Paper _____
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC., MOTOROLA MOBILITY, LLC, AND TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
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`
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`Petitioners
`
`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`
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`DECLARATION OF ROBERT E. MORLEY, JR.
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`1 of 41
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`APPLE INC., MOTOROLA MOBILITY, LLC, AND TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`
`
`
`Petitioners
`
`v.
`
`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
`
`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
`
`
`
`DECLARATION OF ROBERT E. MORLEY, JR.
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`1 of 41
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`I.
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`I, Robert E. Morley, Jr. do hereby declare and state that:
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`1. My name is Robert Morley. I am a Professor in the Electrical
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`INTRODUCTION
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`and Systems Engineering Department at Washington University in St. Louis,
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`Missouri. I hold the degrees of BS, MS, and D.Sc. all conferred on me by
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`Washington University in St. Louis in 1973, 1975, and 1977, respectively.
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`Prior to joining the faculty of Washington University in St. Louis I worked
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`in the industry addressing electronics and micro-electronics. I have remained
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`active in industry during my appointment to the faculty of Washington
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`2.
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`University in St. Louis.
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`I have been retained as an expert witness by counsel on behalf
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`of Global Touch Solutions (“GTS”) in connection with a series of Inter
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`Partes Reviews (“IPR”) of a number of patents held by GTS. These patents
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`include, in no particular order, U.S. Patent Nos. 7,265,494; 7,994,726;
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`7,772,781; 7,798,749; 7,329,970; 7,781,980; 8,035,623; and 8,288,952 (“the
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`GTS Patents”). I understand that this proceeding involves U.S. Patent No.
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`7,329,970 (“the ‘970 Patent”). It is my understanding that the other patents
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`are the subject of related IPRs and that the subject matter specific to each is
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`considered in each separate Declaration.
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`- 2
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`2 of 41
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`3.
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`As an example of the interrelationship of the various
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`proceedings, it is my understanding that the current case involves the
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`allegation that Claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of the ‘970 Patent
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`(sometimes referred to herein as the “challenged claims”) are unpatentable
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`as obvious over U.S. Patent 5,898,290 to Beard, taken in view of U.S. Patent
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`5,955,869 to Rathmann, and U.S. Patent 5,710,728 to Danielson. At the
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`same time I understand that in a distinct but related proceeding, IPR2015-
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`01149, the same claims 1, 3-5, 10-14, 19, 48, 49, 51, and 52 of the same
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`‘970 Patent are challenged as obvious over two different references, U.S.
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`Patent 6,125,286 to Jahagirdar, taken in view of U.S. Patent 4,053,789 to
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`Schultz . While I have prepared a separate and distinct Declaration for that
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`proceeding and the other related proceedings as well, it is easy to see that
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`there is a substantial amount of technical overlap in the subject matter of
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`these proceedings, and I have considered this family of patents, the GTS
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`patents, together.
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`4.
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`I have reviewed and am familiar with the ‘970 Patent as well as
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`its prosecution history. I also have reviewed and am familiar with the
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`Petition filed and the Beard, Rathmann, and Danielson patents. I also have
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`reviewed and am familiar with the Declaration of Paul Beard, provided to
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`me as Ex. 1003. I have also reviewed the decision of the Patent Trial and
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`- 3
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`3 of 41
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`
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`Appeal Board identified as Paper 13, dated November 17, 2015. While it is
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`the opinion expressed in Paper 13 that the combination of Beard and
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`Rathmann or Beard, Rathmann, and Danielson, as would have been made by
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`one of skill in the art, renders the challenged claims obvious, in this
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`Declaration, I express the opinion that one of skill in the art would not have
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`combined those references in the fashion relied upon, and that the
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`challenged claims are not obvious over that combination of art as considered
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`by a person of skill in the art around 1998.
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`As noted above, I am familiar with the type of technology
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`5.
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`addressed in the ‘970 Patent as of 1998, which I understand to be the year in
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`which the patent application from which priority is claimed in the ‘970
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`Patent was originally filed. I have been asked to provide my technical
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`review, analysis, insights, and opinions regarding the assertions in the
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`Petition concerning the alleged obviousness of the challenged claims of the
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`‘970 Patent by the Beard, Rathmann, and Danielson Patents. I am being
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`compensated for my work in connection with the GTS Patents and the
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`several IPRs at my established rate of $500 per hour. My compensation does
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`not depend on the outcome of this proceeding.
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`In forming the opinions and beliefs expressed herein, I have
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`relied on my own experience and knowledge, my review of the ‘970 Patent
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`- 4
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`6.
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`4 of 41
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`and its file history, and my review of the materials cited in the Petition filed
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`against the ‘970 Patent, including the Beard, Rathmann, and Danielson
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`patents. Although the other IPRs directed at the GTS patents and the art
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`cited therein form a backdrop for my opinions, if I have relied on art other
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`than that cited in this proceeding for my opinions in a specific or selective
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`way, it is specifically mentioned in my Declaration.
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`7. My experience relied on in arriving at the opinions expressed in
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`this Declaration includes my work as a Professor of Electrical Engineering,
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`my work in industry including the development of various micro-processor
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`based technologies, and my research in the area of computer architecture and
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`magnetic media. My experience and education is spelled out more fully in
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`my curriculum vitae, submitted herewith as Exhibit 2001. My own personal
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`experience in assisting other lawyers in the prosecution of patent
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`applications and the enforcement of U.S. Patents naming me as the inventor
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`or one of the inventor, over the years, has allowed me to develop a
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`fundamental understanding of the concepts underlying obviousness.
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`i.
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`8.
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`Other Relevant Qualifications
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`As noted above, I have had significant involvement in the
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`preparation and prosecution of United States Patents and patent applications
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`as well as the enforcement of United States Patents, including 17 naming me
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`- 5
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`5 of 41
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`as inventor. Obviousness of claims over the prior art is a question I have
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`addressed in fields and technologies both related to and distinct from those
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`presented in the above-captioned IPR.
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`9.
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`I have previously served as an expert witness in litigation
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`matters and as a consultant to companies involved in research and
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`development of electrical devices, particularly in conjunction with the
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`development of microprocessor-based systems. As noted above, my
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`relevant experience.
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`curriculum vitae includes a compilation of my publications and patents and
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`II. THE ‘970 PATENT
`10. The referenced Petition seeks invalidation of certain claims of
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`the ‘970 Patent. The subject matter of this patent is generally directed to
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`devices powered by an exhaustible power source, such as a battery, and
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`specifically including a microchip to control electrical switching of power to
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`a load. By reliance on a microchip or integrated circuit based switching
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`system for a load, multiple functions can be combined into one device, and
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`power savings and other advantageous features may be realized.
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`11. The innovation specifically addressed in the ‘970 Patent is
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`putting microchip control between the exhaustible power supply and the
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`energy consuming load that consumes that power supply. As indicated in the
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`- 6
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`6 of 41
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`Abstract of the ‘970 Patent, “An electronic circuit for use with an
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`exhaustible power source and load such as a light bulb, a radio or motor,
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`includes a microchip with an input that transmits a signal to the microchip
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`when the load is activated or deactivated. The input does not form a serial
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`link between the power source and the load. The power switch, by on/off
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`switching, controls energy flow from the power source to the load. … The
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`input to the microchip acts as an activation/deactivation user interface.” The
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`microchip controls the activation and deactivation of the energy consuming
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`function of the device, referred to throughout the ‘970 Patent as the “energy
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`12. The invention of the ‘970 Patent is most often illustrated as a
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`consuming load.”
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`flashlight with the consumption of the exhaustible power supply (battery) by
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`the “energy consuming load” (bulb) under the control of the microchip, as
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`well as other functions associated with the flashlight. While the terms of the
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`patent are applied directly to a flashlight, such that the bulb of the flashlight
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`constitutes the electrical “load” of the device, in fact the patent makes it
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`clear that this is for purposes of illustration only and in no way limiting of its
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`application. For example, at Col. 6, ll. 40-45, the ‘970 Patent makes it clear
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`that the application of the invention to a flashlight is for purposes of
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`- 7
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`7 of 41
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`illustration, and the invention is applicable to many other devices by using
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`the ‘970 Patent’s electrical switching design.
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`13. Many other devices may be envisioned. Many devices have
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`multiple modules that require energy. Those in the ‘970 Patent referred to as
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`“energy consuming load” are the modules that are under the on/off control
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`of the microchip. A load placed under the control of the microchip to limit
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`‘970 patent as an “energy consuming load.”
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`diminishing the power supply is referred to throughout the claims of the
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`14. This emphasis on the advancement reflected in the invention,
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`putting draw on the exhaustible power supply by the “energy consuming
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`load” under the control of the microchip is reflected throughout the
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`specification. See for example Col. 1, lines 18 - 20 and the reference to
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`“microchip controlled electrical current switching devices” as well as Col. 4,
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`lines 13 – 14, which refers to the invention as featuring “a microchip for
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`controlling the on/off function and at least one other function of the
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`15. The nature of the invention can be further confirmed by
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`flashlight.”
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`reference to the Figures. Although many of the Figures illustrate related
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`aspects of the same invention, the invention may be clearly viewed by
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`reference to Figure 5. As can be clearly seen the energy consuming load
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`- 8
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`8 of 41
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`(indicated at 105) that draws on the battery is able to do so only through the
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`control circuit provided by the microchip. This is most clearly set forth in
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`text at Col. 7, lines 8 – 14 which provides: “It is important to recognize,
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`however, that it is control circuit 201 which activates current switch 202
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`upon acting on an input from MMI switch 102. Unlike heretofore known
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`prior art devices, activating switch 102 does not conduct current to energy
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`consuming load 105, but is only a command input mechanism which can,
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`according to the invention, operate on very low current.” Clearly, control
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`over significant draws on the exhaustible power supply – in the words of the
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`‘970 Patent “energy consuming loads” – is through the microchip.
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`16. Further, Figure 11, provided below, illustrates an embodiment
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`of the ‘970 Patent in which luminous visible location indicator is controlled
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`by the microchip to indicate a location of the device in the dark. Ex. 1001 at
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`Col. 9, ll. 51-67.
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`- 9
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`9 of 41
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`17. The location indicator device 1104 may be realized as an LED
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`that is illuminated in this embodiment when the microchip 1113 sets the pin
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`connected to the line 1114, which is also connected to the switch 1111, to a
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`high output state. Id. at Col. 9, ll. 52-57. Microchip 1113 can activate the
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`LED 1104 for a short time, for example, 100 milliseconds every 10 seconds.
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`Id. at Col. 9, ll. 60-63. This indication will enable fast location of the device
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`in the dark, e.g. in times of emergency. Id. at Col. 9, ll. 63-66. In other
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`embodiments, the pin controlling the indicator 1104 may be a different pin
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`than the pin connected to the switch 1111. Id. at Col. 9, ll. 50-52. As
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`indicated in still other embodiments, the microchip 201 may be programmed
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`to operation the energy consuming load 105 to indicate an emergency
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`situation, for example, by generating an S.O.S. signal. Id. Col. 7, ll. 44-51.
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`Accordingly, the microchip 1113 can control the visible indicator 1104 to be
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`load 105.
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`activated independently of activating or operating the energy consuming
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`18. Claim 1 of the ‘970 patent recites three principal elements of
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`the claimed electronic device. As noted, this device could be a flashlight, or
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`any type of electrical device that benefits from a microchip/microprocessor
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`based electrical switching and control system. The three principal elements
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`- 10
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`10 of 41
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`of the electronic module are the microchip itself, a switch, and a luminous
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`visible location indicator controlled by the microchip.
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`19. Claim 1 of the ‘970 patent further indicates that the switch is “a
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`user interface and does not form a serial link in a circuit that transfers power
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`from the power source to power the load…”. For example, in FIG. 2, the
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`switch 102 does not conduct current to the energy consuming load 105.
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`Instead, the microchip 103 of FIG. 2 controls and conducts current to the
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`energy consuming load 105 through switch 202 in accordance with a signal
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`from the user interface switch 102. Col. 7, ll.10-14.
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`20. Claim 1 of the ‘970 indicates that the microchip controls the
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`luminous visible location indicator and the luminous visible location
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`indicator is not the energy consuming load of the product. In terms of the
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`exemplary flashlight, the luminous visible location indicator would indicate
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`a location of the flashlight, for example, in an emergency situation, and
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`would not be the bulb of the flashlight. Col. 9, ll. 47-67.
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`21. Claim 1 of the ‘970 patent further indicates that the microchip
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`controls the luminous visible location indicator according to at least one
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`configuration of (1) upon receiving a signal from the user interface switch,
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`the visible indicator at least indicates a condition of the product, and the
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`switch is a touch sensor type switch, (2) when the energy consuming load is
`
`- 11
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`11 of 41
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`not on, the luminous visible location indicator is activated to indicate an
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`activation signal from the switch, and (3) when the energy consuming load is
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`off and the device is not connected to a mains power supply, the luminous
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`the device.
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`visible location indicator also indicates a power level of the power source of
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`22. With respect to the first alternative (1), the switch is required to
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`be a touch sensor type switch that, when operated, provides a signal to the
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`microchip to control the luminous visible location indicator to indicate a
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`condition of the product. In terms of the exemplary flashlight, the luminous
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`visible location indicator may flash to indicate that the battery is in a good or
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`23. With respect to the second alternative (2), the luminous visible
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`bad condition. Col. 9, ll. 60-67.
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`location indicator is activated at least to indicate an activation signal from
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`the switch when the energy consuming load is not activated. For example,
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`the microchip turns on the luminous visible location indicator in response to
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`a signal from the switch while the energy consuming load is not activated.
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`24. With respect to the third alternative (3), the luminous visible
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`‘970 Abstract.
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`location indicator is operated to indicate a power level of the power source
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`when the energy consuming load is off and the product is not connected to a
`
`- 12
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`12 of 41
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`mains supply. In the exemplary flashlight, the luminous visible indicator
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`may be operated to indicate the condition of the battery of the flashlight.
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`25. Each of claims 3-5, 10-14, 19, 48, 49, and 51 of the challenged
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`Col. 9, ll. 47-49.
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`claims depends from Claim 1, and to my understanding, accordingly
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`requires the elements discussed above, in addition to those recited in the
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`dependent claim. Thus, for illustrative purposes, Claim 3 has all the
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`limitations discussed above, but wherein the second alternative (2) recited in
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`claim 1 must be met, that is, where the luminous visible location indicator is
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`activated to indicate an activation signal from the switch when the energy
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`consuming load is not on. Claim 3 additionally requires that the user
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`interface include at least a touch sensor switch.
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`26. Claim 10 depends upon claims 3 and 1 and has all the
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`limitations discussed above with respect to claims 1 and 3. Claim 10 further
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`requires that the touch sensor switch is implemented to be structurally
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`27. Claim 12 depends upon claims 10, 3, and 1 and has all the
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`integral with the product housing.
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`limitations discussed above with respect to claims 1, 3, and 10. Further,
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`claim 12 recites that a function selected by a user interface activation signal
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`is automatically shut off after a predetermined period of time. The function
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`- 13
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`13 of 41
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`recited in claim as being selected by the user interface activation signal is
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`different from the activation of the visible indicator activated at least to
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`indicate the activation signal from the switch as recited in alternative (b) of
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`28. Claim 19 depends upon claim 1 and selects alternative (b) claim
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`claim 1.
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`1, which, again, recites that the visible indicator is activated at least to
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`indicate an activation signal from the switch when the energy consuming
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`load is not activated. Claim 19 adds that the microchip also controls at least
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`the activation of a function that automatically shuts off. The activation is
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`controlled by the microchip in response to a switch activation signal
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`received from a touch sensor. Claim 19 recites two functions, one activated
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`by the switch and the other activated by a touch sensor switch, each
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`29. Unlike device Claims 1 – 51, Claim 52 of the ‘970 patent is a
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`controlled by the microchip.
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`method claim, which specifies three steps in the context of the microchip-
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`based switching system of the devices disclosed in the ‘970 patent. Claim 52
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`requires (1) the user interface switch is a touch sensor type switch that is
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`operated to control operation of the microchip and not a serial link in a
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`circuit that powers the energy consuming load between the power source and
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`the energy consuming load, (2) the microchip is used to control the
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`- 14
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`14 of 41
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`connection of the power source to the energy consuming load and the
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`activation of the indicator, and (3) the indicator is activated when the energy
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`consuming load is not on to indicate at least one of (a) a condition of the
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`product, (b) and activation of the switch, and (c) a power level of the power
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`source of the product.
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`claims, the ‘970 Patent illustrates each of these steps.
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`30. As discussed above in the context of the challenged product
`III. LIST OF DOCUMENTS CONSIDERED IN FORMULATING
`31.
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`MY OPINION
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`In formulating my opinion, I have considered all of the
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`following documents:
`
`Exhibit
`
`Description and Designation
`
`
`
` Petition for Inter Partes Review of U.S. Patent No. 7,329,970,
`IPR2015-01173, Paper 4 (“Petition”)
`1001 U.S. Patent No. 7,329,970
`1002
`File history for U.S. Patent 7,329,970
`1003 Declaration of Paul Beard
`1005 U.S. Patent 5,898,290 “Beard”
`1006 U.S. Patent 5,955,869 “Rathmann”
`1007 U.S. Patent 5,710,728 “Danielson”
`
`Decision of the PTAB to Institute (Paper 13)
`2001 Robert E. Morley, Jr., curriculum vitae
`2002 Deposition Transcript of Paul Beard regarding
`IPR2015-01171, IPR2015-01172, IPR2015-01173,
`IPR2015-01174, IPR2015-01175, IPR2015-01603, and
`IPR2015-01616, dated February 11, 2016
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`- 15
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`15 of 41
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`32.
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`I am informed that it is permissible to determine the level of
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`ordinary skill in the art from a review of relevant prior art references. For
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`purposes of this Declaration, I am relying on the 1998 priority date listed on
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`the face of the ’970 Patent to establish the appropriate level of ordinary skill.
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`33.
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`In my view, the level of ordinary skill relevant to the ‘970
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`Patent is evident from a review of the prior art references cited in the
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`Petition and related art. These and other contemporaneous references invoke
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`a limited body of knowledge in electronics and microchip controlled
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`circuitry and related art. A student of electrical engineering with an
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`undergraduate degree electronics, electrical circuitry or equivalent degree, is
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`representative of the person of skill in this art. Such an individual would be
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`familiar with the design and application of low-level circuitry and switching
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`functions, and have a working knowledge of microchip-based systems
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`34. A degree alone does not confer on an individual real world
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`design and operation.
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`knowledge and understanding of how circuits and electronics are designed
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`and implemented. Thus, the undergraduate degree would be augmented, in
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`someone of ordinary skill in the art, with a year or so of work in the field
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`- 16
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`16 of 41
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`(such as laboratory work for hire by a private corporation or postgraduate
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`study) preferably in the design, construction and implementation of
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`microchip-based electronic circuitry.
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`with or knowledge of microprocessor-based software design, as well as an
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`understanding of then available microchips and their application.
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`35. A person of ordinary skill in this art would have experience
`V. LEGAL STANDARDS
`36.
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`I have not been asked to offer an opinion on the law; however, I
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`understand that I am obliged to follow existing law. I have therefore been
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`asked to apply the following legal principles to my analysis, and I have done
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`so.
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`A. Anticipation
`37.
`
`I understand that to be valid, a patent claim must be “novel,”
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`and is invalid if “anticipated” by a single prior art reference. I further
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`understand a reference anticipates if it discloses each and every element as
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`arranged in the claim, so as to enable a person of ordinary skill in the art to
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`make and use the claimed invention without undue experimentation.
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`I understand that the express, implicit, and inherent disclosures
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`38.
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`of a prior art reference may be relied upon when analyzing anticipation.
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`However, I understand the fact that a certain result or characteristic may
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`- 17
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`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`17 of 41
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`
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`occur or may be present in the prior art is not sufficient to establish the
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`inherency of that result or characteristic.
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`I also understand the disclosure in an allegedly anticipating
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`39.
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`reference must provide an enabling disclosure of the desired subject matter.
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`The considerations I evaluated in assessing whether a reference sets forth the
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`elements of a claim in a sufficient manner such that a person of ordinary
`
`skill in the art could have readily made and used the claimed invention
`
`without undue experimentation include: the breadth of the claim, the nature
`
`of the invention, the state of the prior art, the level of one of ordinary skill,
`
`the level of predictability in the art, the amount of direction provided by the
`
`reference, the existence of working examples, and the quantity of
`
`experimentation needed to make or use the invention based on the content of
`
`the disclosure.
`
`B. Obviousness
`40.
`
`I understand that even if a patent is not anticipated, it is still
`
`invalid if the differences between the claimed subject matter and the prior art
`
`are such that the subject matter as a whole in my view would not have been
`
`innovative at the time the invention was made to a person having ordinary
`
`skill in the pertinent art.
`
`- 18
`
`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`18 of 41
`
`
`
`41.
`
`I understand a person having ordinary skill in the art (i.e., a
`
`PHOSITA) is a hypothetical person who is presumed to have known the
`
`relevant art at the time of the invention was made. I understand the
`
`requirement “at the time the invention was made” is to avoid impermissible
`
`hindsight. I also understand an expert is to analyze the prior art from the
`
`perspective of a person of ordinary skill in the art and not simply provide his
`
`own personal conclusions.
`
`42.
`
`I also understand that an obviousness determination includes
`
`43.
`
`several factual inquiries, including (1) determining the scope and content of
`
`the prior art; (2) ascertaining the differences between the claimed invention
`
`and the prior art; (3) resolving the level of ordinary skill in the pertinent art;
`
`and (4) taking into consideration any secondary indicia of non-obviousness.
`
`I am informed that secondary indicia of non-obviousness may
`
`include (1) a long felt but unsolved need that was satisfied by the claimed
`
`invention; (2) commercial success attributable to the claimed invention; (3)
`
`unexpected results achieved by the claimed invention; praise by experts of
`
`the claimed invention with factual support; (4) taking of licenses under the
`
`patent by others for reasons related to the alleged nonobviousness of the
`
`claimed invention; and (5) evidence that competitors in the marketplace are
`
`copying the invention instead of using the prior art. I also understand that
`
`- 19
`
`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`19 of 41
`
`
`
`there must be a relationship, or nexus, between any such secondary indicia
`
`and the claimed invention, i.e., objective evidence of nonobviousness must
`
`be attributable to the claimed invention. I further understand that near
`
`simultaneous invention by two or more equally talented inventors working
`
`independently may or may not be an indication of obviousness when
`
`considered in light of all the circumstances.
`
`Combining prior art elements according to known methods
`
`to yield predictable results;
`
`Simple substitution of one known element for another to
`
`obtain predictable results;
`
`Use of known technique to improve similar devices
`
`(methods, or products) in the same way;
`
`Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`“Obvious to try” – choosing from a finite number of
`
`identified, predictable solutions, with a reasonable
`
`expectation of success;
`
`- 20
`
`I understand a conclusion of obviousness can be based on a
`
`combination of multiple prior art references. I understand that exemplary
`
`rationales that may support a conclusion of obviousness include:
`
`44.
`(A)
`(B)
`(C)
`(D)
`(E)
`
`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`20 of 41
`
`
`
`(F)
`
`(G)
`
`45.
`46.
`
`trends.
`
`Known work in one field of endeavor may prompt
`
`variations of it for use in either the same field or a different
`
`one based on design incentives or other market forces if the
`
`variations are predictable to one of ordinary skill in the art;
`
`Some teaching, suggestion, or motivation in the prior art
`
`that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`I further understand that an obviousness analysis recognizes
`
`I understand that if a technique has been used to improve one
`
`that market demand, rather than scientific literature, often drives design
`
`device, and a person of ordinary skill in the art would recognize it would
`
`improve similar devices in the same way, using the technique is obvious
`
`47.
`
`unless its actual application is beyond his or her skill.
`
`I also understand that practical and common sense
`
`considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I further
`
`understand that applying common sense does not require a “specific hint or
`
`- 21
`
`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`21 of 41
`
`
`
`suggestion in a particular reference,” only a reasoned explanation that avoids
`
`48.
`
`conclusory generalizations.
`
`I understand a person of ordinary skill in the art addressing a
`
`problem will often be able to fit the teachings of multiple publications
`
`together like pieces of a puzzle. In this regard, I understand that an
`
`obviousness analysis may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`I understand a particular combination may be proven obvious
`
`49.
`
`50.
`
`merely by showing that it was obvious to try the combination. For example,
`
`when there is a design need or market pressure to solve a problem and/or
`
`there is a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success, a person of ordinary skill in the art has good reason
`
`to pursue the known options within his or her technical grasp. I understand
`
`that if this leads to anticipated success, it is likely the result not of innovation
`
`but of ordinary skill and common sense.
`
`I understand the combination of familiar elements according to
`
`known methods is likely obvious when it does no more than yield
`
`predictable results. When work is known in one field of endeavor, it may
`
`prompt variations of that work for use in either the same field or a different
`
`one, based on design incentives and other market forces. If a technique has
`
`- 22
`
`Global Touch Solutions, LLC
`Exhibit 2003
`Apple Inc. et al. v. Global Touch Solutions, LLC
`IPR2015-01173
`22 of 41
`
`
`
`been used to improve one device, and a person of ordinary skill in the art can
`
`implement a predictable variation, it is likely unpatentable.
`
`It is further my understanding that to be proper for use in an
`
`51.
`
`obviousness analysis, a reference must be analogous art to the claimed
`
`invention. Accordingly, I understand that under the correct analysis, any
`
`need or problem known in the field of endeavor at the time of the invention
`
`and addressed by the claimed invention can provide a reason for combining
`
`the elements in the manner claimed.
`
`52.
`
`I understand a claim can be obvious in light of a single
`
`53.
`
`reference, without the need to combine references, if the elements of the
`
`claim that are not found explicitly or inherently in the reference can be
`
`supplied by the common sense of one of skill in the art. For example,
`
`combining two embodiments disclosed adjacent to each other in a prior art
`
`patent does not require a leap of inventiveness.
`
`I understand a claimed invention may be obvious if it involves
`
`merely simple substitution of one known element for another to obtain
`
`predictable results. I understand further that the prior art need not be like
`
`two puzzle pieces that must fit together perfectly. For example, a claimed
`
`invention may be found obvious if
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