UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`
`Petitioner
`
`v.
`
`SCRIPT SECURITY SOLUTIONS, LLC
`
`Patent Owner
`
`____________________
`
`Patent No. 6,542,078
`____________________
`
`DECLARATION OF DAVID H. WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,542,078
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`Page 1 of 117
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`(cid:54)(cid:36)(cid:48)(cid:54)(cid:56)(cid:49)(cid:42)(cid:3)(cid:40)(cid:59)(cid:43)(cid:44)(cid:37)(cid:44)(cid:55)(cid:3)(cid:20)(cid:19)(cid:19)(cid:21)
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`

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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION .......................................................................................... 1
`BACKGROUND AND QUALIFICATIONS................................................ 1
`II.
`III. MATERIALS REVIEWED ........................................................................... 5
`IV.
`PERSON OF ORDINARY SKILL ................................................................ 8
`V.
`OVERVIEW OF THE ’078 PATENT ........................................................... 9
`A.
`The ’078 Patent .................................................................................... 9
`B.
`Priority Date of the ’078 Patent..........................................................14
`1.
`Claim 1.....................................................................................15
`2.
`Claims 2-5 and 10 ....................................................................18
`3.
`Claims 6-9................................................................................20
`VI. CLAIM CONSTRUCTION .........................................................................22
`VII. TECHNICAL BACKGROUND & PRIOR ART SUMMARY ..................26
`A.
`Technical Background........................................................................26
`Overview of Glidewell .......................................................................30
`B.
`Overview of Lai..................................................................................35
`C.
`Overview of Wadhwani......................................................................37
`D.
`VIII. THE PRIOR ART DISCLOSES ALL OF THE FEATURES OF THE
`CHALLENGED CLAIMS ...........................................................................43
`Glidewell Discloses the Features of Claim 1 .....................................43
`A.
`1.
`Claim 1.....................................................................................43
`a)
`[pre] “A system for detecting the movement of an
`object and providing information relative to said
`movement to a remote location comprising” ................43
`[a] “an object whose movement is to be detected,” ......49
`[b] “a detector adapted to detect movement of said
`object and provide an indication of said
`movement,”....................................................................50
`
`b)
`c)
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`-i-
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`d)
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`e)
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`f)
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`[c] “a first transmitter associated with said detector
`and adapted to wirelessly transmit a predetermined
`signal in response to said indication” ............................52
`[d] “an information gathering device adapted to
`receive said predetermined signal, to gather
`information relating to said movement, and to
`transmit said information, and” .....................................54
`[e] “a remote notification device adapted to receive
`said information from said information gathering
`device, to establish data communication with a
`remote host, and to provide said information to
`said remote host.” ..........................................................60
`1) Mapping 1: receiver 56, antenna 28, and
`interface circuitry 58 is a “remote
`notification device” and master control unit
`60 is a “remote host” ...........................................61
`2) Mapping 2: security station 54 is a “remote
`notification device” and remote location
`device is a “remote host”.....................................72
`Glidewell and Lai Discloses the Features of Claims 1-6 and 10 .......77
`1.
`Claim 1.....................................................................................77
`2.
`Claim 2.....................................................................................83
`a)
`“The system of claim 1 wherein said information
`gathering device comprises a camera aimed toward
`said object.” ...................................................................83
`Claim 3.....................................................................................84
`a)
`“The system of claim 2 wherein said camera is a
`digital camera and said information gathering
`device comprises a memory for storing digital
`images generated by said camera.” ...............................84
`Claim 4.....................................................................................85
`a)
`“The system of claim 2 wherein said information
`gathering device comprises a wireless transmitter
`for wirelessly transmitting said information.”...............85
`-ii-
`
`B.
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`Page 3 of 117
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`3.
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`4.
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`

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`5.
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`6.
`
`7.
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`Claim 5.....................................................................................86
`a)
`“The system of claim 4 wherein said remote
`notification device includes a wireless receiver for
`receiving said information.” ..........................................86
`Claim 6.....................................................................................86
`a)
`“The system of claim 5 wherein said remote
`notification device includes a network interface for
`communicating said information to a remote
`network host.”................................................................86
`Claim 10...................................................................................87
`a)
`“The system of claim 1 wherein said information
`includes one or more of image information and
`audio information.”........................................................88
`Glidewell, Lai, and Wadhwani Discloses the Features of Claims
`7, 8, and 9 ...........................................................................................89
`1.
`Claim 7.....................................................................................89
`a)
`“The system of claim 6 wherein said network
`interface comprises one of an analog modem, a
`digital modem, or a network interface card.”................89
`Claim 8.....................................................................................93
`a)
`“The system of claim 5 wherein said remote
`notification device communicates said information
`to a local computer to which said remote
`notification device is connected.”..................................93
`Claim 9...................................................................................100
`a)
`“The system of claim 8 wherein said computer
`comprises a network interface for communicating
`said information to a remote host.” .............................100
`IX. CONCLUSION...........................................................................................104
`
`C.
`
`2.
`
`3.
`
`-iii-
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`I, David H. Williams, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Samsung Electronics Co., Ltd. (“Petitioner”)
`
`as an independent expert consultant in this proceeding before the United States
`
`Patent and Trademark Office (“PTO”).
`
`2.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work.
`
`3.
`
`My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this or
`
`any other proceeding. I have no other interest in this proceeding.
`
`4.
`
`I have been asked to provide my opinions regarding U.S. Patent No.
`
`6,542,078 (“the ’078 patent”)1, such as whether certain references disclose the
`
`features recited in claims of the ’078 patent. My opinions are set forth below.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`5.
`
`I am an independent consultant. All of my opinions stated in this
`
`declaration are based on my own personal knowledge and professional judgment.
`
`In forming my opinions, I have relied on my knowledge, review of information,
`
`1 Where appropriate, I refer to exhibits that I understand are attached to the petition
`
`for Inter Partes Review of the ’078 patent.
`
`1
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`and experiences in designing, developing, researching, and/or working with
`
`networking and/or security systems.
`
`6.
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein. A copy of my current
`
`curriculum vitae, which details my education and professional and academic
`
`experience, is attached as Appendix A to this declaration. The following provides
`
`an overview of some of my experience that is relevant to the matters set forth in
`
`this declaration.
`
`7.
`
`I received a B.S. in Electrical Engineering, with top honors, from the
`
`Purdue University, West Lafayette, Indiana in 1983. I received an MBA, with an
`
`emphasis on information management systems, from University of Texas at Austin
`
`in 1987. I graduated first in my class.
`
`8.
`
`After receiving my B.S. degree, I worked at Hughes Aircraft
`
`Company from 1983 to 1985, where I served as an electrical engineer. At Hughes,
`
`I was in the Radar Development group, where I worked as a microcomputer and
`
`digital system design engineer on the F-15 Radar system.
`
`9.
`
`After receiving my MBA degree, I worked at Deloitte Consulting
`
`(originally Touche Ross) from 1987 to 1991, where I served as a senior manager.
`
`At Deloitte, I provided consulting services for technology-intensive companies.
`
`2
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`From 1991 to 1993, I was a senior associate at Booz Allen &
`
`10.
`
`Hamilton, where I worked in the Information Technology practice. At Booz Allen,
`
`I provided and led consulting services for companies in the communication
`
`industry and other IT-intensive companies. For example, I consulted on developing
`
`technology strategies for addressing new marketing opportunities and internal
`
`operational issues.
`
`11.
`
`From 1993 to 2002, I was an associate partner at Accenture, where I
`
`worked in the Communications & High-Technology Strategy practice. At
`
`Accenture, I was responsible for development of their wireless location practice.
`
`Additionally, I led the development of business, technology, and product strategies
`
`for numerous wireless and wireline carriers looking to enter new markets.
`
`12. After leaving Accenture, I founded E911-LBS Consulting in 2002. I
`
`am currently president of the company, which provides services across all aspects
`
`of the wireless value chain. For example, I provide services with respect to
`
`technology and business strategic planning and product design and development
`
`associated with Location Based Services (LBS), Global Positioning Satellite (GPS)
`
`systems, Wireless 911 (E911), Real-Time Location Systems (RTLS), Radio
`
`Frequency Identification (RFID), beacon, and other location determination and
`
`sensing technologies and services.
`
`3
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`I have been published and quoted by leading magazines and
`
`13.
`
`newspapers about location-related services, including: “The New York Times,”
`
`“CBS News.com,” “The Boston Globe,” “Computerworld,” “Directions
`
`Magazine,” “Mission Critical Communications,” “Popular Mechanics,” and the
`
`“RFID Journal.”
`
`14.
`
`I have very extensive experience in all aspects of Location Based
`
`Service delivery across the wireless location ecosystem including enabling
`
`network, map data, geospatial platform, chipset, data management, device, and
`
`location determination infrastructure and integration providers. I have experience
`
`in all related aspects of LBS, including data privacy and security management.
`
`15.
`
`I authored four books on wireless location, including:
`
`(cid:120) The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless
`
`Location-Based Services (2005 version);
`
`(cid:120) The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless
`
`Location-Based Services (2009 version);
`
`(cid:120) The Definitive Guide to Wireless E911; and
`
`(cid:120) The Definitive Guide to Mobile Positioning and Location Management
`
`(co-authored).
`
`16.
`
`In addition, I have authored dozens of research reports, and tracked
`
`and analyzed leading companies in the LBS industry, particularly with respect to
`
`4
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`their product and
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`technology
`strategies, competitive capabilities and
`
`implementation issues. I am a recognized expert on all public policy and
`
`technology issues related to location data privacy and LBS privacy protection
`
`policies, processes, and systems. I am also the co-inventor of a U.S. Patent relating
`
`to providing mobile social networking privacy.
`
`17.
`
`I am not an attorney and offer no legal opinions, but in the course of
`
`my work, I have had experience studying and analyzing patents and patent claims
`
`from the perspective of a person skilled in the art. Based on my experience and
`
`education, I believe that I am qualified to opine as to knowledge and level of skill
`
`of a person of ordinary skill in the art at the time of the alleged invention of the
`
`’078 patent (which I further describe below) and what such a person would have
`
`understood at that time, and the state of the art during that time.
`
`III. MATERIALS REVIEWED
`
`18.
`
`The opinions in this Declaration are based on the documents I
`
`reviewed, my knowledge and experience, and professional judgment. In forming
`
`my opinions expressed in this Declaration, I reviewed the following materials: the
`
`’078 Patent (Ex. 1001); U.S. Patent No. 5,319,698 (“Glidewell”) (Ex. 1008); U.S.
`
`Patent No. 5,610,580 (“Lai”) (Ex. 1016); U.S. Patent No. 3,925,763 (“Wadhwani”)
`
`(Ex. 1017); U.S. Patent No. 6,970,183 to Monroe, issued November 29, 2005 (Ex.
`
`1014); U.S. Patent No. 6,009,356 to Monroe, issued December 28, 1999 (Ex.
`
`5
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`1015); the File History of U.S. Application No. 09/785,702 (Ex. 1004); the File
`
`History of U.S. Application No. 09/271,511 (Ex. 1005); File History of U.S.
`
`Application No 08/865,886 (Ex. 1006); File History of U.S. Provisional
`
`Application No 60/018,829 (Ex. 1007); Claim Construction Memorandum Opinion
`
`and Order in Script Security Solutions L.L.C. v. Amazon.com, Inc. et al., Case No.
`
`2:15-cv-01030 (E.D. Tex.) (Ex. 1020); Script Security Solutions, LLC’s Opening
`
`Claim Construction Brief in Script Security Solutions L.L.C. v. Amazon.com, Inc.
`
`et al., Case No. 2:15-cv-01030 (E.D. Tex.) (Ex. 1019); American Heritage
`
`Dictionary, Fourth Edition, 2000 (Ex. 1018); Andree Brooks, TALKING: Security;
`
`Systems Getting Smarter, The New York Times, February 5, 1989,
`
`http://www.nytimes.com/1989/02/05/realestate/talking-security-systems-getting-
`
`smarter.html?pagewanted=print# (Ex. 1022); Griffin Miller, Putting Out
`
`Unwelcome Mat for Burglars, The New York Times, December 10, 1992,
`
`http://www.nytimes.com/1992/12/10/garden/putting-out-unwelcome-mat-for-
`
`burglars.html?pagewanted=print (Ex. 1023); Rich Warren, Do It Yourself To Cut
`
`Alarming Cost
`
`of
`
`Security, Chicago Tribune, May
`
`8,
`
`1987,
`
`http://articles.chicagotribune.com/1987-05-08/entertainment/8702040433_1_
`
`schlage-adt-sensors (Ex. 1024); N.R. Kleinfield, This Long Island Industry Is
`
`Beating the Recession; Demand Remains Strong for Alarms and Security Systems
`
`to Keep Burglars Away, April 8, 1992, http://www.nytimes.com/1992/04/08/
`
`6
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`Inter Partes Review of U.S. Patent No. 6,542,078
`nyregion/this-long-island-industry-beating-recession-demand-remains-strong-for-
`
`alarms.html?pagewanted=print (Ex. 1025) and any other materials I refer to in this
`
`Declaration in support of my opinions, while drawing on my experience and
`
`knowledge of networking and security systems.
`
`19. All of the opinions contained in this declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. My opinions
`
`have also been guided by my appreciation of how a person of ordinary skill in the
`
`art would have understood the claims and the specification of the ’078 patent at the
`
`time of the alleged invention, which I have been asked to initially consider as early
`
`2001 (including February 16, 2001), which I understand is the filing date of U.S.
`
`Application No. 09/785,702 (“the ’702 application”) corresponding to the ’078
`
`patent). My opinions reflect how one of ordinary skill in the art would have
`
`understood the ’078 patent and any of the applications that the ’078 patent claims
`
`priority to, the prior art to the patent, and the state of the art at the time of the
`
`alleged invention.
`
`20.
`
`I also have been asked to consider my opinions, including the level of
`
`skill, the state of the art, and the identified prior art, at the time when U.S.
`
`Provisional Application No. 60/018,829 was filed, which is May 30, 1996. In my
`
`opinion, none of my opinions would change, including those regarding the level of
`
`skill of a person skilled in the art and how certain prior art discloses the challenged
`
`7
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`claims and the reasons for combining that prior art and how those combinations
`
`would have been implemented. While the technologies advanced in the art from
`
`1996 to 2001, the disclosures of Glidewell, Lai, and Wadhwani reflect features
`
`known before May 1996, and are consistent with the type of technologies,
`
`concepts, and features known to one of ordinary skill in the art at that time. Thus, if
`
`the time of the alleged invention for the ’078 patent was in the May 1996
`
`timeframe, my opinions regarding the ’078 patent with respect to these references
`
`in this declaration would not change.
`
`21. Based on my experience and expertise, it is my opinion that certain
`
`prior art references disclose all the features recited in claims 1-10 of the ’078
`
`patent. I may refer to these claims collectively as “the challenged claims.” Also, it
`
`is my opinion that certain features included in the challenged claims are not
`
`disclosed in the applications that the ’078 patent claims priority to (which I will
`
`refer to collectively as “the ’078 patent priority applications”), and that none of the
`
`’078 patent priority applications suggest to one of ordinary skill in the art those
`
`certain features.
`
`IV. PERSON OF ORDINARY SKILL
`
`22.
`
`I was asked to provide my opinion on the level of one of ordinary skill
`
`in the art with respect to the invention of the ’078 patent as of the early 2001
`
`timeframe, such as February 2001. Based on my review of the types of problems
`
`8
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`encountered in the art, prior solutions to those problems, the rapidity with which
`
`innovations were made, the sophistication of the technology, and the educational
`
`level of active workers in the field, I believe a person of ordinary skill in art at that
`
`time would have had at least (i) a Bachelor's degree in computer science, electrical
`
`engineering, or equivalent thereof, and at least two years of experience in the
`
`relevant field, e.g., networking or security. More education can supplement
`
`practical experience and vice versa. My opinions in this declaration take into
`
`account this understanding, and where appropriate are from the perspective of one
`
`of ordinary skill in the art as I have defined it here during the relevant time frame.
`
`23. As I mentioned above, my opinion regarding the level of skill of such
`
`a person would be the same in the May 30, 1996 timeframe as well. The types of
`
`problems encountered in the art, prior solutions to those problems, the rapidity
`
`with which innovations were made, the sophistication of the technology, and the
`
`educational level of active workers in the field at that time would have been
`
`similar. For instance, the type of technologies, while advanced in 2001 compared
`
`to 1996, still provided the same type of event monitoring, sensing, reporting, and
`
`communicating concepts and operations, as demonstrated by, for example, the
`
`disclosures in Glidewell, Lai, and Wadhwani.
`
`V.
`
`OVERVIEW OF THE ’078 PATENT
`
`A.
`
`The ’078 Patent
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`The ’078 patent, entitled “Portable Motion Detector and Alarm
`
`24.
`
`System and Method,” discloses an alarm system which can detect the movement of
`
`a door, a window, or a moveable object. (Ex. 1001, 4:34-49, 2:62-67). An example
`
`of the security system is shown in Figure 1.
`
`(Ex. 1001, Fig. 1.)
`
`25.
`
`Figure 1 illustrates a system including multiple “movement detecting
`
`and signal transmitting means 20,” a receiver 30, and a remote control 40. (Ex.
`
`1001, 4:28-32.) The movement detectors 20 each have a retractable wire 22 that
`
`extends from a moveable object, such as a door or window, to moveable magnets
`
`inside the casing of detector 20. (Id., 4:49-56.) When the object moves, the wire is
`
`displaced, causing a transmitter in detector 20 to send a wireless signal. The
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`10
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`receiver 30 detects the wireless signal and initiates an alarm. (Id., 4:60-64, 5:14-
`
`19.)
`
`26. According to the ’078 patent, the receiver 30 “initiates a local alarm
`
`which can be audible or visual. In addition, receiver 30 may initiate contact with
`
`police, medical, rescue or other emergency facilities or agencies.” (Ex. 1001, 5:16-
`
`19.)
`
`27.
`
`The ’078 patent describes an “enhanced version” of the alarm system
`
`in connection with Fig. 12.
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`28. Referring to Figure 12 above, in addition to the detector 20 and
`
`receiver 30 described above, the “enhanced version” includes an information
`
`gathering device 90, a remote notification device 92, and a network computer host
`
`96. (Ex. 1001, 10:14-29.) When the object being monitored moves, the information
`
`gathering device 90 receives a signal sent by detector 20. (Id., 10:31-34, 12:26-31.)
`
`The information gathering device 90 may include a camera that acquires image
`
`information. (Id., 12:26-31.) An RF transmitter in the information gathering device
`
`90 then sends information related to the detected motion to remote notification
`
`device 92. (Id., 12:34-36.) The remote notification device then forwards that
`
`information to a remote network computer host 96. (Id., 12:39-52.)
`
`29.
`
`The remote host 96 can be a host “that responds to the information
`
`received from the remote notification device 92 as either an information processing
`
`point or a store and-retrieval point,” or “that displays the received information on a
`
`monitor for viewing by a security agent.” (Ex. 1001, 12:53-65.)
`
`30.
`
`In my opinion, the language of claim 1 of the ’078 patent does not
`
`expressly require recording or sending video information to a remote host.
`
`31.
`
`The ’078 patent acknowledges
`
`the existence of conventional
`
`technologies like those discussed above before the alleged invention. For example,
`
`it describes that the BLACK WIDOW receiver manufactured by LCD Co. was
`
`“commercially available” and “may be purchased off-the-shelf from various
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`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`electronics supply companies such as Whitney electronics or Holsfelt Electronics.”
`
`(Ex. 1001, 5:35-45.) The ’078 patent explains that the BLACK WIDOW receiver
`
`unit “was used as a receiver” (e.g., such as the receiver 30 in Fig. 1). (Id.) The ’078
`
`patent also acknowledges that the disclosed RF receiver 106, which the patent
`
`describes as a component of the disclosed information gathering device 90 in
`
`Figure 12 (id., 10:31-35), “can be implemented using the RF receiving circuit
`
`components of the previously-described receiver 30” (which relates to the
`
`aforementioned prior art “BLACK WIDOW” receiver). (Id., 10:66-11:1.)
`
`32. Also, the ’078 patent acknowledges that “a number of commercially
`
`available surveillance products that can be used to implement the power supply
`
`100, camera 102, and RF transmitter 104” components of the information
`
`gathering device 90 of Figure 12 were known before the alleged invention. (Ex.
`
`1001, 10:31-35, 10:57-60.) One such technology identified by the ’078 patent is
`
`the “XCam2TM video camera kit available at the www.X10.com Internet website.”
`
`(Id., 10:60-61.) The ’078 patent acknowledges that the XCam2 camera product
`
`“integrates a color analog video camera that can transmit live color video (and
`
`audio) signals up to 100 feet, a microphone (for audio signal generation), and a 2.4
`
`GHz. transmitter into a single device of relative small size.” (Id., 10:62-65.)
`
`33.
`
`The ’078 patent also acknowledges that the “XRay Vision Internet
`
`KitTM [was] available at the aforementioned www.X10.com Internet website”
`
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`Inter Partes Review of U.S. Patent No. 6,542,078
`before the alleged invention. (Ex. 1001, 11:29-31.) The ’078 patent explains that
`
`XRay Vision technology could be used to implement the remote notification
`
`device of Figure 12. (Id., 31-33.) Specifically, the ’078 patent acknowledges that
`
`the XRay vision technology included,
`
`an integrated RF receiver and USB converter to capture
`and manage images received from the X10™ wireless
`video camera referred to above. Software that is
`provided with the product is adapted to forward the
`received images to any suitable remote network host,
`either in real time if the remote host is so equipped, or via
`e-mail.
`
`(Id., 11:33-39 (emphasis added).)
`
`B.
`
`34.
`
`Priority Date of the ’078 Patent
`
`I understand that the ’078 patent is a continuation-in-part of U.S.
`
`Application No. 09/271,511 (“the ’511 application”) (Ex. 1005), filed on March
`
`18, 1999, which is a continuation-in-part of U.S. Application No. 08/865,886 (the
`
`’886 application”) (Ex. 1006), filed on May 30, 1997, and also claims the benefit
`
`of U.S. Provisional Application No. 60/018,829 (“the ’829 application”) (Ex.
`
`1007), filed on May 30, 1996. I have been asked to review the ’511, ’886 and ’829
`
`applications (“the ’078 patent priority applications”) and provide my opinion on
`
`whether they disclose certain features recited in the challenged claims (discussed
`
`below) or otherwise challenged claims are supported by the ’511 application. In
`
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`

`
`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`my opinion, the challenged claims of the ’078 patent are not supported by any of
`
`the ’078 patent priority applications for the reasons that I have detailed below.
`
`1.
`
`Claim 1
`
`35.
`
`The challenged claims of the ’078 patent recite the concept of an
`
`information gathering device. (See, e.g., Ex. 1001, claim 1 (“information gathering
`
`device adapted to receive said predetermined signal, to gather information relating
`
`to said movement, and to transmit said information”).) The claims further recite the
`
`concept of a remote notification device that establishes data communication with a
`
`remote host, to provide data communication with a remote host. (See, e.g., Ex.
`
`1001, claim 1 (“a remote notification device adapted to receive said information
`
`gathering device, to establish data communication with a remote host, and to
`
`provide said information to said remote host”).) For example, claim 1 below
`
`highlights claim limitations relating to these features.
`
`15
`
`Page 19 of 117
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`

`
`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`
`(Ex. 1001, 13:8-21.) The ’078 patent describes these features in the “enhanced
`
`version” portions of the specification. (Id., 10:13-12:65.)
`
`36.
`
`I have reviewed the ’511 application and determined that these
`
`features are not disclosed in the ’511 application. (See generally Ex. 1005, and id.,
`
`10-11, 14-19, 28-32.) The ’511 application does not provide any disclosure of an
`
`information gathering device or a concept of such a device that is adapted to
`
`receive a predetermined signal, to gather information relating to object movement,
`
`and to transmit the information like that recited in claim 1 or disclosed in the ’078
`
`patent. Nor does the ’511 application provide any disclosure or concept of a remote
`
`notification device that establishes data communication with a remote host, to
`
`provide data communication with a remote host as recited in the challenged claims
`
`or specification of the ’078 patent. (Id.) In my opinion, nothing in the specification,
`
`16
`
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`

`
`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`drawings, or elsewhere of the ’511 application discloses or suggests to one of
`
`ordinary skill in the art the above identified missing features.
`
`37.
`
`I have reviewed the ’886 application and determined that these
`
`features are not disclosed in the ’886 application. (See generally Ex. 1006, and id.,
`
`8-10, 16-20.) The ’886 application does not provide any disclosure of an
`
`information gathering device or a concept of such a device that is adapted to
`
`receive a predetermined signal, to gather information relating to object movement,
`
`and to transmit the information like that recited in claim 1 or disclosed in the ’078
`
`patent. Nor does the ’886 application provide any disclosure or concept of a remote
`
`notification device that establishes data communication with a remote host, to
`
`provide data communication with a remote host as recited in the challenged claims
`
`or specification of the ’078 patent. (Id.) In my opinion, nothing in the specification,
`
`drawings, or elsewhere of the ’886 application discloses or suggests to one of
`
`ordinary skill in the art the above identified missing features.
`
`38.
`
`I have reviewed the ’829 application and determined that these
`
`features are not disclosed in the ’829 application. (See generally Ex. 1007, and id.,
`
`7-9, 14.) The ’829 application does not provide any disclosure of an information
`
`gathering device or a concept of such a device that is adapted to receive a
`
`predetermined signal, to gather information relating to object movement, and to
`
`transmit the information like that recited in claim 1 or disclosed in the ’078 patent.
`
`17
`
`Page 21 of 117
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`

`
`Declaration of David H. Williams
`Inter Partes Review of U.S. Patent No. 6,542,078
`Nor does the ’829 application provide any disclosure or concept of a remote
`
`notification device that establishes data communication with a remote host, to
`
`provide data communication with a remote host as recited in the challenged claims
`
`or specification of the ’078 patent. (Id.) In my opinion, nothing in the specification,
`
`drawings, or elsewhere of the ’829 application discloses or suggests to one of
`
`ordinary skill in the art the above identified missing features.
`
`2.
`
`Claims 2-5 and 10
`
`39. Claims 2-5 and 10 additionally require the information gathering
`
`device to comprise a camera (Ex. 1001, 13:22-23) and that the camera is digital
`
`with a “memory for storing digital images” (id., 13:24-26). Additionally, claim 10
`
`requires that the information that is transmitted includes image or audio
`
`information. (Ex. 1001, 13:22-26, 13:45-47.)
`
`40.
`
`I have reviewed the ’511 application and determined that these
`
`features are not disclosed in the ’511 application. (See generally Ex. 1005, and id.,
`
`10-11, 14-19, 28-32.) The ’511 application does not provide any disclosure of a
`
`camera, a digital camera, or a memory for storing digital images, or a concept of
`
`such features included in the information gathering device like that recited in
`
`claims 2-5 or disclosed in the ’078 patent. Nor does the ’511 application provide
`
`any disclosure or concept of the object related information including one or more
`
`of image and au