`
`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
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` Attorney Docket No.: 39521-0062IP4
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`SECOND DECLARATION OF DR. PHILLIP WRIGHT
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`1.
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`My name is Dr. Phillip Wright. I am Managing Director and Chief
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`Analyst at WRT Associates. A summary of my qualifications and my curriculum
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`vitae were attached to my previous declaration (APPLE-1003). For the sake of
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`brevity, I will not describe my qualifications again in the present declaration, as
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`they have not materially changed.
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`2.
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`In writing this Declaration, I have considered the following: my own
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`knowledge and experience, including my work experience in communications,
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`consumer electronics, mobile handsets, displays, engineering services and defense
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`electronics.; and my experience in working with others involved in those fields. In
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`addition, I have analyzed the following publications and materials, in addition to
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`other materials I cite in my declaration:
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` Paper 12 - Board's Institution Decision (“Decision”)
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` Paper 16 - Patent Owner's Response (“Response”)
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` Ex. 2004 – Declaration of Dr. Darran Cairns
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`1
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`Exhibit 1034
`Apple v. UUSI
`IPR2019-00359
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`3.
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`I have been retained on behalf of Apple Inc. to offer technical
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`opinions relating to U.S. Patent No. 5,796,183 (“the ’183 Patent” or APPLE-1001),
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`and prior art references relating to its subject matter.
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`4.
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`Counsel has informed me that I should consider these materials
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`through the lens of a person having ordinary skill in the art related to the ’183
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`Patent at the time of the earliest purported priority date of the ’183 Patent, and I
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`have done so during my review of these materials. I understand the ’183 Patent
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`issued on August 18, 1998 from U.S. Patent Application No. 08/601,268 (“the ’268
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`application”), filed January 31, 1996. See APPLE-1002. There is no claim to an
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`earlier priority application. It is therefore my understanding that the earliest
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`priority date purported by the ’183 patent is January 31, 1996 (hereinafter the
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`“Critical Date”).
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`5.
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`In this declaration, I apply the same definition of a person of ordinary
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`skill in the art as of the Critical Date of the ’183 patent (hereinafter a “POSITA”)
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`included in my prior declaration.
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`6.
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`I am familiar with the knowledge and capabilities of a POSITA as
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`noted above. Specifically, my experience working in industry and with designers
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`and engineers practicing in industry has allowed me to become directly and
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`personally familiar with the level of skill of individuals and the general state of the
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`art.
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`2
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`7.
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`I have no financial interest in either party or in the outcome of this
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`proceeding. I am being compensated for my work as an expert on an hourly basis,
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`for all tasks involved. My compensation is not dependent in any manner on the
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`outcome of these proceedings or on the content of my opinions.
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`8. My opinions, as explained below, are based on my education,
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`experience, and background in the fields discussed above. Unless otherwise stated,
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`my testimony below refers to the knowledge of a POSITA in the fields as of the
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`Critical Date.
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`Analysis
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`9. When a circuit is being designed, the circuit designer will select
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`component values to include in the circuit based on the design objectives of the
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`circuit designer. For example, when selecting an oscillator for use in a circuit, the
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`designer will select the oscillator at least partially based on the frequency of the
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`output signal produced by the oscillator. When a fixed frequency oscillator is
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`selected, the circuit designer can also select the frequency produced by that
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`oscillator. A POSITA would have understood that by selecting specific component
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`values that he or she can design an oscillator that produces a specific frequency.
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`Accordingly, when the circuit designer designs a circuit that includes an oscillator,
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`such as the touch circuit of Chiu, the circuit designer selects the frequency
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`3
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`produced by that oscillator from the range of frequencies that can be obtained by
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`varying component values.
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`10. Patent Owner’s expert Dr. Cairns agreed with this characterization
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`during his deposition. See APPLE-1033, 29:1-5 (“Q:…if you were designing a
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`circuit that included an oscillator, you would select an oscillator knowing its
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`frequency, correct? A: Yes.”), 29:6-16 (“Q: And the rest of the circuit would be
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`designed to handle the signal of that frequency, correct…? A: …you would design
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`the system so that it…worked with the oscillator that you had.”), 30:7-12 (“Q: So
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`if an oscillator appears in a circuit, it's safe to say that it was selected at the design
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`stage for that circuit? A:… at the design stage, you would plan on the oscillator
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`and the components that were in there.”).
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`11. There were also oscillators that produced periodic signals of different
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`frequencies as of the Critical Date. For example, Chiu describes different
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`oscillators that produced frequencies “greater than 150 kHz and preferably in the
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`range of between 150 kHz and 500 kHz.” APPLE-1005, 2:27-30 (describing that).
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`Even the ’183 patent describes “those skilled in the art” were aware of oscillators
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`producing different frequencies. Ex. 1001, 14:22-33. When a circuit designer
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`designs a particular oscillator (and a particular frequency of that particular
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`oscillator), he or she selects the particular frequency from multiple possible
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`frequencies.
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`12.
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`In my opinion, the selection of the oscillator component during the
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`design of the Chiu circuit necessarily includes the selection of a frequency. The
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`combination of Chiu and Schwarzbach consequently teaches “a ‘selection’ [of a
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`frequency] that occurs during the design of a touch circuit.”
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`13. The ’183 patent recites the following:
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`As will be apparent to those skilled in the art, the values
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`of the resistors and capacitors utilized in oscillator 200 may be
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`varied from those disclosed above to provide for different
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`oscillator output frequencies. As discussed above, however.
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`oscillator 200 is preferably constructed so as to output a
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`square wave having a frequency of 50 kHz or greater, and
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`more preferably, of 800 kHz or greater. In some cases it may
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`be necessary to use lower gain bandwidth product transistors
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`or filtration to achieve a softer roll-off of the square edges to
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`reduce high frequency noise emissions. When this is done the
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`amplitude of the oscillator voltage can be increased to
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`compensate. APPLE-1001, 14:22-33.
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`14. This passage does not describe varying an oscillator frequency during
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`operation of a touch touch circuit, and a POSITA would not have understood it to
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`describe a variable frequency oscillator.
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`15.
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`In my opinion, a POSITA looking for operating information for an
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`electronic component, such as the TMS 1670 microcontroller described in Chiu,
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`would not have limited his or her search to only the official product documentation
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`produced by the manufacturer of the component. This would especially be the
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`case in situations where the POSITA could not locate the official production
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`documentation. In such a case, the POSITA would not have simply abandoned the
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`construction of the circuit if the official product documentation could not be
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`located. The POSITA would have continued to search for the operating
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`information for the component in other sources, such as industry journals,
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`websites, and patents (both domestic and foreign) describing the component.
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`16.
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`I currently hold the opinions expressed in this declaration. But my
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`analysis may continue, and I may acquire additional information and/or attain
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`supplemental insights that may result in added observations.
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`6
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`I hereby declare that all statements made of my own knowledge are true and
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`that all statements made on information and belief are believed to be true. I further
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`declare that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of the Title 18 of the United States Code and that such willful
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`false statements may jeopardize the validity of the application or any patents issued
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`thereon.
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`Dated: Z{\ (zo-o
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`Dr. Phillip Wright
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