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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`American National Manufacturing Inc.,
`Petitioner
`
`v.
`
`Sleep Number Corporation
`f/k/a Select Comfort Corporation,
`Patent Owner
`____________________
`
`Case IPR: IPR2019-00497
`Patent No. 8,769,747
`
`
`Case IPR: IPR2019-00500
`Patent No. 9,737,154
`
`____________________
`
`DECLARATION OF DR. JOSHUA PHINNEY, PH.D., P.E.
`IN SUPPORT OF PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`WA 14162379.4
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`American National Manufacturing, Inc.
`EXHIBIT 1046
`IPR2019-00500
`Page 1
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
`I.
`II. QUALIFICATIONS...................................................................................... 2
`III. SUMMARY OF OPINIONS......................................................................... 6
`IV. LEVEL OF ORDINARY SKILL ................................................................. 7
`V. LEGAL PRINCIPLES .................................................................................. 9
`A. Anticipation ................................................................................................. 9
`B. Obviousness ................................................................................................10
`C. Written Description.....................................................................................14
`D. Enablement .................................................................................................15
`E. Definiteness ................................................................................................16
`VI. THE PROPOSED SUBSTITUTE CLAIMS OF THE ’747 PATENT ......17
`A. Overview of The Proposed Substitute Claims ..............................................17
`B. Categories of Added Limitations .................................................................23
`VII. THE PROPOSED SUBSTITUTE CLAIMS OF THE ’747 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART .................................................26
`A. Summary of the Relevant State of the Art ....................................................28
`1. Overview of Gifft (Ex. 1004)...................................................................28
`2. Motivation to Combine Gifft with Ebel, Mittal, and Pillsbury .................32
`3. Overview of Ebel (- 497, Ex. 1006; -500, Ex. 1007) ................................36
`4. Overview of Mittal (Ex. 1005) .................................................................45
`5. Overview of Pillsbury (-497, Ex. 1011; -500, Ex. 1006) ..........................47
`6. The Combination Gifft, Mittal, Pillsbury, and Ebel .................................51
`B. Substitute Claims 20 and 21 are rendered obvious by Gifft in view of Mittal,
`Pillsbury, and Ebel ............................................................................................54
`C. Substitute Claims 22-25 are rendered obvious by Gifft in view of Mittal,
`Pillsbury, Ebel, and Finkelstein and/or Luff ......................................................76
`1. Overview of Finkelstein (-497, Ex. 1015; -500, Ex. 1008).......................77
`2. Overview of Luff (Ex. 1047) ...................................................................82
`3. Analysis of Substitute Claims 22-25 ........................................................85
`D. Substitute Claims 26-32 are rendered obvious by Gifft in view of Mittal,
`Pillsbury, Ebel, and Collins ...............................................................................90
`1. Overview of Collins (Ex. 1048) ...............................................................90
`2. Overview of U.S. Patent No 7,319,386 (Ex. 1049) ..................................94
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`3. Overview of Provisional U.S. Patent Application No. 60/773,286 (Ex.
`1050) ..............................................................................................................96
`4. Analysis of Substitute Claims 26-31 ........................................................99
`VIII. THE PROPOSED SUBSTITUTE CLAIMS OF THE ’154 PATENT . 119
`A. Overview of The Proposed Substitute Claims ............................................ 119
`B. Categories of Added Limitations ............................................................... 130
`IX. THE PROPOSED SUBSTITUTE CLAIMS OF THE ’154 PATENT ARE
`UNPATENTABLE OVER THE PRIOR ART ............................................... 133
`A. Substitute Claims 27, 28, and 32-37 are rendered obvious by Gifft in view of
`Mittal and Pillsbury ........................................................................................ 133
`B. Substitute Claims 23-26, 29, and 38-41 are rendered obvious by Gifft in
`view of Mittal, Pillsbury, and Ebel................................................................... 167
`C. Substitute Claims 30 and 31 are rendered obvious by Gifft in view of Mittal,
`Pillsbury, Ebel, and Finkelstein and/or Luff .................................................... 184
`X. THE ’747 AND ’154 PATENT DISCLOSURES DO NOT ENABLE THE
`PROPOSED SUBSTITUTE CLAIMS ............................................................ 191
`XI. CONCLUSION........................................................................................... 197
`
`
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`
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`I, Joshua Phinney, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am a Principal Engineer in the Electrical Engineering and Computer
`
`Science practice at Exponent, an engineering and scientific consulting firm
`
`headquartered at 149 Commonwealth Drive, Menlo Park, California 94025.
`
`2.
`
`I have been retained as an independent expert consultant in this
`
`proceeding before the United States Patent and Trademark Office (the “Patent
`
`Office”). I am a salaried employee of Exponent. Exponent charges an hourly rate
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`of $550 plus expenses for my work performed in connection with this case. My
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`compensation is not dependent on the opinions I render or the outcome of this
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`proceeding.
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`3.
`
`I submitted expert declarations in support of American National
`
`Manufacturing’s (“ANM”) Petitions for inter partes review (IPR) of U.S. Patent
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`Nos. 8,769,747 (“the ’747 patent”) and 9,737,154 (“the ’154 patent”) (Ex. 1007 in
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`each proceeding). I understand that IPRs were instituted in the following
`
`proceedings: IPR2019-00497 (for the ’747 patent), and IPR2019-00500 (for the
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`’154 patent).
`
`4.
`
`I understand that Patent Owner Sleep Number Corporation (“PO”)
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`submitted a Motion to Amend in IPR2018-00497 and another Motion to Amend in
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`IPR2019-00500, each providing substitute claims contingent on a finding of
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`invalidity of the challenged original claim(s). I submit this expert declaration in
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`support of ANM’s Oppositions to those Motions to Amend.
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`II. QUALIFICATIONS
`
`5.
`
`I received a Ph.D. in Electrical Engineering from the Massachusetts
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`Institute of Technology (“MIT”) in 2005. I also earned S.M. and B.S. degrees in
`
`Electrical Engineering from MIT and the University of Illinois, Chicago (“UIC”),
`
`respectively. While at MIT, I worked on the Laser Interferometric Gravitational
`
`Wave Observatory (LIGO) experiment, where I designed and tested hydraulic
`
`systems for outer-stage seismic isolation of the experimental apparatus. My job
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`responsibilities included the design and testing of a hydraulic manifold and pressure
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`control system, as well as the selection and testing of the pump, motor drive, pressure
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`transducers, and hydraulic spool valves that were components of the pressure control
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`system.
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`6.
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`After earning my Ph.D., I joined Exponent and have led technical
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`investigations pertaining to portable electronic devices, microcomputers, and
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`electromechanical devices with embedded controllers. My job functions include
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`analyzing hardware and software of these devices to understand their modes of
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`failure, and testifying regarding these devices in legal matters involving patents and
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`trade secrets.
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`2
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`7.
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`I have testified regarding the software-defined features, internal
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`circuitry, and physical embodiments of electronic equipment.
`
`8.
`
`Regarding software, I have reviewed C++, Java, and machine language
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`code for purposes of patent infringement and trade secret misappropriation. I have
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`testified regarding microcomputer software for instrument control as well as
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`embedded software for the control of machines, computer peripherals, tablets, cell
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`phones, and other battery-operated equipment.
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`9.
`
`Regarding electronics, I have testified regarding power electronics in
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`microcomputers, peripherals, machine controllers, and consumer electronics
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`including tablets, cell phones, and portable media players. In addition, I have
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`testified regarding control circuitry and compensation of motion controllers, furnace
`
`controllers, pump controllers, voltage regulators, and switched-mode power
`
`converters.
`
`10. Regarding the mechanical elements of electronic equipment, I have
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`testified regarding buttons and touch interfaces, connectors, linear and rotary
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`actuators, position-measuring devices, and the design and construction of modular
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`housings for computerized equipment and peripherals. In particular, I have testified
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`regarding user interfaces (including buttons, indicators, touch interfaces and card
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`readers) as they are constructed in relation to the housing and underlying electronic
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`3
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`assemblies, including printed circuit boards, flex printed circuits, and other
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`connector assemblies within the housing of electronic equipment.
`
`11.
`
`I have most recently been disclosed as an expert, at trial for testimony,
`
`deposed or submitted an Expert Report to the court in:
`
`a. Convolve, Inc. v. Compaq Computer Corp., S.D.N.Y. Civ. No.
`00-5141.
`
`b. IBM v. ASUSTek Computer, Inc., United States International Trade
`Commission Unfair Import Investigation No. 337-TA-628
`
`c. Xentaur Corp. v. Bedros Bedrossian, N.Y. Sup. Ct. No. 23403/06
`
`d. Apple Inc. v. Samsung Electronics. Corp., United States
`International Trade Commission Unfair Import Investigation No.
`337-TA-796
`
`e. Guzik Tech. Enterprises, Inc. v. Western Digital Corp. et al., Case
`No. 5:11-CV-03786-PSG, N.D. Cal.
`
`f. L-3 Communications Corporation et al v. Jaxon Engineering &
`Maintenance, Civil Action No. 10-cv-2868-MSK-KMT, District
`of Colorado.
`
`g. Smart Skins LLC v. Microsoft Corporation. Case No. 2:15-CV-
`00544-MJP in the United States District Court, Western District of
`Washington at Seattle.
`
`h. Commonwealth of Puerto Rico Treasury Department v. OPG
`Technology Corp., Case No. 15-3125 in the in the United States
`District Court, District of Puerto Rico.
`
`i. IPS Group, Inc. v. Duncan Solutions, Inc. and Duncan Parking
`Technologies, Inc., Case No. 3:15CV1526-CAB (MDD) in the
`United States District Court, Southern District of California.
`
`j. Maxell, Ltd. v. ZTE Corp. and ZTE USA Inc. and Maxell, Ltd. v.
`Huawei Device USA Inc. and Huawei Device Co., Ltd., Case Nos.
`
`
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`4
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`
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`5:16-cv-00178-RWS and 5:16-cv-00179-RWS in the United States
`District Court, Eastern District of Texas.
`
`k. IPS Group, Inc. v. CivicSmart, Inc., Duncan Parking Technologies,
`Inc., and Duncan Solutions, Inc., Case No. 3:17-CV-00632-CAB
`(MDD) in the United States District Court, Southern District of
`California.
`
`l. Qualcomm, Inc. v. Apple, Inc., Case No. 17-CV-2403-BAS-NLS in
`the United States District Court, Southern District of California.
`
`m. Siemens Industry, Inc. v. Westinghouse Air Brake Technologies
`Corp. and Wabtec Railway Electronics, Inc.., Case No. 1:16-CV-
`284-LPS in the United States District Court, District of Delaware.
`
`n. Spark Connected v. Semtech Corp., Case No. 4:18-CV-00748 in the
`United States District Court, Eastern District of Texas, Sherman
`Division.
`
`o. BlueRadios, Inc v. Kopin Corporation, Inc., Case No. 16-CV-
`02054-JLK in the United States District Court, District of Colorado.
`
`12.
`
`I have most recently submitted declarations to the U.S. Patent and
`
`Trademark Office concerning re-examinations of patents at stake in:
`
`a. Apple Inc. v. Yozmot, IPR2015-00761 before the U.S. Patent Trial
`and Appeal Board.
`
`b. Cypress Semiconductor Corp. v. Blackberry Ltd., IPR2014-00397
`and IPR2014-00400 before the U.S. Patent Trial and Appeal Board.
`
`c. Live Nation Entertainment, Inc. v. Songkick.com BV, PGR2017-
`00038 before the U.S. Patent Trial and Appeal Board.
`
`d. Apple Inc. v. Qualcomm Inc., Declarations in support of Inter Partes
`Review of U.S. Patent No. 7,834,591, IPR2018-01283 and
`IPR2018-01452 before the U.S. Patent Trial and Appeal Board.
`
`
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`5
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`13.
`
`I am co-inventor on patents for improving the performance of
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`capacitors, EMI filters, and common-mode chokes.
`
`14. Additional details about my employment history, fields of expertise,
`
`and publications are further described in my curriculum vitae, which is attached to
`
`my prior declarations, and can be found as Ex. 1008 in IPR2019-00497, and Ex.
`
`1010 in IPR2019-00500.
`
`III. SUMMARY OF OPINIONS
`
`15. My opinions in this Declaration are based on my review of the ’747 and
`
`’154 patents, the respective prosecution histories before the Patent Office, and the
`
`prior-art patent references cited in this Declaration. In addition, I draw upon my
`
`experience and knowledge of control systems, including pumps and pressure-control
`
`systems.
`
`16. To summarize the conclusions regarding the ’747 patent that I have
`
`formed based on my analysis:
`
`a. Substitute Claims 20 and 21 are rendered obvious by Gifft in view
`
`of Mittal, Pillsbury, and Ebel;
`
`b. Substitute Claims 22-23 are rendered obvious by Gifft in view of
`
`Mittal, Pillsbury, Ebel, and Finkelstein;
`
`c. Substitute Claims 24-25 are rendered obvious by Gifft in view of
`
`Mittal, Pillsbury, Ebel, Finkelstein, and Luff; and
`
`
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`6
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`d. Substitute Claims 26-32 are rendered obvious by Gifft in view of
`
`Mittal, Pillsbury, Ebel, and Collins.
`
`17. To summarize the conclusions regarding the ’154 patent that I have
`
`formed based on my analysis:
`
`a. Substitute Claims 27, 28, and 32-37 are rendered obvious by Gifft
`
`in view of Mittal and Pillsbury;
`
`b. Substitute Claims 23-26, 29, and 38-41 are rendered obvious by
`
`Gifft in view of Mittal, Pillsbury, and Ebel;
`
`c. Substitute Claim 30 is rendered obvious by Gifft in view of Mittal,
`
`Pillsbury, Ebel, and Finkelstein; and
`
`d. Substitute Claim 31 is rendered obvious by Gifft in view of Mittal,
`
`Pillsbury, Ebel, Finkelstein, and Luff.
`
`18.
`
`In addition, it is my opinion that the disclosures of the ’747 and ’154
`
`patents fail to enable limitations of the substitute claims, including “modifying the
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`pressure adjustment factor based upon the adjustment factor error” and “calculating
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`an updated pressure adjustment factor based upon the adjustment factor error.”
`
`IV. LEVEL OF ORDINARY SKILL
`
`19. My opinions have been guided by my consideration of how a person of
`
`ordinary skill in the art would have understood the claims of the ’747 and ’154
`
`patents on
`
`the
`
`filing date of
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`International PCT Application No.
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`
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`7
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`PCT/US2008/059409, April 4, 2008, which I will refer to as the “time of the alleged
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`invention.”
`
`20. At the time of the alleged invention, a person of ordinary skill in the art
`
`related to the technology of the ’747 and ’154 patents would have had an
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`undergraduate degree (B.S.) in Mechanical or Electrical Engineering, and at least
`
`one year of experience with hydraulics, fluidic control, pneumatic air bed
`
`controllers, or the equivalent. My opinion is based on my understanding of the
`
`typical qualifications of those working in the field at that time. I have been informed
`
`that, as a matter of law, the hypothetical person of ordinary skill in the art is deemed
`
`to be aware of all relevant prior art, including all of the references discussed in this
`
`Declaration.
`
`21.
`
`I understand that in its Institution Decision, the Patent Ower disagreed
`
`with the level of ordinary skill I applied in my analysis and proposed:
`
`(1) a person with at least a bachelor’s degree in mechanical or
`electrical engineering and at least one to two years of experience in
`the development of mechanical and electrical products, or (2) a person
`with at least one to two years of experience working in product
`development, design, or manufacturing of adjustable air mattress bed
`systems.
`
`Patent Owner’s Prelim. Resp. 34–35 (citing Ex. 2001 ¶ 68).
`
`22. The Board noted that the parties advance mostly similar definitions for
`
`a person of ordinary skill in the art, and stated that “[i]n addition to a mechanical or
`
`electrical engineer with certain experience with pneumatic and hydraulic systems
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`control and programming languages, based also on our review of the relevant prior
`
`art, we agree with Sleep Number that a person of ordinary skill in the art could also
`
`have encompassed someone without such an engineering degree but, who had
`
`several years of design experience with air mattress bed systems. Id., see Ex. 1004,
`
`Abstract, 1:4–2:32.” See, e.g., IPR2019-0497 Institution of Inter Partes Review,
`
`pp. 10-11.
`
`23.
`
`In this declaration, I have considered the level of ordinary skill
`
`advanced by Patent Owner to interpret the ’747 Patent, the ’154 Patent, and the prior
`
`art.
`
`V. LEGAL PRINCIPLES
`
`A. Anticipation
`
`24.
`
`I understand that a finding of invalidity of a patent claim under 35
`
`U.S.C. § 102, which is known as “anticipation,” is a two-step process. First, the
`
`language of the claim is construed as it would be understood by one of ordinary skill
`
`in the art at the time of the filing of the patent application. Reference is made to the
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`intrinsic evidence of record, which includes the language of the claim itself and other
`
`issued claims, the patent specification, and the prosecution history. Words in a claim
`
`will be construed according to their plain and ordinary meaning to a person of
`
`ordinary skill in the art unless it appears that the inventor used them differently. The
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`prosecution history may limit the interpretation of the claim, especially if the
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`patentee disavowed or disclaimed any coverage in order to obtain allowance of the
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`claim.
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`25. The second step requires a comparison of the claim language to the
`
`prior art on a limitation-by-limitation basis. I understand that a prior art reference
`
`“anticipates” an asserted claim, and thus renders the claim invalid, if all elements of
`
`the claim are disclosed in that prior art reference, either explicitly or inherently.
`
`26.
`
`I understand that although anticipation cannot be established by
`
`combining references, additional references may be used to interpret the anticipating
`
`reference by, for example, indicating what the anticipating reference would have
`
`meant to one having ordinary skill in the art.
`
`B. Obviousness
`
`27.
`
`I understand that even if a patent is not anticipated, it is still invalid
`
`under 35 U.S.C. § 103 if the differences between the claimed subject matter and the
`
`prior art are such that the subject matter as a whole would have been obvious at the
`
`time of the invention to a person of ordinary skill in the art. I have been informed
`
`that an obviousness analysis requires a comparison of the properly construed claim
`
`language to the prior art on a limitation-by-limitation basis.
`
`28.
`
`I understand
`
`that an obviousness determination
`
`includes
`
`the
`
`consideration of various factors such as (1) the scope and content of the prior art, (2)
`
`the differences between the prior art and the Asserted Claims, (3) the level of
`
`
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`ordinary skill in the pertinent art, and (4) the existence of objective indicia of non-
`
`obviousness. I understand that it is Plaintiff’s burden to make a showing objective
`
`indicia (or “secondary considerations”) of non-obviousness, which may include:
`
`i.
`
`ii.
`
`whether the invention proceeded in a direction contrary to accepted
`wisdom in the field;
`
`whether there was a long felt but unresolved need in the art that was
`satisfied by the invention;
`
`iii. whether others had tried but failed to make the invention;
`
`iv. whether others copied the invention;
`
`v.
`
`whether the invention achieved unexpected results;
`
`vi. whether the invention was praised by others;
`
`vii. whether others have taken licenses to use the invention;
`
`viii. whether experts or those skilled in the art at the making of the
`invention expressed surprise or disbelief regarding the invention;
`
`ix. whether products incorporating the invention have achieved
`commercial success that is attributable to the invention; and
`
`x.
`
`field
`the
`in
`whether or not others having ordinary skill
`independently made the claimed invention at about the same time
`the inventor made the invention.
`
`29.
`
`I also understand that for any such secondary consideration to be
`
`relevant, the patentee must establish a connection or nexus between the secondary
`
`consideration and the claimed invention. For example, commercial success is
`
`relevant to obviousness only if the success of the product is related to a feature of
`
`the patent claims. If, however, commercial success is due to advertising, promotion,
`
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`salesmanship or the like, or is due to features of the product other than the claimed
`
`invention, then any commercial success should not be considered an indication of
`
`non-obviousness. Also, to satisfy the nexus requirement, I understand that a patent
`
`owner must demonstrate that the asserted commercial success of the product is due
`
`to the merits of the claimed invention beyond what was readily available in the prior
`
`art.
`
`30. To demonstrate unexpected results, I understand a patent owner must
`
`compare his invention to the closest prior art, even if that prior art was not relied on
`
`by the examiner. Additionally, to demonstrate failure of others to satisfy a long felt
`
`need, I understand a patent owner must establish a showing that others skilled in the
`
`art in fact perceived a need and that this perception persisted over a long period of
`
`time without resolution by the prior art.
`
`31.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I am informed that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the connection between two or more prior art references is common
`
`sense. I further understand that an obviousness analysis recognizes that market
`
`demand – rather than scientific literature – often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
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`32.
`
`I am also informed that if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious unless its
`
`actual application is beyond his or her skill.
`
`33.
`
`I understand that a particular combination may be proven obvious by
`
`showing that it was obvious to try the combination. For example, when there is a
`
`design need or market demand to solve a problem and there are a finite number of
`
`identified, predictable solutions, a person of ordinary skill has good reason to pursue
`
`the known options within his or her technical grasp because the result is likely the
`
`product not of innovation but of ordinary skill and common sense.
`
`34.
`
`I have been advised that the combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield predictable
`
`results. When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variations of it, either in the same field or a different
`
`one. If a person of ordinary skill can implement a predictable variation, 35 U.S.C.
`
`§ 103 likely bars its patentability.
`
`35.
`
`I understand that a proper obviousness analysis focuses on what was
`
`known or obvious to a person of ordinary skill in the art, not just the patentee.
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`Accordingly, I understand that any need or problem known in the field of endeavor
`
`at the time of invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed. I understand also that the knowledge
`
`and understanding of a person of ordinary skill in the art provides a reference point
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`from which the prior art and claimed invention should be viewed, and that analysis
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`of whether a claimed invention is obvious must not rely on a hindsight combination
`
`of prior art.
`
`36.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference are obvious in view of ordinary skill
`
`in the art.
`
`37.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art, having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing the
`
`inventor, would have been led to make the combination of elements recited in the
`
`claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`C. Written Description
`
`38.
`
`I have been informed that according to 35 U.S.C. § 112, the patent
`
`specification must contain an adequate written description to convey to a person of
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`ordinary skill in the art that the applicant had possession of the claimed invention as
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`of the filing date of the application.
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`39.
`
`I understand that it is not sufficient that any undisclosed subject matter
`
`would have been obvious to a person of ordinary skill. Rather, the written
`
`description must demonstrate to one skilled in the art that the applicant was in
`
`possession of the invention. In other words, the written description must show that
`
`the inventor(s) invented what they claimed to have invented at the time they claimed
`
`to have invented it. The written description requirement cannot be satisfied if the
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`patent specification expresses a mere wish or plan for obtaining the claimed
`
`invention.
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`D. Enablement
`
`40.
`
`I have been informed that according to 35 U.S.C. § 112, the patent
`
`specification must teach a person having ordinary skill in the art, at the time the
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`patent application was filed, how to make and use the full scope of the claimed
`
`invention without having to conduct undue experimentation. I understand this to be
`
`legally referred to as the “enablement” requirement.
`
`41.
`
`I understand that several factors that may be considered in determining
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`whether a person having ordinary skill in the art would have to experiment unduly
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`in order to make and use the claimed invention include the following:
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`1) The time, cost, and quantity of any necessary experimentation.
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`2) How routine any necessary experimentation is within the field.
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`3) Whether the patent discloses specific working examples of the claimed
`
`invention.
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`4) The amount of direction or guidance presented in the patent.
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`5) The nature of the claimed invention.
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`6) The predictability or unpredictability of the art.
`
`7) The level of ordinary skill in the art.
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`8) The scope of the claimed invention.
`
`E. Definiteness
`
`42.
`
`I have been informed that a patent claim must be sufficiently clear that
`
`a person having ordinary skill in the art reading it is able to determine the bounds of
`
`the claim—i.e., what the claim covers and does not cover. I understand that if a
`
`patent claim does not meet this requirement, then the claim may be indefinite, and
`
`rendered invalid on that basis.
`
`43.
`
`I further understand that some ambiguity in the wording of a patent
`
`claim is permissible, but a claim that is not amenable to construction or that is
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`insolubly ambiguous or inherently subjective is invalid as indefinite.
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`VI. THE PROPOSED SUBSTITUTE CLAIMS OF THE ’747 PATENT
`
`A. Overview of The Proposed Substitute Claims
`
`44.
`
`I understand that Patent Owner offers proposed substitute claims 20-32
`
`for challenged claims 1-6 and 10-16 of the ’747 patent, with the following
`
`correspondence of the challenged claim to the proposed substitute claim:
`
`Claim of the ’747
`Patent as challenged
`1
`2
`3
`4
`5
`6
`10
`11
`12
`13
`14
`15
`16
`
`Proposed
`Substitute claim
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`31
`32
`
`
`45. For ease of reference, I reproduce the proposed substitute claims for the
`
`’747 patent below, with strikethroughs/brackets indicating deleted text, and
`
`underlining indicating inserted text.
`
`46. Proposed substitute claim 20 is based on the original claim language of
`
`claim 1, and reads:
`
`[20.P] A method for adjusting pressure within an air bed comprising:
`
`[20.1] providing or receiving an air bed, the air bed including an air
`chamber bladder and a pump having a pump housing valve enclosure;
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`
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`[20.2] selecting a desired pressure setpoint for the air chamber
`bladder;
`
`[20.3] determining an initial pressure within the pump housing valve
`enclosure;
`
`[20.4] calculating a pressure target based upon the desired pressure
`setpoint and a pressure adjustment factor,
`
`[20.5] wherein the pressure adjustment factor is an inflate pressure
`adjustment factor that is used to calculate the an inflate pressure target
`when the initial pressure within the pump housing valve enclosure is
`less than the desired pressure setpoint, and
`
`[20.6] wherein the inflate pressure adjustment factor is an
`additive pressure adjustment factor, and the inflate pressure
`target for the valve enclosure is calculated by adding the desired
`pressure setpoint for the air bladder by the additive pressure
`adjustment factor;
`
`[20.7] wherein the pressure adjustment factor is a deflate pressure
`adjustment factor that is used to calculate the an deflate pressure
`target when the initial pressure within the pump housing valve
`enclosure is greater than the desired pressure setpoint
`
`[20.8] wherein the default pressure adjustment factor is a
`multiplicative pressure adjustment factor, and the deflate
`pressure target for the valve enclosure is calculated by dividing
`the desired pressure setpoint for the air bladder by the
`multiplicative pressure adjustment factor,
`
`[20.9] adjusting pressure within the air chamber bladder until a sensed
`pressure within t