Paper _____
`
`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 IPR2015-01172
`Patent No. 7,498,749 B2
`________________
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`Ex. 1040-0001
`
`
`
`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 IPR2015-01172
`Patent No. 7,498,749 B2
`________________
`
`DECLARATION OF ROBERT E. MORLEY, JR.
`
`Ex. 1040-0001
`
`
`
`I, Robert E. Morley, Jr. do hereby declare and state that:
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`II.
`
`INTRODUCTION
`1.
`My name is Robert Morley. I am a Professor in the Electrical
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`and Systems Engineering Department at the Washington University in St.
`
`Louis, Missouri. I hold the degrees of BS, MS, and D.Sc. all conferred on
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`me by Washington University in St. Louis in 1973, 1975, and 1977,
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`respectively. Prior to joining the faculty of Washington University in St.
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`Louis I worked in the industry addressing electronics and micro-electronics.
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`I have remained active in industry during my appointment to the faculty of
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`Washington University in St. Louis.
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`2.
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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
`
`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;
`
`7772781; 7,798,749; 7,329,970; 7,781,980; 8,035,623; and 8,288,952. I
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`understand that this proceeding involves U.S. Patent No. 7,329,970 (“the
`
`‘970 Patent”). It is my understanding that the other patents are the subject of
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`related IPRs and that the subject matter specific to each is considered in each
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`separate Declaration.
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`- 2
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`Ex. 1040-0002
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`
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`3.
`
`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 21 and 23 of the ‘749 Patent (sometimes referred to
`
`herein as the “challenged claims”) are unpatentable as obvious over U.S.
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`Patent 5,898,290 to Beard, taken in view of U.S. Patent 5,955,869 to
`
`Rathmann. At the same time I understand that in a distinct but related
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`proceeding, IPR2015-01148, claims of the ‘749 Patent are challenged as
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`obvious over two different references, U.S. Patent 6,125,286 to Jahagirdar
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`and U.S. Patent 4,053,789 to Schultz. Further, the same references are
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`alleged to be the foundation of arguments that claims of another related
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`patent, U.S. Patent 7,329,970 are obvious. While I have prepared a separate
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`and distinct Declaration for that proceeding and the other related
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`proceedings as well, it is easy to see that there is a substantial amount of
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`technical overlap in the subject matter of these proceedings, and
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`consequently, I have considered this family of patents together.
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`4.
`
`I have reviewed and am familiar with the ‘749 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 and Rathmann patents. I also have reviewed and
`
`am familiar with the Declaration of Paul Beard, provided to me as Ex. 1003.
`
`I have also reviewed the decision of the Patent Trial and Appeal Board
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`- 3
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`Ex. 1040-0003
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`
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`identified as Paper 13, dated November 17, 2015. While it is the opinion
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`expressed in Paper 13 that the combination of Beard and Rathmann, as
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`would have been made by one of skill in the art, renders the challenged
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`claims obvious, in this Declaration I express the opinion that one of skill in
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`the art would not have combined those references in the fashion relied upon,
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`and that the challenged claims are not obvious over that combination of art
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`as considered by a person of skill in the art around 1998.
`
`5.
`
`As noted above, I am familiar with the type of technology
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`addressed in the ‘970 Patent as of 1998, which I understand to be the year in
`
`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 and Rathmann Patents. I am being compensated for
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`my work in connection with the GTS Patents and the several IPRs at my
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`established rate of $500 per hour. My compensation does not depend on the
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`outcome of this proceeding.
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`6.
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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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`and its file history, and the Beard and Rathmann patents. Although the other
`
`- 4
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`Ex. 1040-0004
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`
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`IPRs directed at the GTS patents and the art cited therein form a backdrop
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`for my opinions, if I have relied on art other than that cited in this
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`proceeding for my opinions in a specific or selective way, it is specifically
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`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 microprocessor-
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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 17 U.S. Patents naming me as the
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`inventor or one of the inventors over the years, has allowed me to develop a
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`fundamental understanding of the concepts underlying obviousness.
`
`ii.
`
`Other Relevant Qualifications
`As noted above, I have had significant involvement in the
`
`8.
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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 as inventor. Obviousness of claims over the prior art is a question I have
`
`- 5
`
`Ex. 1040-0005
`
`
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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.
`
`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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`curriculum vitae includes a compilation of my publications and patents and
`
`relevant experience.
`
`
`
`II. The ‘749 PATENT
`
`10.
`
`The referenced Petition seeks invalidation of certain claims of
`
`the ‘749 Patent. The subject matter of this patent is generally directed to
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`products and devices powered by electricity, and specifically including a
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`microchip to control electrical switching of power to a load. By reliance on a
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`microchip or integrated circuit based switching system, multiple functions
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`can be combined into one device, and power savings and other advantageous
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`features may be realized.
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`11.
`
`The ‘749 Patent is illustrated largely in terms of an “intelligent
`
`flashlight.” While the terms of the patent are applied directly to a flashlight,
`
`such that the bulb of the flashlight constitutes the electrical “load” of the
`
`device, in fact the Patent makes it clear that this is for purposes of
`
`- 6
`
`Ex. 1040-0006
`
`
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`illustration only and in no way limiting of its application. At Col. 6, ll. 33–
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`47, the ‘749 Patent makes it clear that the application of the invention to a
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`flashlight is for purposes of illustration, and the invention is applicable to
`
`many other devices by using the ‘749 Patent’s electrical switching design.
`
`12. Unlike Claims 1–20, Claim 21 of the ‘749 Patent is a method
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`claim, which specifies three steps in the context of the microchip-based
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`switching system of the devices disclosed in the ‘749 Patent. Claim 21
`
`recites a preamble that indicates it is directed to a method of implementing a
`
`new user interface for a “product.” My understanding is that the “product” of
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`Claim 21 is the “device” or “unit” of the product claims, which as noted, is
`
`illustrated in the ‘749 Patent as a flashlight. My understanding is reinforced
`
`by the fact that the interface is said to be for a product which comprises a
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`connection for a power supply (such as a battery) and at least one energy
`
`consuming load.
`
`13. As noted, the ‘749 patent illustrates the invention of the Claims
`
`of the patent by reference to a flashlight, in which case the “load” is the bulb
`
`of the flashlight. Other devices are identified, and the particular device
`
`described by the patent is not limited except that it have connections to a
`
`power source and an energy consuming load of some type.
`
`- 7
`
`Ex. 1040-0007
`
`
`
`14.
`
`The user interface of claim 21 is said to use at least one touch
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`sensor user interface switch and a visible indicator. I understand that the
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`interface of Claim 21 may employ other elements, but it must have at least
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`one touch sensor user interface switch, and a visible indicator.
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`15.
`
` Claim 21 requires: 1) that the visible indicator of a product be
`
`activated in response to a signal from a user interface switch signal (i.e., a
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`signal from the user interface switch), 2) that the indicator is activated when
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`the load (the flashbulb in the context of the illustrative flashlight) is not
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`activated by the user and 3) that an automatic deactivation of a function that
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`was activated in response to an activation signal from the user interface
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`switch be performed.
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`16. Claim 23 depends from Clam 21, and further recites that the
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`touch sensor switch pad is integral with the product housing. In the context
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`of understanding claims of a U.S. patent, I understand that where the word
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`“the” is used to refer to an article or recitation, the particular article or
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`recitation in question is recited either in the claim, or in a claim from which
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`it depends. Accordingly, I understand the touch switch sensor “pad” to be a
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`pad associated with the touch switch sensor user interface recited in Claim
`
`21. I understand the term “the product housing” to refer to a housing or shell
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`in which the product of Claim 21 is contained.
`
`- 8
`
`Ex. 1040-0008
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`
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`17. As discussed above in the context of the challenged device
`
`claims, the ‘749 Patent illustrates each of these steps. The ‘749 Patent refers
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`frequently to “activation.” This term seems to be used consistently to
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`indicate turning something on. Activation of a deactivation signal would, of
`
`course, mean turning something off. Everywhere the ‘749 Patent disclosure
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`refers to “activating” or “deactivating” it refers to turning a module on or
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`off, as opposed to merely providing some information to that module. I have
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`set forth my opinions below, consistent with this understanding.
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`III.
`
`LIST OF DOCUMENTS CONSIDERED IN
`FORMULATING MY OPINION
`18.
`In formulating my opinion, I have considered all of the
`
`following documents:
`
`Exhibit
`
`Description and Designation
` Petition for Inter Partes Review of U.S. Patent No. 7,498,749,
`IPR2015-01172, (“Petition”)
`1001 U.S. Patent No. 7,498,749
`1002
`File history for U.S. Patent 7,498,749
`1003 Declaration of Paul Beard
`1005 U.S. Patent 5,898,290 “Beard”
`1006
`U.S. Patent 5,955,869 “Rathmann”
`
`Decision of the PTAB to Institute (Paper 13)
`
`- 9
`
`Ex. 1040-0009
`
`
`
`IIII. PERSON OF ORDINARY SKILL IN THE ART
`19.
`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
`
`the face of the ’749 Patent to establish the appropriate level of ordinary skill.
`
`20.
`
`In my view, the level of ordinary skill relevant to the ‘749
`
`Patent is evident from a review of the prior art references cited in the
`
`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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`design and operation.
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`21. A degree alone does not confer on an individual real world
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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
`
`- 10
`
`Ex. 1040-0010
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`
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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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`22. A person of ordinary skill in this art would have experience
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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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`IV. LEGAL STANDARDS
`
`23.
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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.
`
`AA.
`24.
`
`Anticipation
`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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`25.
`
`I understand that the express, implicit, and inherent disclosures
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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
`
`- 11
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`Ex. 1040-0011
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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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`26.
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`I also understand the disclosure in an allegedly anticipating
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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
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`skill in the art could have readily made and used the claimed invention
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`without undue experimentation include: the breadth of the claim, the nature
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`of the invention, the state of the prior art, the level of one of ordinary skill,
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`the level of predictability in the art, the amount of direction provided by the
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`reference, the existence of working examples, and the quantity of
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`experimentation needed to make or use the invention based on the content of
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`the disclosure.
`
`BB.
`27.
`
`Obviousness
`I understand that even if a patent is not anticipated, it is still
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`invalid if the differences between the claimed subject matter and the prior art
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`are such that the subject matter as a whole in my view would not have been
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`innovative at the time the invention was made to a person having ordinary
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`skill in the pertinent art.
`
`- 12
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`Ex. 1040-0012
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`
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`28.
`
`I understand a person having ordinary skill in the art (i.e., a
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`PHOSITA) is a hypothetical person who is presumed to have known the
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`relevant art at the time of the invention was made. I understand the
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`requirement “at the time the invention was made” is to avoid impermissible
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`hindsight. I also understand an expert is to analyze the prior art from the
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`perspective of a person of ordinary skill in the art and not simply provide his
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`own personal conclusions.
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`29.
`
`I also understand that an obviousness determination includes
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`several factual inquiries, including (1) determining the scope and content of
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`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.
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`30.
`
`I am informed that secondary indicia of non-obviousness may
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`include (1) a long felt but unsolved need that was satisfied by the claimed
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`invention; (2) commercial success attributable to the claimed invention; (3)
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`unexpected results achieved by the claimed invention; praise by experts of
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`the claimed invention with factual support; (4) taking of licenses under the
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`patent by others for reasons related to the alleged nonobviousness of the
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`claimed invention; and (5) evidence that competitors in the marketplace are
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`copying the invention instead of using the prior art. I also understand that
`
`- 13
`
`Ex. 1040-0013
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`
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`there must be a relationship, or nexus, between any such secondary indicia
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`and the claimed invention, i.e., objective evidence of nonobviousness must
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`be attributable to the claimed invention. I further understand that near
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`simultaneous invention by two or more equally talented inventors working
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`independently may or may not be an indication of obviousness when
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`considered in light of all the circumstances.
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`31.
`
`I understand a conclusion of obviousness can be based on a
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`combination of multiple prior art references. I understand that exemplary
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`rationales that may support a conclusion of obviousness include:
`
`(A)
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`Combining prior art elements according to known methods
`
`to yield predictable results;
`
`(B)
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`Simple substitution of one known element for another to
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`obtain predictable results;
`
`(C)
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`Use of known technique to improve similar devices
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`(methods, or products) in the same way;
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`(D)
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`Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`(E)
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`“Obvious to try” – choosing from a finite number of
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`identified, predictable solutions, with a reasonable
`
`expectation of success;
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`- 14
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`Ex. 1040-0014
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`
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`(F)
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`Known work in one field of endeavor may prompt
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`variations of it for use in either the same field or a different
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`one based on design incentives or other market forces if the
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`variations are predictable to one of ordinary skill in the art;
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`(G)
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`Some teaching, suggestion, or motivation in the prior art
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`that would have led one of ordinary skill to modify the
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`prior art reference or to combine prior art reference
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`teachings to arrive at the claimed invention.
`
`32.
`
`I further understand that an obviousness analysis recognizes
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`that market demand, rather than scientific literature, often drives design
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`trends.
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`33.
`
`I understand that if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize it would
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`improve similar devices in the same way, using the technique is obvious
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`unless its actual application is beyond his or her skill.
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`34.
`
`I also understand that practical and common sense
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`considerations should guide a proper obviousness analysis, because familiar
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`items may have obvious uses beyond their primary purposes. I further
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`understand that applying common sense does not require a “specific hint or
`
`- 15
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`Ex. 1040-0015
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`
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`suggestion in a particular reference,” only a reasoned explanation that avoids
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`conclusory generalizations.
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`35.
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`I understand a person of ordinary skill in the art addressing a
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`problem will often be able to fit the teachings of multiple publications
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`together like pieces of a puzzle. In this regard, I understand that an
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`obviousness analysis may take into account the inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`36.
`
`I understand a particular combination may be proven obvious
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`merely by showing that it was obvious to try the combination. For example,
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`when there is a design need or market pressure to solve a problem and/or
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`there is a finite number of identified, predictable solutions, with a reasonable
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`expectation of success, a person of ordinary skill in the art has good reason
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`to pursue the known options within his or her technical grasp. I understand
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`that if this leads to anticipated success, it is likely the result not of innovation
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`but of ordinary skill and common sense.
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`37.
`
`I understand the combination of familiar elements according to
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`known methods is likely obvious when it does no more than yield
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`predictable results. When work is known in one field of endeavor, it may
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`prompt variations of that work for use in either the same field or a different
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`one, based on design incentives and other market forces. If a technique has
`
`- 16
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`Ex. 1040-0016
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`
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`been used to improve one device, and a person of ordinary skill in the art can
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`implement a predictable variation, it is likely unpatentable.
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`38.
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`It is further my understanding that to be proper for use in an
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`obviousness analysis, a reference must be analogous art to the claimed
`
`invention. Accordingly, I understand that under the correct analysis, any
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`need or problem known in the field of endeavor at the time of the invention
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`and addressed by the claimed invention can provide a reason for combining
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`the elements in the manner claimed.
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`39.
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`I understand a claim can be obvious in light of a single
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`reference, without the need to combine references, if the elements of the
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`claim that are not found explicitly or inherently in the reference can be
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`supplied by the common sense of one of skill in the art. For example,
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`combining two embodiments disclosed adjacent to each other in a prior art
`
`patent does not require a leap of inventiveness.
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`40.
`
`I understand a claimed invention may be obvious if it involves
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`merely simple substitution of one known element for another to obtain
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`predictable results. I understand further that the prior art need not be like
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`two puzzle pieces that must fit together perfectly. For example, a claimed
`
`invention may be found obvious if a person of ordinary skill in the art would
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`view rearrangement as an obvious matter of design choice.
`
`- 17
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`Ex. 1040-0017
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`41.
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`Finally, I have been informed and understand that the
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`obviousness analysis requires a comparison of the properly construed claim
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`language to the prior art on a limitation-by-limitation basis.
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`
`
`V. BEARD AND RATHMANN
`
`42.
`
`In seeking to invalidate claims 21 and 23, the Petition relies on
`
`the combination of two references - U.S. Patent 5,898,290 to Beard, taken in
`
`view of U.S. Patent 5,955,869 to Rathmann. The Decision to Institute, Paper
`
`13, refers to these references by the last name of the first named inventor,
`
`and I shall refer to them in the same fashion in this Declaration.
`
`43. Beard describes an intelligent battery pack with a
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`microcontroller and a battery status indicator for use with a portable
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`electronic device. Ex. 1005, Col. 1, ll. 18–21; Ex. 1003 ¶ 72. The
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`microcontroller responds to a touch-sensing circuit that detects changes in
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`impedance or capacitance when an operator touches a pair of contacts. Ex.
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`1005, Col. 6, ll. 57–67, Col. 7, ll. 16-33, Col. 11, ll. 12–16; Ex. 1003 ¶ 72.
`
`Figure 11 of Beard is reproduced below.
`
`- 18
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`Ex. 1040-0018
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`
`
`44.
`
`Figure 11 depicts battery pack 201, and display 225 which
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`provides an operator with an indication of battery capacity whether or not
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`the battery pack is inserted into portable electronic device 203. Ex. 1005,
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`Col. 11, ll. 10–13. When fully inserted, battery pack contacts 241, 243, and
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`245 engage with corresponding portable device contacts 251, 253, and 255,
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`and, if sufficient power is available, device 203 may enter a fully operational
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`state when the operator desires. Id. at Col. 11, ll. 67– Col. 12, l. 4.
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`45. Rathmann describes a “smart battery for use in an intelligent
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`device having power management capabilities.” Ex. 1006, Col. 1, ll. 12–16,
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`Col. 1, l. 65– Col. 3, l. 7. The battery pack in Rathmann includes a
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`microcontroller, a battery-power indicator comprising LEDs, and a user-
`
`- 19
`
`Ex. 1040-0019
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`
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`interface switch. Id. at Col. 1, l. 65– Col. 2, l. 2, Col. 3, ll. 1–7, Col. 16, ll.
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`24–38, Fig. 3 (microprocessor 50, LEDs 34, and manual switch 35). In
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`response to a signal from the battery pack’s user interface, four LEDs
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`illuminate sequentially to indicate remaining battery charge. Id. at Col. 16,
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`ll. 24–38; Ex. 1003 ¶ 91. Rathmann provides detailed instructions on how
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`the microprocessor implements illumination of the correct number of LEDs
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`based on battery charge. Id. at Col. 58, l. 31– Col. 59, l. 32, Fig. 34; Ex.
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`1003 ¶¶ 89–90.
`
`VI. BEARD AND RATHMANN DO NOT RENDER THE
`CHALLENGED CLAIMS OBVIOUS
`
`46.
`
`The Decision to Institute concludes the evidence considered in
`
`the Decision supports a conclusion that, more likely than not, the
`
`combination of Beard and Rathmann would render claims 21 and 23
`
`obvious. The Board’s decision appears to accept the arguments set forth in
`
`the Petition, including that the function of Claim 21 to be deactivated in step
`
`(c) may be the same function activated in step (a) of Claim 21, the visible
`
`indicator. Paper 13, page 7.
`
`47. Claim 21 of the ‘749 Patent specifically calls for the claimed
`
`method to comprise “activating the visible indicator in response to a user
`
`interface switch activation signal” (step a) and recites “activating the
`
`indicator when the load is not activated by the user.” (step b). Claim 21
`
`- 20
`
`Ex. 1040-0020
`
`
`
`recites an additional step c that calls for “performing an automatic delayed
`
`deactivation of a function that was activated in response to an activation
`
`signal received via the user interface switch.” Claim 21 does not indicate
`
`what specific function is to be the subject of the delayed deactivation step –
`
`it can be any function other than the indicator, which is already identified in
`
`Claim 21 to be activated by a switch activation signal.
`
`48.
`
`The performance of multiple functions by the device provided
`
`with the user interface of Claim 21 is consistent with the specification of the
`
`‘749 Patent. As one example, the patent provides the automatic delayed
`
`deactivation of a function that comprises the playing of music, where the
`
`product is a radio. Col. 10, ll. 3 – 8.
`
`49. One of the reasons disclosed in the ‘749 Patent for using a
`
`microchip is that it may be used to control a visible indicator and one or
`
`more other functions. Col. 10, ll. 26 – 50. The section of the specification of
`
`the ‘749 Patent entitled SUMMARY OF THE INVENTION stresses the
`
`ability of the microchip to control multiple function activations/deactivations
`
`at Col. 4, ll. 19 – 31. This strongly indicates to me that the function that is to
`
`be deactivated in step c of Claim 21 must be a function other than the visible
`
`indicator specifically indicated to be activated in step a, without activating
`
`the load. Otherwise, the language of step c would be apparently
`
`- 21
`
`Ex. 1040-0021
`
`
`
`inappropriate – referring to some function activated in response to an
`
`activation signal received via the user interface switch, when the claim
`
`already indicates in step a that the visible indicator is activated in response to
`
`a user interface switch activation signal.
`
`50.
`
`Put another way, Claim 21 recites two separate function
`
`activations in response to an activation signal received via the user interface
`
`switch. One is recited as the activation of the visible indicator. Then, an
`
`activation to be automatically deactivated in step c, must be something else,
`
`such as the deactivation of the radio in the example of the ‘749 Patent at Col.
`
`10, ll. 3 – 8.
`
`51.
`
`The only function indicated in the Decision to Institute to be
`
`deactivated in accordance with the requirements of step c of Claim 21
`
`appears to be the visible indicator. “For example, Beard discloses that the
`
`charge status information display automatically deactivates the indication
`
`after ten seconds.” Decision, page 7. No other previously activated function
`
`is discussed. As noted, this is inconsistent with the language of Claim 21,
`
`which in step c requires deactivation of some function other than the visible
`
`indicator. While the Claims language and structure require some other
`
`function be deactivated, and the examples of the ‘749 Patent specification
`
`are consistent with the requirement that some function other than the visible
`
`- 22
`
`Ex. 1040-0022
`
`
`
`indicator be controlled by the microchip of the user interface, no such
`
`additional function is set forth in Beard, regardless of it being considered in
`
`light of Rathmann.
`
`52.
`
`I recognize that in providing this Declaration, it may be used as
`
`evidence in the above-captioned proceeding. I accordingly agree to appear
`
`for cross-examination within the scope of this Declaration and a convenient
`
`time and place within the United States, should the same be requested.
`
`All statements made herein of my own knowledge are true, and all
`
`statements made on information and belief is believed to be true. Further, I
`
`am aware that willful false statements and the like are punishable by fine,
`
`imprisonment or both, under 18 U.S.C. 1001, and that any such willful false
`
`statement may impact the validity of U.S. Patent 7,498,749.
`
`Subscribed and sworn to pursuant to the penalties of perjury.
`
`4
`Dated: March ____, 2016
`
`______________________________
`Robert E. Morley, Jr.
`
`(cid:42)(cid:79)(cid:82)(cid:69)(cid:68)(cid:79)(cid:3)(cid:55)(cid:82)(cid:88)(cid:70)(cid:75)(cid:3)(cid:54)(cid:82)(cid:79)(cid:88)(cid:87)(cid:76)(cid:82)(cid:81)(cid:86)(cid:15)(cid:3)(cid:47)(cid:47)(cid:38)
`(cid:40)(cid:91)(cid:75)(cid:76)(cid:69)(cid:76)(cid:87)(cid:3)(cid:21)(cid:19)(cid:19)(cid:21)
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:44)(cid:81)(cid:70)(cid:17)(cid:15)(cid:3)(cid:48)(cid:82)(cid:87)(cid:82)(cid:85)(cid:82)(cid:79)(cid:68)(cid:3)(cid:48)(cid:82)(cid:69)(cid:76)(cid:79)(cid:76)(cid:87)(cid:92)(cid:3)(cid:47)(cid:47)(cid:38)(cid:3)
`(cid:68)(cid:81)(cid:71)(cid:3)(cid:55)(cid:82)(cid:86)(cid:75)(cid:76)(cid:69)(cid:68)(cid:3)(cid:36)(cid:80)(cid:72)(cid:85)(cid:76)(cid:70)(cid:68)
`(cid:89)(cid:17)(cid:3)(cid:42)(cid:79)(cid:82)(cid:69)(cid:68)(cid:79)(cid:3)(cid:55)(cid:82)(cid:88)(cid:70)(cid:75)(cid:3)(cid:54)(cid:82)(cid:79)(cid:88)(cid:87)(cid:76)(cid:82)(cid:81)(cid:86)(cid:15)(cid:3)(cid:47)(cid:47)(cid:38)
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:24)(cid:16)(cid:19)(cid:20)(cid:20)(cid:26)(cid:21)
`
`- 23
`
`Ex. 1040-0023
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