UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`
`v.
`
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`
`________________________
`
`
`
`Case No. IPR2015-00729
`
`Patent No. 7,280,097
`
`
`
`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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`
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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. IPR2015-00729
`
`Patent No. 7,280,097
`
`
`
`DECLARATION OF PENG LIM
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandra, VA 22313-145
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`Background & Qualifications .......................................................................... 1
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`Executive Summary .............................................................................. 1
`
`Education ............................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D. Materials Considered ............................................................................. 9
`
`Relevant Industry Experience ............................................................... 2
`
`Legal Framework ........................................................................................... 11
`
`A. Construing Claims ............................................................................... 11
`
`B. Obviousness ......................................................................................... 12
`
`
`I.
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`
`
`II.
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`
`
`1.
`
`2.
`
`3.
`
`4.
`
`Scope and Content of the Prior Art ........................................... 13
`
`Differences Between the Art and the Invention ....................... 14
`
`The Level of Skill in the Art ..................................................... 17
`
`Objective Indicia ....................................................................... 18
`
`
`III. Opinion .......................................................................................................... 19
`
`A. Background of the Technology ........................................................... 19
`
`Electronic Console Games ........................................................ 20
`
`1.
`
`2.
`
`Electronic Handheld Gaming .................................................... 22
`
`
`
`
`
`
`
`B.
`
`C.
`
`Person Having Ordinary Skill in the Art ............................................. 25
`
`The ’097 Patent ................................................................................... 25
`
`D. Claim Construction.............................................................................. 28
`
`ii
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`
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`
`
`1.
`
`2.
`
`
`3.
`
`4.
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`All Independent Claims: “hand-held host device” ................... 28
`
`All Independent Claims: an “input controller [being] configured
`to generate an input signal . . . to control execution of the one or
`more functions of the software application. . . .” ...................... 30
`
`Claims 2, 16, 28 and All Dependents: an “input element . . . on
`[a] surface[]” ............................................................................. 31
`
`Dependent Claims 5, 19, and 30: “configured to optimize a
`biomechanical effect of the human user’s thumb and fingers.”32
`
`Summary of Prior Art Analyzed In Relation to Claims 1-4, 7, 8, 13,
`14, 16-18, 21, 23-29, 31, and 34-38 .................................................... 32
`
`1. WO 2004/007041 to Mollinari et al. (“Mollinari”) .................. 32
`
`2.
`
`U.S. Patent No. 5,903,257 to Nishiumi et al. (“Nishiumi”) ..... 34
`
`E.
`
`
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`F. Mollinari in View of Nishiumi Does Not Render Obvious Any Claim
`of the ’097 Patent ................................................................................ 35
`
`1.
`
`2.
`
`Nishiumi is not analogous art ................................................... 35
`
`Nishiumi Should Not be Combined With Mollinari ................. 37
`
`G.
`
`3.
`
`Even if combined, Mollinari and Nishiumi would not teach the
`limitations of the independent claims of ’097 Patent ............... 37
`
`Shima Does Not Anticipate Claim 1, 5, 9, 19, and 30 of the ’097
`Patent ................................................................................................... 44
`
`
`1.
`
`2.
`
`Shima Does Not Anticipate Independent Claim 1 of the ’097
`Patent ......................................................................................... 45
`
`Shima Does Not Anticipate Dependent Claims 5, 19 and 30 ... 51
`
`
`H. Mollinari In View of Nishiumi in Further View of Tu does Not
`Render Obvious Claims 6, 22, and 32 ................................................. 56
`
`iii
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`1. Tu is not analogous to the ’097 Patent ...................................... 56
`
`2. Tu should not be combined with Mollinari and Nishiumi ........ 59
`
`I.
`
`Kerr In View of Lum Would Not Teach the Limitations of
`Claims 10-12 of the ’097 Patent .......................................................... 62
`
`
`IV. Conclusion ..................................................................................................... 66
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`
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`
`
`iv
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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 startups. I served as a member of the board of directors, CEO and
`
`senior-level executive in mobile computing, consumer electronics, wireless
`
`communications, green technology, instrumentations and ODM (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. Some of
`
`these products helped my companies capture number-one worldwide market shares
`
`in PDA, pen-based computing and handheld operating systems, and others are
`
`within the top ten in the wireless device and portable computer industries.
`
`3. My expertise is in breakthrough new product development,
`
`engineering management, ODM, global partnerships, and domestic and
`
`international product/business development.
`
`4. My educational background, relevant industry experience and
`
`qualifications are summarized as follows.
`
`B.
`
`5.
`
`Education
`
`I received my BS and MS in Electrical Engineering from the
`
`University of Windsor in Canada in 1985 and 1987 respectively. I received a
`
`
`
`1
`
`
`
`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.
`
`
`
`2
`
`
`
`Sample products from Dauphin Technologies
`
`
`
`Dauphin DTR-1 with keyboard
`(1993)
`(Source: http://www.oldcomputers.net/dauphin-dtr-1.html)
`
`
`
`
`
`Dauphin DTR-1 (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-selling computers in
`
`the world. These products include the Z-Note GT, the 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)
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`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 Z-Note GT (95)
`(Source: http://www.noet.at/sss/zds/ notebooks/9.htm)
`
`
`
`
`
`Zenith CruisePad (1995)
`(Source:http://www.pcmag.com/slideshow_viewer/0,3253,l
`=25552&a=25552&po=11,00.asp)
`
`
`10. From 1996 to 1997, I served as Engineering Platform Director at
`
`Texas Instruments. At TI, I was responsible for product development and
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`engineering of the TM6160, the first notebook computer to include a high-speed
`
`56Kbps internal modem with X2 technology, and one of the world’s first with an
`
`MMX 166 MHz Pentium CPU.
`
`
`
`4
`
`
`
`
`
`Texas Instruments TravelMate 5000/6000
`(1995/1997)
`(Source: https://www.youtube.com/watch?v=w6IVhfF5kWo)
`
`
`
`
`
`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 design and engineered best-selling pen-
`
`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.
`
`
`
`5
`
`
`
`Sample products from Fujitsu
`
`
`
`
`Fujitsu Stylistic Point 510/1600
`(1997, 1999)
`(Source: http://www.fujitsu.com/au/Images/Fujitsu-Tablet-PCs-
`Whitepaper_tcm98-874981.pdf)
`
`
`
`
`
`
`
`
`Fujitsu Stylistic 1200/2300
`(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
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`Worldwide Product Development for Palm Computing, the world’s leading
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`company in PDA and handheld devices from 1999 to 2001. At Palm, I was
`
`responsible for directing the entire life cycle of product development and
`
`engineering for Palm hardware and software products, including handheld and
`
`wireless devices as well as operating systems and application software.
`
`13. While at Palm, I helped capture 77.5% of the worldwide handheld
`
`operating systems and PDA market shares. Ex. 2011, 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.
`
`
`
`6
`
`
`
`Product examples from Palm, Inc.
`
`
`
`
`
`
`
`
`
`Palm M100/M125
`(2000)
`
`Palm Inc Palm
`IIIc (2000)
`
`
`
`Palm Inc. Palm
`V/Vx (1999)
`
`
`
`
`Palm Inc. M505
`(2001)
`
`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 World’s 2004 Next Gear
`
`Innovations Award, Popular Science’s BOWN (Best of What’s New) Award, and
`
`many other prestigious awards.
`
`
`
`7
`
`
`
`
`
`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 was also on the
`
`Board of Advisors for Inventec Appliances (public Taiwan Exchange), a multi-
`
`billion-dollar handheld device and laptop computer manufacturing company, from
`
`2007 to 2010. Inventec Appliances manufactures handheld and portables devices
`
`for various Fortune 500 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.
`
`
`
`8
`
`
`
`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. Materials Considered
`
`19.
`
`I have been retained by the patent owner as an expert in this
`
`proceeding. I have reviewed the Petition and the following documents:
`
`
`
`Decision Instituting Inter Partes Review of U.S. Patent No.
`7,280,097
`
`Exhibit 1001 U.S. Patent 7,280,097
`
`Exhibit 1003 WO 2004/007041 to Mollinari et al. (“Mollinari”)
`
`Exhibit 1004 U.S. Patent No. 5,903,257 to Nishiumi et al. (“Nishiumi”)
`
`
`
`9
`
`
`
`Exhibit 1005 U.S. Patent Publication No. 2004/0139254 to Tu et al. (“Tu”)
`
`Exhibit 1006 U.S. Patent Publication No. 2002/0198030 to Shima
`(“Shima”)
`
`Exhibit 1007 U.S. Patent Publication No. 2004/0137983 to Kerr et al.
`
`Exhibit 1008 U.S. Patent Publication No. 2005/0221894 to Lum et al.
`
`Exhibit 1009
`
`Expert Declaration of Dr. Gregory F. Welch
`
`Exhibit 2011
`
`PDA sales soar in 2000,
`http://cnnfn.cnn.com/2001/01/26/technology/handheld, January
`26, 2001
`
`Exhibit 2012 Wikipedia entry on “Pong” at
`https://en.wikipedia.org/wiki/Pong, accessed 10/31/2015
`
`Exhibit 2013 Wikipedia entry on “Atari 2600” at
`https://en.wikipedia.org/wiki/Atari_2600, accessed 10/31/2015
`
`Exhibit 2014 Wikipedia entry on “Intellivision” at
`https://en.wikipedia.org/wiki/Intellivision, accessed 10/31/2015
`
`Exhibit 2015 Wikipedia entry on “Nintendo Entertainment System” at
`https://en.wikipedia.org/wiki/Nintendo_Entertainment_System,
`accessed 10/31/2015
`
`Exhibit 2016 Wikipedia entry on “Sega Genesis” at
`https://en.wikipedia.org/wiki/Sega_Genesis, accessed
`10/31/2015
`
`Exhibit 2017 Wikipedia entry on “PlayStation” at
`https://en.wikipedia.org/wiki/PlayStation, accessed 10/31/2015
`
`Exhibit 2018 Wikipedia entry on “Xbox” at
`https://en.wikipedia.org/wiki/Xbox, accessed 10/31/2015
`
`Exhibit 2019
`
`A Brief History of Handheld Video Games, Endgadget.com,
`March 3, 2006
`
`Exhibit 2020
`
`Excerpt from 25 Worst Gadgets Flops of All Time, Laptop
`
`
`
`10
`
`
`
`magazine, March 23, 2013
`
`Exhibit 2021
`
`Profile of Elaine Chen at
`https://www.linkedin.com/in/elaineychen, accessed 10/31/2015
`
`Exhibit 2022
`
`Profile of Beth Marcus at https://www.linkedin.com/pub/beth-
`marcus/2/9b/125, accessed 10/31/2015
`
`Exhibit 2023
`
`Profile of Rob Podoloff at https://www.linkedin.com/pub/rob-
`podoloff/0/912/573, accessed 10/31/2015
`
`Exhibit 2024 MIT Technology Review: Innovators Under 35 at
`http://www2.technologyreview.com/tr35/profile.aspx?TRID=3
`09, accessed 10/31/2015
`
`Exhibit 2025
`
`About Lorraine Wheeler at http://redstoke.com/node/1,
`accessed 10/31/2015
`
`Exhibit 2026 Wikipedia entry on “Pocket PC” at
`https://en.wikipedia.org/wiki/Pocket_PC, accessed 10/31/2015
`
`Exhibit 2027 Wikipedia entry on “List of Computer Size Categories” at
`https://en.wikipedia.org/wiki/List_of_computer_size_categorie
`s, accessed 10/31/2015
`
`Exhibit 2028 University of New Mexico: Types of Computers at
`http://www.unm.edu/~tbeach/terms/types.html, accessed
`9/15/2015
`
`II. LEGAL FRAMEWORK
`
`A. Construing Claims
`
`20. Counsel has informed me that in the context of this action, patent
`
`claim terms must be given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. I understand that under this
`
`standard, claim terms are given their ordinary and customary meaning as would be
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`
`
`11
`
`
`
`21. As explained to me, however, even a “broadest-construction”
`
`interpretation cannot be divorced from the specification and the record evidence. It
`
`has to be consistent with the one that those skilled in the art would reach. I
`
`understand I must reject any construction that is unreasonably broad and which
`
`does not reasonably reflect the plain language of the claim in light of the
`
`disclosure.
`
`B. Obviousness
`
`22. 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.
`
`23.
`
`I have taken each of these factors into account in my analysis below.
`
`
`
`12
`
`
`
`1.
`
`Scope and Content of the Prior Art
`
`24.
`
`I am informed that prior art for obviousness purposes is limited to art
`
`that is analogous.
`
`25. 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.
`
`26. 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.
`
`
`
`13
`
`
`
`27.
`
`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.
`
`28. For instance, an inventor trying to improve flow patterns inside a
`
`whirling blender may not have had any reason to consult art relating to 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.
`
`29. 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.
`
`2.
`
`Differences Between the Art and the Invention
`
`30. 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
`
`
`
`14
`
`
`
`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.
`
`31. 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.
`
`32. 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
`
`
`
`15
`
`
`
`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 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.
`
`33.
`
`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.
`
`
`
`16
`
`
`
`34.
`
`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 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.
`
`3.
`
`The Level of Skill in the Art
`
`35.
`
`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.
`
`
`
`17
`
`
`
`4. Objective Indicia
`
`36. Finally, I am informed that one should take into account any objective
`
`evidence that suggest that the invention may have been obvious or 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.
`
`37.
`
`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
`
`
`
`18
`
`
`
`claimed combination that could tend to prove nonobviousness. Industry skepticism
`
`that would have discouraged the combination might also suggest nonobviousness.
`
`38.
`
`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
`
`39. This case relates to external user interfaces for hand-held host devices
`
`capable of running electronic games. As such, it is important to think about the
`
`background of stationary (“console”) game systems as well as hand-held games.
`
`40.
`
`I believe the history below is relevant because the ’097 Patent was
`
`filed in October of 2005. My opinion in this proceeding is through the lens of the
`
`prior art prior to October 2005.
`
`1.
`
`Electronic Console Games
`
`
`
`19
`
`
`
`41. There may be a few examples of electronic console games that date
`
`back to the 1950’s, but the 1972 Atari console game PONG, below, is widely said
`
`to have been the first commercially successful console video game. Ex. 2012,
`
`Wikipedia entry re: Pong.
`
`42. PONG was a television tennis-style game with a very simple user
`
`interface. It had only two knobs for play and a few switches for system control.
`
`43. After PONG’s success, Atari and other companies made increasingly
`
`sophisticated home console games. Unlike PONG, these consoles usually had
`
`external control devices like joysticks. Ex. 2013-Ex. 2018, Wikipedia entries re:
`
`Atari 2600, Intellivision, Nintendo Entertainment System, Sega Genesis,
`
`PlayStation, and Xbox. A sample is in the chart below:
`
`Date and
`Company
`
`Console
`
`Matching Controllers
`
`
`
`20
`
`
`
`Date and
`Company
`
`Console
`
`Matching Controllers
`
`1977
`Atari
`
`1980
`Intellivision
`
`1982
`Nintendo
`
`1988
`Sega
`
`1994
`Sony
`
`2001
`Microsoft
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`21
`
`
`
`44. Each of these console game units had a proprietary controller. The
`
`controllers had to survive rough handling and sometimes had to be replaced. There
`
`were good reasons to make the internal controller components simple. Simple
`
`controllers cost less to make and would be expected to break less easily.
`
`2.
`
`Electronic Handheld Gaming
`
`45. 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. 2019, Endgadget, A Brief History of Handheld Video Games
`
`at pp. 1-3.
`
`46.
`
`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. 2019, Engadget: A Brief History
`of Handheld Video Games)
`
`Nintendo’s Game &
`Watch Series, 1980-1991
`
`
`
`
`Nintendo Game-Boy,
`1989
`
`
`
`22
`
`
`
`
`
`
`
`Sega Game Gear, 1990
`
`Atari Lynx, 1989
`
`
`Nintendo Game Boy
`Color, 1998
`
`47. 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. 2020, Laptop Magazine, 25 Worst Gadgets Flops of All
`
`Time.
`
`
`Nintendo Game Boy Advance
`(GBA)
`
`48. As can be seen above, handheld electronic games used built-in
`
`
`Nokia N-Gage, 2003
`
`controls.
`
`
`
`23
`
`
`
`49.
`
`I am not aware of a prior art handheld electronic game that was sold
`
`commercially that used an external controller. There were many reasons that
`
`would have made that combination unsuccessful at the time.
`
`50. First, these games were held in the user’s hands much closer to the
`
`eyes than console games. Therefore they did not need large screens. An external
`
`controller would have occupied one or both hands. That would have made it
`
`harder to hold the game device. It would have been hard to make an external
`
`controller attached to the handheld game device that was easy and comfortable to
`
`hold. Popular handheld game devices were too big and heavy for that at the time.
`
`51. Second, the handheld game devices had to be portable size. Adding a
`
`controller like the ones used with console games would have made them heavier
`
`and significantly increased the volume of equipment.
`
`52. Third, price was an important factor for buyers. An optional external
`
`controller would have needed an external port and control circuits to run the port.
`
`Practically speaking, the port would have to be included on all the game devices
`
`even though only some players would buy external controllers. The cost of every
`
`host handheld game device would have gone up even if the external controllers
`
`were sold just as an option. The external port would probably also have made the
`
`game housing bigger.
`
`
`
`24
`
`
`
`B.
`
`Person Having Ordinary Skill in the Art
`
`53.
`
`I have reviewed Dr. Welch’s description of the level of a Person
`
`Having Ordinary Skill in the Art and I have no objection to most of it. However,
`
`in my experience, one of ordinary skill in the art of human-computer interface
`
`design would not need a degree in electrical engineering, computer engineering, or
`
`computer science, but could instead have a degree in mechanical engineering,
`
`b
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