UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`
`
`Case IPR2018-00040
`Patent 7,487,850
`
`
`DECLARATION OF DR. MICHAEL D. SIDMAN
`
`
`Dynacraft BSC, Inc.
`Exhibit 1005
`Dynacraft BSC, Inc. v. Mattel, Inc.
`IPR2018-00040
`
`
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`TABLE OF CONTENTS
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`Page No.
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`IX.
`
`X.
`
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`TABLE OF CONTENTS ........................................................................................... i 
`I.
`Scope of Work and Summary of Opinions ...................................................... 1 
` 
`II.
`Qualifications ................................................................................................... 1 
` 
`  Compensation .................................................................................................. 7 III.
`
`  Materials on Which My Opinion Is Based ...................................................... 7 
`IV.
`Level of Skill in the Art ................................................................................... 7 
`V.
` 
`VI.
`  Applicable Legal Standards ............................................................................. 9 
`
`  Claim Construction ........................................................................................ 13 VII.
`
`  The ‘850 Patent .............................................................................................. 15 VIII.
`A.  Subject Matter of the ’850 Patent (Ex. 1001) ........................................... 15 
`B.  File History of the ’850 Patent (Ex. 1002) ............................................... 19 
`  The Prior Art .................................................................................................. 21 
`A.  Damon (Ex. 1003) .................................................................................... 22 
`B.  Chi (Ex. 1004) .......................................................................................... 23 
`  Obviousness Opinion ..................................................................................... 26 
`1.  Independent Claim 1 ........................................................................... 28 
`2.  Dependent Claim 2 .............................................................................. 61 
`3.  Dependent Claim 4 .............................................................................. 63 
`4.  Dependent Claim 6 .............................................................................. 66 
`5.  Dependent Claim 7 .............................................................................. 68 
`6.  Dependent Claim 10 ............................................................................ 73 
`7.  Dependent Claim 11 ............................................................................ 77 
`8.  Dependent Claim 12 ............................................................................ 82 
`9.  Dependent Claim 13 ............................................................................ 83 
`10. Dependent Claim 14 ............................................................................ 86 
`XI.
`  Summary of Opinions .................................................................................... 88 
`Appendix A ........................................................................................................... A-1 
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`TABLE OF CONTENTS
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`Page No.
`Appendix B ............................................................................................................B-1 
`Appendix C ............................................................................................................C-1 
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`ii
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`
`The undersigned, Michael D. Sidman, Ph.D., resident at 6120 Wilson Road
`
`Colorado Springs, Colorado, declares the following:
`
`
`I.
`
`Scope of Work and Summary of Opinions
`
`1.
`
`I am an expert in the interdisciplinary field of “mechatronics” which
`
`encompasses mechanical, electronic, software, signal processing, and control
`
`systems technologies.
`
`2.
`
`I have been asked to provide my opinion concerning the patentability
`
`of claims 1, 2, 4, 6, 7, and 10-14 in United States Patent No. 7,487,850 (“the ’850
`
`patent”) (“the challenged claims”) and whether they would have been obvious to
`
`one of ordinary skill in the art as of April 24, 2006. As explained below, I have
`
`concluded that each of the challenged claims would have been obvious in light of
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`the combination of U.S. Patent Publication No. 2005/0056474 (“Damon”) and U.S.
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`Patent Publication No. 2005/0087033 (“Chi”).
`
` Qualifications
`II.
`
`3. My current curriculum vitae is being filed contemporaneously with
`
`this Declaration as Exhibit (“Ex.”) 1006.
`
`4.
`
`I completed my undergraduate studies at Northeastern University,
`
`where I received a Bachelor’s and a Master’s degree in Electrical Engineering
`
`concurrently in 1975.
`
`
`
`

`

`
`
`5.
`
`I received my Ph.D. from Stanford University in 1986. My work at
`
`Stanford as a Digital Equipment Corporation Fellow and University Resident
`
`included developing an adaptive digital control system for a lightly-damped
`
`mechanism in the Stanford Aero/Astro Robotics Laboratory.
`
`6.
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`I am the named inventor on eighteen U.S. patents relating to
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`technologies including: control of head positioning actuators, active damping of
`
`mechanical resonances, servo correction for shock and vibration, runout correction,
`
`solid-state relay design, digital control systems, analog and digital electronics,
`
`sensing and position control, adaptive control, etc. A complete list of those patents
`
`is attached to this Declaration in Appendix A.
`
`7.
`
`I have more than 40 years of experience in product design and applied
`
`research in mechatronics in a wide variety of commercial and other products and
`
`systems. Mechatronic products and systems often include an electric motor or
`
`actuator, a sensor, an embedded microcontroller, and power and signal processing
`
`electronics. I have authored numerous publications relating to these fields, and a
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`list of selected publications is also attached to this Declaration in Appendix B.
`
`8.
`
`I am a member of professional organizations dedicated to mechatronic
`
`and control systems technology. I am a Senior Member of the Institute of
`
`Electrical and Electronics Engineers (IEEE) where I am a member of the Control
`
`Systems Society. I am also a member of the American Society of Mechanical
`
`2
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`

`

`
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`Engineers (ASME), where I was Chairman of the Pikes Peak Section and member
`
`of the Dynamic Systems and Control Division (DSCD).
`
`9.
`
`Since 1992, I have been working as an independent engineering
`
`consultant. I am currently President of Sidman Engineering, Inc. I provide
`
`engineering design services to manufacturers worldwide, which span a range of
`
`industries. This work has included the following: (1) optimizing and simulating
`
`mechatronic systems; (2) developing comprehensive custom design and dynamic
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`system simulation tools including computer models of feedback control systems
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`and the physical systems and processes they control; (3) teaching on-site technical
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`short courses to design engineers and scientists; and (4) consulting on high-
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`performance digital control systems design and problem resolution.
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`10. Through Sidman Engineering, I provide interdisciplinary analysis and
`
`resolution of complex design issues. This may include providing clients with
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`customized, comprehensive computer based design tools and simulation models of
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`a variety of dynamic systems, including electromechanical products and systems.
`
`These comprehensive models integrate mechanical dynamics, digital control
`
`system dynamics, electronic circuitry, sensors, actuators and signal processing. In
`
`this role I have developed comprehensive electric motor, motion control and
`
`control system simulation models and design tools. The design tools I provide
`
`generally are used by product or system design engineers to understand system
`
`3
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`

`

`
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`behavior and interactions and to optimize system parameters. As discussed below,
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`I also provide on-site high level technical training courses for design engineers and
`
`scientists at companies.
`
`11. Some of the engineering projects I have been engaged as an
`
`independent engineering consultant relate to electric motor design and motor
`
`control systems in automotive and other applications, including for example
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`electromechanically actuated valves, hydraulic control systems, fluid flow
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`measurement, heat transfer, fluidic chemical process control, computer data
`
`storage peripherals, digital signal processing, and digital control system design and
`
`simulation. Examples of these projects include: mechanical and electrodynamic
`
`modeling and simulation of a wide range of electric motors and actuators,
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`mechanical design and servo control of a dual-stage head positioning actuator for
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`disk drives, automotive stepper motor actuated EGR valve simulation, dynamic
`
`modeling and design of a Eurotunnel rail cargo bomb scanning mechanism, fluidic
`
`servo valve profile design for a water brake automotive engine dynamometer,
`
`active damping adaptive control of a lightly damped mechanism, and simulation
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`and analysis of web tension digital control system for textile factory machinery. A
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`“servo” or “servomechanical” system is a type of control system that typically
`
`controls motion produced by an electric motor or actuator in an electromechanical
`
`4
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`

`
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`product or system. A representative list of those projects is attached to this
`
`Declaration in Appendix C.
`
`12. Before I became an independent engineering consultant, I spent 17
`
`years at Digital Equipment Corporation (DEC) in roles spanning product
`
`development, advanced development, and research. I headed DEC’s Advanced
`
`Servo Development Group and Servo-Mechanical Advanced Development Group,
`
`both of which I founded. These groups developed and demonstrated technology
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`involving, for example, position and velocity sensing, MEMS (micro-electro-
`
`mechanical systems) sensors, electronic circuit design, and microprocessor based
`
`servo control systems for hard disk drive head positioning actuators. In a prior
`
`product design development role, I was the Project Engineer for DEC’s RK07 disk
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`drive product.
`
`13. At DEC, I served as DEC’s representative to the Berkeley Sensor and
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`Actuator Center (BSAC), which conducts industry-relevant interdisciplinary
`
`research on micro- and nano-scale sensors with moving mechanical elements,
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`fluidics and/or actuators constructed using integrated circuit technology. BSAC
`
`has pioneered work in a wide variety of integrated circuit based devices and
`
`sensors, including pressure sensors and accelerometers. I also sponsored applied
`
`research and/or researchers at Stanford University, U.C. Berkeley, and the
`
`University of Colorado at Colorado Springs.
`
`5
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`

`

`
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`14.
`
`I have taught numerous courses and seminars in the fields of
`
`mechatronics and digital servo systems to product and system design engineers
`
`who span range of technical disciplines. Through Sidman Engineering, I have
`
`provided my on-site, customized Digital Servo System Short Courses and
`
`MATLAB / SIMULINK / Toolbox Laboratory Training Courses to product
`
`development and research engineers and scientists worldwide in a wide range of
`
`industries and government entities since 1993. These courses optionally include
`
`portions devoted to control systems and/or signal processing analysis and
`
`simulation. I also taught a graduate level course in Optimal Control at the
`
`University of Colorado in Colorado Springs.
`
`15. Prior to working at DEC in 1975, and as examples of my cooperative
`
`education work experience while attending Northeastern University, I performed
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`testing and calibration of precision electronic manometers and developed a novel
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`integral-cycling solid state relay for electric motors at Datametrics, Inc., and
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`evaluated a prototype electric motor AC line switching apparatus and programmed
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`magnetohydrodynamic (MHD) generator gas dynamics computer simulations at
`
`MEPPSCO, Inc.
`
`16.
`
`I became a Third Party Provider for The MathWorks, Inc. in 1993 and
`
`authored an invited feature article, entitled “Control Design Made Faster and More
`
`Effective,” for MATLAB News and Notes, Summer/Fall 1994. MATLAB is a
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`6
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`

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`mathematically oriented software platform that is now ubiquitously used in
`
`
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`universities and industry.
`
` Compensation
`III.
`
`17.
`
`I am being compensated for my time in preparing this Declaration at
`
`my usual and customary rate of $480 per hour plus reasonable expenses. My
`
`compensation is not contingent on the outcome of this action, and I have no
`
`financial interest in this case.
`
`IV.
`
` Materials on Which My Opinion Is Based
`
`18.
`
`In preparing this Declaration, I reviewed and relied on:
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,487,850 (Ex. 1001);
`
`Prosecution history of U.S. Patent No. 7,487,850, including U.S.
`Patent Application No. 11/410,568 (Ex. 1002);
`
`U.S. Patent Publication No. 2005/0056474 (Ex. 1003);
`
`U.S. Patent Publication No. 2005/0087033 (Ex. 1004); and
`
`
`LinkedIn Profile of Christopher Lucas.
` Level of Skill in the Art
`
`V.
`
`19.
`
`I understand that the patentability of an invention is determined in
`
`view of the knowledge of a hypothetical person of ordinary skill in the relevant art
`
`at the time of the invention, which in this case I understand to be April 24, 2006,
`
`the filing date of U.S. Patent Application No. 11/410,568 (“the ’568 application”),
`
`to which the ’850 patent claims priority. The relevant art is electric motor driven,
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`7
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`battery-powered, reduced-scale ride-on or toy vehicles. See, e.g. Ex. 1001 at 1:6-9
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`(“The present disclosure relates generally to children’s ride-on vehicles, and more
`
`particularly to battery-powered children’s ride-on vehicles and drive assemblies for
`
`use with such vehicles.”).
`
`20.
`
`I understand that the following factors may be considered in
`
`determining the level of ordinary skill:
`
`
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`
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`
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`
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`
`
`
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`the educational level of the patent applicants;
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`the type of problems encountered in the art;
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`previous solutions to those problems;
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`the rapidity with which innovations are made in the art;
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`the sophistication of the relevant technology; and
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`the educational level of active workers in the art.
`
`21.
`
`In my opinion, which is based on my experience in mechatronic
`
`systems, the relevant art, and taking the above factors into account where
`
`applicable, a person of ordinary skill in the relevant art as of April 24, 2006, would
`
`have had at least (1) a Bachelor’s degree in mechanical engineering, electrical
`
`engineering, physics, or related arts and two years of experience designing electro-
`
`mechanical systems or mechanisms; or (2) equivalent training, education, or work
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`experience in the field of designing and developing mechatronic systems, such as
`
`an advanced degree in engineering or a related technical field. Given my
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`8
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`
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`education and experience, I consider myself knowledgeable as to how one of
`
`ordinary skill in the art would view the prior art as of April 24, 2006.
`
`VI.
`
` Applicable Legal Standards
`
`22.
`
`I am not an attorney, but in forming my opinions in this case, I used
`
`the following legal standards that were provided to me by counsel.
`
`23. Anticipation, 35 U.S.C. § 102. I understand that a patent claim is
`
`invalid as anticipated (i.e., the claimed invention is not new or not novel) when a
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`single prior art reference (e.g., a patent, or publication) discloses within the
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`document every limitation recited in the claim arranged or combined in the same
`
`way as recited in the claim. If that prior art reference teaches all the limitations
`
`combined or arranged as recited in the claim in a manner that would enable one
`
`skilled in the art to practice the claimed invention, that claim is not new, but is
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`“anticipated” by the prior art reference.
`
`24. For a prior art reference to “teach” the limitations of a claim, a person
`
`of ordinary skill in the art must recognize the limitations as disclosed in that single
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`reference and, to the extent the claim specifies a relationship between the
`
`limitations, the disclosed limitations must be in the same relationship as recited in
`
`the claim. Additionally, a disclosure can “teach” a limitation only if the disclosure
`
`of the reference is enabling. This means that a person of ordinary skill in the art,
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`9
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`
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`having become familiar with the prior art, must be enabled thereby to practice the
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`invention without undue experimentation.
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`25. Obviousness, 35 U.S.C. § 103. I understand that a claim is invalid
`
`for obviousness if the differences between it and the prior art are such that the
`
`claimed subject matter would have been obvious to a person of ordinary skill in the
`
`art at the time of the claimed invention. I understand that obviousness is a question
`
`of law that requires underlying factual determinations of:
`
`
`
`
`
`
`
`the level of ordinary skill in the relevant art;
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`the scope and content of the prior art; and
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`the nature of the differences (if any) between the asserted claim and
`
`the prior art.
`
`26.
`
`I understand that a reference qualifies as prior art for obviousness
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`when it is analogous to the claimed invention. A prior art reference is analogous:
`
`
`
`
`
`if it is from the same field of the inventor’s endeavor, regardless of the
`
`problem addressed, and
`
`if it is not from the same field of the inventor’s endeavor, but is
`
`reasonably pertinent to the problem addressed by the claimed
`
`invention.
`
`27.
`
`In addition, I understand that, before a final determination of
`
`obviousness is made, any secondary considerations of non-obviousness or
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`10
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`

`
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`obviousness, such as commercial success, long-felt but unsolved need, failure of
`
`others, industry praise, unexpected results, and copying, must be considered. I am
`
`unaware of the existence of any secondary considerations. As a result, I have not
`
`reviewed secondary considerations to prepare this Declaration, but will do so if
`
`instructed by counsel.
`
`28. Motivation to Combine with Reasonable Expectation of Success. I
`
`understand that, for a claim to be obvious, a person of ordinary skill in the art
`
`would need to have a reason or motivation to combine or to modify the prior art to
`
`achieve the claimed invention and have a reasonable expectation of successfully
`
`combining or modifying the prior art. I understand that the suggestion to modify
`
`or combine relevant prior art references may come from:
`
`
`
`
`
`
`
`
`
`
`
`a teaching or suggestion in the prior art references;
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`the common sense of a person of ordinary skill in the art;
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`any need or problem known to a person of ordinary skill and
`
`addressed by the claimed invention, including, but not limited to, the
`
`problem addressed by the patent;
`
`the combination of familiar elements according to known methods
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`when it does no more than yield predictable results; and
`
`design incentives and other market forces.
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`11
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`

`

`
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`29.
`
`I further understand that obviousness should not be evaluated using
`
`the benefit of hindsight or what is known today.
`
`30. Means-Plus-Function Limitations, 35 U.S.C. § 112(6). I understand
`
`that generic claim terms such as “mechanism,” “element,” or “device,” or other
`
`terms that do not connote sufficiently definite structure are tantamount to using the
`
`word “means,” and therefore must be construed as means-plus-function limitations
`
`in accordance with 35 U.S.C. § 112(6). Section 112(6) limits the scope of means-
`
`plus-function limitations to the claimed function and corresponding structure
`
`recited in the specification (and equivalents thereof). In construing a means-plus-
`
`function term, I understand the claimed function must first be identified. Then, it
`
`must be determined what structure, if any, disclosed in the specification
`
`corresponds to the claimed function. An alleged corresponding structure must be
`
`clearly linked or associated with the claimed function.
`
`31.
`
`In forming my opinion, I have relied on the ’850 patent claims and
`
`disclosure, including the prosecution history of the ’850 patent, the exhibits to the
`
`Petition for inter partes review of the ’850 patent, and my own experience and
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`expertise in the knowledge of the person of ordinary skill in the relevant art in the
`
`2006 timeframe.
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`12
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`

`
`
` Claim Construction
`VII.
`
`32.
`
` In forming my opinions, I have generally applied the plain and
`
`ordinary meaning of the claim terms, which in my opinion reflects the broadest
`
`reasonable interpretation of the claims. For example:
`
`33. Biasing mechanism. I applied the plain and ordinary meaning of the
`
`term “biasing mechanism,” which one of ordinary skill in the art would
`
`understand, in the context of the ’850 patent, refers to a mechanism (often, a
`
`spring) that urges something towards a desired position. In my opinion, this would
`
`be the broadest reasonable construction of the term in light of the specification.
`
`34. However, I understand the term “biasing mechanism” might also be
`
`construed as a means-plus-function limitation because it does not connote a
`
`definite structure to one of ordinary skill in the art. The function of the biasing
`
`mechanism recited in the claims is to “urge[] the shifter handle toward a selected
`
`one of the shift positions.” Ex. 1001 at 17:61-63. The corresponding structure
`
`identified in the specification is a spring (e.g., torsion spring 162 shown in Figures
`
`10 and 15 and described at Col. 12, ll. 12-15 of the ’850 patent). The specification
`
`states that “[t]he illustrated biasing mechanism 160 is adapted to urge shifter
`
`handle 114 towards the second shift position” and that “[i]n FIG. 15, biasing
`
`mechanism 160 takes the illustrative, non-exclusive form of a torsion spring 162
`
`dimensioned to be coupled with actuator 115 by pivot pin 136, and having a first
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`13
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`

`

`
`
`end 162a and a second end 162b.” Id. at 12:4-10. It also states that “[i]n
`
`embodiments that include a biasing mechanism, any suitable biasing member, or
`
`combination of members, may be used, with illustrative examples including
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`springs (such as extension, torsion, leaf, compression, etc.), resilient members, and
`
`elastic members.” Id. at 16:14-19.
`
`35.
`
`In other words, if the term “biasing mechanism” is construed as a
`
`means-plus-function limitation, then the patent claims a spring or equivalent
`
`structure that provides a force to the shifter handle that directs, pushes, or forces it
`
`toward a selected shift position. My opinions below are the same regardless of
`
`which construction (e.g., plain and ordinary meaning or means-plus-function) is
`
`applied.
`
`36. Actuator. I applied the plain and ordinary meaning to the term
`
`“actuator,” which one of ordinary skill in the art would understand, in the context
`
`of the ’850 patent, refers to a mechanical device for moving, operating, or
`
`controlling something.1 In my opinion, this would be the broadest reasonable
`
`construction of the term in light of the specification.
`
`37. Configures. I applied the plain and ordinary meaning to the term
`
`“configures,” which one of ordinary skill in the art would understand, in the
`
`1 See, e.g., https://www.merriam-webster.com/dictionary/actuator;
`
`https://en.oxforddictionaries.com/definition/actuate.
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`14
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`
`
`context of the ’850 patent, refers to setting up, setting up for operation especially in
`
`a particular way, causing, arranging or putting together in a particular form or
`
`configuration, or putting together by supplying, arranging, or connecting a specific
`
`set of components.2 In my opinion, this would be the broadest reasonable
`
`construction of the term in light of the specification.
`
` The ‘850 Patent
`VIII.
`
`38.
`
` The ’850 patent was filed on April 24, 2006. Ex. 1001 at [21], [22].
`
`I understand that it does not claim priority to any earlier-filed application.
`
`A.
`
`Subject Matter of the ’850 Patent (Ex. 1001)
`
`39. The ’850 patent is directed to “children’s ride-on vehicles, and more
`
`particularly to battery-powered children’s ride-on vehicles and drive assemblies for
`
`use with such vehicles.” Ex. 1001 at 1:6-9. These types of vehicles generally
`
`share certain common features that “are extremely old and well known in the
`
`children’s electric vehicle art.” Ex. 1002 at 84. As admitted in the ’850 patent’s
`
`background of the invention:
`
`Children’s ride-on vehicles are reduced-scaled vehicles that are
`designed for use by children. For example, children’s ride-on vehicles
`
`
`2 See, e.g., https://en.oxforddictionaries.com/definition/configure;
`
`http://www.dictionary.com/browse/configure?s=t; https://www.merriam-
`
`webster.com/dictionary/configure.
`
`15
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`

`

`
`
`include a seat adapted to accommodate one or more children and
`steering and drive assemblies that are adapted to be operated by a
`child sitting on the seat. One type of drive assembly that is often used
`in children’s ride-on vehicles includes a battery-powered motor
`assembly that is adapted to drive the rotation of one or more of the
`vehicle’s wheels. Typically, the vehicle will include an actuator, such
`as a foot pedal, push button or other user input device, which enables
`a child to select when power is delivered to the motor assembly. Some
`drive assemblies further include other user input devices, which are
`operated by a child sitting on the vehicle’s seat to select the speed
`and/or direction at which the vehicle travels.
`
`Ex. 1001 at 1:11-27.
`
`40. The vehicles claimed in the ’850 patent utilize the prior art features
`
`described in the Background of the Invention section quoted above but also
`
`incorporate purportedly “improved shifter assemblies.” Ex. 1001 at [54], [57],
`
`17:25-18:12 (claims 1 and 2), 18:18-22 (claim 4), 18:25-35 (claims 6 and 7),
`
`18:45-19:7 (claims 10-14); see also ’850 Patent Prosecution History, Ex. 1002 at
`
`84 (examiner noting that “Applicant admits the prior art of lines 1-19 of claim 1 in
`
`the background of the invention . . . .”). The claimed shifter assembly—referred to
`
`in the claims as “an actuator assembly”—includes a shifter handle that can be
`
`selectively moved by a child along at least two non-collinear shift paths and
`
`between at least three shift positions. Ex. 1001 at 17:54-61. An example of the
`
`16
`
`

`

`claimed shifter assembly appears, for example, in Figure 10 of the ’850 patent
`
`reproduced below:
`
`
`
`
`
`Id. at Fig. 10.
`
`41. As set for in the challenged claims, a “biasing mechanism,” such as a
`
`“torsion spring,” is used to “urge[] the shifter handle towards one of the shift
`
`positions.” Ex. 1001 at 12:6-10, 17:62-63 (claim 1). In addition, the assembly
`
`includes at least one “actuator operatively coupled to the shifter handle,” wherein
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`“less than all movements of the shifter handle cause movement of the actuator.”
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`17
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`

`

`
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`Id. at 17:64-67 (claim 1). The actuator is used to engage a switch assembly, which
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`is adapted to be selectively configured between velocity settings corresponding to
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`each of the three shift positions. Id. at 17:41-50, 17:67-18:6 (claim 1). “Each
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`velocity setting in turn configures the vehicle’s drive assembly to be in a
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`predetermined drive configuration.” Id. at 17:48-50 (claim 1). For example, the
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`’850 patent describes using the actuator to configure the switch assembly “between
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`a low-speed reverse velocity setting (shown in FIG. 17), a low-speed forward
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`velocity setting (shown in in FIGS. 18-19), and a high-speed forward setting
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`(shown in FIG. 20)” and respectively place the drive assembly into “a low-speed
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`reverse drive configuration,” “a low-speed forward drive configuration,” or “a
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`high-speed forward drive configuration.” Id. at 7:34-52, 13:14-19, 13:63-65.
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`42. As set forth in the challenged dependent claims, the shifter assembly
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`also may include a guide assembly to guide movement of the shifter handle, the
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`“shift paths can be oriented to restrict rapid movement” between shift positions,
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`and the actuator can be adapted to be “selectively rotated by the shifter handle
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`about a rotational axis.” Ex. 1001 at 18:18-22, 18:25-35 (claims 4, 6, and 7) . The
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`switch assembly may include rocker switches—one for selecting “between a
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`reverse setting and a forward setting” and the other for selecting “between at least
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`a low-speed setting and a high-speed setting.” Id. at 18:45-19:7 (claims 10-14).
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`Further, a drive actuator, such as “an on/off switch, a foot pedal, a throttle lever,
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`18
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`

`

`
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`[or] a rotational handgrip on a steering mechanism that includes a handlebar,” can
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`be used to cause the vehicle’s drive assembly to operate in a given drive
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`configuration. Id. at 16:25-28, 18:7-12 (claim 2).
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`43. As I opine in this this Declaration, all of the claimed features,
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`including those of the alleged “improved shifter assembly,” were disclosed in the
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`prior art.
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`B.
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`File History of the ’850 Patent (Ex. 1002)
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`44. During prosecution of the ’850 patent, the examiner rejected the
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`challenged claims as obvious in view of U.S. Patent No. 6,921,870 (“Lan”), U.S.
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`Patent No. 5,173,591 (“Perego”), and U.S. Patent No. 6,718,842 (“Bofias”). Ex.
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`1002 at 84-88. The Applicants responded by amending the claims to add
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`limitations, including one reciting that “the actuator assembly includes an actuator
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`operatively coupled to the shifter handle, and less than all movements of the shifter
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`handle cause movement of the actuator.” Id. at 102. Although the prior art
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`showed an actuator operatively coupled to a shifter handle, Applicants argued that
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`none of the cited prior art—i.e., Perego, Lan, and Bofias—discloses or suggests
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`“an actuator operatively coupled to the shifter handle where less than all
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`movements of the shifter handle cause movement of the actuator” as required by
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`amended claims 1 and 21. Id. at 117, 118.
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`19
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`

`

`
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`
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`45. For example, Applicants argued that “Perego discloses a gearshift
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`device where movement of the control lever [12] always causes movement of the
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`actuating element [14]”:
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`Ex. 1002 at 116.
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`46. With respect to Lan, the Applicants argued that “Lan et al. discloses
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`an operation bar [2] where movement of the handgrip (sic) section [21] always
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`cause movement of the free end [22]”:
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`20
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`

`

`
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`Ex. 1002 at 115-16. Applicants made similar arguments against Bofias. Id. at
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`
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`117-18.
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`47. The ’850 patent was subsequently issued on February 10, 2009. Ex.
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`1001 at [45].
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`IX.
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` The Prior Art
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`48.
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`I understand from counsel that the references discussed in this section
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`and used in my analysis qualify as prior art to the ’850 patent. Where appropriate,
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`I have identified evidence showing that each reference qualifies as prior art.
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`49.
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`I have concluded that the combination of Chi and Damon renders
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`claims 1, 2, 4, 6, 7, and 10-14 of the ’850 patent obvious.
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`21
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`

`

`A. Damon (Ex. 1003)
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`50. Damon is a U.S. patent application that was published on March 17,
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`2005. Ex. 1003 at (43).
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`51. Damon discloses a reduced-scale ride-on vehicle that resembles a full-
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`sized Jeep® vehicle. Ex. 1003 at [0027], [0029]. The vehicle of Damon is
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`illustrated in Figures 1 and 2, which are reproduced below:
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`Id. at Fig. 1, Fig. 2.
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`
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`
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`52. Damon’s reduced-scale Jeep® vehicle includes a number of features
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`common to the ’850 patent, such as:
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`
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`
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`a body 12 “with a seat assembly 16 that is sized and configured to
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`accommodate at least one child,” Ex. 1003 at [0027];
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`a steering assembly 26 that “includes a steering column 40 and a
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`steering mechanism 42” and “enables a child sitting on seat 18 [of seat
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`22
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`

`

`
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`assembly 16] to steer the vehicle’s steerable wheel assembly 24,” id.
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`at [0031];
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`
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`a motor assembly 46 including a “battery-powered motor 48 that is
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`adapted to drive the rotation of at least one” of the vehicle’s wheels,
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`id. at [0033];
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`
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`
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`
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`
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`a battery assembly 60 including a “battery, or cell, 62 that is adapted
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`to provide power to the motor,” id. at [0033];
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`“a drive actuator 104, through which a user input directing the battery
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`assembly to energize the motor assembly is received,” id. at [0038];
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`“a speed switch 110, which enables a user to select the relative
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`rotation of the motor assembly’s output 50,” id. at [0039]; and
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`“a direction switch 112