UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`RUBICON COMMUNICATIONS, LP
`Petitioner,
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`v.
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`LEGO A/S
`Patent Owner.
`____________
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`Case IPR2016-01187
`Patent 8,894,066
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`DECLARATION OF ELIZABETH B. KNIGHT IN SUPPORT OF
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`LEGO A/S
`Ex. 2006
`Rubicon Communications, LP v. LEGO A/S
`IPR2016-01187
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`-1-
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`
`DECLARATION OF ELIZABETH B. KNIGHT IN SUPPORT OF
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`LEGO A/S
`Ex. 2006
`Rubicon Communications, LP v. LEGO A/S
`IPR2016-01187
`
`-1-
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`INTRODUCTION
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`1.
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`I, Elizabeth B. Knight, hereby declare under penalties of perjury:
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`I have personal knowledge of the facts stated in this declaration, and could
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`and would testify to these facts under oath if called upon to do so.
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`I have been retained by counsel for LEGO A/S in this case as an expert in
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`the relevant art. I am being compensated for my work at the rate of $350.00
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`per hour. No part of my compensation is contingent upon the outcome of
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`this case.
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`I possess the knowledge, skills, experience, training, and education to form
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`an expert opinion and testimony in this case. I have over 25 years of work
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`experience as an industrial designer, specializing in consumer product
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`design at various companies, including Hasbro Inc. and Rubbermaid
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`Commercial Products.
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`I graduated from the University of Cincinnati in 1979, with a Bachelor of
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`Science degree in Industrial Design. See Curriculum Vitae, attached as
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`Exhibit 2007.
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`I have been an adjunct professor at Rhode Island School of Design, teaching
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`design principles, toy design, and shoe design for 9 years. In particular, I
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`have taught between 1998–2002 and 2013–2016.
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`2.
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`3.
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`4.
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`5.
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`6.
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`LEGAL PRINCIPLES
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`7.
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`8.
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`I am not a patent attorney, nor have I independently researched the law on
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`patent validity. Attorneys for LEGO A/S explained certain legal principles
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`that I have relied upon in forming my opinions set forth in this report.
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`I understand a patent claim examined before the United States Patent and
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`Trademark Office is given its broadest reasonable interpretation consistent
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`with the specification. I understand the interpretation must be consistent
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`with the ordinary and customary meaning of the term (unless the term has
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`been given a special definition in the specification), and must be consistent
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`with the use of the claim term in the specification and drawings. Further, the
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`broadest reasonable interpretation of the claim must be consistent with the
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`interpretation that those skilled in the art would reach.
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`9.
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`I understand a patent claim is “anticipated” under pre-AIA 35 U.S.C. §
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`102(b), if each and every element as set forth in the claim is found, either
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`expressly or inherently described, in a single patent reference or described in
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`a single printed publication, more than one year prior to the date of
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`application for patent in the United States.
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`10.
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`I understand a patent claim is “obvious” under pre-AIA 35 U.S.C. § 103(a),
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`if the differences between the claimed invention and a prior art under 35
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`U.S.C. § 102 are such that the subject matter as a whole would have been
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`obvious at the time of the invention to a person having ordinary skill in the
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`art to which said subject matter pertains.
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`11.
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`I understand the framework for the objective analysis for determining
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`obviousness involves (a) determining the scope and content of the prior art;
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`(b) ascertaining the differences between the claimed invention and the prior
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`art; (c) resolving the level of ordinary skill in the pertinent art; and (d)
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`examining objective evidence relevant to the issue of obviousness.
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`ANALYSIS OF THE PATENT
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`12.
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`I have reviewed, and am familiar with the subject matter of, the U.S. Patent
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`No. 8,894,066 (“the ’066 Patent”). The relevant field for the ’066 Patent is
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`Industrial Design, which is the process of design applied to mass produced
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`products.
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`13. A person of ordinary skill in the art, to which the ’066 Patent pertains, has
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`a Bachelor of Science degree in Industrial Design and at least two years of
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`work experience in product design and a working knowledge of product
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`development at the time of the invention. The type of problems encountered
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`in Industrial Design and solutions to those problems require a designer with
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`some level of work experience and understanding of mass production
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`techniques and design for manufacturing.
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`14. Although my qualification and experience exceed those of the hypothetical
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`person having ordinary skill in the art defined above, my analysis is based
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`on the perspective of a person having ordinary skill in the art of Industrial
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`Design at the time of the invention — early 2006.
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`15. Based on my experience, I have a good understanding of the capabilities of a
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`person of ordinary skill in the art. In addition to being a person of at least
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`ordinary skill in the art, I have trained, supervised, and worked with many
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`such persons over the course of my career.
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`16. The ’066 Patent claims methods of facilitating user preference in creative
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`design of a controller with a housing by providing a main casing configured
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`to conformably fit around a portion of, and thereby receive, the housing and
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`a set of building elements that are matable to one another and to a patterned
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`surface portion of the casing. The building elements allow a user to build a
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`customized replica of at least a portion of a play item and thereby transform
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`the controller to a customized shape and appearance in accordance with the
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`user’s preference.
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`17. From my examination of the ’066 Patent, I confirm the broadest reasonable
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`interpretation of the term “housing” is “the exterior shell of the controller
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`that covers the internal electronics of the controller.”
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`18. From my examination of the ’066 Patent, I confirm the broadest reasonable
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`interpretation of the term “casing” is “a structure that is separable from and
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`covers one or more surfaces of the housing of the manual controller.”
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`19. From my examination of the ’066 Patent, I confirm the broadest reasonable
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`interpretation of the term “conformably fit” is “joining of parts relying on
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`matching forms and dimensions.”
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`20. From my examination of the ’066 Patent, I confirm the broadest reasonable
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`interpretation of the term “mating” is “joining of building elements to the
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`patterned surface using cylindrical bosses and recesses.”
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`ANALYSIS OF THE PETITION AND CITED REFERENCES
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`21.
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`I have reviewed, and am familiar with the subject matter of, Rubicon
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`Communications, LP’s (“Rubicon”) Petition for Inter Partes Review of
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`United States Patent No. 8,894,066 Pursuant to 35 U.S.C. §§ 311-319, 37
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`C.F.R. § 42 and references cited therein, i.e., Building Robots, Philo’s Home
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`Page, Gasperi’s Mindstorms Sensor Input Page, Shackelford, Anderson, and
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`Xbox Forums.1
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`1 By commenting on the cited references, I do not agree that the references are
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`authentic nor prior art. In fact, Philo and Gasperi appear to be computer printouts
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`from the “Wayback Machine,” which are not materials upon which I would rely in
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`any analysis I would perform.
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`22. Building Robots does not disclose a “casing” that “conformably fits” around
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`a “housing” of a controller. Building Robots does not disclose any separable
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`structure that conformably fits around the housing of the controller relying
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`on matching forms and dimensions. At most, LEGO bricks assembled
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`below and near Building Robots’ controller are building elements that are
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`“mated” to the controller with the use of cylindrical bosses and recesses.
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`23. Building Robots does not render obvious the ’066 Patent. The missing
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`elements identified in the above paragraph 22 are not disclosed, taught, or
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`suggested in any part of the reference. It would not be obvious under this
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`reference to join the building elements to the housing of the controller
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`relying on matching forms and dimensions, because they are, instead,
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`“mated” using cylindrical bosses and recesses. As a result, Building Robots
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`teaches away from a “casing” that “conformably fits” around the “housing”
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`of the controller.
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`24. Philo’s Home Page does not disclose a “casing” that “conformably fits”
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`around a “housing” of a controller for similar reasons identified in
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`paragraphs 22 and 23. The controller in Philo is “mated” to building
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`elements, using cylindrical bosses and recesses, instead of relying on
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`matching forms and dimensions. Philo does not disclose a separate structure
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`for “casing” — that is separable from and covers one or more surfaces of the
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`“housing” of the manual controller.
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`25. Building Robots and Philo in combination do not render obvious the ’066
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`Patent. Similar to Building Robots, Philo does not disclose, teach, or
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`suggest any of the missing elements identified in paragraph 24 above, such
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`as a “casing” that “conformably fits” around the housing of the controller.
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`Instead, it teaches away from the claimed invention of the ’066 Patent by
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`disclosing only building elements that are “mated” to the controller with the
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`use of cylindrical bosses and recesses.
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`26. Gasperi’s Mindstorms Sensor Input Page does not disclose, teach, or
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`suggest an actuator or motion sensor claimed in the ’066 Patent claims 2 and
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`3. From the perspective of a person having ordinary skill in Industrial
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`Design at the time of the invention, an actuator or motion sensor that detects
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`its own movement has little in common with a sensor that detects movement
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`of objects nearby. Gasperi discloses the latter, while the ’066 Patent claims
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`the former.
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`27. Shackelford does not disclose a “casing” that is separable from and covers
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`one or more surfaces of the “housing” of the controller. Additionally,
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`Shackelford does not disclose a “casing,” if any, that “conformably fits”
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`around the “housing” relying on matching forms and dimensions. This is
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`because Shackelford does not disclose the structural relationship between
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`what Rubicon proposes as “housing of the manual controller” and “casing.”
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`28. Anderson does not disclose a “casing” that is separable from the “housing”
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`of the controller, as the controller is shown to be enclosed within the
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`“casing.” Anderson also does not disclose that Rubicon’s “casing,” if any,
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`“conformably fits” around the “housing” relying on matching forms and
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`dimensions.
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`29. Xbox Forums does not render obvious the ’066 Patent, because it alludes to
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`the idea of modifying Xboxes, not even suggesting the idea of modifying
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`Xbox controllers, and does not enable a person of skill in the art to practice
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`the idea. It does not disclose, teach, or suggests the type of modification
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`suggested in Xbox Forums should be applied to controllers, nor how one
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`skilled in the art could do so. As a person of ordinary skill in the art, the
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`idea of modifying controllers is not an obvious step from modifying an
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`Xbox, because separate controllers are more intricate and must be able to be
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`manipulated manually. Information to modify a controller would require
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`more details and directives that would change the interface of play.
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`30. Rubicon did not identify any evidence for the secondary considerations of
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`obviousness.
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`CONCLUSION
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`31.
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`I reserve the right to offer opinions relevant to the validity of the ’066 Patent
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`claims at issue andlor offer testimony in support of this Declaration.
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`32.
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`In signing this Declaration, I recognize that the Declaration will be filed as
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`evidence in a contested case before the Patent Trial and Appeal Board of the
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`United States Patent and Trademark Office.
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`I also recognize that I may be
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`subject to cross-examination in this case. If required, I will appear for cross-
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`examination at the appropriate time.
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`33.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to
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`be true, and further that these statements were made with the knowledge that
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`willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under 18 U.S.C. § 1001.
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`Dated:
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`“O I Elk
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