
`
`GRiD GRiDPad, 1989
`
`
`NCR 3125, 1991
`
`IBM ThinkPad 700T,
`1992
`
`
`
`Fujitsu 325 Point , 1993
`
`
`
`
`Apple Newton, 1993
`
`
`Fujitsu Stylistic
`500,1994
`
`
`
`
`
`19
`
`

`
`
`
`40. Among all the early tablet computing companies, Fujitsu would
`
`grow to dominate the tablet computer market in the second half of the 90’s,
`
`from 1996 to 2000. Based on ZDNet’s History of Tablet Computers, Pen
`
`Computing Magazine and IDC, by 1998 Fujitsu would own 55% of the
`
`worldwide market share. Ex. 2024, Pen Computing at p. 2. I was fortunate
`
`enough to be part of this tablet computing history from 1997 to 1999, when I
`
`was the Vice-President of Engineering for Fujitsu who was responsible for
`
`these Fujitsu tablets.
`
`41. Fujitsu introduced the Fujitsu Stylistic 1000 in 1996, which made
`
`history when it was used by NASA during the 1997 Columbia Space Shuttle
`
`mission. The Fujitsu Point 510 was introduced in 1997, and the Stylistic 1200
`
`and 2300 were introduced in 1997 and 1999 respectively.
`
`Fujitsu Stylistic 1000,
`1996
`
`
`
`
`
`
`Fujitsu Point 510, 1997
`
`
`Fujitsu Stylistic 1200,
`1997
`
`42. Unlike the iPad or other tablets that we are familiar with today,
`
`these tablets in the 1990’s and early 2000’s are specialized machines, focusing
`
`on vertical markets such as healthcare, construction, field service and retail. In
`
`
`
`20
`
`

`
`
`
`Ex. 2024 at p. 1, Pen Computing Magazine described that “Unlike office
`
`systems which can be just about any size or shape as long as they fit on or
`
`under the desk, handhelds are highly optimized tools where form follows
`
`function.” And, “This is not to say that vertical market customers do not seek
`
`to keep their field force computing equipment up-to-date—new technology
`
`often has a direct impact on productivity—but it must not come at the cost of
`
`changing shapes and designs simply for the sake of it. Fujitsu Personal
`
`Systems, the undisputed market share leader in pen tablets, knows that.”
`
`43. According to ZDNet: The History of Tablet Computers (Ex. 2023 at
`
`p. 3), the next milestone on the tablet computer was the introduction of
`
`Windows XP Tablet PC in 2002, and a new wave of tablet PCs that were
`
`introduced by companies like Fujitsu, HP Compaq, Toshiba, etc. in late 2002.
`
`44. This piece of history is relevant because the Liebenow patent was
`
`filed in April of 2002, just prior to the introduction of the Window XP Tablet
`
`PC in 2002. Id. at p. 3. Also note that Apple iPad, the product that popularized
`
`the home tablet market as we know it today was not introduced until 2010, so
`
`I do not include iPad in this brief history.
`
`2.
`
`The History of Gaming Devices
`
`45. Gaming is not new; it is probably as old as the civilization. People
`
`were playing board games thousands of years ago.
`
`
`
`21
`
`

`
`
`
`46. Electronic handheld gaming was first introduced in late 1970s.
`
`Mattel introduced the first LED-based handheld gaming device in 1977.
`
`Nintendo started the Game & Watch Series in 1980, and in 1989 Nintendo’s
`
`Game Boy was a big market success. Ex. 2025, Endgadget, A Brief History of
`
`Handheld Video Games at pp. 1-3.
`
`47.
`
`In the 1980s and 1990s, many companies such as Atari, NEC, Sega,
`
`Bondai and others attempted to enter the handheld gaming market but with
`
`limited success. Nintendo remained the leader in the handheld gaming
`
`industry throughout these two decades. Id. at pp. 3-7.
`
`
`Mattel’s Handheld, 1977
`(Source: Ex. 2025, Engadget: A Brief
`History of Handheld Video Games)
`
`Nintendo’s Game &
`Watch Series, 1980-
`1991
`
`Sega Game Gear, 1990
`
`
`
`Atari Lynx, 1989
`
`
`
`22
`
`
`
`
`
`
`Nintendo Game-Boy,
`1989
`
`
`Nintendo Game Boy
`Color, 1998
`
`

`
`
`
`48. Nintendo’s leading position in the handheld market extended into
`
`the new millennium. In 2001, Nintendo introduced another blockbuster, the
`
`Nintendo Game Boy Advance (GBA), with the follow-up GBA SP in 2003. Other
`
`companies such as Nokia, Tapwave (the company I founded in 2001), and
`
`others tried to enter the handheld gaming market in early 2000s with
`
`minimum success. Nokia tried to have a piece of the handheld market by
`
`introducing the N-Gage, a phone with gaming capability, in 2003. However,
`
`the N-Gage was not successful on the market. Id. at pp. 5-7, Ex. 2026, Laptop
`
`Magazine, 25 Worst Gadgets Flops of All Time.
`
`
`
`
`
`Nintendo Game Boy Advance
`(GBA)
`
`Nokia N-Gage, 2003
`
`49.
`
`I believe the handheld gaming history above is relevant because
`
`the’245 patent claims priority to a parent application filed in October of 2003.
`
`My opinion in this proceeding is through the lens of the prior art in handheld
`
`history prior to October 2003.
`
`
`
`23
`
`

`
`
`
`3.
`
`The History of the Touchscreen for Gaming
`
`50. The first capacitive touchscreen technology was described by E.A.
`
`Johnson in 1965. Ex. 2027 at p. 2, Wikipedia entry re: Touchscreen. The first
`
`resistive touchscreen was created by Dr. Sam Hurst in 1971. Ex. 2028, History
`
`of the Touch-Screen at p. 1.
`
`51. Twenty years after the first introduction of touchscreen
`
`technology, in 1985, Sega introduced the Sega Graphic Board tablet controller
`
`for the Sega SG-1000 console in Japan. This was an external peripheral for the
`
`console. Ex. 2029, Touch Controls at p. 2.
`
`52. Sega was the first company trying to use a touchscreen for a
`
`handheld gaming device in early-mid 1990s. However, the project was
`
`scrapped and the product was not commercially released to the market. Ex.
`
`2029, Touch Controls at p. 2. Five to seven years later, Tiger Games.com was
`
`the first company to officially launch a handheld gaming device incorporating
`
`a touchscreen, in 1997. However the device was not a commercial success. Id.
`
`at p. 2.
`
`53.
`
`It was in 2004, about 40 years after E. A. Johnson described the
`
`capacitive touchscreen technology, and almost thirty years after the filing of a
`
`resistive-technology patent by Dr. Hurst, that Nintendo introduced the
`
`Nintendo DS with a touchscreen. Wikipedia states that “Touchscreens would
`
`
`
`24
`
`

`
`
`
`not be popularly used for video games until the release of the Nintendo DS in
`
`2004.” Ex. 2027, Wikipedia re: Touchscreen at p. 3.
`
`Tiger El