IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re patent of Erekson
`
`U.S. Patent No. 6,622,018
`
`Issued: September 16, 2003
`
`Title: Portable Device Control
`Console with Wireless Connection
`
`§
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`§
`§
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`§
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`§
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`Petition for Inter Partes Review
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`Attorney Docket No.: 52959.48
`Customer No.:
`27683
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`Real Party in Interest:
`Apple Inc.
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`
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`Declaration of Henry H. Houh, Ph.D.
`Under 37 C.F.R. § 1.68
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`Apple v. Uniloc
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`Table of Contents
`
`Introduction .......................................................................................................... 4
`I.
`II. Qualifications and Professional Experience ........................................................ 6
`III. Level of Ordinary Skill in the Art .....................................................................19
`IV. Relevant Legal Standards ..................................................................................21
`V. The ’018 Patent ..................................................................................................22
`A. Overview ..................................................................................................... 22
`
`B. History of the ’018 Patent ........................................................................... 28
`
`VI. Claim Construction ............................................................................................30
`VII. Challenges ....................................................................................................31
`VIII. Claims 1-7 and 9 are invalid under 35 U.S.C § 103 over Leichiner in
`view of the Idiot’s Guide ............................................................................31
`A. Overview of Leichiner ................................................................................ 32
`
`B. Overview of the Idiot’s Guide .................................................................... 34
`
`C. Reasons to Combine Leichiner and the Idiot’s Guide ................................ 37
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`D. Detailed Analysis ........................................................................................ 42
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`IX. Challenge 2: Claim 8 is obvious under 35 U.S.C § 103 over Leichiner in
`view of the Idiot’s Guide and in further view of Dara-Abrams ...............102
`A. Overview of Dara-Abrams ....................................................................... 102
`
`B. Reasons to Combine Leichiner, the Idiot’s Guide, and Dara-Abrams ..... 104
`
`C. Detailed Analysis ...................................................................................... 110
`
`X. Challenge 3: Claim 10 is obvious under 35 U.S.C § 103 over Leichinerin
`view of the Idiot’s Guide and Bell ............................................................116
`A. Overview of Bell ...................................................................................... 116
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`B. Reasons to Combine Leichiner and Bell .................................................. 117
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`C. Detailed Analysis ...................................................................................... 120
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`XI. Challenge 4: Claims 11-17, 19, 21-22, 24-25, and 27 are obvious under 35
`U.S.C § 103 over Leichiner in view of the Idiot’s Guide and in further
`view of Osterhout ......................................................................................125
`A. Overview of Osterhout ............................................................................. 126
`
`B. Reasons to Combine Leichiner, the Idiot’s Guide, and Osterhout ........... 127
`
`C. Detailed Analysis ...................................................................................... 128
`
`XII. Challenge 5: Claims 18 and 26 are obvious under 35 U.S.C § 103 over
`Leichiner in view of the Idiot’s Guide and in further view of Osterhout
`and Dara-Abrams ......................................................................................177
`A. Detailed Analysis ...................................................................................... 177
`
`XIII. Challenge 6: Claims 20 and 23 are obvious under 35 U.S.C § 103 over
`Leichiner in view of the Idiot’s Guide and in further view of Osterhout
`and Bell .....................................................................................................178
`A. Detailed Analysis ...................................................................................... 179
`
`XIV. Declaration .................................................................................................179
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`I.
`
`Introduction
`
`I, Henry H. Houh, Ph.D., declare:
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the Inter Partes Review of U.S. Patent No. 6,622,018 (“the ’018 Patent”) to
`
`Erekson.
`
`2.
`
`I am being compensated for my work in this matter. My compensation
`
`in no way depends upon the outcome of this proceeding.
`
`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) The ’018 Patent, Exhibit APPL-1001;
`
`(2) The prosecution history of the ’018 Patent, Exhibit APPL-1002;
`
`(3) THE COMPLETE IDIOT’S GUIDE TO PALMPILOT AND PALM III, (the
`
`“Idiot’s Guide”), Exhibit APPL-1008;
`
`(4) Dyszel, Bill, (“PalmPilot for Dummies”), PALMPILOT FOR DUMMIES
`
`(1998), Exhibit APPL-1009;
`
`(5) U.S. Patent No. 6,456,892 (“Dara-Abrams”), Exhibit APPL-1010;
`
`(6) U.S. Patent No. 7,149,506 (“Osterhout”), Exhibit APPL-1011;
`
`(7) Microsoft Computer Dictionary (4th Edition), obtained from the
`
`Library of Congress, Exhibit APPL-1012;
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`(8) Haartsen, Jaap, et al., “Bluetooth: Vision, Goals, and Architecture,”
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`ACM SIGMOBILE Mobile Computing and Communications Review,
`
`Vol. 2, Issue 4, pp. 38-45, October 1998, (“Haartsen”), Exhibit
`
`APPL-1013;
`
`(9) Collins, Corbin, (“Little Palm Book”), THE LITTLE PALM BOOK
`
`(1999), Exhibit APPL-1019;
`
`(10) Wayback Machine Archive Page, “PalmRemote for PalmPilot,”
`
`(“PalmRemote”), Wayback Machine Date of October 7, 1999,
`
`https://web.archive.org/web/19991007013442/http://hp.vector.co.jp/a
`
`uthors/VA005810/remocon/premocce.htm, Exhibit APPL-1020;
`
`(11) Wayback Machine Archive Page, “Welcome,” (“OmniRemote
`
`Welcome Page”), Wayback Machine Date of April 29, 1999,
`
`https://web.archive.org/web/19990429234910/http://www.pacificneot
`
`ek.com, Exhibit APPL-1021;
`
`(12) Wayback Machine Archive Page, “Products Page,” (“OmniRemote
`
`Products Page”), Wayback Machine Date of March 3, 2000,
`
`https://web.archive.org/web/20000303092251fw_/http://www.pacific
`
`neotek.com:80/products.htm, Exhibit APPL-1022;
`
`(13) Wayback Machine Archive Page, “Products of the Year 1998
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`(continued),” (“OmniRemote Products of the Year Page”), November
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`11, 1999,
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`https://web.archive.org/web/19991004011948/http://www.palmpower.
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`com:80/issues/issue199901/aprodyear004.html, Exhibit APPL-1023;
`
`(14) English Translation of Japanese Publication No. JPH06319177
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`(“Leichiner”), Exhibit APPL-1027; and
`
`(15) U.S. Patent No. 7,894,474 (“Bell”), Exhibit APPL-1029.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above, and
`
`(2) My knowledge and experience based upon my work in this area, as
`
`described below.
`
`II. Qualifications and Professional Experience
`5. My complete qualifications and professional experience are described
`
`in my curriculum vitae, a copy of which can be found in APPL-1004. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`6. My professional career has spanned more than 25 years. As set forth
`
`in my curriculum vitae, during these years I have gained extensive experience in
`
`distributed network applications, remote control of devices and applications, and
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`protocols and languages for the networking and remote application control.
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`7.
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`I was awarded a Ph.D. degree in Electrical Engineering and Computer
`
`Science in February 1998 from the Massachusetts Institute of Technology (MIT). I
`
`also received a Master of Science (M.S.) in Electrical Engineering and Computer
`
`Science (February, 1991), a Bachelor of Science in Electrical Engineering and
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`Computer Science (June, 1989) and a Bachelor of Science in Physics (February,
`
`1990) from MIT.
`
`8.
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`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
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`analyzed local-area and wide-area data flows to show a more efficient method for
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`routing content (including email, web pages, and streaming media such as voice
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`and video) in a network, based on traffic patterns at the time.
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`9.
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`I am currently self-employed as an independent technical consultant. I
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`also founded a company that provides supplemental science, technology,
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`engineering, and mathematics (“STEM”) education to children of all ages.
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`10.
`
`I first worked in the area of telecommunications in 1987 when I
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`worked at AT&T Bell Laboratories as part of a five-year dual degree program at
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`MIT.
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`11. My research and work experience in multimedia content delivery over
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`the Internet, streaming media over the Internet, networking, and network
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`architecture dates back to the popularization of the Web in the early 1990s and
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`coincides with when I started my doctoral research at MIT. After returning full
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`time to MIT for graduate school after completing an internship at AT&T Bell
`
`Laboratories, I worked as a research assistant in the Telemedia Network Systems
`
`(TNS) group at the Laboratory for Computer Science at MIT. The TNS group
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`built a high speed gigabit network and applications which ran over the network,
`
`such as remote video capture, processing, and display on computer terminals. I
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`designed the core networking hardware and software, including the high speed data
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`links and the device drivers for the network interface cards.
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`12. My group’s work focused on high speed networking and the types of
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`applications that require increased network bandwidth and computing power. One
`
`of the applications I investigated was live streaming video and real-time processing
`
`of such video. My work was focused around the transport, switching, and routing
`
`of data (including video streams), and the integration of TNS’s network into the
`
`computing environment, including the protocols, IP/ATM integration, operating
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`system software and device drivers. TNS created a computing environment where
`
`it was possible to stream video live, and also created software processing modules
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`to further process video to perform advanced functions such as green screening,
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`scene change detection, motion detection, compression, video blending and video
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`overlay, among the many features – all in real-time while displaying the processed
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`video live. While the Internet at the time did not have the capability for such
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`applications to be widely deployed, my group at TNS researched what would be
`
`possible when the required network and computing power became available.
`
`13. As discussed above, my Ph.D. thesis work focused on studying the
`
`routing resources required to route streams of video through the network,
`
`proposing several alternative labeling strategies to speed up network routing. Part
`
`of what I proposed was borne out later in the form of Multiprotocol Label
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`Switching (MPLS), which is a method of tagging packets at the edge of the
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`network to enable more efficient routing inside the network.
`
`14. During the early part of my graduate studies, a time when there were
`
`perhaps a hundred or so web servers in existence, I set up a web server on one of
`
`our lab computers, and created content rich web pages for my research group and
`
`my research activities. Eventually, I, together with others I was working with,
`
`added live video demonstrations to TNS’s web site. TNS’s web site was one of the
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`first several hundred web servers to exist, and the first to offer live video
`
`demonstrations initiated from the web site to a user’s remote computer. In addition
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`to TNS’s live video demonstrations, TNS offered pre-recorded video and
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`computer-processed video demonstrations. I helped to build the web pages that
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`initiated these video sessions via a web interface. After selection a specific
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`demonstration from a list of various demonstrations available on the web server,
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`the remote web browser user sent a selection over the network to our server to
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`initiate the video stream demonstration. After the video demonstration was started
`
`in a separate window, commands in the graphical user interface window controlled
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`the video presentation from the remote servers. The graphical user interface
`
`elements included buttons or sliders to control the speed of the video, buttons to
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`pause/resume the video, key frame icons representing different points in the video
`
`recording or different videos.
`
`15.
`
`See Figure 1 from Linblad, “ViewStation Applications: Implications
`
`for Network Traffic,” IEEE Journal of Selected Areas in Communications, Vol. 13
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`No. 5, (June 1995).
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`16. TNS’s web site was nominated for the Best of the Web 1994 Awards
`
`in “Best Entertainment Servers” and “Best Use of Multiple Media,” and received
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`an honorable mention in the “Best Use of Multiple Media” category.
`
`17. Vice-President Al Gore visited our group in 1996 and received a
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`demonstration of – and remotely drove – a radio controlled toy car with a wireless
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`video camera mounted on it; the video was encoded by TNS-designed hardware,
`
`streamed over the TNS-designed network and displayed using TNS-designed
`
`software. Commands were transmitted from the computer to the car wirelessly for
`
`direct control of the car’s steering and speed through a specially designed hardware
`
`interface. The demonstration showed the successful application of live, interactive
`
`remote applications, and real-time remote control using video streamed across a
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`network.
`
`18.
`
`I co-authored several papers about web site development which were
`
`presented at the very first World-Wide Web conference held in 1994 at CERN in
`
`Geneva, Switzerland. CERN is the birthplace of the Web, and the conference was
`
`chaired by Tim Berners-Lee, the inventor of the World-Wide Web. One of the
`
`papers, “The Media Gateway: Live Video on the World Wide Web,” was about
`
`TNS’s web-based video demonstrations that I worked on, and the other paper,
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`“Active Pages: Intelligent Nodes on the World Wide Web” discussed database
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`backed web pages which were generated from a computer program accessing a
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`database each time the page was requested. Today, many content providers use
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`this method to generate dynamic and personalized web sites.
`
`19.
`
`I started a web consulting business in 1994, and won contracts to set
`
`up and manage web sites for various companies, including Bay Networks and Data
`
`Communications Magazine. Our customers at the time were concerned about web
`
`server load and how to scale their web sites in case the load became unmanageable
`
`for a single web server. My company investigated many methods of load
`
`balancing and distributing the load over multiple servers. My web company also
`
`created software for staging updates to the web site and pushing approved changes
`
`into production through a system of multiple servers.
`
`20.
`
`I authored or co-authored twelve papers and conference presentations
`
`on my group’s research at TNS. I also co-edited, with the Professor and Senior
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`Research Scientist of the group, David Clark, who is generally considered to be
`
`one of the fathers of the Internet Protocol, TNS’s final report on its gigabit
`
`networking research effort. I have also participated in various Internet Engineering
`
`Task Force (IETF) working groups, and attended IETF meetings in the mid-to-late
`
`1990’s.
`
`21. Prior to the acquisition of US Robotics by 3Com in 1997, I became
`
`personally familiar with a PalmPilot device. I purchased several devices over time
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`and learned the proper graffiti strokes for user input. I installed the desktop
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`application on several computers and used it to download and install applications
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`onto the Palm device.
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`22. From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems for streaming
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`packetized audio over data networks instead of using traditional telephone lines.
`
`NBX was later acquired by 3Com Corporation, and the phone system is still used
`
`today by numerous businesses. As part of my work at NBX, I designed the core
`
`audio reconstruction algorithms for the telephones, as well as the packet
`
`transmission algorithms. I also designed and validated the core packet transport
`
`protocol used by the phone system. The protocol was used for all signaling in the
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`phone system, including for all command and control communications over the
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`data network between the physical telephone device and the central controller. The
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`NBX system also supported TAPI, the Telephony Application Programming
`
`Interface, thus allowing other computer programs to integrate with our system
`
`telephony features. The NBX system was among the first to support a web-browser
`
`interface to control features of the telephone by using a remote application which
`
`issued remote controls to the central controller. Accessing the system controller’s
`
`web server produced a representation of the telephone, and allowed users to set
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`speed dials and other features of the user’s physical telephone such as a call
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`forwarding number. The user could also access and initiate various telephone
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`functions through the interface, such as initiating a conference call or initiating call
`
`forwarding. Two of the company founders and I obtained U.S. Patent No.
`
`6,697,963, entitled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time-sensitive data,” as a result of part of the work I did at
`
`NBX.
`
`23. From 1999-2004, I was employed by Empirix or its predecessor
`
`company, Teradyne. Empirix was a leader in test tools for telecommunications
`
`protocols and systems, providing functional testing tools as well as load testing
`
`tools. From 2000-2001, I conceived and built a test platform for testing Voice-
`
`over-IP (VoIP). The first application on this new test platform was a cloud
`
`emulator for simulating the effects of transmitting VoIP over a busy network.
`
`24. From 2001 to 2004, I was chief technologist for the Web Application
`
`Test Group of Empirix. My division provided software and services for testing
`
`web sites. Empirix’s customers included many large companies with highly
`
`complex web sites, such as Dell (a full e-commerce web site for configuring and
`
`ordering computers) and H&R Block (a web site for filing income taxes for which
`
`users provided input for the tax application running on back-end servers). The
`
`software emulated individual users exercising the complex features of a web site,
`
`such as filling out tax forms or configuring computers for purchase. The software
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`could also create the load of thousands or even hundreds of thousands of users
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`hitting a particular web site at once, all using complex features (rather than just
`
`accessing the home page). Because of the complex and highly varying web sites of
`
`Empirix’s customers, I had to understand many different types of web site
`
`architectures. I was the architect for my division’s next-generation web testing
`
`product, for which I helped write a JavaScript interpreter that ran the code on a
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`web site similar to a standard web browser so that the software could understand
`
`the dynamic aspects of the code on a web site.
`
`25.
`
`I worked at BBN Technologies from 2004 to 2009. BBN
`
`Technologies, formerly known as Bolt, Beranek and Newman, was a pioneer of the
`
`Internet. BBN received the first contract to build components of a packet switched
`
`network as part of the ARPANET, a U.S. Department of Defense effort funded
`
`through the Advanced Projects Research Agency (ARPA). While this effort
`
`preceded my time at BBN by many years, BBN continued to maintain a strong
`
`presence in network research and development, including in wireless networking,
`
`device discovery, and protocols for a “body area network.” I led a project around
`
`the 2004-2005 time frame in which I studied various wireless networking protocols
`
`including Bluetooth. I also worked with other researchers on small projects related
`
`to self-organizing wireless networks of motes, wireless mesh networks, and
`
`satellite networks.
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`26.
`
`In 2006, as part of my role at BBN Technologies, I helped found
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`PodZinger Inc., now known as RAMP Inc. PodZinger utilized BBN’s speech
`
`recognition algorithms to search through the spoken words inside audio and video.
`
`After managing the creation of the initial prototype system, PodZinger built out a
`
`full web-based streaming audio and video search solution when I was the Vice
`
`President of Operations and Technology there. The web site had a full load-
`
`balanced back end which provided search and indexing solutions for our hosted
`
`multimedia (audio and video) content. I was responsible for procuring,
`
`configuring, and deploying all the servers into our data center. Our back-end
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`consisted of over 40 individual servers.
`
`27.
`
`In 2012, I founded Einstein’s Workshop, a science, technology,
`
`engineering and math enrichment program for kids of all ages. The Workshop
`
`teaches programming, robotics, “making” (akin to creating, building and
`
`tinkering), engineering, 3D CAD, mobile application development and many other
`
`subjects. We operate year-round, with weekly school-year programs as well as
`
`week-long vacation programs. Eistein’s Workshop teaches a variety of
`
`programming classes from Scratch to Java. We also teach game development for
`
`mobile devices, for which I evaluated a number of mobile application
`
`programming environments. I also developed a robotics programming class in
`
`which robots could be programmed to be autonomous or under direct wireless
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`control.
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`28. Einstein’s Workshop also created and developed BlocksCAD, a 3D
`
`CAD system for kids and adults. BlocksCAD is used world-wide and has over
`
`8,500 registered users and 35,000 stored CAD projects. BlocksCAD is being used
`
`in maker spaces worldwide and is integrated into school curriculum in various
`
`school systems in the U.S. at elementary, middle, and high school levels.
`
`BlocksCAD is delivered as a web-based application, and we have created a rich
`
`application and content-sharing site for users. Recently, BlocksCAD was spun out
`
`into a separate company which was accepted as part of the LearnLaunch business
`
`accelerator program for educational technologies. We also teach mobile
`
`application development for Android devices using various development
`
`platforms.
`
`29.
`
`I have been awarded several United States patents, and I have several
`
`patent applications pending including the following examples:
`
`• U.S. Patent No. 9,697,231, “Methods and apparatus for providing
`
`virtual media channels based on media search,”
`
`• U.S. Patent No. 9,697,230, “Methods and apparatus for dynamic
`
`presentation of advertising, factual, and informational content using
`
`enhanced metadata in search-driven media applications,”
`
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`• U.S. Patent No. 7,975,296, “Automated security threat testing of web
`
`pages,”
`
`• U.S. Patent No. 7,877,736, “Computer language interpretation and
`
`optimization for server testing,”
`
`• U.S. Patent No. 7,801,910, “Method and apparatus for timed tagging
`
`of media content,”
`
`• U.S. Patent 7,590,542, “Method of Generating Test Scripts Using a
`
`Voice-Capable Markup Language,”
`
`• U.S. Patent No. 6,967,963, “Telecommunication method for ensuring
`
`on-time delivery of packets containing time-sensitive data,”
`
`• U.S. Patent Publication No. 2007/0106685, “Method and apparatus
`
`for updating speech recognition databases and reindexing audio and
`
`video content using the same,”
`
`• U.S. Patent Publication No. 2007/0112837, “Method and apparatus
`
`for timed tagging of media content,”
`
`• U.S. Patent Publication No. 2007/0118873, “Methods and apparatus
`
`for merging media content,”
`
`• U.S. Patent Publication No. 2009/0222442, “User-directed navigation
`
`of multimedia search results.”
`
`30.
`
`
`
`In addition to the patents and applications listed above, I am an
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`inventor/co-inventor on several other U.S. Patents, European Patents and Patent
`
`Publications that are listed in my curriculum vitae, a copy of which is submitted as
`
`APPL-1004 to this declaration.
`
`31. Based on my academic and work experiences relating to computer
`
`networking, distributed systems, remote applications protocols, remote
`
`applications technology, and palm-sized devices, I believe I am well-positioned to
`
`understand and address the skills and mindset of a person of ordinary skill in this
`
`field circa 1998-1999.
`
`III. Level of Ordinary Skill in the Art
`32.
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a person of ordinary skill in the art to which the
`
`claimed subject matter pertains would have the capability of understanding the
`
`scientific and engineering principles applicable to the pertinent art. I understand
`
`that one of ordinary skill in the art has ordinary creativity, and is not an automaton.
`
`33.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
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`experience of persons working in the field at the time of the invention; (2) the
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`sophistication of the technology; (3) the types of problems encountered in the field;
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`and (4) the prior art solutions to those problems. There are likely a wide range of
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`educational backgrounds in the technology field pertinent to the ’018 Patent.
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`
`
`–19–
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`APPL-1030 / Page 19 of 180
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`34.
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`I am familiar with the knowledge and capabilities that a person of
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`ordinary skill in the wireless communications arts would have possessed in the
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`period around 2000. For example, my work at BBN Technologies focused in these
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`areas during the relevant period allowed me to become personally familiar with the
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`level of skill of practicing individuals and the general state of the art. Unless
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`otherwise stated, my testimony below refers to the knowledge of one of ordinary
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`skill in the wireless communications arts in the period around 2000, the period that
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`includes the earliest claimed priority date of the ’018 Patent.
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`35.
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`In my opinion, the level of ordinary skill in the art needed to have the
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`capability of understanding the scientific and engineering principles applicable to
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`the ’018 Patent is a B.S. degree in Electrical Engineering, Computer Engineering,
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`or Computer Science, or equivalent training, as well as at least three years of
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`technical experience in the field of wireless communications, wireless devices
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`and/or mobile systems. Lack of work experience can be remedied by additional
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`education or training, and vice versa. Such academic and/or industry experience
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`would be necessary to appreciate what was obvious and/or anticipated in the
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`industry and what a person of ordinary skill in the art would have thought and
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`understood at the time.
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`36. For purposes of this Declaration, in general, and unless otherwise
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`noted, my statements and opinions, such as those regarding my experience and the
`
`
`
`–20–
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`APPL-1030 / Page 20 of 180
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`understanding of a person of ordinary skill in the art generally (and specifically
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`related to the references I consulted herein), reflect the knowledge that existed in
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`the field as of 2000.
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`IV. Relevant Legal Standards
`37.
`I have been asked to provide my opinions regarding whether the
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`claims 1-27 of the ’018 Patent are anticipated or would have been obvious to a
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`person having ordinary skill in the art at the time of the alleged invention, in light
`
`of the prior art. I have been informed by counsel that, to anticipate a claim under
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`35 U.S.C. § 102, a reference must teach every element of the claim. Further, I have
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`also been informed that a claimed invention is unpatentable under 35 U.S.C. § 103
`
`if the differences between the invention and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which the subject matter pertains. I also
`
`understand that the obviousness analysis takes into account factual inquiries
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`including the level of ordinary skill in the art, the scope and content of the prior art,
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`and the differences between the prior art and the claimed subject matter.
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`38.
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`I have been further informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
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`show obviousness of claimed subject matter. Some of these rationales include the
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`following: (a) combining prior art elements according to known methods to yield
`
`
`
`–21–
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`APPL-1030 / Page 21 of 180
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`predictable results; (b) simple substitution of one known element for another to
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`obtain predictable results; (c) use of a known technique to improve a similar device
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`(method, or product) in the same way; (d) applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. The ’018 Patent
`A. Overview
`39. The ’018 Patent is directed to a portable computer system for
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`controlling remote devices over a wireless connection. APPL-1001, 2:9-24. The
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`’018 Patent explains that the “embodiments of the present invention can be
`
`implemented” on a “PDA, a hand-held computer system, or palmtop computer
`
`system,” as illustrated in Figure 3 (APPL-1001, 5:37-40):
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`
`
`–22–
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`APPL-1030 / Page 22 of 180
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`APPL-1001, Fig. 3
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`
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`40. The ’018 Patent has three independent claims (claims 1, 11, and 21)
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`and a total of 27 claims. Claim 1 provides a basic overview of the teachings of the
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`’018 Patent:
`
`1. A method for controlling a remote devices [sic] over a
`wireless connection, said method comprising:
`a) establishing said wireless connection between a
`transceiver and said remote device by:
`broadcasting a message, said message for locating remote
`devices within range of said transceiver; and
`receiving a response from said remote device;
`b) manifesting said remote device on a display device;
`c) registering a position where contact is made with a
`surface of an input device, wherein a particular position on said
`
`
`
`–23–
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`APPL-1030 / Page 23 of 180
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`input device is translated into a particular command for
`controlling said remote device; and
`d) transmitting a command to said remote device over said
`wireless connection.
`
`41. The ’018 Patent teaches that its portable computer system includes a
`
`processor, a transceiver, an input device, and a display device connected to a bus—
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`i.e., conventional components typically found in PDAs and palmtop computers in
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`the late 1990s and early 2000s. APPL-1001, 5:38-66, Fig. 2.
`
`42. One of the purported advantages of the portable computer system of
`
`the ’018 Patent is that it can control a “variety of remote devices…including new
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`devices introduced into the home or business.” APPL-1001, 3:2-4. In order to
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`discover new devices, for example, when a user walks into a new room, the
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`portable computer system “transmits [a] broadcast message 640 for the purpose of
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`discovering compliant devices in the room.” APPL-1001,