`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`RUBICON COMMUNICATIONS, LP
`Petitioner,
`
`v.
`
`LEGO A/S
`Patent Owner.
`____________
`
`Case IPR2016-01187
`Patent 8,894,066
`____________
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION OF
`PETITIONER’S REPLY WITNESS
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`
`
`
`
`Petitioner respectfully submits this Response to Patent Owner’s Motion for
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`Observations on Cross-Examination of Petitioner’s Reply Witness (the “Motion”),
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`Dr. Jay P. Kesan. All page and line references are to Exhibit 2030.
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`Observations 1-5
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`
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`At ¶¶ 1-5 of the Motion, Patent Owner cites portions of Dr. Kesan’s
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`testimony regarding his educational and professional background, and concludes
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`that these observations are relevant “because Dr. Kesan’s educational background
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`and qualifications are inconsistent with the uncontested definition of a person of
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`ordinary skill in the art as of the time of the invention.” These observations are not
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`relevant, because they do not account for Dr. Kesan’s testimony at page 83, line 21
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`– page 84, line 4 and page 84, line 20 – page 85, line 1, which reads (emphasis
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`added):
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`Q: . . . And by common knowledge of one of ordinary skill,
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`you’re referring to the skill that you possess as one in the art?
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`A. No. I mean, I’m just looking at it as somebody who has
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`some knowledge, probably has a Bachelor’s degree in engineering.
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`
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`* * *
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`A. But at the same time, this is not complicated technology,
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`and a person with an engineering degree and a couple of years of
`work experience should be able to – would be the person of ordinary
`skill in the art.
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`1
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`
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`That is, Dr. Kesan provided further testimony clarifying his earlier position on the
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`level of ordinary skill, rendering it no longer “uncontested.”
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`Observation 10
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`
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`At ¶ 10 of the Motion, regarding “changing,” Patent Owner cites Dr.
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`Kesan’s testimony concerning “moving those symbols and images on the display,”
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`concluding
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`this
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`testimony
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`is relevant “because
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`it concerns Dr. Kesan’s
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`understanding of the term ‘manipulate.’” This observation is not relevant, because
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`it fails to account for Dr. Kesan’s testimony at p. 31, lines 18-19 that further relates
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`to his understanding of the term “manipulate”:
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`
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`Q. Manipulate includes removing entirely?
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`A. I suppose it could.
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`That is, Dr. Kesan’s full testimony indicates that his understanding of “manipulate”
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`is not limited to “moving those symbols and images on the display.”
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`Observation 11
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`
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`At ¶ 11 of the Motion, Patent Owner cites Dr. Kesan’s answer of “No, I
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`didn’t” to the question “Did you rely on the petition in forming your opinion?”,
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`contrasts this to Dr. Kesan’s Declaration in which he states he considered the
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`Petition, and concludes that the testimony is relevant “because it explains new
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`arguments not previously raised in the Petition.” This observation is not relevant
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`to the extent that it takes Dr. Kesan’s answer out of context and suggests a
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`2
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`
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`contradiction in his testimony that does not exist. Dr. Kesan’s full answer at page
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`46, lines 2-5, was:
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`A. No, I didn’t. I was really focused on responding to the
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`patent owner’s response, the declaration of Ms. Elizabeth Knight, and
`PTAB’s institution decision.
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`That is, whether Dr. Kesan relied on the Petition, as questioned, is distinct from
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`whether Dr. Kesan considered the Petition, as stated in his Declaration.
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`Observation 12
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`
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`At ¶ 12 of the Motion, concerning the question of whether the examples of
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`the ’066 Patent supported the term “portion” meaning an entirety, Patent Owner
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`cites Dr. Kesan’s answer of “Not that I recall, but it certainly doesn’t exclude it,”
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`concluding that the testimony is relevant because it “concerns Dr. Kesan’s
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`understanding of the term ‘portion.’” This observation is not relevant, because it
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`does not account for Dr. Kesan’s testimony at page 98, line 15 – page 99, line 10:
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`Q. Can you explain to us your opinion with respect to how the word
`“comprising” in the claims affects a portion?
`
`A. Right. As I mentioned in my declaration, you know, the – it’s my
`understanding that when a claim uses the term “comprising,” then that
`is considered to be open-ended language. And so if we say that the
`casing conformably fits around a portion of the housing, then it has to
`conformably fit around at least a portion of the housing, but it could
`be more because of the open-ended language “comprising.”
`
`3
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`
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`Q.· ·And there's also been some discussion about how the figures in
`the '066 patent might impact the term “portion.”· What is your opinion
`on that?
`
`·A.· ·It’s my understanding that examples in a patent are there to
`illustrate the invention, and the claims are not limited to those specific
`examples.· They could be broader.
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`Observations 16, 19
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`
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`At ¶ 16 of the Motion, Patent Owner cites the question “Is there anything in
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`the disclosure of Philo that would suggest grasping Brick Simon by the stand?” and
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`Dr. Kesan’s answer of “I mean, not that I recall, but it’s clear that those structural
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`features are disclosed, and they allow the Brick Simon to be grasped.” At ¶ 19 of
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`the Motion, Patent Owner cites similar testimony concerning whether Brick Simon
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`affirmatively discloses “grasping.” Patent Owner asserts that these portions of
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`testimony are relevant because they “admit[] that Philo does not disclose a ‘hand
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`grip section.’” Petitioner submits that these observations are not relevant because
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`the conclusion does not follow. Observing that the specific action of “grasping” is
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`not affirmatively disclosed is not an admission that a structure (i.e., “hand grip
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`section”) capable of being grasped is absent, and Dr. Kesan specifically identified
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`those structural features of Brick Simon that are capable of being grasped.
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`4
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`
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`Observation 17
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`
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`At ¶ 17 of the Motion, Patent Owner cites Dr. Kesan’s statement “Yeah, I
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`haven’t compared this declaration of mine to the original petition,” contrasts this to
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`Dr. Kesan’s Declaration in which he states he considered the Petition, and
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`concludes that the testimony is relevant “because it explains new arguments not
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`previously raised in the Petition.” This observation is not relevant to the extent
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`that it takes Dr. Kesan’s answer out of context and suggests a contradiction in his
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`testimony that does not exist. Dr. Kesan’s full answer at page 46, lines 2-5, was:
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`Q. . . . That intrinsic argument, do you know if that appeared in
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`the regular petition?
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`A. Oh. Yeah, I haven’t compared this declaration of mine to
`the original petition. Like I said, I was focused on responding to the
`patent owner’s response[,] to the declaration of Ms. Elizabeth Knight
`and the PTAB institution decision.
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`That is, whether or not Dr. Kesan “compared” his Declaration to the petition is
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`distinct from whether Dr. Kesan considered the Petition, as stated in his
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`Declaration. Dr. Kesan never stated that he did not consider the Petition, but rather
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`emphasized that his opinion was primarily focused upon the documents he
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`referenced.
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`5
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`Observation 18
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`
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`At ¶ 18 of the Motion, Patent Owner notes that “when asked whether the
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`witness took a position as to the knowledge of one of ordinary skill in the art,” Dr.
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`Kesan replied, “It may be a point I did not contest. In other words, it may have
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`been a point that I was in agreement with the patent owner.” Patent Owner
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`concludes that the testimony is relevant “because it concerns the level of one of
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`ordinary skill in the art.” The observation is not relevant because it does not
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`account for the fact that—although Dr. Kesan may not have contested Patent
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`Owner’s position in his Declaration—upon cross-examination, Dr. Kesan provided
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`further testimony that “a person with an engineering degree and a couple of years
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`of work experience should be able to – would be the person of ordinary skill in the
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`art,” thereby clarifying his prior position. See page 84, line 20 – page 85, line 1
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`and discussion of Observations 1-5 above.
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`Observation 20
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`
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`At ¶ 20 of the Motion, Patent Owner cites Dr. Kesan’s statement that “as a
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`person of ordinary skill in the art, I know what infrared communications is and
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`what it’s used for and how that works” and concludes that this testimony is
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`relevant “because it applies knowledge of a skilled artisan that is inconsistent with
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`the uncontested definition of a person of ordinary skill in the art.” This
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`observation is not relevant because it takes Dr. Kesan’s answer out of context and
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`6
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`
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`does not account for his additional testimony concerning the level of ordinary skill
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`discussed with respect to Observations 1-5 and 18. Dr. Kesan’s answer in context
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`appears at page 73, lines 13-21:
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`Q. Do you know how infrared communication was used in the
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`palmOne Treo?
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`A. I don’t know how it was used specifically, but I’m just – as
`a person of ordinary skill in the art, I know what infrared
`communications is and what it’s used for and how that works. So I
`can imagine that that is similar infrared communications in the
`palmOne Treo, that it’s basically for beaming information and
`software between devices.
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`That is, Dr. Kesan was asked about his knowledge concerning the operation of
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`infrared communications in the palmOne Treo, and answered from his own
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`knowledge of that field. He was not asked to state his answer from the perspective
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`of one of ordinary skill in the art of the ’066 Patent. Moreover, as noted above
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`with respect to Observations 1-5 and 18, Dr. Kesan clarified his position
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`concerning the level of ordinary skill, rendering it no longer “uncontested.”
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`Observations 21, 23
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`
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`At ¶¶ 21 and 23 of the Motion, Patent Owner cites Dr. Kesan’s testimony
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`relating to “receiving” of infrared signals in response to the questions “And in
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`addition to receiving the IR signals, you would have to be able to interpret that
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`7
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`signal?” and “Provided those devices are adapted to receive and interpret those
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`signals. Isn’t that correct?” at page 75, lines 12-13 and page 77, lines 9-10. Patent
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`Owner concluded that Dr. Kesan’s answers were relevant because they “concern[]
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`what is required to combined a cellular telephone and cited references.” The
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`observations are not relevant because they do not account for Dr. Kesan’s
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`testimony at page 78, lines 9-14 (emphasis added):
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`There is clear language in the RCX Chapter 6 -- Building Robots
`book, Chapter 6 is programming the RCX, and it talks about how you
`can transfer to the RCX brick, with the help of an IR link, some
`software, and the RCX brick will receive and execute the software.·
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`That is, Dr. Kesan testified that the receiving capability is already performed by the
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`RCX brick, and therefore not an aspect of the references that would need to be
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`modified in order to combine the references.
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`Observation 22
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`
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`At ¶ 22 of the Motion, Patent Owner notes that when asked “Is there any
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`indication that this device could communicate with anything other than another
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`palmOne Treo,” Dr. Kesan responded “I don’t think that is discussed in this
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`document, but it doesn’t limit it that way.” Patent Owner concludes that this
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`testimony is relevant “because it admits that Ex. 1043 does not disclose how to
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`combine a cellular telephone with other devices.” This observation is not relevant
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`because it does not account for Dr. Kesan’s testimony at page 79, lines 8-10, in
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`8
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`
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`response to a question regarding modification of the palmOne Treo: “[T]his is old
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`technology. I mean, I think, you know, a person of ordinary skill in the art would
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`understand how to set up an IR link and how to use it.” That is, Dr. Kesan testified
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`that any necessary modifications were within the capabilities of one of ordinary
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`skill in the art.
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`Observation 24
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`
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`At ¶ 24 of the Motion, Patent Owner cites Dr. Kesan’s statement “So I don’t
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`recall specifically seeing infrared communications being used to manipulate
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`images, but using infrared communications to manipulate images is not required by
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`the claim.” Patent Owner states that this testimony “relates to Petitioner’s position
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`that combining Philo, Building Robots, and a cellular telephone renders obvious
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`Claim 1, stated on pages 18-19 of the Reply” (emphasis added). Patent Owner
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`concludes that the testimony is relevant “because it concerns Claim 1 from which
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`Claim 7 depends.” This observation is not relevant, because contrary to Patent
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`Owner’s contention, Petitioner never asserted that the combination of references
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`renders obvious claim 1, which does not recite a cellular telephone.
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`Observations 25-26
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`
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`At ¶¶ 25-26 of the Motion, Patent Owner cites Dr. Kesan’s answers to
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`questions regarding “other cell phones that use IR communications” and who
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`located the palmOne Treo reference. Patent Owner states that the testimony relates
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`9
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`
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`to paragraphs 65 and 67 of Dr. Kesan’s Declaration, and asserts that the testimony
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`is relevant “because it contradicts the assertion that IR communication’s use in
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`cellular telephone devices was widespread.” The observations are not relevant
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`because they are directed to an assertion Dr. Kesan did not make (i.e., a strawman):
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`Dr. Kesan did not state that “IR communication’s use in cellular telephone devices
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`was widespread.”
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` Rather, he stated, “Given
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`the ubiquity of
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`infrared
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`communication and widespread knowledge of its use in cellular telephone devices
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`at the time of invention of the ’066 Patent, it is my opinion that . . .” Exh. 1036 at ¶
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`65 (emphasis added). That is, Dr. Kesan did not testify that the use of IR in cellular
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`telephone device was “widespread,” but rather that the knowledge that one could do
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`so was “widespread.”
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`Observations 27-28
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`
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`At ¶¶ 27-28 of the Motion, Patent Owner cites Dr. Kesan’s testimony
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`concerning the person of ordinary skill being “somebody who has some
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`knowledge, probably has a Bachelor’s degree in engineering” and “an engineering
`
`degree and a couple of years of work experience.” Patent Owner asserts that the
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`testimony is relevant because “Dr. Kesan states qualifications of one of ordinary
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`skill in the art that [are] inconsistent with the uncontested definition of a person of
`
`ordinary skill in the art.” These observations are not relevant, because as noted
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`above with respect to Observations 1-5 and 18, in response to questioning by
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`10
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`
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`Patent Owner, Dr. Kesan’s further testimony clarified his prior testimony regarding
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`the level of ordinary skill.
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`Observations 29-30
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`
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`At ¶¶ 29-30 of the Motion, Patent Owner cites Dr. Kesan’s statement that
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`“it’s surrounded on all sides by the casing” and “the word ‘portion’ simply means
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`some percentage that’s, you know, more than zero and extending to 100.” Patent
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`Owner asserts that the testimony is relevant because it “concerns Dr. Kesan’s
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`understanding of the term ‘portion.’” The observations are not relevant because
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`they do not account for Dr. Kesan’s additional testimony regarding the term
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`“portion” cited above with respect to Observation 12.
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`Observation 31
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`
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`At ¶ 31 of the Motion, Patent Owner cites Dr. Kesan’s testimony that in the
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`examples given in the ’066 Patent, the “portions” shown “were less than 100
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`percent,” and asserts that this testimony is relevant “because it indicates the lack of
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`basis for Dr. Kesan’s broad definition of the term ‘portion.’” This observation is
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`not relevant because it does not account for Dr. Kesan’s testimony at page 99, lines
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`4-10:
`
`Q.· ·And there's also been some discussion about how the figures in
`the '066 patent might impact the term “portion.”· What is your opinion
`on that?
`
`11
`
`
`
`·A.· ·It’s my understanding that examples in a patent are there to
`illustrate the invention, and the claims are not limited to those specific
`examples.· They could be broader.
`
`That is, Dr. Kesan plainly testified to his understanding that the illustrated
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`examples do not limit the scope of the claims.
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`Observation 33
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`
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`At ¶ 33 of the Motion, Patent Owner cites Dr. Kesan’s testimony that “the
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`casing and the housing conformably fit in Anderson, just like the casing and the
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`housing conformably fit in the ’066 patent” and asserts that the testimony is
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`relevant “because it concerns FIG. 4 of Anderson.” The observation is not relevant
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`because it omits Dr. Kesan’s further testimony at page 91, line 20 – page 92, line
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`11:
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`Q.· ·Well, it says, “At least to the same extent as the ’066 patent.”
`A.· ·Yeah.· And I'm just talking about the goodness of the fit, if you
`will.· That's what I mean by, you know, conformably fits, to the -- at
`least the same extent.
`·Q.· ·So you weren't talking about the completeness of the fit?
`·A.· ·Right.· You know, I've discussed that issue of, you know, what
`is a portion earlier.· I'm just simply saying here that, you know,
`they're -- the casing and the housing may be separate and distinct, but
`they conformably fit just like what is shown in the ’066 patent.
`
`12
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`
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`That is, Dr. Kesan testified that his reference to Anderson conformably fitting “at
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`least to the same extent” as the ’066 Patent referred to the quality or “goodness” of
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`the fit, rather than its extent or “completeness.”
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`Observation 36
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`
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`At ¶ 36 of the Motion, Patent Owner cites Dr. Kesan’s testimony that “the
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`reference itself does not say, yes, you can replace the computer with a cell phone,
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`but it doesn’t need to. You know, a person of ordinary skill in the art would
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`understand that.” Patent Owner asserts that this testimony is relevant “because Dr.
`
`Kesan admits that Ex. 1043 does not disclose how to combine a cellular telephone
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`with other devices and applies knowledge of a skilled artisan inconsistent with the
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`uncontested definition of a person of ordinary skill in the art.” This observation is
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`not relevant, because as noted above with respect to Observations 1-5, 18, 27, and
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`28, Dr. Kesan provided further testimony in response to Patent Owner’s
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`questioning that clarified his prior testimony concerning the level of ordinary skill,
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`rendering it no longer “uncontested.” Moreover, Dr. Kesan testified that
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`notwithstanding a lack of explicit disclosure in Ex. 1043, “replac[ing] the computer
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`with a cell phone” was within the level of ordinary skill.
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`Date: October 6, 2017
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`
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`
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`Respectfully submitted,
`
`/ Anthony M. Petro /
`Anthony M. Petro (Reg. No. 59,391)
`
`13
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 6,
`2017 a complete and entire copy of Petitioner’s Response To Patent Owner’s
`Motion for Observations on Cross-Examination of Petitioner’s Reply Witness was
`provided via Federal Express Standard Overnight, to the Patent Owner by serving
`the correspondence address of record as follows:
`Andrew M. Riddles
`Elizabeth A. Alquist
`Howard Grossman
`Day Pitney LLP
`7 Times Square
`New York, NY 10036
`
`
`
`
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`
`
`
`
`/ Anthony M. Petro /
`Anthony M. Petro
`Reg. No. 59,391
`tpetro@intprop.com
`MEYERTONS, HOOD,
`KIVLIN, KOWERT &
`GOETZEL
`1120 S. Capital of Texas Hwy.
`Building 2, Suite 300
`Austin, Texas 78746
`(512) 853-8883
`
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`14
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