IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Byron Hourmand
`In re Patent of:
`5,796,183
`U.S. Patent No.:
`August 18, 1998
`Issue Date:
`Appl. Serial No.: 08/601,268
`Filing Date:
`January 31, 1996
`Title:
`CAPACITIVE RESPONSIVE ELECTRONIC SWITCHING
`CIRCUIT
`
` Attorney Docket No.: 39521-0062IP4
`
`SECOND DECLARATION OF DR. PHILLIP WRIGHT
`
`1.
`
`My name is Dr. Phillip Wright. I am Managing Director and Chief
`
`Analyst at WRT Associates. A summary of my qualifications and my curriculum
`
`vitae were attached to my previous declaration (APPLE-1003). For the sake of
`
`brevity, I will not describe my qualifications again in the present declaration, as
`
`they have not materially changed.
`
`2.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in communications,
`
`consumer electronics, mobile handsets, displays, engineering services and defense
`
`electronics.; and my experience in working with others involved in those fields. In
`
`addition, I have analyzed the following publications and materials, in addition to
`
`other materials I cite in my declaration:
`
` Paper 12 - Board's Institution Decision (“Decision”)
`
` Paper 16 - Patent Owner's Response (“Response”)
`
` Ex. 2004 – Declaration of Dr. Darran Cairns
`
`1
`
`Exhibit 1034
`Apple v. UUSI
`IPR2019-00358
`
`
`
`Byron Hourmand
`In re Patent of:
`5,796,183
`U.S. Patent No.:
`August 18, 1998
`Issue Date:
`Appl. Serial No.: 08/601,268
`Filing Date:
`January 31, 1996
`Title:
`CAPACITIVE RESPONSIVE ELECTRONIC SWITCHING
`CIRCUIT
`
` Attorney Docket No.: 39521-0062IP4
`
`SECOND DECLARATION OF DR. PHILLIP WRIGHT
`
`1.
`
`My name is Dr. Phillip Wright. I am Managing Director and Chief
`
`Analyst at WRT Associates. A summary of my qualifications and my curriculum
`
`vitae were attached to my previous declaration (APPLE-1003). For the sake of
`
`brevity, I will not describe my qualifications again in the present declaration, as
`
`they have not materially changed.
`
`2.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in communications,
`
`consumer electronics, mobile handsets, displays, engineering services and defense
`
`electronics.; and my experience in working with others involved in those fields. In
`
`addition, I have analyzed the following publications and materials, in addition to
`
`other materials I cite in my declaration:
`
` Paper 12 - Board's Institution Decision (“Decision”)
`
` Paper 16 - Patent Owner's Response (“Response”)
`
` Ex. 2004 – Declaration of Dr. Darran Cairns
`
`1
`
`Exhibit 1034
`Apple v. UUSI
`IPR2019-00358
`
`
`
`3.
`
`I have been retained on behalf of Apple Inc. to offer technical
`
`opinions relating to U.S. Patent No. 5,796,183 (“the ’183 Patent” or APPLE-1001),
`
`and prior art references relating to its subject matter.
`
`4.
`
`Counsel has informed me that I should consider these materials
`
`through the lens of a person having ordinary skill in the art related to the ’183
`
`Patent at the time of the earliest purported priority date of the ’183 Patent, and I
`
`have done so during my review of these materials. I understand the ’183 Patent
`
`issued on August 18, 1998 from U.S. Patent Application No. 08/601,268 (“the ’268
`
`application”), filed January 31, 1996. See APPLE-1002. There is no claim to an
`
`earlier priority application. It is therefore my understanding that the earliest
`
`priority date purported by the ’183 patent is January 31, 1996 (hereinafter the
`
`“Critical Date”).
`
`5.
`
`In this declaration, I apply the same definition of a person of ordinary
`
`skill in the art as of the Critical Date of the ’183 patent (hereinafter a “POSITA”)
`
`included in my prior declaration.
`
`6.
`
`I am familiar with the knowledge and capabilities of a POSITA as
`
`noted above. Specifically, my experience working in industry and with designers
`
`and engineers practicing in industry has allowed me to become directly and
`
`personally familiar with the level of skill of individuals and the general state of the
`
`art.
`
`2
`
`
`
`7.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis,
`
`for all tasks involved. My compensation is not dependent in any manner on the
`
`outcome of these proceedings or on the content of my opinions.
`
`8. My opinions, as explained below, are based on my education,
`
`experience, and background in the fields discussed above. Unless otherwise stated,
`
`my testimony below refers to the knowledge of a POSITA in the fields as of the
`
`Critical Date.
`
`Analysis
`
`9. When a circuit is being designed, the circuit designer will select
`
`component values to include in the circuit based on the design objectives of the
`
`circuit designer. For example, when selecting an oscillator for use in a circuit, the
`
`designer will select the oscillator at least partially based on the frequency of the
`
`output signal produced by the oscillator. When a fixed frequenc y oscillator is
`
`selected, the circuit designer can also select the frequency produced by that
`
`oscillator. A POSITA would have understood that by selecting specific component
`
`values that he or she can design an oscillator that produces a specific frequency.
`
`Accordingly, when the circuit designer designs a circuit that includes an oscillator,
`
`such as the touch circuit of Chiu, the circuit designer selects the frequency
`
`3
`
`
`
`produced by that oscillator from the range of frequencies that can be obtained by
`
`varying component values.
`
`10. Patent Owner’s expert Dr. Cairns agreed with this characterization
`
`during his deposition. See APPLE-1033, 29:1-5 (“Q:…if you were designing a
`
`circuit that included an oscillator, you would select an oscillator knowing its
`
`frequency, correct? A: Yes.”), 29:6-16 (“Q: And the rest of the circuit would be
`
`designed to handle the signal of that frequency, correct…? A: …you would design
`
`the system so that it…worked with the oscillator that you had.”), 30:7-12 (“Q: So
`
`if an oscillator appears in a circuit, it's safe to say that it was selected at the design
`
`stage for that circuit? A:… at the design stage, you would plan on the oscillator
`
`and the components that were in there.”).
`
`11. There were also oscillators that produced periodic signals of different
`
`frequencies as of the Critical Date. For example, Chiu describes different
`
`oscillators that produced frequencies “greater than 150 kHz and preferably in the
`
`range of between 150 kHz and 500 kHz.” APPLE-1005, 2:27-30 (describing that).
`
`Even the ’183 patent describes “those skilled in the art” were aware of oscillators
`
`producing different frequencies. Ex. 1001, 14:22-33. When a circuit designer
`
`designs a particular oscillator (and a particular frequency of that particular
`
`oscillator), he or she selects the particular frequency from multiple possible
`
`frequencies.
`
`4
`
`
`
`12.
`
`In my opinion, the selection of the oscillator component during the
`
`design of the Chiu circuit necessarily includes the selection of a frequency. The
`
`combination of Chiu and Schwarzbach consequently teaches “a ‘selection’ [of a
`
`frequency] that occurs during the design of a touch circuit.”
`
`13. The ’183 patent recites the following:
`
`As will be apparent to those skilled in the art, the values
`
`of the resistors and capacitors utilized in oscillator 200 may be
`
`varied from those disclosed above to provide for different
`
`oscillator output frequencies. As discussed above, however.
`
`oscillator 200 is preferably constructed so as to output a
`
`square wave having a frequency of 50 kHz or greater, and
`
`more preferably, of 800 kHz or greater. In some cases it may
`
`be necessary to use lower gain bandwidth product transistors
`
`or filtration to achieve a softer roll-off of the square edges to
`
`reduce high frequency noise emissions. When this is done the
`
`amplitude of the oscillator voltage can be increased to
`
`compensate. APPLE-1001, 14:22-33.
`
`14. This passage does not describe varying an oscillator frequency during
`
`operation of a touch touch circuit, and a POSITA would not have understood it to
`
`describe a variable frequency oscillator.
`
`5
`
`
`
`15.
`
`In my opinion, a POSITA looking for operating information for an
`
`electronic component, such as the TMS 1670 microcontroller described in Chiu,
`
`would not have limited his or her search to only the official product documentation
`
`produced by the manufacturer of the component. This would especially be the
`
`case in situations where the POSITA could not locate the official production
`
`documentation. In such a case, the POSITA would not have simply abandoned the
`
`construction of the circuit if the official product documentation could not be
`
`located. The POSITA would have continued to search for the operating
`
`information for the component in other sources, such as industry journals,
`
`websites, and patents (both domestic and foreign) describing the component.
`
`16.
`
`I currently hold the opinions expressed in this declaration. But my
`
`analysis may continue, and I may acquire additional information and/or attain
`
`supplemental insights that may result in added observations.
`
`
`
`
`
`6
`
`
`
`I hereby declare that all statements made of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true. I further
`
`declare that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of the Title 18 of the United States Code and that such willful
`
`false statements may jeopardize the validity of the application or any patents issued
`
`thereon.
`
`Dated: Z{\ (zo-o
`
`Dr. Phillip Wright
`
`7
`
`
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