`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP
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`Petitioner,
`
`LEGO A/S
`
`Patent Owner.
`
`Case IPR2016-01187
`
`Patent 8,894,066
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`DECLARATION OF DR. JAY P. KESAN
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`Rubicon Communications, LP
`
`Ex. 1036
`
`Rubicon Communications, LP v. LEGO A/S
`
`IPR2016-O1187
`
`IPR2016—01187
`
`LEGO A/S EX. 2103
`Rubicon Communications, LP V. LEGO A/S
`
`
`
`
`
`Petition for Inter Partes Review of US. Patent No. 8,894,066
`
`Declaration of Dr. Jay P. Kesan
`
`I, lay Kesan, do hereby declare and state, that all statements made herein of
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`my own knowledge are true and that all statements made on information and belief
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`are believed to be true; and filrther that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Executed August 30, 2017, in Champaign, IL.
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`
`
`Dr. Jay P. Kesan
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`
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`I.
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`INTRODUCTION
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`1. The facts
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`set
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`forth below are known to me personally and I have
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`firsthand knowledge of them. I am a US. citizen over eighteen years of age. I
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`am fully competent to testify as to the matters addressed in this Declaration. I
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`understand that this Declaration is being submitted along with Petitioner’s Reply
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`in the Inter Partes Review by the Patent Trial and Appeal Board (“PTAB”) for
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`US Patent No. 8,894,066 (hereinafter, “the ’066 Patent”) in IPR2016—01187.
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`A. Engagement
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`2.
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`I have been retained as a technical expert by Petitioner to study and provide my
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`opinions on the technology claimed in, and the patentability or nonpatentability
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`of Claims 1-8 of the ’066 Patent.
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`B. Bac
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`round and
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`ualifications
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`3.
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`I have summarized in this
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`section my educational background, work
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`experience, and other
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`relevant qualifications. A true and accurate copy of
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`my curriculum vitae is attached as Exhibit 1037.
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`4.
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`I am a Professor and H. Ross & Helen Workman Research Scholar at
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`the
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`University of Illinois at Urbana-Champaign, where I am appointed in the College of
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`Law,
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`the Department of Electrical and Computer Engineering,
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`the Coordinated
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`Science Laboratory, and the Information Trust Institute.
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`I have a Ph.D. in Electrical
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`
`
`
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`
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`and Computer Engineering from the University of Texas at Austin and a J.D., summa
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`cum laude from Georgetown University. I have also worked as a research scientist
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`at the IBM T.J. Watson Research Center, and I am a named inventor on several
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`United States patents.
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`I have also served as a technical expert and legal expert in
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`patent infringement lawsuits. I have been appointed to serve as a Special Master in
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`patent disputes. Additionally, I have been appointed and served as a Thomas Edison
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`Distinguished Scholar at the United States Patent and Trademark Office (“USPTO”).
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`5. From 1984 to 1989, while working on my Master’s and PhD. degrees in
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`electrical and computer engineering at the University of Texas at Austin, I was a
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`graduate
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`research assistant
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`and
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`I
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`researched and developed RF (radio
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`frequency) technologies, specifically microwave and millimeter wave devices
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`and integrated circuits and published my research work extensively in these fields.
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`From 1989 to 1993,
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`I worked as a research scientist at the IBM T.J. Watson
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`Research Center, and I researched various exploratory high-speed integrated circuit
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`technologies for analog and wireless communication applications and published
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`my research work extensively in these fields. From 2000 to the present,
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`I have
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`also been working on radio-frequency identification (RFID) technologies and
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`systems, and I am an inventor on numerous US. patents directed at RFID and
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`related technologies. In the past few years, I have also been working on security
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`issues and risk assessment in network, cloud, and wired and wireless communication
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`
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`
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`technologies. From 1998 to the present, I have worked as a consulting expert in
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`various electrical, communication and computer technologies and intellectual
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`property protection for such technologies. From 1998 to the present, I have been
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`involved as
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`a technical
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`expert with numerous patent
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`lawsuits
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`involving
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`semiconductor and integrated circuits, set-top boxes processing multimedia content,
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`wireless audio players including control of rendering audio in such equipment, and
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`various wired, wireless and generations of cellular communication technologies
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`and their applications.
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`C. Compensation and Prior Expert Witness Experience
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`6.
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`I am being compensated for the time I spend on this case at my normal
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`consulting rate of $550 an hour.
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`I am also being reimbursed for reasonable
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`and customary expenses associated with my work and testimony in this
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`investigation. My compensation is not contingent upon the outcome of this matter
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`or the substance of my testimony.
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`7. A complete list of cases in which I have testified at trial, hearing, or by
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`deposition within the preceding four years is provided in my curriculum vitae,
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`which is attached as Exhibit 1037.
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`
`
`
`
`
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`D.
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`Information Considered
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`8. My opinions are based on my years of education, research and experience, as
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`well as my investigation and study of relevant materials. In forming my opinions,
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`I have considered the materials that I identify in this report, including those listed
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`below:
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`0 Exhibit 1001 — US. Patent No. 8,894,066
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`0 Exhibit 1002 — File History of the ’066 Patent
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`0 Paper 1 — Petition for Inter Partes Review of US. Patent No. 8,894,066
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`0 Exhibit 1017 — Philo’s Home Page (“Philo”)
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`0 Exhibit 1005 — Building Robots, Chapter 6
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`0 Exhibit 1020 — US. Patent Appl. Pub. No. 2002/0196250 (“Anderson”)
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`0 Paper 20 — Patent Owner’s Corrected Preliminary Response
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`0 Exhibit 2006 — Declaration of Elizabeth B. Knight
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`0 Exhibit 2007 — Curriculum Vitae of Elizabeth B. Knight
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`0 Paper 38 — Decision Granting Institution of Inter Partes Review
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`0 Paper 70 — Patent Owner’s Response
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`0 Exhibit 2026 — Declaration of Elizabeth B. Knight
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`
`
`
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`0 Exhibit 1038 — Merriam-Webster’s Collegiate Dictionary, “join”
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`0 Exhibit 1039 —‘ Merriam-Webster’s Collegiate Dictionary, “portion”
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`0 Exhibit 1040 — Merriam-Webster’s Collegiate Dictionary, “tactile”
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`0 Exhibit 1041 — US. Patent No. 4,242,664
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`0 Exhibit 1042 — US. Patent No. 5,508,836
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`0 Exhibit 1043 — Internet Archive capture of Engadget, “Treo 650 is
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`Official!”
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`0 Exhibit 1044 — US. Patent No. 6,219,797
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`9.
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`I may rely upon these materials and/or additional materials to respond to
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`arguments raised by the Petitioner. I may also consider additional documents and
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`information in forming any necessary opinions — including documents that may not
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`yet have been provided to me.
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`10. My analysis of the materials produced in this investigation is ongoing and I
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`will continue to review any new material as it
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`is provided. This declaration
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`represents only those opinions I have formed to date.
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`I reserve the right
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`to
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`revise,
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`supplement, and/or amend my opinions stated herein based on new
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`information and on my continuing analysis of the materials already provided.
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`
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`II.
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`LEGAL STANDARDS
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`11.
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`In expressing my opinions and considering the subject matter of the claims
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`of the ’066 Patent, I am relying upon certain basic legal principles that counsel has
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`explained to me.
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`12. First,
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`I understand that for an invention claimed in a patent to be found
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`patentable,
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`it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`13.
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`I understand the information that is used to evaluate whether an invention is
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`new and not obvious is generally referred to as “prior art” and generally includes
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`patents and printed publications (e.g., books, journal publications, articles on
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`websites, product manuals, etc.).
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`14.
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`I understand that in this proceeding Petitioner has the burden of proving that the
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`claims of the ’066 Patent are anticipated or obvious in view of the prior art by a
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`preponderance of the evidence. I understand that “a preponderance of the evidence”
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`is evidence sufficient to show that a fact is more likely true than it is not.
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`15.
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`I understand that
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`in this proceeding,
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`the claims must be given their
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`broadest reasonable interpretation consistent with the specification. The claims
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`after being construed in this manner are then to be compared to the information
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`in the prior art.
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`16.
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`I understand that in this proceeding,
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`the information that may be evaluated
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`is limited to patents and printed publications. My analysis below compares the
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`claims to patents and printed publications that are prior art to the claims.
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`17.
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`I understand that there are two ways in which prior art may render a patent
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`claim unpatentable. First, the prior art can be shown to “anticipate” the claim,
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`which I understand requires a single reference to explicitly or inherently disclose
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`every feature of a claim arranged in the same manner as in the claim. Second, the
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`prior art can be shown to have made the claim “obvious” to a person of ordinary
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`skill in the art. I set forth my understanding of the obviousness standard as
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`follows:
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`18.
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`I understand that a claimed invention is not patentable if a prior art
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`reference discloses every element of the claimed invention, either explicitly or
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`inherently and that those elements must be arranged or combined in the same way I
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`as the claim.
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`I further understand that being arranged or combined in the same way
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`does not require an identity of terminology.
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`19.
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`I understand that “prior art” includes patents and printed publications that
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`existed before the earliest filing date (the “effective filing date”) of the claim in the
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`patent. I also understand that a patent will be prior art if it was filed before the
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`effective filing date of the claimed invention, while a printed publication will
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`
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`be prior art if it was publicly available before that date. I also understand that a
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`reference qualifies as prior art for an obviousness determination under § 103 only
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`when it is analogous to the claimed invention.
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`20.
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`It is my further understanding that a claimed invention is unpatentable if the
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`differences between the invention and the prior art are such that
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`the subject
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`matter as a whole would have been obvious at the time the invention was made to
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`a person having ordinary skill in the art to which the subject matter pertains.
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`21.
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`I understand that
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`the ultimate conclusion of whether a claim is
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`(non)
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`obvious should be based upon a determination of several factual considerations:
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`0
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`0
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`0
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`0
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`The scope and content of the prior art;
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`The differences between the prior art and the claims at issue;
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`The knowledge of a person of ordinary skill in the pertinent art; and
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`Whatever objective factors indicating obviousness or non—obviousness
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`may be present in any particular case.
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`22.
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`I understand that the existence of each and every element of the claimed
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`invention in the prior art does not necessarily prove obviousness and that most, if
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`not all, inventions rely on building blocks of prior art. In considering whether a
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`claimed invention is obvious, I understand that one may find obviousness if at the
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`time of the claimed invention there was a reason that would have prbmpted a
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`
`
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`
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`person having ordinary skill in the field to combine the known elements in a way
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`the claimed invention does, taking into account such factors as (1) whether the
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`claimed invention was merely the predictable result of using prior art elements
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`according to their known function(s); (2) whether the claimed invention provides
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`an obvious solution to a known problem in the relevant field; (3) whether the prior
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`art teaches or suggests the desirability of combining elements claimed in the
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`invention; (4) whether, the prior art teaches away from combining elements in the
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`claimed invention; (5) whether it would have been obvious to try the combinations
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`of elements, such as when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions; and (6)
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`whether the change resulted more from design incentives or other market forces. I
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`understand that to find it rendered the invention obvious, one must find that the
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`prior art provided a reasonable expectation of success and that each claim must be
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`considered separately.
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`23.
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`I understand that one should
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`not
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`use
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`hindsight when
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`considering
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`obviousness. I also understand that in assessing obviousness, that one should take
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`into account any objective evidence (sometimes called “secondary considerations”)
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`that may have existed at the time of the invention and afterwards that may shed light
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`on the obviousness or not of the claimed invention, such as: (a) Whether the
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`invention was commercially successful as a result of the merits of the claimed
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`10
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`
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`invention (rather than the result of design needs or market—pressure advertising or
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`similar activities); (b) Whether the invention satisfied a long-felt need; (c) Whether
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`others had tried and failed to make the invention; ((1) Whether others invented the
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`invention at roughly the same time; (e) Whether others copied the invention; (f)
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`Whether
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`there were
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`changes
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`or
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`related
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`technologies
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`or market
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`needs
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`contemporaneous with the
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`invention;
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`(g) Whether
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`the
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`invention achieved
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`unexpected results; (h) Whether others in the field praised the invention; (i) Whether
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`persons having ordinary skill
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`in the art of the invention expressed surprise or
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`disbelief regarding the invention; (j) Whether others sought or obtained rights to the
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`patent from the patent holder; and (k) Whether the inventor proceeded contrary to
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`accepted wisdom in the field.
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`[11. OVERVIEW OF THE PATENT
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`24. Patent Owner contends that the ’066 Patent “claims methods for creating a
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`user-designed controller for manipulating displayed images or symbols during play
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`activity.” Patent Owner’s Response (“Response”) at 2 (emphasis added).
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`In my
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`opinion, this characterization does not clearly reflect the ’066 Patent’s purported
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`inventive contribution.
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`25. Specifically, the ’066 Patent does not purport to have invented a “controller”
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`per se.
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`Indeed,
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`in its “Background Information” section,
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`the ’066 Patent
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`acknowledges that a “prevalent
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`type of manual controller comprises a control
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`1]
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`
`
`
`
`
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`section having a plurality of buttons that the user presses to enter commands and ,
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`hand grips that the user holds when the user operates the manual controller.” ’066
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`Patent at 1243-47. More generally,
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`the ’066 Patent acknowledges that existing
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`manual controllers include “joysticks” and “game pads,” among other devices.
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`Id.
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`at 1:38—40. That is, as the ’066 Patent acknowledges, many types of “controllers”
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`were known in the prior art.
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`26. Patent Owner states that the ’066 Patent “explicitly claims one of the two
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`embodiments” described in the specification: the embodiment illustrated in Fig. 1,
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`which is reproduced below. Response at 2—3.
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`
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`l2
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`
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`27. As Fig.
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`1 shows, the controls within housing 14 are separate from the casing 16
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`that receives housing 14. Unlike the second preferred embodiment of Fig. 4, which
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`the ’066 Patent acknowledges is “built around a remote controller in the form of a
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`WiiTM remote controller,” 5:6-9, the ’066 Patent does not acknowledge the origin of
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`the illustrated controls. However, in my opinion, these controls bear more than a
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`passing resemblance to other prior art controllers such as the PlayStation 2
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`controller.
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`28. When considering Fig. 1 in conjunction with the controllers that the ’066 Patent
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`considers to be prior art and with claim 1,
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`it is my opinion that the ’066 Patent is
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`not directed to a “user—designed controller,” as Patent Owner states. Rather, the
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`’066 Patent is directed to a customizable casing for a controller. Specifically, claim
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`1 recites “providing a main casing configured to conformably fit around .
`
`.
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`. [and]
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`receive the housing of the controller,” and further “providing” building elements
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`“configured for a user to build on the patterned surface portion of the main casing”
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`(emphasis added).
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`29. That is, in my opinion, the ’066 Patent is not directed to “methods for creating
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`a user-designed controller,” as Patent Owner asserts. Rather,
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`it
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`is the provided
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`“casing” that, via its patterned surface, facilitates expression of the user’s creative
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`preferences, and is the focus of the embodiment
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`to which the ’066 Patent
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`is
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`directed. The “controller” itself that is “received”——many instances of which are
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`13
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`
`
`
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`acknowledged as prior art by the ’066 Patent—is in my estimation merely an object
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`or workpiece that is transformed by the claimed method.
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`IV. CLAIM CONSTRUCTION
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`A. “casing”
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`30. Patent Owner has proposed that the claim term “casing” be construed to mean
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`“[a] structure that is separate from and covers one or more surfaces of the housing
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`of the manual controller.” Response at 8. Patent Owner points to the fact that the
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`’066 Patent describes casing 16 of Fig.
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`1 as being “separable” from controller
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`housing 14.
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`Id. at 9 (quoting ’066 Patent at 3:7-8).
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`I note, however, that the
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`claims do not include the terms “separable,
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`removable,” or similar terms. On its
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`73 EC
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`face, Patent Owner’s propOsed construction merely requires the “casing” to be
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`distinguishable from the “housing.”
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`31.
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`I note that with respect to Patent Owner’s Preliminary Response, the Board
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`found that Patent Owner failed to provide “reasoning or evidence to explain why a
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`structure inseparably attached to a housing cannot constitute a ‘casing configured
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`to conformably fit around a portion of the exterior surface of and thereby receive
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`the housing.” Institution Decision at 11.
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`I agree with the Board’s position and
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`note that nothing in Patent Owner’s Response or the intrinsic record of the ’066
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`I4
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`
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`Patent precludes an inseparably attached “casing’
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`from nevertheless being
`
`3
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`“separate” (i.e., distinguishable) from the “housing” to which it is attached.
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`32.
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`In particular, I note that a “casing” that is separate and distinguishable from a
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`“housing” prior to assembly of the casing and housing does not cease to be
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`“separate and distinct” (in Patent Owner’s words) even if the two are inseparably
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`assembled. Consider again the embodiment of Fig. 1 of the ’066 Patent. As Patent
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`Owner notes,
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`the ’066 Patent characterizes the illustrated casing as being
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`“separable” from the housing. Response at 9.
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`Suppose that spot amounts of
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`adhesive were applied to housing 14 of Fig. 1 so that, when inserted into casing 16,
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`housing 14 became inseparably attached to casing 16.
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`In my opinion, one of
`
`ordinary skill would conclude that once so assembled, casing 16 nevertheless
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`remains “separate” and distinguishable from housing l4.'
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`33. Moreover, Patent Owner has asserted that in order for the “casing” to “fit
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`around” and “receive” the housing as recited in claim 1,
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`it
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`is necessary for the
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`“casing” and “housing” to be “separate and distinct components.” Response at 10.
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`' If, hypothetically,
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`inseparable assembly of the housing and casing were
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`considered to fall outside the scope of the claims, this would be tantamount to
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`asserting that the embodiment of Fig.
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`1 would escape infringement if adhesive
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`were used in the manner proposed above—a conclusion that beggars logic.
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`15
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`
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`But in my view, inseparable assembly does not defeat these aspects of claim 1.
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`Return to the hypothetical of the previous paragraph, in which housing 14 of Fig. 1
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`is hypothetically inseparably attached to casing 16.
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`If casing 16 “fit[s] around”
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`and “receive[s]” housing 14 before the adhesive is set (i.e., at a time when the two
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`are separable), one of ordinary skill would recognize that it does not cease to do
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`simply by operation of the adhesive’s curing.
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`34. Finally, I note that the Board expressed the view that Patent Owner failed to
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`establish that “casing” and “building elements” cannot overlap in scope, and found
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`“a reasonable likelihood of Petitioner demonstrating that other building elements
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`shown in the Brick Simon compose a separately distinguishable ‘casing.”’
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`Institution Decision at 9-10, 19.
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`I agree that the ’066 Patent does not preclude the
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`possibility that the “casing” itself could be constructed from “building elements,”
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`so long as the “building elements” corresponding to such a “casing” are distinct
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`from the “subset of building elements” that are used to build “a customized replica
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`of at least a portion of a play item,” as recited in claim 1. Specifically, I note that
`9
`claim 1 uses the open-ended transitional term “comprising,’ which I-understand
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`permits the claim scope to extend to embodiments that include elements beyond
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`those specifically recited in the claim. Therefore, claim 1 remains open to the
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`possibility that
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`the “casing” may be constructed from additional “building
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`elements.”
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`l6
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`
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`B. “conformably fit”
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`35. Patent Owner proposes that the term “conformably fit” should be construed as
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`“[j]oining of parts relying on matching forms and dimensions,” and the term
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`“mating” should be construed as “[j]oining of building element(s) to the patterned
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`surface using cylindrical bosses and recesses.” Response at 8. The term “join” can
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`connote that “joined” items are fastened or connected. See Exhibit 1038 (defining
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`“join” to mean “to put or bring together so as to form a unit” or “to come together
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`so as to be connected”).
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`36. However, as discussed above, Patent Owner contends that the claims of the
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`’066 Patent are directed to the embodiment of Fig. 1. The specification does not
`
`use any terms of fastening or connection, such as “join” or the like, to describe
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`how housing 14 relates to casing 16.
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`Indeed, as Patent Owner notes, the ’066
`
`Patent indicates that housing 14 and casing 16 can be “separable,” although as
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`discussed above, the claims do not require this. Response at 9 (quoting ’066 Patent
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`at 3:7-8). This cuts against any suggestion that “joining” requires “fastening” or
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`the like.
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`37. Specifically, Fig.
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`1 appears to show that housing 14 slides or inserts into
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`casing 16. Absent further details, one of ordinary skill would understand from Fig.
`
`1
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`that housing 14 is “joined” to casing 16 by abutment rather than fastening or
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`connection. That
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`is,
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`to the extent that the claim terms “conformably fit” or
`
`l7
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`
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`“mating” involve “joining,” joining by abutment would suffice, and fastening,
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`connection, or linking are not necessary.
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`C. “manipulate”
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`38. Patent Owner proposes that the term “manipulate” be construed to mean
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`“changing in a skillful manner,” relying on a dictionary definition that reads in full,
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`“to treat or operate with or as if with the hands or by mechanical means especially
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`in a skillful manner.” Response at 9, 12 (citing Exhibit 2027).
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`I disagree that one
`
`of ordinary skill would interpret “manipulate” in the manner Patent Owner
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`proposes.
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`39. First, Patent Owner’s construction focuses only on the part of the definition
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`that, by its own terms,
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`is optional. One of ordinary skill would understand
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`“especially in a skillful manner” to connote that, while the definition gives weight
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`to whether the conduct is “skillful,” conduct that is not “skillful” nevertheless may
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`fall within the scope of the definition.
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`40.
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`Second, “skillful” is subjective and a relative term of degree.
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`The
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`specification does not use the term “skillful” in the context of the controller, much
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`less provide an ascertainable standard by which it can be evaluated.
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`In short, one
`
`of ordinary skill would find this construction to be unworkable, because it is not
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`18
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`
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`possible to determine from the construction what does or does not fall within the
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`scope of “changing in a skillful manner.”
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`41.
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`In my opinion, one of ordinary skill would more correctly understand
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`“manipulate” to mean “changing with or as if with the hands, or by mechanical or
`77
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`electronic means.
`
`This construction incorporates the majority of Patent Owner’s
`
`cited dictionary definition while omitting the optional and otherwise problematic
`
`“skillful manner” language.
`
`It also comports with the terminology used by the
`
`’066 Patent, which refers to numerous electronic controllers.
`
`’066 Patent at 1:39—
`
`43.
`
`V. ANALYSIS OF GROUND III — PHILO
`
`42.
`
`In my opinion, one of ordinary skill would readily identify all of the features of
`
`claim 1 within the Brick Simon model disclosed in Philo.
`
`In particular, I disagree
`
`with Patent Owner’s contentions that “Philo do[es] not show any putative casing
`
`configured to conformably bit around a portion of the RCX brick,” and that “no
`
`putative casing is shown to join the RCX brick relying on matching forms and
`
`dimensions, as the flat piece in the Brick Simon page
`
`appears to join the RCX
`
`brick using cylindrical bosses and recesses.” Response at 18-19.
`
`43. Philo’s Brick Simon model
`
`includes the RCX brick, which controls game
`
`operation, and is thus a “controller” that is enclosed within a plastic shell, or
`
`“housing,” as shown in the annotated View reproduced below.
`
`19
`
`
`
`
`
`RCX brick = ”controller" with
`"housmg"
`
`buttons and lid elements =
`"subset of bUIlding elements" on
`surface of ”casing"
`
`
`
`"casing" that "conformably fit[s]"
`around a "portion" of "housing"
`
`Exhibit 1017 at 10 (annotated). The controller “housing” is mounted and thus
`
`“received” within a “casing.” As shown in this view, the “casing” contacts the left
`
`and bottom sides of the “housing” of the RCX brick.
`
`44. Because the central theme of Philo is constructing models from Lego building
`
`elements, the “casing,” like the remainder of Brick Simon,
`
`is formed from Lego
`
`elements. As I stated above at ii 34, I agree with the Board’s View that the ’066
`
`Patent does not preclude building a “casing” out of Lego elements, as Philo does.
`
`Not all elements of Brick Simon are part of the “casing,” however. For example,
`
`Philo shows yellow ornamental elements mounted to the surface of the black casing
`
`along with button elements that provide for user input.
`
`20
`
`
`
`45.
`
`Philo provides a bottom view of the Brick Simon model, reproduced in
`
`annotated form below.
`
`
`
`Exhibit 1017 at 12 (annotated). The front surface of the RCX brick, shown on the
`
`right in the view above, appears here in the bottom left comer. As can be seen in
`
`this view, several long black Lego elements secure the bottom surface of the RCX
`
`brick “housing,” forming part of the “casing” that receives and at least partially
`
`surrounds the RCX brick.
`
`21
`
`
`
`46.
`
`Philo also provides a View of the right side of the Brick Simon model,
`
`reproduced in annotated form below:
`
`
`
`additional
`
`"casing" elements
`
`Exhibit 1017 at 13 (annotated). Here, Philo shows the use of additional vertically-
`
`oriented Lego elements that attach to the black casing element below the RCX
`
`brick. These elements appear to attach to, and at least abut the RCX brick, and
`
`function as further elements of the “casing” that receives the controller “housing.”
`
`47. Based on the foregoing images,
`
`it is my View that Philo discloses a “main
`
`casing” that abuts or contacts the “housing” of the RCX brick on at least its bottom,
`
`22
`
`
`
`left, and right sides.
`
`I note that the ’066 Patent does not define the term “portion,”
`
`but its use of the term is consistent with its ordinary meaning of “part,” which is a
`
`broad term. Exhibit 1039.
`
`I also note that Patent Owner has not proposed a
`
`construction for the term “portion” that would differ from its ordinary meaning.
`
`Accordingly, because several “parts” of the RCX brick are abutted or contacted by
`
`Lego elements forming the “main casing,” it is my opinion that one of ordinary skill
`
`would recognize Philo to disclose a “casing” that fits around a “portion” of the
`
`RCX brick.
`
`48. As discussed above, various Lego elements of the “casing” are mated to the
`
`bottom and right sides of the RCX brick. Patent Owner has conceded the “mating”
`
`of Lego elements “could constitute one way to conforrnably fit.” Response at 11.
`
`Accordingly, by Patent Owner’s own terms,
`
`the “casing” of Brick Simon
`
`“conformably fits” the RCX brick wherever it is actually mated to the RCX brick.
`
`49. The left side of the RCX brick appears, at a minimum, to abut the “casing” of
`
`Brick Simon, although it is unclear whether it is “mated” in a manner similar to
`
`other surfaces of the RCX brick. Nevertheless, as I argued above at 1] 37, joining by
`
`abutment
`
`is sufficient
`
`to “conformably fit.” Viewed holistically,
`
`there is no
`
`apparent gap between the lefi side (or, for that matter, the bottom side) of the RCX
`
`brick and the elements of the “casing.” Moreover, the RCX brick aligns flush with
`
`the “casing” such that
`
`it does not protrude or recede relative to the “casing.”
`
`23
`
`
`
`
`
`Accordingly, the “casing” of Brick Simon is joined to the “housing” of the RCX
`
`brick “relying on matching forms and dimensions,” and thus “conformably fits”
`
`according to Patent Owner’s proposed construction.
`
`50.
`
`Importantly, the “casing” of Brick Simon “conformably fits” at least to the
`
`same extent as the embodiment of Fig. 1 of the ’066 Patent. That is, Patent Owner
`
`argues that the claims of the ’066 Patent are directed to the embodiment of Fig. 1.
`
`Response at 2-3.
`
`If Patent Owner’s assertion is true, then the “casing” of Fig.
`
`1
`
`must “conformably fit” the illustrated “housing.” I see no credible reason why one
`
`of ordinary skill, given Fig.
`
`1 as an example of “conforrnably fitting,” would
`
`conclude that this feature is absent from Philo’s Brick Simon.
`
`51.
`
`Separately, Patent Owner contends that “Philo does not disclose any
`
`manipulation of images or symbols,” and that “[a]t most, Philo indicates‘that
`
`numbers are displayed, without any ‘manipulating’ or change by the user.”
`
`Response at 20.
`
`I disagree. Patent Owner appears to have overlooked Philo’s
`
`discussion of how a game is initialized by Brick Simon, which is described in
`
`detail in Exhibit 1017 at 12 and quoted in the Petition at 26.
`
`52. These passages state: “Brick Simon will first ask for the play difficulty level.
`
`RCX LCD shows a walking 1234 pattern, waiting for a key to be pressed”; once
`
`selected, “[t]he chosen difficulty level is then displayed as 1111, 2222, 3333 or
`
`4444” and play begins. That is, Brick Simon first displays a pattern of numbers,
`
`24
`
`
`
`
`
`which are inherently alphanumeric symbols. This “walking 1234 pattern” serves
`
`as a prompt for the user to decide which of four difficulty levels to choose. As
`
`Philo states, the blue, red, yellow, and green keys respectively correspond to levels
`
`1—4. Exhibit 1017 at 12. When the user enters the selected difficulty level by
`
`pressing a particular key, Brick Simon confirms the user’s choice by changing the
`
`display from the “walking 1234 pattern” to the number corresponding to the
`
`chosen difficulty level.
`
`53. That is, the initially displayed “walking 1234 pattern” changes in response to
`
`the user’s keypress that selects the entered difficulty level. Manual action by the
`
`user directly results in a change to the digits displayed by the RCX brick. One of
`
`ordinary skill would readily recognize from this description that the digits or
`
`“symbols” displayed by the RCX brick are “chang[ed] with or as if with the hands,
`
`or by mechanical or electronic means,” and are thus “manipulated” when that term
`
`is properly construed as proposed above.
`
`54. Regarding claim 4, Patent Owner mistakenly asserts that “Philo does not
`
`describe that touch sensors produce signals for manipulating images or symbols.”
`
`Response at 22. As shown in the three images reproduced above, Brick Simon
`
`includes four different—colored keys that are its primary interface for user input.
`
`The purpose of keys is to be pressed, and indeed Philo illustrates an actual
`
`keypress occurring in the image reproduced above at 11 46.
`
`25
`
`
`
`
`
`
`
`
`
`55. When pressed, Brick Simon’s keys communicate input to the RCX brick. For
`
`example, as discussed above at W 52-53, during initialization, keypresses cause
`
`manipulation of the symbol patterns displayed on the RCX brick in order to
`
`confirm the user’s selected difficulty level.
`
`The ordinary meaning of “tactile”
`
`relevant to the context of the ’066 Patent is “of, [or] relating to
`
`the sense of
`
`touch.” Exhibit 1040. Because a keypress involves touch as shown above, one of
`
`ordinary skill would readily recognize it as a form of “user tactile manipulation” as
`
`recited in claim 4.
`
`56.
`
`I Regarding claim 5, Patent Owner argues that “Philo does not disclose any
`
`gripping or grasping of components by a user during play activity.” Response at
`
`23.
`
`I note, however
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