UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
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`AMIT AGARWAL,
`Petitioner,
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`v.
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`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
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`CORRECTED DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF IMMERSION CORPORATION’S
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE
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`Immersion Ex. 2009-1
`Amit Agarwal v. Immersion Corp., IPR2016-00807
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`AMIT AGARWAL,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`___________________
`
`Case IPR2016-00807
`Patent No. 8,773,356
`___________________
`
`
`
`CORRECTED DECLARATION OF NATHAN J. DELSON, PH.D.
`IN SUPPORT OF IMMERSION CORPORATION’S
`CORRECTED PATENT OWNER PRELIMINARY RESPONSE
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`CORRECTED DECLARATION OF NATHAN J. DELSON
`Case IPR2016-00807
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`I, Nathan J. Delson, declare as follows:
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`I.
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`INTRODUCTION
`1. My name is Nathan J. Delson. I am a Teaching Professor and the
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`Director of the Mechanical Engineering Design Center at the University of
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`California, San Diego (UCSD).
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`2.
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`I have been engaged by Immersion Corporation (“Immersion”) as an
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`expert in connection with matters raised in the Petition for Inter Partes Review
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`(“Petition”) of U.S. Patent No. 8,773,356 (the “’356 patent”) filed by Amit
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`Agarwal (“Petitioner”).
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`3.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`have not yet been taken.
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`II.
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`SUMMARY OF OPINIONS
`4.
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`The ’356 Patent in general describes mobile devices such as mobile
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`telephones or Personal Digital Assistants (“PDA”) and in particular discloses
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`providing tactile sensations in such devices when a user interacts with such
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`devices. Multiple embodiments are disclosed. Exhibit 1001, at Abstract,
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`Summary. The Petition challenges claims 1-3, 5, 7, 9-13, 15, 17, 19-23, 25, and 26
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`of the ’356 patent.
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`5.
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`The Petition raises a single prior art reference for anticipation of
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`claims 1-3, 9-13, 19-23, and 25, and 26 of the ’356 patent. Petition at 1. The
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`single prior art reference is U.S. Patent Application No. 09/487,737 (“’737
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`Application”) which was published as U.S. 2001/0035854. Exhibit 1002.
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`According to the Petition, the ’737 Application incorporates by reference another
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`application, U.S. Application No. 09/103,281 (“’281 Application”). Petition at 5-
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`7. I understand that the Petition did not raise any obviousness ground of rejection
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`for claims 1-3, 9-13, 19-23, and 25, and 26 of the ’356 patent. Based on studying
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`the Petition and the exhibits cited in the Petition as well as other documents, it is
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`my opinion that claims 1-3, 9-13, 19-23, and 25, and 26 of the ’356 patent are not
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`anticipated by the cited reference.
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`6.
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`The Petition also raises an obviousness ground of rejection for
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`dependent claims 5, 7, 15, and 17. Petition at 1. It is my opinion that the Petition’s
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`challenge of claims 5, 7, 15, and 17 also fails.
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`III. QUALIFICATIONS AND EXPERIENCE
`7.
`I obtained my Ph.D. degree in Mechanical Engineering from
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`Massachusetts Institute of Technology (MIT) in 1994.
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`8.
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`I have worked for 20 years as a faculty teaching mechanical
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`
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`engineering design, first at Yale University and now at the University of California
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`at San Diego. My current position is Associate Teaching Professor and Director of
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`the Mechanical Engineering Design Center in the Department of Mechanical and
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`Aerospace Engineering. I have performed research in Robotics, Medical Devices,
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`and Design Education. I have lead a team that developed software that uses
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`touchscreen user interfaces for the educational market. I have also worked for two
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`years in the Aerospace Industry for United Technologies. I have consulted in
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`mechanical engineering for companies such as Design Continuum, Sixense,
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`DriveCam, and others. I have received awards from the National Inventors Hall of
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`Fame and for teaching design.
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`9.
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`I was co-founder of Coactive Drive Corporation (“Coactive”), which
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`developed and licensed technology for force feedback in computer gaming.
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`Coactive licensed the technology to Sony and Immersion. I sold my share in
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`Coactive in 2009. I hold a de minimis amount of Immersion stock as a result of
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`my former association with Coactive and I also own shares of Apple stock. While
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`at Coactive, I invented and co-invented several inventions, including an actuator
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`arrangement and force feedback joystick and was awarded several patents:
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`(cid:120) U.S. 6,002,184: Actuator With Opposing Repulsive Magnetic Forces
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`(cid:120) U.S. 6,147,422: Actuator With Opposing Repulsive Magnetic Forces
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`(cid:120) U.S. 6,307,285: Actuator With Repulsive Magnetic Forces
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`(cid:120) U.S. 7,683,508: Vibration Device
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`(cid:120) U.S. 7,919,945: Synchronized Vibration Device For Haptic Feedback
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`(cid:120) U.S. 7,994,741: Vibration Device
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`(cid:120) U.S. 8,384,316: Synchronized Vibration Device For Haptic Feedback
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`(cid:120) U.S. 8,390,218: Synchronized Vibration Device For Haptic Feedback
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`(cid:120) U.S. 8,981,682: Asymmetric and General Vibration Waveforms From
`Multiple Synchronized Vibration Actuators
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`10. The vibration devices that were invented were controlled by a
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`microprocessor to achieve a desired haptic effect. The force feedback joystick I
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`invented has a magnetic actuation that allows for stiffness control without the need
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`for a high speed feedback loop. Based on my education, work, and experience, I
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`am familiar with both microprocessor control for haptic applications as well as
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`alternative control methods to deal with challenges and the limitations of haptic
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`control.
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`11.
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`In my classes at the University of California at San Diego, I teach
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`machine design and mechatronics. Over the past 10 years, hundreds of students
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`have built and analyzed microprocessor controlled mechanisms.
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`12.
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`I lead the development of a software package that uses touchscreens
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`to teach spatial visualization and engineering sketching. In this package students
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`sketch assignments on a touchscreen with their finger or a stylus, and an algorithm
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`automatically grades their sketches and provides individualized hints when
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`students are stuck. I helped develop the grading algorithms and supervised the
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`programmers writing the code for the software. This work was published by the
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`American Society of Engineering Education (ASEE). Delson, Nathan and Van
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`Den Einde, Lelli, “Tracking Student Engagement with a Touchscreen App for
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`Spatial Visualization Training and Freehand Sketching,” 122nd ASEE Annual
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`Conference, June 14- 17, 2015 Seattle WA, Paper ID #13265. This software was
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`recently published on the Apple App store for iPads as “Spatial Vis” and “Spatial
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`Kids.” As part of developing this software I addressed issues relating to the user
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`interface, interpreting user inputs on a touchscreen, and developing responses to
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`user inputs.
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`13.
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`In summary, I have experience in the design of actuators, force
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`feedback devices, microprocessor control of haptic devices, design of software for
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`touchscreen interfaces, and general mechanical and electromechanical design.
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`14. A copy of my curriculum vitae is attached to this declaration as
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`Appendix A.
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`15.
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`I am being compensated by Immersion for my time spent in
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`connection with this declaration at a rate of $400 per hour. My compensation is
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`not contingent upon the substance of my opinions, the content of this declaration or
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`any testimony I may provide, or the outcome of the inter partes review or any
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`other proceeding.
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`16. My opinions expressed in this declaration are based on the Petition
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`and exhibits cited in the Petition, and other documents and materials identified in
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`this declaration, including the ’356 patent and its prosecution history, the prior art
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`references and materials discussed in this declaration, and any other references
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`specifically identified in this declaration.
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`IV. LEGAL PRINCIPLES
`A. Claim Construction
`17.
`It is my understanding that when construing claim terms in an
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`unexpired patent a claim subject to inter partes review receives the “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.”
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`B. Anticipation
`18.
`It is my understanding that for a single reference to anticipate a claim
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`under 35 U.S.C. § 102, the reference must disclose all elements of the claim within
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`the four corners of the document arranged or combined in the same way as in the
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`claim. It is also my understanding that to find anticipation, the claimed subject
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`matter must be identically disclosed or described in a prior art reference. I also
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`understand that courts have explained that it is not enough that the prior art
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`reference discloses part of the claimed invention, which an ordinary artisan might
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`supplement to make the whole, or that it includes multiple, distinct teachings that
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`the artisan might somehow combine to achieve the claimed invention.
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`19.
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`I also understand that for anticipation it is improper to treat claims as
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`mere catalogs of separate parts, in disregard of the part-to-part relationships set
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`forth in the claims. It is also my understanding that the prior art reference must
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`clearly and unequivocally disclose the claimed invention or direct those skilled in
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`the art to the invention without any need for picking, choosing, and combining
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`various disclosures not directly related to each other by the teachings of the cited
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`reference.
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`C. Obviousness
`20.
`I also understand that where there is no anticipation, a patent claim
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`may be invalid if the differences between the claimed subject matter and the prior
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`art reference are such that the claimed subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art.
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`V. OVERVIEW OF THE ’356 PATENT
`21. The ’356 patent is entitled “Method and Apparatus for Providing
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`Tactile Sensations.” The ’356 patent discloses embodiments of mobile devices
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`such as mobile telephones and PDAs, including mechanical and non-mechanical
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`embodiments. Exhibit 1002, Figs. 2, 3, 5. A mechanical embodiment is shown in
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`Figure 2 where the device 60 has mechanical buttons 10, 11, and 12 and can detect
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`the level of pressure applied to each button. Id., Col. 5:46-65. The device 60
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`includes an actuator 61 that can provide tactile sensations to a user contacting
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`device 60 based on an interaction with a button. Id., Col. 8:4-30. The ’356 patent
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`teaches that the device includes memory that contains a table where interactions
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`with the device are associated with various haptic effect data for providing tactile
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`sensations to a user, as shown in Figs. 9-10. Id., Col. 7:66-8:3.
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`22. The ’356 patent also discloses a touchscreen embodiment. In this
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`embodiment, the controller displays on the display 33 graphical objects such as a
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`plurality of softkeys 36a-i and other graphical outputs 37. Id., Col. 11:40-52; Fig.
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`5. As an object, such as a user’s finger, touches or contacts a graphical object
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`(e.g., a softkey 36), the controller is capable of receiving a sensor signal indicating
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`that an object has contacted the touch-sensitive display, determining the location
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`on the display that is touched by the object, Id., Col. 11:56-61, and determining an
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`interaction between the user contacting the touch-sensitive display 33 and the
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`graphical object being displayed on the display 33. Id., Col. 12: 33-46.
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`23. To facilitate providing tactile sensations based on different
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`interactions on the device, the ’356 patent discloses the use of a table of
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`associations between the interaction and the haptic effect data. This is exemplified
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`in Figures 9 and 10 of the ’356 patent. Id., Col. 14:15-50; Figs. 9, 10.
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`24. As the ’356 patent describes, “In one embodiment, this information is
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`in the form of associations among the detected input data, the functions of the
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`electronic device or apparatus, and the tactile sensations. An exemplar[y] group of
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`associations is represented in tabular form in FIG. 9.” Id., Col. 14:21-25. For
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`example, the controller may detect a pressure level 1 applied to a particular
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`location on the touchscreen corresponding to a graphical object to perform a
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`particular function. The controller then accesses the lookup table in Figure 9 and
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`determines the tactile sensation that is associated with the interaction with the
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`graphical object (e.g.., Tactile Sensation 13). Id., Col. 14:36-43. “The controller
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`uses the information for distinct tactile Sensation 13 to produce Sensation 13 in an
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`input device 56, by for example, causing an actuator to cause the input device to
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`vibrate at a frequency associated with Sensation 13.” Id., Col. 14:46-50.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`25.
`I understand that the specification and claims must be read through
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`the eyes of a person having ordinary skill in the art (“PHOSITA”) at the time of the
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`invention.
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`26. The Petition did not include any statement regarding the level of
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`ordinary skill in the art.
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`27. Based on my background and experience, a PHOSITA in the field of
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`the ’356 patent would have a Bachelor’s degree in mechanical or electrical
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`engineering (or other engineering discipline), or at least two years of experience
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`working with human machine interface systems, graphical user interfaces, haptic
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`feedback systems, robotics, biomechanics, or mobile devices, or equivalent
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`embedded systems.
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`VII. CHALLENGED GROUNDS IN THE PETITION
`28.
`I have reviewed the Petition and only two invalidity grounds are
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`raised. The Petition asserts a single ground of anticipation directed at claims 1-3,
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`9-13, 23, 25, and 26, and a single ground of obviousness for dependent claims 5, 7
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`and 15.
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`29. For claims 1-3, 9-13, 19-23, 25, and 26 of the ’356 patent, the Petition
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`raises one ground of anticipation by U.S. Application No. 09/487,737 (the “’737
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`Application”). Petition at 1-17. The ’737 Application was published as Patent
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`Application Publication No. US 2001/0035854.
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`30. For claims 5, 7, 15, and 17 of the ’356 patent, the Petition raises one
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`ground of obviousness in light of the ’737 Application and an IBM User Manual
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`for a Simon PDA product (“Simon”). Petition at 1, 17-19.
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`31. There are no other invalidity grounds raised in the Petition.
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`VIII. THE SAME DISCLOSURE AS THE ’737 APPLICATION WAS
`BEFORE THE EXAMINER DURING PROSECUTION
`32.
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`I have studied the ’737 Application and the file history of the ’356
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`patent. The same disclosure as in the ’737 Application was before the examiner
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`when Immersion was obtaining patent protection of the ’356 patent.
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`33. The ’737 Application was filed on January 19, 2000 and issued as
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`U.S. Patent No. 6,429,846 (“’846 patent”) on August 6, 2002. Exhibit 2006.
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`34.
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`Immersion cited the ’846 patent to the Patent Office in an
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`“Information Disclosure Statement.”
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`Exhibit 2005-123, -131.
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`35.
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`I have compared the ’737 Application (Exhibit 1002) to the ’846
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`patent (Exhibit 2006). The same disclosure in the ’737 Application that the
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`Petition cites is also in the ’846 patent. They have the same figures. They have the
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`same detailed description. The incorporation by reference language in the ’737
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`Application that the Petition relies on is also present in the ’846 patent, as shown
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`below.
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`’737 Application
`(Exhibit 1002)
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`US 6,429,846
`(Exhibit 2006)
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`Exhibit 1002, Page 9 ¶ 30.
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`Exhibit 2006-9, col. 5:56-col. 6:6.
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`
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`36. Another publication related to the ’737 Application was also present
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`before the examiner: Patent Application Publication No. 2008/0068350 (“’350
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`Publication”) (Exhibit 2007).
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`37. The ’350 Publication was also cited to the examiner during
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`prosecution in the same “Information Disclosure Statement.”
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`Exhibit 2005-123, -131.
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`38. The ’350 Publication is a published application of a continuation of
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`the ’737 Application. Exhibit 2007. The ’350 Publication has the same figures
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`and specification as the ’737 Application. Paragraph 0030 of the ’350 Publication
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`refers to the issued patents of the applications identified in paragraph 0030 of the
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`’737 Application, but the ’350 Publication does not expressly incorporate by
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`reference portions of those patents. The ’350 Publication was discussed by both
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`the examiner (Exhibit 2005-159 to -163) and Immersion (Exhibit 2005-159 to -
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`163) during prosecution of the ’356 patent.
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`IX. THE ’737 APPLICATION
`39. As noted above, the Petition identifies a single invalidity ground for
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`the independent claims 1, 12, and 22 of the ’356 patent based on ’737 Application.
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`Petition at 1.
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`40. The ’737 Application is entitled “Haptic Feedback for Touchpads and
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`Other Touch Controls.” Exhibit 1002, Title. The ’737 Application discloses two
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`main embodiments. The first embodiment is a touchpad embodiment implemented
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`in a laptop computer 10. Id., Figure 1. In this embodiment, a user controls a
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`cursor on the screen by touching a touchpad. A large part of the ’737 Application
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`describes various touchpad embodiments. A different embodiment disclosed in the
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`’737 Application is a touchscreen embodiment. Id., Figures 8a, 8b. In this
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`embodiment, the user can input information by touching the screen. Each
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`embodiment will be described below.
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`A. The Touchpad Embodiment
`41. The ’737 Application discloses a laptop computer 10 embodiment
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`having a haptic touchpad 16 (mislabeled as 18 in Fig. 1). Exhibit 1002, Fig. 1, ¶
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`0021. The computer 10 includes a display device 12 “for outputting graphical
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`images to the user.” Id. ¶ 0022. The display device 12 in Figure 1 is not touch-
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`sensitive and does not receive inputs.
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`42. The touchpad 16 is touch-sensitive. The user touches the touchpad 16
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`to control a cursor displayed on the screen 20. The cursor does not “contact” the
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`display device 12. The touchpad 16 has the ability to provide haptic feedback to a
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`user who is in contact with the touchpad. Id. ¶ 0026-0027. The ’737 Application
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`describes that the laptop 10 can include a “moveable portion for haptic feedback”
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`(such as a linear actuator) incorporated within the housing of the laptop computer
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`to provide haptic feedback. Id. ¶ 0030.
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`B.
`The Touchscreen Embodiment
`43. The touchscreen embodiment is shown in Figures 8a and 8b. ’737
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`Application, Figs. 8a, 8b, ¶ 0071. The touchscreen embodiment includes a display
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`screen 82 that allows a user to input information to the device 80 by physically
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`contacting the screen. Id. ¶ 0072. “The user can select graphically-displayed
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`buttons or other graphical objects by pressing a finger or a stylus to the screen 82
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`at the exact location where the graphical object is displayed.” Id. ¶ 0073. The
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`device 80 can include actuators 86 coupled to the underside of the touch screen 82
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`to provide haptic feedback to the user. Id. ¶ 0073.
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`C. Reference To The ’281 Application
`44. The ’737 Application incorporates by reference a portion of another
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`application, Application No. 09/103,281 (“’281 Application”). Ex. 1002, Page 9 ¶
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`0030. Paragraph 0030 states: “Having a moveable portion of a housing for haptic
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`feedback is described in copending patent application Ser. No. 09/156,802 and
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`application Ser. No. 09/103,281, both incorporated herein by reference.” Id., ¶
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`0030 (emphasis added). The Petitioner’s anticipation ground is based on the
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`CORRECTED DECLARATION OF NATHAN J. DELSON
`Case IPR2016-00807
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`disclosure of a look-up table in the ’281 Application and incorporated by reference
`
`in the ’737 Application.
`
`45. As discussed below, it is my opinion that the look-up table disclosed
`
`in the ’281 Application was not incorporated by reference in the ’737 Application.
`
`X. THE ’737 APPLICATION DOES NOT ANTICIPATE THE CLAIMS
`OF THE ’356 PATENT
`A.
`
`Petitioner Mixes and Matches Three Embodiments Without
`Guidance on How Those Portions Are Arrange or Combined in
`the Same Way as the Claims
`46. There is no single embodiment in the ’737 Application incorporating a
`
`portion of the ’281 Application that discloses all of the limitations of the claims of
`
`the ’356 patent. Claim 1[a] of the ’356 patent recites “outputting a display signal
`
`configured to display a graphical object on a touch-sensitive input device.” The
`
`Petition relies on the touchscreen embodiment of the ’737 Application for this
`
`limitation. Petition at 2-3. That is because the touchpad embodiment of ’737
`
`Application (depicted in Figure 1) does not disclose this limitation. While the
`
`display 12 of Figure 1 outputs graphical images to the user, it is not “a touch-
`
`sensitive input device.” The computer in Fig. 1 will not detect a user touching the
`
`display 12. Moreover, the touchpad 16 cannot be the claimed touch-sensitive input
`
`device because the touchpad 16 does not “output a display signal configured to
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`display a graphical object.”
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`47. Claim 1[b] of the ’356 patent further recites “receiving a sensor signal
`
`
`
`from the touch-sensitive input device, the sensor signal indicating an object
`
`contacting the touch-sensitive input device.” The Petition relies on the touchscreen
`
`embodiment of Rosenberg ’737 for this limitation. Petition at 3. The touchpad 16
`
`does not display graphical objects and thus does not satisfy claim 1[b].
`
`48. Claim 1[c] of the ’356 patent recites “determining an interaction
`
`between the object contacting the touch-sensitive input device and the graphical
`
`object.” For this limitation, the Petition relies on the touchpad embodiment, not
`
`the touchscreen embodiment. Petition at 3-5. The Petition states that a cursor
`
`controlled by a touchpad should be deemed to satisfy this limitation. Id. As
`
`discussed below, I disagree.
`
`49. Claim 1[d] of the ’356 patent recites “generating an actuator signal
`
`based at least in part on the interaction and haptic effect data in a lookup table.”
`
`For this limitation, the Petition relies on two different embodiments. For
`
`“generating an actuator signal based at least in part on the interaction” the Petition
`
`cites to the touchscreen embodiment of the ’737 Application. Petition at 5. For
`
`“and haptic effect data in a lookup table” the Petition cites only to the joystick
`
`embodiment (Fig. 1) of the ’281 Application. Petition at 5-7. In my opinion, these
`
`are separate embodiments. I did not see any statements in the Petition that
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`connects these embodiments or that explains how a PHOSITA could combine
`
`those embodiments.
`
`50. The Petition states that citations to multiple embodiments in the ’737
`
`Application is proper because the ’737 Application’s teaches that “[o]ther features
`
`described above for the touchpad are equally applicable to the touch screen
`
`embodiment 80.” Petition at 4; Exhibit 1002 ¶ 0075. I disagree that this sentence
`
`teaches that all features of the touchpad embodiment are equally applicable to
`
`touchscreen embodiment. This sentence appears at the end of a paragraph that
`
`specifically relates to the actuator implementation for haptic feedback. Paragraph
`
`75 discusses the type of actuators and springs that can be used along with a
`
`possible use of an inertial mass. A PHOSITA would interpret the discussion in
`
`paragraph 75 (and the last sentence in particular) as relating to an actuator
`
`implementation for providing haptic effects, not a statement that any aspect of the
`
`touchpad embodiment applied to touchscreens.
`
`51. The Petition is silent on which features and how such features of the
`
`various embodiments of the ’737 Application could be combined. There is no
`
`analysis in the Petition on how to combine the touchpad and touchscreen
`
`embodiments. There is also no analysis in the Petition on how to combine the
`
`joystick embodiment of the ’281 Application with either or both the touchpad and
`
`touchscreen embodiments of the ’737 Application. The ’737 Application does not
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`Case IPR2016-00807
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`teach a PHOSITA how to combine the multiple embodiments in the same way as
`
`the claims of the ’356 patent.
`
`B.
`
`“determining an interaction between the object contacting the
`touch-sensitive input device and the graphical object”
`52. Petitioner has not established that the ’737 Application incorporating
`
`a portion of the ’281 Application discloses “determining an interaction between the
`
`object contacting the touch-sensitive input device and the graphical object.” For
`
`support of this limitation, Petitioner cites to the cursor of the touchpad
`
`embodiment. Petitioner argues that the cursor on the display screen 20 (Fig. 1 of
`
`the ’737 Application) is the same thing as an object (e.g., user’s finger) contacting
`
`the touch-sensitive display. Petition at 3-4. I respectfully disagree. Contacting a
`
`touchpad to control a cursor on a display is different than physically contacting a
`
`touchscreen. A cursor does not contact the display. There is no physical contact
`
`by the cursor with the display. I do not believe that the cursor controlled by a
`
`touchpad satisfies "the object contacting the touch-sensitive input device and the
`
`graphical object."
`
`53.
`
`It is my opinion that Petitioner has not established that the ’737
`
`Application discloses this limitation of claim 1 as well as similar limitations in
`
`claims 12 and 22 of the ’356 patent.
`
`C.
`
`“generating an actuator signal based at least in part on the
`interaction and haptic effect data in a lookup table”
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`Case IPR2016-00807
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`54. The Petition concedes that the ’737 Application itself does not refer to
`
`
`
`a look-up table. Instead, to argue anticipation, the Petition relies entirely on the
`
`look-up table disclosure in the ’281 Application. Petition at 5-7. This argument
`
`fails for two reasons.
`
`Incorporation By Reference
`
`1.
`I do not believe that the look-up table disclosure in the ’281
`
`55.
`
`Application was incorporated by reference in the ’737 Application.
`
`56.
`
`It is my understanding that material expressly incorporated by
`
`reference in a single prior art reference may be considered for purposes of
`
`anticipation. To incorporate material by reference, a host document must identify
`
`with detailed particularity what specific material is incorporated and clearly
`
`indicate where that material is found. It is my understanding that whether a host
`
`document describes the material to be incorporated by reference with sufficient
`
`particularity is from the viewpoint of a PHOSITA.
`
`(a) The Movable Portion of a Housing Was Incorporated
`By Reference
`57. Paragraph 0030 of the ’737 Application discusses a moveable portion
`
`28 contained within the housing of the laptop computer 10. Ex. 1002, Page 9 ¶
`
`0030. As shown in Figure 1, the dotted line indicates that the moveable portion 28
`
`is contained inside the housing.
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`Case IPR2016-00807
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`Exhibit 1002, Page 1, Fig 1.
`
`58. The moveable portion provides haptic feedback when the user
`
`operates the touchpad 16. Id., ¶ 0030. In my opinion, the ’737 Application’s
`
`reference to the moveable portion 28 is a reference to an actuator such as a linear
`
`actuator within a housing that can provide haptic feedback. Paragraph 0030 further
`
`states: “Having a moveable portion of a housing for haptic feedback is described
`
`in copending patent application Ser. No. 09/156,802 and application Ser. No.
`
`09/103,281, both incorporated herein by reference.” Id., ¶ 0030 (emphasis added).
`
`In my opinion, what this sentence is incorporating by reference from the
`
`09/156,802 patent application and the ’281 Application is the actuator embodiment
`
`or design within a housing from those other applications. The ’737 Application
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`CORRECTED DECLARATION OF NATHAN J. DELSON
`Case IPR2016-00807
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`makes clear that what “is described” and being incorporated by reference from
`
`those other applications is the “moveable portion of a housing for haptic
`
`feedback.”
`
`59. The following sentence in paragraph 0030 provides further support
`
`that it is the discussion of the actuator design – using a moveable portion of the
`
`housing for haptic feedback – that is being incorporated by reference: “Thus, both
`
`the housing can provide haptic feedback (e.g., through the use of an eccentric
`
`rotating mass on a motor coupled to the housing) and the touchpad 16 can provide
`
`separate haptic feedback.” Id., ¶ 0030. The phrase describing that the “housing
`
`can provide haptic feedback (e.g., through the use of an eccentric rotating mass on
`
`a motor coupled to the housing)” is referring to the moveable portion 28.
`
`60.
`
`I now turn to the ’281 Application. The ’281 Application is entitled
`
`“Low Cost Force Feedback Device With Actuator For Non-Primary Axis.”
`
`Exhibit 1003, page 7. The invention of the ’281 Application “relates to a force
`
`feedback interface device that is coupled to a host computer system which
`
`implements a host application program. The interface device includes a user
`
`manipulatable object, such as a mous
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