IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LINDSAY CORPORATION
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`
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`Petitioner
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`Case IPR2015-001039
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`U.S. Patent No. 7,003,357
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`v.
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`VALMONT INDUSTRIES, INC.
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`REPLY DECLARATION OF DR. CRAIG ROSENBERG
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`I, Dr. Craig Rosenberg, declare as follows:
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`1.
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`I am the same Dr. Rosenberg that previously opined about the
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`invalidity of the claims of U.S. Patent No. 7,003,357.
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`2.
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`This, my second declaration, responds to arguments and evidence
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`Valmont submitted in its patent owner response (Paper 15) and associated
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`evidence, including the declaration of Dr. Mercer (Ex. 2006). In forming the
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`1
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LINDSAY CORPORATION
`
`
`
`Petitioner
`
`Case IPR2015-001039
`
`
`
`U.S. Patent No. 7,003,357
`
`v.
`
`VALMONT INDUSTRIES, INC.
`
`
`
`
`
`
`
`
`
`
`
`REPLY DECLARATION OF DR. CRAIG ROSENBERG
`
`I, Dr. Craig Rosenberg, declare as follows:
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`1.
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`I am the same Dr. Rosenberg that previously opined about the
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`invalidity of the claims of U.S. Patent No. 7,003,357.
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`2.
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`This, my second declaration, responds to arguments and evidence
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`Valmont submitted in its patent owner response (Paper 15) and associated
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`evidence, including the declaration of Dr. Mercer (Ex. 2006). In forming the
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`
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`1
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 1
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`opinions expressed in this declaration, I considered the Petition, Valmont’s
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`preliminary response, the Board’s institution order, Valmont’s response, the Scott,
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`Pyotsia, AIMS, and Abts prior art, my previous declaration,1 and Valmont’s
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`submitted evidence Exhibits 2001-2016, which includes my deposition transcript
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`and Dr. Mercer’s declaration. I have also reviewed the deposition transcript of Dr.
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`Mercer.
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`The Meaning of “Hand-held”
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`3.
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`The Board did not construe the “hand-held” claim limitation. I
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`understand Valmont has nevertheless asked the Board to construe that term. (Paper
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`15, at 2-3). I confirm my earlier testimony of the meaning of “hand-held” to mean
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`a device operable to be used in the hand or hands. (See paragraphs 23, 43, and 45-
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`46 of my earlier declaration and pages 103-105 of my deposition transcript). I
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`particularly note on page 6 of Valmont’s brief, Valmont argues: “While laptops are
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`portable, they are not operable … while being held in a user’s hand…” I disagree
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`with this statement. In the course of my career, including before and during the
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`2001/2002 timeframe, I have personally used laptops in a “hand-held” manner,
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`meaning that I have held a laptop in one hand while simultaneously operating it
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`with the other. I also recall that between 1997 and 1998 I worked at Boing and
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`1 I signed a supplemental declaration responsive to Valmont objections as well.
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`2
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 2
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`visited the manufacturing line occasionally. During those visits it was common for
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`engineers at Boeing to go out onto the factory floor with company issued laptop
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`computer. Often in the factory there were no desks to set down our laptops, so I
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`and the other Boeing engineers used the laptops in a hand-held manner. By this I
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`mean that I and colleagues held the laptop in one hand while simultaneously
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`operating it with the other. Simply put, I believe, based upon my experience,
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`personal use, and observations of others, that of one of ordinary skill in the art
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`would understand a laptop is a “hand-held” device and was a “hand-held” at the
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`time of the invention of the ’357 patent.
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`Valmont’s Attack on My Testimony
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`4.
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`Valmont critiques my analysis of the ’357 patent and the prior art to
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`suggest my analysis is flawed. For instance, Valmont says that I provided
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`conclusory arguments without sufficient reasoning. (See, e.g., Paper 15, at 14, 23-
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`24, 32).
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`5.
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`I disagree with Valmont’s assertions. I will not recount the entirety of
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`the testimony provided in my first declaration because the Board can read it, but as
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`further addressed below, in that declaration I discussed the relevant prior art (Scott,
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`Pyotsia, AIMS, and Abts, among others) and explained why one of ordinary skill
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`in the art would have and could have achieved the claimed invention based upon
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`the teachings of those references to, for instance, obtain enhanced portability and
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`3
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 3
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`mobility of remote control of irrigation equipment with a handheld that can display
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`GUIs to be manipulated. I also explained where express teachings in the prior art,
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`like AIMS and Pyotsia, would motivate a person of ordinary skill in the art to
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`make that combination.
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`6.
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`Valmont also critiques my testimony because they believe I “failed to
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`consider the hardware implications in combining the art.” (Paper 15, at 26). This
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`argument is not valid because the ’357 patent is not focused on the technical
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`features of hardware or software. Indeed, Dr. Mercer’s deposition testimony
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`explains that the ’357 patent is about using GUIs to allow a person to control
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`irrigation equipment. (See Mercer testimony at pages 29-30). The ’357 patent does
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`not discuss software or hardware requirements of a system for implementing the
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`’357 patent. Indeed, the only real disclosure of either is the limited reference to
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`certain commercially available handsets at that time and passing reference to the
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`types of wireless signals and communications mechanisms available to implement
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`the claims of the ’357 patent. (Ex. 1001, 6:11-24). Much of the disclosure of the
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`’357 patent deals with the relatively simple GUIs contemplated by the ’357 patent.
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`(Ex. 1001, Figs. 2-8). Thus, to the extent Valmont believes my discussion of
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`hardware and software was lacking, the ’357 patent’s scant disclosure of those
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`issues does not warrant in-depth discussion of those details. Dr. Mercer appears to
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`agree because he repeatedly stated in his deposition that one of ordinary skill in the
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`4
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 4
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`art would understand the details for both the hardware and software required to
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`implement the invention although there is really no meaningful discussion of them
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`in the patent. (See Mercer testimony at pages 23, 29-31).
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`Obviousness of the Claimed Invention
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`7.
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`It is clear from Valmont’s response and Dr. Mercer’s testimony that
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`my obviousness analysis was misunderstood. For instance, Valmont argues that a
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`person of ordinary skill in the art would not have been motivated to combine the
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`teachings of Scott with the teachings of Pyotsia because “it would not have been
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`possible to execute the Scott system on the Pyotsia hardware…” (Paper 15, at 26).
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`Similarly, Dr. Mercer opines that “it would not have been possible … to execute
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`the Scott system on the Pyotsia hardware.” (Ex. 2006, ¶ 61).
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`8.
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`A fair reading of my testimony reveals that my opinion is that one of
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`ordinary skill in the art at the time of the invention of the ’357 patent would have
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`been motivated to combine the teachings of Scott with Pyotsia and AIMS and
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`additionally Abts to arrive at the claimed invention of a hand-held mobile device to
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`remotely monitor and control irrigation equipment with GUIs shown on a display
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`as required by the claims to provide enhanced portability and mobility. (See Ex.
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`1009, ¶¶ 56, 61, 65, 71). I also opined that one would anticipate success in
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`5
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 5
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`achieving the combination. (See e.g., id., ¶ 61) (noting that the combination could
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`easily be made). I further note that Dr. Mercer’s testimony appears to agree with
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`this basic premise. Dr. Mercer states in his deposition that the ’357 patent doesn’t
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`need to have extensive discussion of the background technical details:
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`And they’re – they’re not included here because it’s understood
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`that one of skill in the art has certain abilities and that one of
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`skill in the art has access to certain resources. And so
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`combining those resources with motivation and information, I
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`think there’s a reasonable probability of success, after some
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`effort, to produce these.”
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`(Dr. Mercer’s testimony at 23:01-23:09).
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`9.
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`It is clear from Dr. Mercer’s admissions that what was in the prior
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`art—“the resources” or “information”—(See Ex. 2006, ¶¶ 40-56), when coupled
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`with a motivation to combine (provide the previously conceived monitoring and
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`control functionality with GUIs as in Scott, Pytosia, AIMS, and Abts) in a smaller
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`package for enhanced portability and mobility—“motivation”—even expressly
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`provided in AIMS (Ex. 1012, at 4) (“improving his mobility … This way I won’t
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`be tied to the computer in my office”)—would achieve as Dr. Mercer puts it “a
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`6
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 6
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`reasonable probability of success.” Simply put, the concepts claimed in the ’357
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`patent were known (even in the same field) and one of ordinary skill in the art
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`could adapt those concepts for use on a hand-held to display GUIs, functionality
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`already available on commercially available hand-helds at the time. (See my
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`discussion, below).
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`10.
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`I also note that I do not recall Valmont’s attorneys ever confronting
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`me about Valmont’s misreading of my obviousness opinion during my deposition.
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`Indeed, I don’t think I was asked any questions about the propriety of physically
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`implementing Scott’s system on Pytosia and whether or not that is feasible. This
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`leads me to believe that Valmont’s reading of my opinion is contrived because had
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`Valmont wanted to test my analysis, it would have at least asked me about that
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`point when they were deposing me.
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`11.
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`Importantly, I still do believe the monitoring and control system of
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`Scott could be carried out on Pyotsia. (See Ex. 1009, ¶61). Scott discloses a
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`division between preliminary set up (e.g., rendering of site maps) and subsequent
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`monitoring and control functionality. (See Ex. 1004, Fig. 3). Dr. Mercer
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`recognized this split of functionality in both his declaration and deposition. (Ex.
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`2006, ¶¶ 42, 43; Mercer testimony at pages 155-156 (noting dotted line on Scott’s
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`figure 3)). Consequently, I still believe that the simple tasks of displaying and
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`manipulating GUIs and sitemaps like those in Scott on a mobile terminal or PDA
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`7
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 7
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`like those disclosed hand-helds of Pyotsia is possible on the commercially
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`available hardware available in 2001/2002. My analysis in the section below
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`rebutting Valmont’s arguments and Dr. Mercer’s opinions regarding hardware
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`requirements supports this conclusion.
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`12. Moreover, I expressly disagree with Dr. Mercer’s opinion in
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`paragraph 63 of his declaration stating that a “POSITA would have no motivation
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`to create such a handheld device, but would instead have been motivated to use a
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`PC-based device that communicates with the irrigation equipment.” I disagree with
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`this opinion because over the course of my career with systems architecture,
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`design, and programming, there has been a consistent desire and goal of shrinking
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`hardware and software to squeeze the most functionality out of the smallest
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`hardware package available. For instance, cell phones have shrunk while obtaining
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`enhanced and more robust functionality and interface capabilities. (See generally
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`Ex. 2015). This general desire and goal is expressly stated in AIMS, a 1996 article,
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`where a PC based software product disclosing all the claimed functionality of the
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`’357 patent is sought to be improved by putting it on a laptop and interfacing it
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`with wireless communications to “improv[e] mobility” so that the user “can log
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`into the system via cellular phone and monitor the network from almost anywhere.
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`This way [the user] won’t be tied to the computer in [his] office.” (Ex. 1012, at 4).
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`I explained this in my first declaration. (Ex. 1009, ¶¶ 39, 61, 65). Moreover,
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`8
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 8
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`Pyotsia discusses achieving this type of control and monitoring functionality for
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`field equipment on a mobile terminal MT or personal digital assistant, commonly
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`abbreviated as PDA. (Ex. 1007, Abstract, 3:5-43, 6:42-63, 8:21-27). I explained
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`this in my original declaration. (Ex. 1009, ¶ 32, 61). In short, Dr. Mercer’s
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`opinion in paragraph 63 is inconsistent with a tidal wave of design thought in
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`which the end goal is to achieve a smaller hardware package providing robust
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`functionality of larger hardware to enhance productivity so that users of technology
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`can achieve more and not be tethered to a desk, i.e. enhanced mobility and
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`portability. This progression was inevitable as the handsets of the day improved to
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`the level of functionality available to the ‘357 inventors prior the filing of the
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`patent. (See progression and functionality demonstrated in Exs. 2009 and 2015).
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`13. Also, Valmont’s attorneys critique my analysis of independent claim
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`17. (See Paper 15, at 32). They try and suggest that I have provided insufficient
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`evidence to demonstrate the unpatentability of the claim because it includes the
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`additional limitations of “a single hand-held RUI” and the concept of “directly
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`controlling” irrigation equipment from the hand-held. (See Paper 15, at 26-27).
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`However, when I provided evidence in my first declaration demonstrating the
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`unpatentability of claim 1, I provided citation and motivation to combine based
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`upon the narrower claim 17. (See Ex. 1009, ¶¶ 31 (Scott’s disclosure of single RUI
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`and directly), 32 (Pyotsia’s disclosure of single RUI), 39 (AIMS disclosure of
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`9
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 9
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`directly) 46 (why Scott has all the elements of claim 1 and 17), 56 (referring to my
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`anticipation analysis as a basis for what Scott discloses as part of my obviousness
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`analysis), 61 (for the combination)). Thus, since I demonstrated the single hand-
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`held RUI in Scott and Pyotsia, and the directly controlling limitation in Scott when
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`discussing the prior art’s disclosure with respect to the broader claim 1, I referred
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`to claim 17 as a method analog. Therefore although I did not separately address
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`Claim 17, my discussion of it in conjunction with claim 1 established the reasons
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`for my opinion that it is invalid.
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`14. Having reviewed Valmont’s response, evidence, and Dr. Mercer’s
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`deposition testimony, I remain convinced that at the time of the invention claims 1-
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`15, 17, and 18 of the ’357 patent were obvious over Scott, Pyotsia, AIMS and
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`additionally Abts, which disclose each element of the foregoing claims and
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`demonstrate Valmont has simply claimed an old idea of remotely controlling
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`irrigation equipment on a laptop (Scott) or desktop (AIMS) on a smaller device
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`(Pyotsia or Abts) using commercially available hardware, like cell phones. I also
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`remain convinced, and am supported by Dr. Mercer’s testimony discussed above,
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`that one of ordinary skill in the art could predictably arrive at the combination
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`with, as Dr. Mercer put it, a reasonable probability of success. Indeed, photographs
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`of the GUIs of cell phones at the time of the invention submitted by Valmont
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`demonstrate their robust GUIs and underlying technological capabilities, that were
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`10
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`Lindsay Corporation
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`Exhibit 1018 - 10
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`more than able to implement the claims of the ’357 patent and were part of the
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`background information available to one of ordinary skill at the time.
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`(Ex. 2015, at 8-9, 14-15, 26-28).
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`Valmont’s Argument and Evidence Regarding Hardware Requirements
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`15. Dr. Mercer states in paragraph 58 of his declaration that he doesn’t
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`believe a person of ordinary skill in the art would make the combination of Scott,
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`Pyotsia, and AIMS. My understanding of his opinion is that Dr. Mercer doesn’t
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`believe the combination would be made because the small handsets available at the
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`time of the invention were not capable to implement Scott’s system because of
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`certain hardware limitations, like i) smaller displays with lower resolution, ii) less
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`memory available, iii) less computing power available, iv) unsuitable wireless
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`communications, and v) smaller batteries. For the reasons set forth below, I
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`disagree with Dr. Mercer. I believe that not only would a person of ordinary skill in
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`the art at the time of the invention be capable of implementing the claimed features
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`on what Dr. Mercer considers a hand-held, but that a person of ordinary skill could
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`11
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`Lindsay Corporation
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`Exhibit 1018 - 11
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`render the combination simply with routine programming experience using known
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`methods and tools available at the time as I have previously testified.
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`16.
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`Initially I note that Dr. Mercer’s listing of hardware limitations that
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`would purportedly “dissuade” (e.g., Ex. 2006, ¶ 58) a person of ordinary skill in
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`the art from making the combination of Scott, Pyotsia, and AIMS are nowhere
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`found in challenged claims 1-15, 17, and 18. Indeed, the specification of the ’357
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`patent nowhere even discusses minimum hardware or software requirements of a
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`PDA to be able to implement the system described in ’357 patent. A word search
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`in the specification of the ’357 patent shows the following:
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` No instances of the word “resolution”
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` No instances of the word “pixel”
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` No instances of the word “minimum”
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` No instances of the word “hardware”
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` No instances of the words “battery” or “charge”
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` No instances of the words “clock” or “speed”
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` No instances of the words “RAM,” “ROM” or “memory”
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`Neither does the ’357 patent discuss software algorithms, which are typically
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`represented with block diagrams or pseudocode, to describe how one of skill in the
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`art might implement the claimed invention. Indeed, the ’357 patent does not even
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`recognize or describe the types of programming languages or libraries available to
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`12
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`Lindsay Corporation
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`Exhibit 1018 - 12
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`a person of skill in the art at the time of the invention with which they may
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`program a PDA available in the 2001/2002 timeframe.
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`17.
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`In any event, the various hardware limitations Dr. Mercer points to as
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`part of his opinion are not problems in the 2001/2002 timeframe to achieve the
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`claimed limitations of the ’357 patent with anticipated success using commonly
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`held knowledge possessed by those of ordinary skill in the art.
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`Display Resolution and Capabilities:
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`In Paragraph 34 of his declaration, Dr. Mercer describes the total
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`18.
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`pixels available on the Kyocera 6035, which is one of the three PDAs described in
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`the specification of the ’357 patent. See Ex. 1001, 6:14-19. Dr. Mercer opines that
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`the 160 x 160 display of the Kyocera 6035, with about 26,000 total pixels, is about
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`30 times smaller than the average web browsing resolution at the time of the
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`invention time. (See also Ex. 2006, ¶ 62). Even assuming this to be true, 26,000
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`total pixels is more than enough to display GUI elements depicting valves,
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`irrigation patterns, and animations. GUI elements can easily be drawn with as few
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`as about 1000 pixels (e.g., using 50x20 pixels to show a valve, or a circle having a
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`radius of 18 pixels to depict an irrigation pattern). And animating these GUI
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`elements is as simple as cycling through one or more images or pixels to impart
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`motion. Indeed, as few as 4 images or renderings could be used to show a sprinkler
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`head cycling through an irrigation pattern, as shown below:
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`13
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`Lindsay Corporation
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`Exhibit 1018 - 13
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`Or, a person of ordinary skill in the art at the time of the ’357 patent applications
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`filing would know that he could achieve the above GUI elements with one image
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`or rendering. Notably, the same image or rendering could be used, but simply
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`rotated about the center of the image. Using this effect, one of ordinary skill in the
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`art could use the same image and rotate it clockwise (or counter-clockwise for that
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`matter) the desired number of times to reflect the orientation of an operating
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`irrigation sprinkler head. Using this effect, rather than storing a number of
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`individual images or renderings, a person of ordinary skill in the art at the time
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`could use one image and rotate it up to 360 times to show every possible angle of a
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`circular irrigation pattern to animate an irrigator. Similarly, one graphical image
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`could be stored and the image’s pixels inverted (e.g. black pixels turn white and
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`white pixels turn black) or masked (e.g. certain pixels corresponding to objects or
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`parts of objects are purposely not displayed) to depict an on/off toggling of that
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`element. Thus, one graphic could represent multiple states of the element
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`represented thereby. This knowledge would be held by one of ordinary skill in the
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`art at the time of the filing of the ’357 patent application because it is problem
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`solving capabilities such as this that any electrical or computer engineer, or
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`14
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`Exhibit 1018 - 14
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`computer scientist would learn to obtain their degree. Moreover, Dr. Mercer agreed
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`in his deposition that the complexity of GUIs disclosed in the ‘357 patent was well
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`within the ability of one of ordinary skill to create using commercially available
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`hardware and software of the day. (Mercer testimony at pages 13 and 100-101). I
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`agree.
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`19. Dr. Mercer opines in paragraph 60 of his declaration that Pyotsia
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`recognizes that a mobile phone would have a small screen, with low resolution,
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`limited memory and limited display capabilities. While Pyotsia does say: “Due to
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`the small display the clarity of the interactive user interface as well as easiness to
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`use are important features. One of the primary problems is how to find and select
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`the desired field device among a plurality of field devices.” (Ex. 1007, 8:23-29).
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`But the very next paragraph of Pyotsia provides an express recommendation of one
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`way to solve the problem of a smaller display: use hierarchical displays. Pyotsia
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`says that the hierarchical pages of its display represent “the logical, functional or
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`location architecture of the plant in a tree configuration. As a consequence, the user
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`of the mobile terminal MT is able to proceed from the higher hierarchic level to a
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`lower one by selections made in this hierarchic set of WWW pages.” (Ex. 1007,
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`8:32-38). I referred to this passage when addressing the requirements for multiple
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`pages of GUIs and navigation between them of claims 8 and 9. (See Ex. 1009, ¶
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`64). Thus, Pyotsia recognizes a way to organize or categorize the information into
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`15
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`Exhibit 1018 - 15
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`logical, functional, or locational buckets to facilitate browsing among multiple
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`components to control them. One of ordinary skill in the art at the time of the ’357
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`patent applications filing would instantaneously envisage this as one workable
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`solution to clearly present in an organized manner more voluminous monitoring
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`and controlling GUI elements on a smaller display.
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`20. Moreover, I note that Dr. Mercer relies on Exhibit 2015—titled The
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`Evolution of Cell Phone Design Between 1983-2009—in his declaration. That
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`Exhibit shows a number of other cell phones and PDAs (which are hand-held
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`devices because they are both designed and operable to be used in the hands)
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`before and contemporaneous with the invention of the ’357 patent. For instance,
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`between 1996 and 1998 (before the filing date of the ’357 patent application), the
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`Nokia 9000 communicator was released and was “driven by an Intel 386 CPU.” A
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`photograph of the handheld is reproduced below:
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`16
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`Exhibit 1018 - 16
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`(Ex. 2015, at 8-9). As can be seen, the hand-held communicator shown in the
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`lower-left hand corner includes a color display, with multiple GUI elements, that
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`are used to interact with the software operable on the phone. That same exhibit also
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`shows that in 1999, the Benefon ESC! Cell phone, which “was the first instance of
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`a GPS being integrated into a mobile phone.” The photograph of the Benefon ESC!
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`shows the display screen showing what appears to be a topographical map:
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`(Ex. 2015, at 14-15). Notably, the map includes words, contour lines, shading, and
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`a circle surrounding a portion of the contents of the displayed content.
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`21. These other hand-held cellphones available at the time of the filing of
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`the ’357 patent application demonstrate what one of ordinary skill in the art would
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`know at that time—that cell-phone displays could readily depict GUI elements like
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`valves, irrigation patterns, and other mapping information, which are the types of
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`elements described by the ’357 patent.
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`17
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`Lindsay Corporation
`IPR2015-01039
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`Exhibit 1018 - 17
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`
`
`22. While Dr. Mercer may believe that hand-held displays at the
`
`2001/2002 timeframe were not sufficiently robust to display Scott’s graphics, his
`
`own evidence demonstrates that is not true. Indeed, the graphics shown and
`
`described in Figure 16 of Scott, could be implemented with these contemporaneous
`
`display technologies. Shown below is a side-by-side comparison of Scott, Figure
`
`16, with the Benefon discussed above, and Figure 2 of the ’357 patent. Figure 16
`
`of Scott shows head icons 248 representing actual irrigation heads and the actual
`
`location thereof on a golf course. Selecting a head icon can cause an information
`
`box 252 to be displayed and can cause the coverage radius graphic 254 to be
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`shown. This side-by-side comparison demonstrates that the graphical elements
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`shown in Scott (simple arcuate lines, circles, squares, text, and shading) are
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`likewise displayed on the Benefon. Figure 2 of the ’357 patent shows similarly
`
`simple graphical elements, which are all that is required to achieve the objective of
`
`the ’357 patent. (See, e.g., Ex. 1001, Figs. 2, 5). Each of the GUI elements in Scott
`
`Fig. 16 and the ’357 Patent Fig. 2 could be employed on the Benefon ESC!. The
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`Benfon ESC! Is background information available to one of skill at the time of the
`
`invention.
`
`
`
`18
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`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 18
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`
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`
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`(Ex. 1001, Fig. 2; Ex. 1004, Fig. 16, at 28:16-29; Ex. 2015, at 14-15). It simply is
`
`not the case that Scott’s graphics images could not be displayed on the Nokia 9000,
`
`Benefon ESC! (above), or Ericsson P800 (circa 2002), shown below, which touted
`
`a touch screen and clearly shows color graphics, stylus support, and all the above-
`
`described GUI elements:
`
`
`
`23. While CAD software may be used to generate an initial map
`
`rendering, Scott teaches that the use of those maps occurs after that initial
`
`rendering. (Ex. 1004, at 17:24-18:30). Indeed, Dr. Mercer recognizes as much in
`
`his declaration. (Ex. 2006, ¶¶ 42-43). Accordingly, one of ordinary skill in the art
`
`
`
`19
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`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 19
`
`
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`at the time of the filing of the ’357 patent would appreciate hand-held displays
`
`were sufficiently powerful and capable to show GUIs, irrigation elements, and
`
`animations. Indeed, animation can be achieved through simple cycling between
`
`two or more images on a display to impart the appearance of motion as I
`
`previously described above and in my first declaration (Ex. 1009, ¶¶ 47, 50, 54, 63,
`
`71).
`
`Memory and Computing Power
`
`24. On a number of occasions Dr. Mercer opines that cell phones in the
`
`2001/2002 timeframe had inadequate memory and computing power to achieve the
`
`combination of Scott, Pyotsia, and AIMS. For instance, in paragraph 64 of his
`
`declaration, Dr. Mercer notes as part of his argument that “in 2001, Siemens
`
`introduced its ‘first ever GPRS mobile phone with 360kb of internal memory –
`
`high at the time.” (Emphasis is Dr. Mercer’s). Dr. Mercer compares that mobile
`
`phone’s capabilities with that of a laptop to try and suggest implementing Scott’s
`
`system on a mobile phone was not feasible. (See also e.g. ¶ 61). Indeed, Dr. Mercer
`
`uses as a principal argument the notion that Scott’s CAD processing could not be
`
`accomplished on a cell phone: the “size, scope, complexity, and required memory
`
`for these applications [on the Sprint PCS TP3000] were dramatically less than the
`
`applications taught in Scott…” (See Ex. 2006 ¶ 62) (emphasis mine).
`
`
`
`20
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`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 20
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`
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`25. Dr. Mercer’s argument is incorrect. First, Dr. Mercer ignores his own
`
`evidence regarding available memory at the time of the invention (2001/2002). The
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`Sony Ericsson P800 (circa 2002) featured a touchscreen and up to 128mb of
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`memory. (Ex. 2015, at 27-28):
`
`
`
`26. Second, Scott distinguishes between the generation of a Site map’s
`
`rendering and the use of a site map by a user. Scott teaches that before a site map is
`
`used, it is rendered, and after it is rendered it is displayed to a user; this distinction
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`is recognized by Dr. Mercer. (Ex. 2006, ¶¶ 42, 43). One of ordinary skill in the art
`
`would recognize that the memory and computing power for storing and displaying
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`a graphic and sending a control signal based upon user interaction—the latter steps
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`of Scott (after rendering)— is not a highly memory or computer intensive task. I
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`discuss the latter control task below in paragraphs 32 and 33. This was exactly my
`
`meaning when I stated that “one of ordinary skill in the art could easily employ the
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`monitoring and controlling system of Scott, which is employed on a laptop, on a
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`mobile phone or PDA disclosed by Pyotsia. . ..” Indeed, at the time of the filing of
`
`
`
`21
`
`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 21
`
`
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`the ’357 patent application, simple graphical icons could easily occupy less than 1
`
`kb of memory, leaving substantial free memory available for other tasks,
`
`particularly if one of ordinary skill recognizes they have far more memory than Dr.
`
`Mercer would care to acknowledge was available at the time of the invention such
`
`as, for instance, with the Ericsson P800 shown above. And displaying those small
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`graphics was routinely done by the processors at that time. Indeed, the Nokia 9000
`
`included a 386 processor, which was more than capable to display simple graphics
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`and, indeed, did power a color display including multiple GUI elements:
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`(Ex. 2015, at 8-9).
`
`
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`27. Moreover, as discussed above when discussing display capabilities,
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`one graphic could be programmatically manipulated (e.g., rotation or pixel
`
`inversion) to achieve space savings. One of ordinary skill in the art would
`
`recognize the distinction between CAD rendering and simple display and
`
`
`
`22
`
`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 22
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`
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`understand techniques such as graphical manipulation such as rotation to save
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`memory.
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`28. Moreover, the images shown above relating to the Nokia 9000 and
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`Benefon demonstrate that cell phone power and memory at the time of the
`
`invention were more than sufficient to accommodate the GUI elements
`
`contemplated by the ’357 patent.
`
`29. One of ordinary skill in the art in the 2001/2002 timeframe would
`
`recognize that cell phones had more than sufficient memory to store and display
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`GUI elements sufficient for the invention claimed in the ’357 patent and would
`
`have a reasonable expectation of success in combining the teachings of Scott,
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`Pyotsia, AIMS, and additionally Abts to achieve the claimed result.
`
`Wireless Communications:
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`30.
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`In paragraph 62 of his declaration, Dr. Mercer opines that “A POSITA
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`would understand that sending complex CAD graphical user interfaces (as
`
`characterized by Scott’s Figure 8) or CAD software data via wireless internet
`
`communications would not be possible or effective at the time” of the invention. I
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`disagree with Dr. Mercer. Digital communications at the time of the invention
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`were sufficiently robust and capable to manage the communications necessary to
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`carry out the invention claimed in the ’357 patent.
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`
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`23
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`Lindsay Corporation
`IPR2015-01039
`
`Exhibit 1018 - 23
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`
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`31. Digital communications were a mature technology by 2001/2002.
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`Indeed, Dr. Mercer’s own experience recites his design and manufacture of circuits
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`for digital telephone modem from 1980 to 1983. (Ex. 2006, ¶ 12). And Scott
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`discloses computer control of irrigation equipment “by issuing the appropriate
`
`commands” with “any suitable digital or analog format known in the art and
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`transmitted communications interface 12 by wire or radio link to valve controller
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`28.” (Ex. 1004, at 11:35-12:3; Ex. 1009, ¶ 54). Dr. Mercer recognizes this fact in
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`paragraph 44 of his declaration.
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`32. One of ordinary skill in the art would recognize not only that digital
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`communications could achieve wireless, direct control of irrigation equipment
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`(Scott), but contrary to Dr. Mercer’s opinion in paragraph 62 of his declaration,
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`that those wireless digital commun
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