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. IPR2015-00396
`Patent 7,218,313
` ____________
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`
`
`SUPPLEMENTAL DECLARATION OF DR. GREGORY F. WELCH
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`
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`SCEA Ex. 1042 Page 1
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`
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`____________
`
`Case No. IPR2015-00396
`Patent 7,218,313
` ____________
`
`
`
`SUPPLEMENTAL DECLARATION OF DR. GREGORY F. WELCH
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`
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`
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`SCEA Ex. 1042 Page 1
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`I, Gregory F. Welch, hereby declare the following:
`1.
`I have been asked to respond to certain issues raised by Patent Owner
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`(“PO”) and their experts, Dr. Karon MacLean and Mr. Peng Lim, in Patent Owner
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`Aplix IP Holdings Corporation’s Response to the Petition dated August 27, 2015
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`(“Paper No. 15”). All of my opinions expressed in my original declaration dated
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`December 23, 2014 (Ex. 1013) remain the same. I have reviewed the following
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`additional materials in connection with preparing this supplemental declaration:
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`Paper No. 11, Decision Institution of Inter Partes Review dated June
`22, 2015;
`Paper No. 15, Patent Owner Aplix IP Holdings Corporation’s
`Response to the Petition dated August 27, 2015;
`Ex. 2007, Declaration of Dr. Karon MacLean dated August 27, 2015;
`Ex. 2009, Declaration of Peng Lim dated August 27, 2015;
`Ex. 2025, Elo Touch Solutions: Tyco Electronics Introduces the
`Industry's First Multi-Touch Gestures Technology
`for Analog
`Resistive Touchscreens, December 4, 2008;
`Ex. 2030, PCMag.com review: Fingerworks iGesture Pad, February
`3, 2004;
`Ex. 2049, Certified English Translation of Japanese Unexamined
`Patent No. 2002-77357 to Ishihara et al. by Patent Translations, Inc.;
`Ex. 1028, U.S. Patent No. 5,181,030 to Itaya et al.;
`Ex. 1029, James Orr, FingerWorks Announces the iGesture Pad – A
`mousepad with a brain., Fingerworks Inc. dated October 22, 2001,
`http://web.archive.org/web/20020426094703/http://www.fingerworks.
`com/press_release_2.htm (accessed 11/19/2015);
`Ex. 1030, Sally McGrane, No Press, No Stress: When Fingers Fly,
`The
`New
`York
`Times,
`January
`24,
`2002,
`http://www.nytimes.com/2002/01/24/technology/no-press-no-stress-
`when-fingers-fly.html (accessed 11/19/2015);
`Ex. 1031, SK. Lee, W. Buxton, K.C. Smith, A Multi-Touch Three
`Dimensional Touch-Sensitive Tablet, ACM CHI ’85 Proceedings,
`April 1985, pp. 21-25;
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`1
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`SCEA Ex. 1042 Page 2
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`I.
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`Ex. 1032, Alan Freedman, The Computer Desktop Encyclopedia,
`Amacom, 1996 pp. 869-870;
`Ex. 1033, Greg Welch and James P. Williams. The easy chair: A
`microprocessor-controlled wheelchair for children with muscular
`disorders. Purdue University, E.E.T. 490/491 Senior Design Project,
`Final Report, May 1986;
`Ex. 1034, Greg Welch. The infrared touch-pad. Purdue University,
`E.E.T. 421 Report, February 26, 1986;
`Ex. 1035, Greg Welch and James P. Williams. The easy chair: A
`microprocessor-controlled wheelchair for children with muscular
`disorders. Purdue University, E.E.T. 490/491 Senior Design Project,
`Preliminary Report, December 1985;
`Ex. 1036, James Williams and Greg Welch. The pressure sensitive
`touch-pad. Purdue University, E.E.T. 454 Project Report, April 30,
`1985;
`Ex. 1037, Transcript of the deposition of Dr. Karon MacLean taken in
`IPR2015-00396, IPR2015-00476, and IPR2015-00533, November 20-
`21, 2015;
`Ex. 1051, AMD Élan™SC400 and ÉlanSC410, Advanced Micro
`Devices, Inc., Publication No. 21028, Rev. B, December 1998;
`Ex. 1052, ARM610 Datasheet, Advanced RISC Machines Ltd,
`Document Number: ARM DDI 0004D, August 1993;
`Ex. 1053, Acorn Computers Limited. Acorn RISC Machine (ARM)
`IOC Datasheet, September 1986;
`Ex. 1054, Advanced RISC Machines (ARM). ARM250 Datasheet,
`August 1992; and
`Ex. 1055, Super Mario 64TM Instruction Booklet, Nintendo Co., Ltd.
`1997.
`
`OPINION
`A. Multi-Touch Sensing Was Well-Known in 2003
`2.
`In her declaration dated 27 August 2015, Dr. MacLean offers various
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`opinions regarding touch sensing as related to the combination of Pallakoff and
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`Ishihara offered in the ‘396 Petition and in my previous declaration (Ex. 1013).
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`See Ex. 2007 at ¶¶ 73-83. In particular, Dr. MacLean opines that Pallakoff
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`SCEA Ex. 1042 Page 3
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`“requires simultaneous activation of multiple modifier buttons” and that “Ishihara
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`does not teach multi-touch as an interaction technique that its touch-screen is
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`intended for.”1 Id. at ¶¶ 73-74. Dr. MacLean then opines that a person of ordinary
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`skill in the art would understand that the two types of touchpad technologies taught
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`by Ishihara, including resistive and capacitive touchpads, would only sense single
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`touches and would therefore be incapable of detecting simultaneous activation of
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`multiple modifier buttons as required by Pallakoff. Id. For reasons discussed
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`below, I respectfully disagree.
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`3. Dr. MacLean seems primarily focused on alleged issues in three areas
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`related to the touch sensing aspects of the combined teachings of Ishihara and
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`Pallakoff,
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`including: (1) the popularity of
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`interaction
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`techniques such as
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`“multitouch,” (2) specific hardware
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`technology approaches, (3) commercial
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`availability of the technology. I respectfully disagree with Dr. MacLean on all
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`points related to each of these areas.
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`4. With respect to the first point, it is important to distinguish between the
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`affordances of the technology (hardware) and application-specific interaction
`
`
`1 There appear to be places where Dr. MacLean refers to touchpads as touchscreens. See
`e.g., Ex. 2007 at ¶ 74. This introduces confusion because a touchscreen refers to a
`touch-sensitive display device while a touchpad refers to a touch-sensitive panel
`that is not a display. See e.g., Ex. 1032, Freedman at pp. 869-870, which would
`comport with the understanding of a skilled artisan at the time. To be clear, the
`Pallakoff and Ishihara combination relies on the touch panel switch 37 (i.e.,
`touchpad) on the back of Ishihara’s handheld electronic device – not on a
`touchscreen. Ex. 1013 at ¶¶ 52-53.
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`
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`3
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`SCEA Ex. 1042 Page 4
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`techniques (software) that make use of that technology. For example, Dr.
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`MacLean states “Multitouch variants and interaction techniques that exploited
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`them attained substantial visibility by the mid 1980’s (e.g., Ex. 2012, Buxton, at p.
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`1), and appeared in some commercial settings, e.g. air traffic control terminals
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`even earlier, in the 1960’s (Ex. 2017, Walker, p. 413).” Ex. 2007 at ¶37 (emphasis
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`added); “The iPhone, responsible for massively popularizing multitouch input in
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`handhelds, was released in 2007.” Id. at ¶39 (emphasis added); and “No multi-
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`touch gestures are alluded to (and indeed these would be unusual, if not unheard
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`of, in 2003).” Id. at ¶74 (emphasis added). The “multitouch” and “multi-touch”
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`Dr. MacLean refers to are very distinctive techniques for using fingers on touch
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`surfaces or displays to interact with data on a device. Common examples would
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`include the multitouch gesture techniques employing one or more fingers to resize
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`or rotate photos directly on the display of a device. To realize such interaction
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`techniques, the device must of course support the sensing of multiple simultaneous
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`discrete and continuous touch locations. As I discuss below, hardware has had the
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`ability to sense multiple simultaneous touch locations for long before the ‘313
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`Patent.
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`5. Dr. MacLean appears to conflate the ability of hardware to detect
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`multiple simultaneous touches with the interaction techniques provides by software
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`to interpret complex multi-finger gestures. Ex. 2007 at ¶ 74 (“No multi-touch
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`SCEA Ex. 1042 Page 5
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`gestures are alluded to (and indeed these would be unusual, if not unheard of, in
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`2003).”); Ex. 1037, MacLean Tr. at 243:13-18 (“What kind of multi-finger
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`gestures would describe the level of multi-touch you refer to? A. Gestures where
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`multiple fingers were definitively being sensed at the same time. The position of
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`multiple sensors -- of multiple fingers were being sensed at the same time.”) For
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`example, Dr. MacLean relies on a Tyco Electronics press release to show that
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`resistive touchpads were not available until 2007. Ex. 2007 at ¶ 76. However, this
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`press release describes the Tyco product’s ability to interpret multi-touch gestures
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`as the innovative feature. Ex. 2025, Tyco Electronics Introduces the Industry’s
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`First Multi-Touch Gestures Technology for Analog Resistive Touchscreens, (“Tyco
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`Electronics Elo TouchSystems, a global leader in touch technology, has developed
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`a proprietary technology that enables realtime, two finger gesture recognition on
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`analog resistive touchscreens. The new technology, named Resistive Gestures,
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`provides a richer user experience via intuitive gestures which until now had been
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`possible only with higher end, costlier technologies such as projected capacitive.”)
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`(emphasis added).
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`6.
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`In order to implement the back surface touch panel of Ishihara on the
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`device of Pallakoff, the touch panel need not interpret multi-touch gestures as
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`implied by Dr. MacLean. Rather, all that would be needed is a surface capable of
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`5
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`SCEA Ex. 1042 Page 6
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`detecting simultaneous multiple touches (e.g., first and second modifier buttons),
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`which, as discussed below, was well known in the art at the time of the ‘313 patent.
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`7.
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`Focusing on the specific hardware technology approaches (the second
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`point above), touch sensing in general can be accomplished via a variety of
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`mechanisms, including what are commonly called capacitive and resistive
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`methods. A person of ordinary skill in the art at the time would have been fully
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`aware of these and other common approaches (I provide some examples below)
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`and would have been capable of choosing the approach best suited to their
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`circumstances. For example, during my senior year of undergraduate studies at
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`Purdue University (1985-1986), when I was a person of considerably less
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`experience than a person of ordinary skill at the time of the ‘313 Patent, I co-
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`developed both resistive and optical touch pads as part of a senior project to
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`develop a computer-controlled wheelchair for children with muscular disorders
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`such as Cerebral Palsy. See, Exs. 1033, 1034, 1035, 1036. Our resistive touch pad
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`for example used a two-dimensional array of conductive foam squares that
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`behaved as variable resistors, and multiplexing circuitry to repeatedly scan the
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`rows and columns, looking for decreased resistance (an indication of pressure on a
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`square). For the final prototype we used a two-dimensional optical approach to
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`avoid issues with the presence of saliva common to some of the children: In our
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`final report we stated “The current method of using infrared light beams, was
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`decided upon for various reasons. First of all, other touch-pad schemes such as
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`capacitive touch sensing, and pressure sensitive membrane type keypads, are all
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`open to problems because they are affected by water, or saliva in this case.
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`Secondly (and most important), breaking a light beam requires the least amount of
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`pressure of any method studied.” Ex. 1033 at p. 9 (emphasis added). So my
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`undergraduate project partner and I—both with considerably less skill than a
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`person of “ordinary skill” in the context of this case—knew about capacitive,
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`resistive, and optical approaches and were capable of choosing the approach that
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`best suited our circumstances.
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`8.
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`Indeed, there is no question in my mind that such basic input
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`technology would have been known to person of ordinary skill at the time of the
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`‘313 Patent, as defined in my original declaration. Ex. 1013 at ¶ 36. Such a
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`person of ordinary skill would likely have seen such technology mentioned in a
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`lecture or book in their undergraduate studies; even more likely if they had a
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`“working knowledge of computers - including handheld computing devices, and
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`their processing, storage, hardware—including input devices, and software;” and
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`certainly if they had “two to four years of experience (or, with a graduate degree in
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`the above-stated fields, one to two years of experience) with designing and
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`developing human-computer interfaces and the associated technologies.” Id.
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`SCEA Ex. 1042 Page 8
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`9. Multitouch sensing technology was known/taught at least as early as
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`the timeframe of my senior project above (1985-1986). For example, in April of
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`1985 Lee, Buxton, and Smith presented their paper “A multi-touch three
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`dimensional touch-sensitive tablet” at the ACM SIGCHI Conference on Human
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`Factors in Computing Systems in which they presented their prototype “fast
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`multiple-touch-sensitive input device.” See Ex. 1031, Lee et al. The prototyped
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`tablet device uses a capacitive touchscreen to sense a number of simultaneous
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`points of contact. Id. at p. 21 (“The transducer that we have developed is a touch-
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`sensitive tablet; that is, a flat surface that can sense where it is being touched by the
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`operator's finger. This in itself is not new. Several such devices are commercially
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`available from a number of manufacturers (see Appendix A). What is unique about
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`our tablet is that it combines two additional features. First, it can sense the degree
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`of contact in a continuous manner. Second, it can sense the amount and location of
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`a number of simultaneous points of contact.”). In the paper they stated “But why
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`do we want multiple point sensing? A simple example would be if we had a
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`template placed over the tablet which delimited three regions of 9 cm by 2 cm.
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`Where we touch each region could control the setting of a parameter associated
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`with each region. If we wanted to simultaneously adjust all three parameters, then
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`we would have to be able to sense all three regions. An even easier example is
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`SCEA Ex. 1042 Page 9
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`using the tablet to emulate a piano keyboard that can play polyphonic music.” Id.
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`at p. 21 (emphasis added).
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`10. Dr. MacLean also asserts that “In 2003, resistive touchpads were not
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`commonly used to support sensing of multiple touches,” and “While the “resistive”
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`method can be made to work in a multitouch configuration, and commonly is used
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`this way today, this advance entered engineering practice and made first
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`appearances in products around 2007-2008.” Ex. 2007 at ¶76. I am unsure why
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`Dr. MacLean feels “advance entered engineering practices” and commercial
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`products are required to teach a person of ordinary skill how to practice the alleged
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`invention of the ‘313 Patent, but as indicated above I personally co-developed a
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`resistive touchpad while an undergraduate at Purdue University in 1985. I did not
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`have access to advance entered engineering facilities nor knowledge of such
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`practices. More generally, it appears Dr. MacLean was not aware of publically
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`available prior art in this area. For example, Dr. MacLean was apparently unaware
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`of U.S. Patent 5,181,030 to Itaya et al. (“Itaya”) titled Input System Including
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`Resistance Film Touch Panel and Pushed Position Detecting Device, and having
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`issued on January 19, 1993. Ex. 1028, Itaya. Itaya teaches “an input system
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`including a resistance film touch panel and a pushed position detecting device for
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`accurately detecting two or more positions pushed simultaneously with a
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`9
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`minimized number of leads.” Id. at 2:6-9 (emphasis added); see also, id. at Fig. 6
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`reproduced below:
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`
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`Id. at Fig. 6.
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`11. Additionally, the Liebenow reference (Ex. 1008), which is already of
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`record, teaches “utilizing resistive or capacitive touch pad technology” to sense the
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`positions of the user’s fingers (plural) that are simultaneously resting on or being
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`held in close proximity to the touch pad for the purpose of providing visual
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`feedback to the user on the display. Ex. 1008 at [0067] (“For example, wherein
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`the input device is comprised of a touch sensitive panel utilizing resistive or
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`capacitive touch pad technology, as discussed in the descriptions of FIGS. 3 and 9,
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`the touch sensitive panel may detect the position of the user's fingers while resting
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`on or being held in close proximity to its surface. Indicia showing the position of
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`the user's fingers relative to the keys of the input device may then be displayed, at
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`step 608, as part of the indicia displayed at step 602. As shown in FIGS. 15 and 16,
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`10
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`these indicia 710 may in one embodiment be comprised of representations 712 of
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`the user's fingers depicting the positions of the fingers relative to the keys of the
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`input device. Preferably, the finger representations 712 are lenticular or semi-
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`transparent and overlay the key representations 704 and other information 706
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`displayed on the display 708 such that the key representations 704 and information
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`706 remain viewable. Wherein the position of any of the user's fingers relative to
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`the keys of the input device changes, as, for example, while typing on the
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`keyboard, the digital information appliance may then sense the new finger position
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`(at step 610 of FIG. 14) and alter the displayed indicia (e.g., redisplay the finger
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`representations at step 608), accordingly.”).
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`12. The visual feedback concerning the positions of the user’s fingers is
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`shown in several figures including Figs. 15 and 16, which depict the overlaid
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`finger position representations 712 being displayed on the display 708:
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`11
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`SCEA Ex. 1042 Page 12
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`Id. at Fig. 16. All of these examples in Liebenow (Ex. 1008) teach multiple
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`“fingers,” “positions,” and “indicia” (all plural), including all of the cited text
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`above, and figures such as the flow chart in Fig. 14 and the graphical renderings in
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`Figs. 1, 7, 15, and 16.
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`13. Regarding capacitive touch pads, Dr. MacLean opines “Capacitive
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`multi-touch sensing was demonstrated in a laboratory context well before 2003.
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`However, capacitive multi touch sensing does not seem to have been available in
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`handheld-size formats by 2003 . . . .” Ex. 2007 at ¶ 82. Dr. MacLean appears to
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`have missed the prior art references already of record that demonstrate capacitive
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`multi touch sensing in handheld-size formats. Indeed, in addition to Liebenow,
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`two other references cited in my original declaration (and apparently not
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`considered by Dr. MacLean) demonstrate the contrary. For example, I cited to
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`U.S. Patent No. 5,543,588 to Bisset et al. (Ex. 1021) in my original declaration to
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`show that placing touchpads on the back of handheld devices has been well known
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`in the art since the 1990s. Ex. 1013 at ¶ 31. The touchpad described by Bisset is a
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`capacitive touchpad that can “can detect and report if one or more points are being
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`touched.” Ex. 1021 at 5:1-5.
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`14. Another example is U.S. Patent No. 7,088,342 to Rekimoto et al. (Ex.
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`1004), which I also described in my original declaration. Ex. 1013 at ¶¶ 41-42.
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`Rekimoto also describes a capacitive touchpad on the back of a handheld device,
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`12
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`such as a PDA, that can detect multiple simultaneous touches as shown in the
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`figure below:
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`
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`Ex. 1004 at Fig. 8; see also, id. at Fig. 4B, 4:45-52 (“When a finger touches the
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`concave 100 a on the back surface of the PDA 100, the capacitance between
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`adjacent electrodes of the first group 121 and the second group 122 varies due to
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`capacitive coupling between the finger touching the concave 100 a and the
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`adjacent electrodes of the first group 121 and the second group 122. A variation in
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`the capacitance is electrically measured to detect a touch and the touch position is
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`also found.”), Fig. 7C (reproduced below) and 8:7-23 (“The back-surface touch
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`sensor of the data processing terminal 200 can detect a plurality of positions
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`simultaneously. As shown in FIG. 7C, touch position pointers 213 and 214
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`corresponding-to the respective touch positions of a finger f2 of a left hand Lh and
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`a finger f3 of a right hand Rh on the back surface may be displayed with the data
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`processing terminal 200 held with a left hand Lh and a right hand Rh. When a
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`plurality of positions is touched simultaneously, a particular input operation may
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`be performed on the data processing terminal 200 so that the two touch positions
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`move apart in the respective arrow directions in FIG. 7C (or the reverse operation).
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`For example, when the data processing terminal 200 is operated so that the two
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`touch positions are moved apart, characters and graphics displayed may be
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`enlarged; and when operated so that the two touch positions are moved closer, the
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`characters and graphics may be reduced.”). See Fig. 7C included below:
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`
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`Id. at Fig. 7C.
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`15. As I discussed above, Lee also developed a prototype of a handheld
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`tablet device with a multi-touch touchscreen in 1985. Ex. 1031. These are just a
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`few examples of capacitive multi-touch sensing in handheld size formats that were
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`known before the ‘313 patent. As such, a person having ordinary skill in the art
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`would not have encountered any difficulties enabling the modified device of
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`14
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`Pallakoff to detect multiple simultaneous touches as this technology would have
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`been well within the background knowledge of a skilled artisan. Additionally, a
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`person of ordinary skill in the art at the time would have been fully aware of at
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`least the different technological approaches to sensing one or more fingers
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`described above, and would be capable of choosing the approach best suited to
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`their circumstances.
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`16. Finally, MacLean seems to believe that commercial availability of the
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`technology is a requirement to enable a person of ordinary skill at the time of the
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`‘313 Patent to practice the alleged invention. Dr. MacLean opines that “Capacitive
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`multi-touch sensing was demonstrated in a laboratory context well before 2003.
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`However, capacitive multi touch sensing does not seem to have available in
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`handheld-size formats by 2003; the earliest relevant commercial product was
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`released in early 2004, the Fingerworks’ iGesture Pad, which retailed briefly for
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`$189 before the company was acquired by Apple and its technology incorporated
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`into the iPhone. Ex. 2030.”2 Ex. 2007 at ¶82 (emphasis in original). However, it is
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`my understanding that a lack of evidence of commercial realization is irrelevant.
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`Many things are possible that are not commercialized for many reasons. The
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`relevant question is whether or not the various methods for touch sensing were
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`2 I note that Dr. MacLean relies the date of a product review as evidence of a 2004 release date for the
`iGesture Pad. Ex. 2030. However, the original press release for the iGesture Pad indicates that it
`was commercially available as early as November 2001. Ex. 1029; see also, Ex. 1030.
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`15
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`known to a person of ordinary skill and realizable at the time of the ‘313 Patent—
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`and they were.
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`B. Liebenow’s Input Controller is Compatible with the Devices of
`Pallakoff and Ishihara
`17. Regarding claim 4, Mr. Lim opines that Liebenow “is a tablet
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`computer similar to the typical architecture for personal computers such as laptops,
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`notebooks, and other similar personal computers.” Ex. 2009 at ¶ 171. Based on
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`this assumption, Mr. Lim further assumes that in 2003 an Intel or AMD processor
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`“are typically used in PC . . . architecture like Liebenow.” Id. at ¶ 172. And then
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`further assumes that “Liebenow controller/chipset is CPU specific. Since PC
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`architecture like Liebenow is Intel/AMD x86 based processor, Liebenow chipset
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`would only work with one of these CPUs.” Id. at ¶ 176. Based on the assumption
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`that Liebenow’s input controller would only work with an Intel/AMD x86 based
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`processor for a personal computer, Mr. Lim concludes that the mobile phones
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`described by Ishihara and Pallakoff would not support the input controller taught
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`by Liebenow. Id. at ¶¶ 174-175, ¶ 177.
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`18. Mr. Lim’s assumptions and resulting conclusions are incorrect on
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`multiple levels. First, nowhere does Liebenow support the notion that it is limited
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`to personal computers such as laptops and notebooks. Liebenow explicitly teaches
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`exemplary digital information appliances such as “electronic books, personal
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`digital assistants (PDAs) and portable information handling systems” and that “it is
`
`
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`16
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`SCEA Ex. 1042 Page 17
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`
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`desirable that appliance’s housing have a compact, hand-held form factor.” Ex.
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`1008 at [0002]. Therefore, Mr. Lim’s conclusion that the input controller
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`described by Liebenow would be inappropriate for the devices described by
`
`Pallakoff and Ishihara is unsupported by Liebenow.
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`19. Second, Mr. Lim’s assumption that an Intel/AMD x86 based processor
`
`would not work in anything other than a PC is also unfounded. For example,
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`AMD offered a family of embedded x86 processors for use with low-power
`
`devices in the 1990s. Ex. 1051, AMD Élan™SC400 and ÉlanSC410 at p. 1.
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`20. Finally, there were processor families that supported I/O controllers for
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`small, handheld devices, such as those described by Pallakoff and Ishihara, for
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`many years prior to the ‘313 Patent. One example is the ARM610 processor that
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`was developed in 1993 specifically for portable devices such as PDAs and
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`communication devices. Ex. 1052, ARM610 Datasheet at p. ii (“The ARM610 is
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`ideally suited to those applications requiring RISC performance from a compact,
`
`power efficient processor. These include: Personal computer devices e.g. PDAs . . .
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`Portable telecommunications . . . Data communications equipment”). The
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`ARM610 processors were “compatible with the ARM processor family and can be
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`used with ARM support chips, eg IO, memory and video.” Id. at p. 3 (emphasis
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`added). ARM has made such “IO” (input/output) support chips at least since 1986
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`(Ex. 1053, IOC Datasheet), and by at least 1992 AMD offered complete
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`
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`17
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`SCEA Ex. 1042 Page 18
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`“computer system on a chip” chips such as the ARM250 (Ex. 1054, ARM250
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`Datasheet) that included an input/output controller (IOC). Among other features,
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`the ARM250 offered a “Flexible I/O Controller,” a “Small footprint 160 PQFP
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`package,” and “Low power consumption,” and was “suitable for a wide range of
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`cost-sensitive embedded control, portable and consumer games applications –
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`particularly (but not only) those which require a video display.” Id. at p. 1.
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`21. As I opined in my original declaration, U.S. Patent No. 5,878,276 to
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`Aebli et al. (Ex. 1024) provides a further example of handheld devices using input
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`controllers as an interface between input elements and the microprocessor. Ex.
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`1013 at ¶34. Therefore, a person of ordinary skill would not have found
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`Liebenow’s disclosure of an input controller to be in any way incompatible with
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`the handheld devices described by Pallakoff and Ishihara.
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`C. Claim 11 is Obvious over Pallakoff, Ishihara, and Willner
`22. Regarding Claim 11, Mr. Lim opines “Willner teaches the ‘firing of
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`weapons, and provide[ing] controls of particular maneuvers of the game icons,
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`such as jumping, flying, and the like,’ he does not teach that these maneuvers
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`would cause the function of the first input elements (D-pad) to change.” Ex. 2009
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`at ¶ 153. Based on Mr. Lim’s opinion, PO concludes that the combination of
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`Pallakoff, Ishihara and Willner does not teach Claim 11. Paper 15 at pp. 44-45.
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`
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`18
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`SCEA Ex. 1042 Page 19
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`For the reasons discussed below, I respectfully disagree at least because Mr. Lim
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`and PO do not seem to consider the explicit teachings of Pallakoff.
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`23. As I opined in my original declaration, Willner demonstrates that it
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`would have been obvious map input elements of a first and second input assembly
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`to functions of a game application. Ex. 1013 at ¶¶ 73-74. Furthermore, a skilled
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`artisan would have appreciated that the primary feature of Pallakoff is the inclusion
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`of modifier keys that change the functions of face keys when actuated. Ex. 1006 at
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`Abstract (“Pressing a face-key without holding in any of the side-keys produces a
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`given character (or function). Pressing the same face-key while simultaneously
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`holding in a given combination of the side-keys can result in a different character
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`(or function).”) (emphasis added); [0322] (“This invention can be used to develop
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`devices that allow users to type characters, strokes, symbols, or entire words, or
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`generate functions—all on
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`the same device_simply by
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`typing different
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`combinations of keys and modifier buttons.”) (emphasis added). There would be
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`no reason for a person of ordinary skill and creativity to change the primary mode
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`of operation described by Pallakoff (i.e., using modifier keys to change the
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`functions mapped to face keys) when implementing a game application. This is
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`especially true given the fact that for many years prior to the ‘313 Patent, it was
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`extremely common for game applications to utilize different combinations of input
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`
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`19
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`SCEA Ex. 1042 Page 20
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`
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`elements to actuate different game functions. See e.g., Ex. 1055, Super Mario 64
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`Instruction Booklet at pp. 8-15.
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`D. Alternative Translation of Ishihara
`24. Counsel has informed me that PO has submitted an alternative
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`translation of the Ishihara reference as Ex. 2049. I have reviewed Ex. 2049 and
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`have found no substantive differences between it and Ex. 1007, which is the
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`translation of Ishihara submitted by Petitioner that I relied on in my original
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`declaration. See Ex. 1013. Therefore, all of my opinions with regard to Ishihara in
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`this declaration and in my original declaration remain the same regardless of the
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`translation that is used.
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`II. CONCLUSION
`25.
`I declare that all statements made herein of my knowledge are true, and
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`that all statements made on information and belief are believed to be true, and that
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`these statements were made with the knowledge that willful false statements and
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`the like so made are punishable by fine or imprisonment, or both, under Section
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`1001 of Title 18 of the United States Code.
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`
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`Date:
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`08 DEC 2015
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`____________________________
`By:
`Gregory F. Welch
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`20
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`SCEA Ex. 1042 Page 21
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