Filed: March 12, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`
`EXPERT DECLARATION OF DR. JOSEPH LAVIOLA, PH.D., IN
`SUPPORT OF PATENT OWNER’S MOTION TO AMEND
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` 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2018-01257
`Patent No. 8,552,978
`____________________
`
`
`EXPERT DECLARATION OF DR. JOSEPH LAVIOLA, PH.D., IN
`SUPPORT OF PATENT OWNER’S MOTION TO AMEND
`
`
`
`
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` 1
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
`
`
`Table of Contents
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`I. INTRODUCTION ............................................................................................ 3
`II. QUALIFICATIONS, PUBLICATIONS, AND PRIOR TESTIMONY ...... 4
`III. PATENT OWNER’S PROPOSED AMENDMENTS .................................. 5
`IV. THE PROPOSED CONTINGENT CLAIMS ARE SUPPORTED BY
`EARLIER DISCLOSURES .............................................................................. 7
`A. Proposed Contingent Claim 20 .................................................................... 7
`B. Proposed Contingent Claim 21 .................................................................... 9
`V. THE PROPOSED CONTINGENT CLAIMS OVERCOME THE PRIOR
`ART ................................................................................................................... 10
`VI.CONCLUSION ................................................................................................ 11
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`INTRODUCTION
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
`
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`I have been retained by Patent Owner CyWee Group Ltd. (“CyWee” or
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`I.
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`1.
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`“Patent Owner”) as an expert in the area of motion sensors and sensor fusion
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`technology. I make this Declaration at the request of CyWee regarding my
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`opinions as an independent expert regarding proposed amendments to claims 10
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`and 12 of U.S. Patent No. 8,552,978 (the “‘978 Patent”) that are responsive to
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`grounds raised in the matter of Inter Partes Review, Petition IPR2018-01257
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`(“Petition”).
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`2.
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`I am being compensated for this work at the rate of $375/hour, and my
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`compensation is not dependent on the outcome of this matter.
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`3.
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`In preparation for this Declaration, I studied Exhibits 1001-1006 provided by
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`Petitioner as well as the Petition. I have also studied several documents from
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`various district court actions concerning the ‘978 Patent. These include the claim
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`construction orders in CyWee Group Ltd. v. Samsung Electronics Co., Ltd., et al,
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`No. 2:17-cv-00140-WCB-RSP (E.D. Tex.) (the “Samsung Suit”) and CyWee
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`Group Ltd. v. Motorola Mobility LLC, No. 1:17-cv-00780-GMS (D. Del.) (the
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`“Motorola Suit”).1 The claim construction orders from these cases are provided as
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`Exhibits 2003 and 2006-2007.
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`1 I have also reviewed the claim construction order in CyWee Group, Ltd. v. Huawei Device Co. Ltd., No. 2:17-cv-
`00495-WCB-RSP (E.D. Tex) (the “Huawei Suit”) in which the court adopted the same constructions it adopted
`in the Samsung Suit.
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`I also submitted an expert declaration in the Samsung Suit in which I
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`4.
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`addressed the assertion of Samsung’s expert in the Samsung Suit that the ‘978
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`Patent is invalid under 35 U.S.C. § 112 for lack of enablement and written
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`description. It is my opinion that the disclosure of the ‘978 Patent sufficiently
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`enables one of ordinary skill to practice the claimed inventions and discloses that
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`the inventors were in possession of the claimed subject matter at the time of
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`invention. I have seen nothing presented by any party that alters my views as to
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`the enablement and/or written description support of either the original claims of
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`the ‘978 Patent or the proposed amendments that I have reviewed.
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`5.
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`In addition to the above Papers and other documents, my opinions herein are
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`also based upon my personal knowledge, professional judgment, education and
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`experience gained through my years as a computer scientist, professor, and
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`consultant.
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`6.
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`A detailed discussion of the ‘978 Patent, the level of ordinary skill in the art,
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`the background of the relevant technology, the claim construction issues in the
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`present IPR, and the prior art references relied on by Petitioner can be found in my
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`Expert Declaration in Support of Patent Owner Response, provided as Exhibit
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`2004. Ex. 2004, Sections IV-VIII.
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`II. QUALIFICATIONS, PUBLICATIONS, AND PRIOR TESTIMONY
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`7. My Curriculum Vitae is provided as Exhibit 2005. a detailed listing of my
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`qualifications, publications, and prior testimony can be found in my Expert
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`Declaration in Support of Patent Owner Response. Ex. 2004, Section II.
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`III. PATENT OWNER’S PROPOSED AMENDMENTS
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`8.
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`In my opinion, and as discussed in my Expert Declaration in Support of
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`Patent Owner Response, Ex. 2004, Sections X.A.i and X.B.i, Claim 10 is valid
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`over the asserted combinations of Zhang in view of Bachmann and Liberty in view
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`of Bachmann. Nonetheless, Patent Owner has presented Proposed Contingent
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`Claim 19 to replace Claim 10 in the event that Claim 10 is found to be obvious
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`over the grounds asserted by Petitioner. Proposed Contingent Claim 19 is
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`reproduced below:
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`[19(a)] A method for compensating rotations of a 3D pointing device, which
`is handheld, comprising:
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`[19(b)] generating an orientation output associated with an orientation of the
`3D pointing device associated with three coordinate axes of a global
`reference frame associated with Earth;
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`[19(c)] generating a first signal set comprising axial accelerations associated
`with movements and rotations of the 3D pointing device in [the] a spatial
`reference frame;
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`[19(d)] generating a second signal set associated with Earth's magnetism;
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`[19(e)] generating the orientation output based on the first signal set, the
`second signal set and the rotation output or based on the first signal set and
`the second signal set;
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`[19(f)] generating a rotation output associated with a rotation of the 3D
`pointing device associated with three coordinate axes of [a] the spatial
`reference frame associated with the 3D pointing device;
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`[19(g)] and using the orientation output and the rotation output to generate a
`transformed output associated with a fixed display reference frame
`associated with a display device built-in to and integrated with the 3D
`pointing device, wherein the orientation output and the rotation output is
`generated by a nine-axis motion sensor module;
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`[19(h)] obtaining one or more resultant deviation including a plurality of
`deviation angles using a plurality of measured magnetisms Mx, My, Mz and
`a plurality of predicted magnetism Mx', My' and Mz' for the second signal
`set.
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`In my opinion, and as will be discussed below, the amendments of Proposed
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`9.
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`Contingent Claim 19 are supported by the specification of the ‘978 Patent as it
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`would be understood by a person having ordinary skill in the art (“PHOSITA”).
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`10.
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`In my opinion, and as discussed in my Expert Declaration in Support of
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`Patent Owner Response, Ex. 2004, Sections X.A.ii and X.B.ii, Claim 12 is valid
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`over the asserted combinations of Zhang in view of Bachmann and Liberty in view
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`of Bachmann. Nonetheless, Patent Owner has presented Proposed Contingent
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`Claim 20 to replace Claim 12 in the event that Claim 12 is found to be obvious on
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`the grounds asserted by Petitioner. Proposed Contingent Claim 20 is reproduced
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`below:
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`[20] The method of claim 10, wherein the 3D pointing device is a
`smartphone, and wherein the orientation output is a rotation matrix, a
`quaternion, a rotation vector, or comprises three orientation angles.
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`In my opinion, and as will be discussed below, the amendments of Proposed
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`11.
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`Contingent Claim 20 are supported by the specification of the ‘978 Patent as it
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`would be understood by a PHOSITA.
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`IV. THE PROPOSED CONTINGENT CLAIMS ARE SUPPORTED BY
`EARLIER DISCLOSURES
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`12. The ‘978 Patent issued from U.S. Application No. 13/176,771, filed on July
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`6, 2011, and claims priority to a Provisional Application No. 61/292,558 (the “‘558
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`Provisional”) filed on January 6, 2010. The file history of the ‘558 Provisional is
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`provided as Exhibit 2012. Each Proposed Contingent Claim is supported by the
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`original disclosure of the ‘978 Patent and/or the related ‘558 Provisional; thus, a
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`PHOSITA would have understood that the inventor was in possession of the
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`claimed subject matter as of at least the filing dates of the ‘978 Patent and/or ‘558
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`Provisional.
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`A. Proposed Contingent Claim 19
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`i. Support for Step 19(a)
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`13. Support for the amendment to step 19(a) of Proposed Contingent Claim 19
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`that the 3D pointing device be “handheld” is found at least in the following
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`disclosures:
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`14.
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`In my opinion, and as discussed in my Expert Declaration in Support of
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`Patent Owner Response, the claim term “3D pointing device” would be understood
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`by a PHOSITA to mean “a handheld device that detects the motion of said device
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`in three-dimensions and is capable of translating the detected motions to control an
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`output on a display.” Ex. 2004, ¶ 53. Thus, the amendment of step 19(a) merely
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`clarifies that the claimed 3D pointing device is “handheld.”
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`15. The ‘558 Provisional discloses that the 3D pointing device may be “a remote
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`controller, a joystick or a cellular phone.” Ex. 2012, ¶ 0023. All of these disclosed
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`embodiments are handheld devices, and a PHOSITA would understand them as
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`such. Figure 1 of the ‘558 Provisional depicts such a handheld embodiment of the
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`device. Ex. 2012, Fig. 1.
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`16. The specification of the ‘978 Patent, as originally filed (Ex. 1009, 104-194),
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`discloses “a portable 3D pointing device” and discloses several embodiments of a
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`3D pointing device, all of which are handheld, including a “computer mouse,”
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`“smartphone, tablet PC or navigation equipment.” Ex. 1009 at 104, ¶ 0002 at 104;
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`129, ¶ 0048. A PHOSITA would understand that a “portable” device is typically
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`one that is “handheld.” Figures 1, 2, 3, 5, and 6 all depict handheld 3D pointing
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`devices. Id. at 183-186, Figs. 1, 2, 3, 5, and 6.
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`17. Support for the amendment of step 19(g) of Proposed Contingent Claim 19
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`“a display device built-in to and integrated with the 3D pointing” is found at least
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`in the following disclosures.
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`18. The ‘558 Provisional discloses that the 3D pointing device may be “a
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`cellular phone.” Ex. 2012, ¶ 0023. A PHOSITA would know that a cellular phone,
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`which can be the 3D pointing device in the system of the ‘558 Provisional, has a
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`built-in display device that is integrated therein.
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`19. The specification of the ‘978 Patent, as originally filed, discloses that the 3D
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`pointing device “may further comprises [sic] a built-in display” that may be
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`“integrated on the housing.” Ex. 1009 at 129, ¶ 0048; see also id. at 186, Fig. 6 .
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`B. Proposed Contingent Claim 20
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`20. Support for the amendment of Proposed Claim 20 “wherein the 3D pointing
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`device is a smartphone” is found at least in the following disclosures.
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`21. As discussed above, the ‘558 Provisional discloses that the 3D pointing
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`device may be “a cellular phone.” Ex. 2012, ¶ 0023. A PHOSITA would know that
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`a smartphone is a type of cellular phone.
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`22. The specification of the ‘978 Patent, as originally filed, repeatedly discloses
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`that the 3D pointing device may be a portable electronic device “such as a
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`smartphone.” Ex. 1009 at 119, ¶ 0027; 129, ¶ 0048; 131, ¶ 0050; 138, ¶ 0058; 148,
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`¶ 0071; 149, ¶ 0072; 150, ¶ 0074; 156, ¶ 0081; 175, ¶ 00113; and 186, Fig. 6.
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`Figure 6 of the ‘978 Patent depicts such a smartphone. Id. at 119, ¶ 0027; 186, Fig.
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`6.
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`V. THE PROPOSED CONTINGENT CLAIMS OVERCOME THE PRIOR
`ART
`
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`23.
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`In my opinion, no combination of the prior art of record teaches or discloses
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`the subject matter of Proposed Contingent Claims 19 and 20. For the purposes of
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`my opinion, I have assumed that the art raised by Google in its Petition is the
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`closest known art to the features discussed above. In my opinion, the Proposed
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`Contingent Claims are patentable over the art at issue in this proceeding, Zhang in
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`view of Bachmann and Liberty in view of Bachmann.
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`24. Proposed Contingent Claim 19 is amended from current Claim 10 to add the
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`limitation that the display device is “built-in to and integrated with the 3D pointing
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`device.” As discussed in my Expert Report in Support of Patent Owner Response,
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`in my opinion, current Claim 10 is valid in view of the challenges in this IPR. Ex.
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`2004, Sections X.A.i and X.B.i. However, to the extent that the Board finds that
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`the original Claim 10 is obvious over Zhang in view of Bachmann or Liberty in
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` 10
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`view of Bachmann, in my opinion, the added limitations clearly overcome those
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`combinations of prior art.
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`25. None of Zhang, Liberty, or Bachmann discloses “a display device built-in to
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`and integrated with the 3D pointing device.”
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`26. Zhang discloses a display device, but does not disclose that the display
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`device is “built-in to and integrated” with the pointing device. Rather, the display
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`screen in Zhang is taught to be a separate, external device, such as a television
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`screen or a computer. Ex. 1005, ¶¶ 0021, 0030-31, Figs. 1, 2, 4a, and 4b. A
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`PHOSITA would understand that Zhang would be inoperable if a display device
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`were built-in to and physically integrated with its pointing device because Zhang
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`needs to point to a position on an external screen to display and control a cursor on
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`the external screen. Id., ¶ 0009.
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`27. Liberty, like Zhang, discloses a display device, but does not disclose that the
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`display is “built-in to and integrated” with the pointing device. Just as in Zhang,
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`the display screen in Liberty is taught to be a separate, external device, such as a
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`home media system with a television or monitor. Ex. 1006, 6:21-25. The 3D
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`pointing device of Liberty is designed to “be held by a user in front of a display.”
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`Ex. 1006, 7:31-36. A PHOSITA would understand that Liberty would be
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`inoperable for its intended purpose if the display screen were integrated with its
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`pointing device because it would not be able to be “held... in front of [the]
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`display.”
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`28. Bachmann only cursorily mentions including an external display device for
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`the limited purpose of rendering in a virtual environment the movements of its
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`sensors attached to an articulated rigid body. Ex. 1004, 14:20-30, Fig. 4.
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`Bachmann does not disclose a pointing device, let alone a built-in display device
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`physically integrated with a pointing device. A PHOSITA would not be motivated
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`to integrate a display device with any of Bachmann’s sensor units because such an
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`integrated display would serve no purpose and needlessly add to the weight and
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`size of the sensor units.
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`29. Thus, neither Zhang, Liberty, nor Bachmann teaches limitation 19(g), and it
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`would not have been obvious to a PHOSITA to include a built-in display device
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`physically integrated with the 3D pointing device in the combination of those
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`references. Accordingly, Proposed Contingent Claim 19 is valid over the
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`references asserted in this IPR.
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`30. Proposed Contingent Claim 20 is amended from current Claim 12 to add the
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`limitation “wherein the 3D pointing device is a smartphone.” As discussed in my
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`Expert Report in Support of Patent Owner Response, in my opinion, current Claim
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`10 is valid in view of the challenges in this IPR. Ex. 2004, Sections X.A.ii and
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`X.B.ii. However, to the extent that the Board finds that the original Claim 12 is
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` 12
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`Case IPR2018-01257
`Patent No. 8,552,978
`Declaration of Joseph LaViola, Ph.D.
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`obvious over Zhang in view of Bachmann or Liberty in view of Bachmann, in my
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`opinion, the added limitation clearly overcomes that combination of prior art.
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`31. None of Zhang, Liberty, or Bachmann discloses that the pointing device is a
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`smartphone.
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`32. A PHOSITA would understand that a smartphone can be used as a specific
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`kind of 3D pointing device. A PHOSITA would also understand that a smartphone
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`necessarily contains a built-in, physically integrated display device. As discussed
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`above, neither Zhang, Liberty, nor Bachmann discloses a built-in, integrated
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`display device. Further, none of those references discuss a “smartphone” in any
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`context. Accordingly, Proposed Contingent Claim 20 is valid over the references
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`asserted in this IPR.
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`VI. CONCLUSION
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`33.
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`In my opinion, Patent Owner’s Proposed Contingent Claims 19 and 20 are
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`supported by the earlier disclosures of the ‘978 Patent and ‘558 Provisional and
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`overcome the prior art of record.
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`Date: March 12, 2019
`
`Joseph LaViola, Ph.D.
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` 13
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