`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`QUEST USA CORP.
`
`Petitioner
`
`v.
`
`POPSOCKETS LLC
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`CASE IPR2019-
`
`U.S. Patent No. 9,958,107
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. GLENN E. VALLEE, PH.D., P.E.
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`A.  Qualifications ........................................................................................ 2 
`B. 
`Basis of My Opinion and Materials Considered ................................... 5 
`C. 
`Legal Standards for Patentability .......................................................... 6 
`DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME ................................................................................................ 10 
`III.  THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME ................................................................. 11 
`IV.  STATE OF THE ART FOR THE ‘107 PATENT ......................................... 12 
`V.  OVERVIEW OF THE ‘107 PATENT .......................................................... 20 
`VI.  THE PRIOR ART .......................................................................................... 25 
`A. 
`Barnett PCT ......................................................................................... 25 
`B. 
`Karmatz Provisional ............................................................................ 31 
`C. 
`The ‘031 Patent ................................................................................... 31 
`D.  Dai ....................................................................................................... 33 
`E. 
`Stager ................................................................................................... 34 
`F. 
`Chen ‘236 ............................................................................................ 35 
`G. 
`Chen ‘376 ............................................................................................ 36 
`H. 
`Lan ....................................................................................................... 38 
`VII.  THE PRIOR ART IN RELATION TO THE CLAIMS OF THE ‘107
`PATENT ........................................................................................................ 40 
`A. 
`The Barnett PCT in Combination with the Karmatz Provisional
`Compared to Claims 1, 5, 7–12, 14, and 15 of the ‘107 Patent .......... 41 
`Identification of Where Each Element of Claims 1, 5, 7–12, 14, and
`15 is Found in the Combination of the Barnett PCT and the Karmatz
`Provisional ........................................................................................... 72 
`- i -
`
`B. 
`
`II. 
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`The Barnett PCT in Combination with the Karmatz Provisional and
`the ‘031 Patent Compared to Claims 6, 13, and 16 of the ‘107 Patent
` ............................................................................................................. 89 
`Identification of Where Each Element of Claims 6, 13, and 16 is
`Found in the Combination of the Barnett PCT, the Karmatz
`Provisional, and the ‘031 Patent ........................................................106 
`The Barnett PCT in Combination with Dai Compared to Claims 1, 5,
`7, 9–12, and 15 of the ‘107 Patent.....................................................114 
`Identification of Where Each Element of Claims 1, 5, 7, 9–12, and 15
`is Found in the Combination of the Barnett PCT and Dai ................126 
`The Barnett PCT in Combination with Dai and the ‘031 Patent
`Compared to Claims 6, 13, and 16 of the ‘107 Patent ......................138 
`Identification of Where Each Element of Claims 6, 13, and 16 is
`Found in the Combination of the Barnett PCT, Dai, and the ‘031
`Patent .................................................................................................143 
`The Barnett PCT in Combination with Dai and Stager Compared to
`Claims 8 and 14 of the ‘107 Patent ...................................................147 
`Identification of Where Each Element of Claims 8 and 14 is Found in
`the Combination of the Barnett PCT, Dai, and Stager ......................150 
`Chen ‘236 Compared to Claims 1–4 of the ‘107 Patent ...................152 
`Identification of Where Each Element of Claims 1–4 is Found in Chen
`‘236 ....................................................................................................161 
`M.  Chen ‘376 Compared to Claims 1–4, 9, 10, 13, and 15 of the ‘107
`Patent .................................................................................................170 
`Identification of Where Each Element of Claims 1–4, 9, 10, 13, and
`15 is Found in Chen ‘376 ..................................................................190 
`Chen ‘376 in Combination with Dai Compared to Claims 5–7, 12, and
`16 of the ‘107 Patent .........................................................................212 
`Identification of Where Each Element of Claims 5–7, 12, and 16 is
`Found in the Combination of Chen ‘376 and Dai .............................228 
`
`I. 
`
`J. 
`
`K. 
`L. 
`
`N. 
`
`O. 
`
`P. 
`
`- ii -
`
`Quest Ex. 1007
`
`

`

`
`
`Q. 
`
`R. 
`
`Chen ‘376 in Combination with Lan Compared to Claim 11 of the
`‘107 Patent .........................................................................................250 
`Identification of Where Each Element of Claim 11 is Found in the
`Combination of Chen ‘376 and Lan ..................................................253 
`Chen ‘376 in Combination with Dai and Stager Compared to Claims 8
`and 14 of the ‘107 Patent ...................................................................257 
`Identification of Where Each Element of Claims 8 and 14 is Found in
`the Combination of Chen ‘376, Dai, and Stager ...............................260 
`VIII.  SECONDARY CONSIDERATIONS .........................................................261 
`IX.  CONCLUSION ............................................................................................261 
`
`S. 
`
`T. 
`
`
`
`- iii -
`
`Quest Ex. 1007
`
`

`

`
`
`I, Dr. Glenn E. Vallee, Ph.D., P.E. declare as follows:
`
`I.
`1.
`
`INTRODUCTION
`
`Based on my background, being over the age of eighteen (18), and being of
`
`sound mind, I am competent to make this Declaration.
`
`2.
`
`Quest USA Corp. (“Quest”) has retained me to provide my opinion on U.S.
`
`Patent No. 9,958,107 (“the ‘107 patent”) for a Declaration in support of a Petition
`
`for Inter Partes Review (“IPR”) of the ‘107 patent. The opinions set forth in this
`
`Declaration address the ‘107 patent, the state of the art at the relevant time of the
`
`‘107 patent, and the scope and content of the prior art to the ‘107 patent.
`
`3.
`
`I have reviewed and am familiar with the ‘107 patent, which was filed on
`
`November 3, 2017, as U.S. Patent No. 15/803,410 (“the ‘410 application”) and
`
`issued on May 1, 2018. I have also reviewed and am familiar with the prosecution
`
`history of the ‘107 patent and the references cited during prosecution.
`
`4.
`
`I understand that the ‘107 patent is a continuation of U.S. Patent Application
`
`No. 15/679,934 (“the ‘934 application”), which was filed on August 17, 2017, and
`
`which in turn is a continuation of U.S. Patent Application No. 15/615,900 (“the
`
`‘900 application”), which was filed on June 7, 2017. I also understand that the
`
`‘900 application claims the benefit of U.S. Provisional Application No. 62/376,237
`
`(“the ‘237 provisional”), which was filed on August 17, 2016. I have reviewed and
`
`
`
`- 1 -
`
`Quest Ex. 1007
`
`

`

`
`
`am familiar with the ‘934 application, the ‘900 application, and the ‘237
`
`provisional.
`
`5.
`
`I have reviewed and am familiar with: (1) International Application
`
`Publication WO 2013/138500 to Barnett (“Barnett PCT”); (2) U.S. Provisional
`
`Patent Application 61/375,096 to Karmatz (“Karmatz Provisional”); (3) Chinese
`
`Utility Model Patent No. CN 201699919 to Dai (“Dai”) and its certified English
`
`translation; (4) U.S. Patent No. 4,111,407 issued to Stager (“Stager”); (5) Chinese
`
`Utility Model Patent No. CN 201491236 to Chen (“Chen ‘236”) and its certified
`
`English translation; (6) Chinese Patent Publication No. CN 101742376 to Chen
`
`(“Chen ‘376”) and its certified English translation; and (7) U.S. Patent Application
`
`Publication No. 2011/0216933 to Lan (“Lan”).
`
`6.
`
`I am familiar with the technology at issue as of August 17, 2016, the earliest
`
`filing date to which the ‘107 patent claims the benefit of priority.
`
`7.
`
`I have been asked to provide my technical review, analysis, insights, and
`
`opinions regarding the above-noted references that form the basis for the grounds
`
`of rejection set forth in the IPR Petition of the ‘107 patent.
`
`A. Qualifications
`
`8.
`
`I am employed by Western New England University as an Associate
`
`Professor of Mechanical Engineering. My background is in the areas of
`
`mechanical engineering, design, product development and quality assurance. I
`- 2 -
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`have a Ph.D. in Mechanical Engineering from the University of Rhode Island. I
`
`also serve as a consultant in the areas of mechanical engineering design, numerical
`
`stress analysis and mechanical testing, as well as serving as a technical expert in
`
`product liability litigation. I am a member of the American Society of Mechanical
`
`Engineers (ASME member no. 1259837) and I am a licensed Professional
`
`Engineer (RI Lic. No. 6765).
`
`9.
`
`As set forth in more detail in my curriculum vitae, I have substantial
`
`experience in the areas of mechanical engineering, product design and
`
`development, quality assurance, and mechanical testing. Prior to joining Western
`
`New England University, I served as the Director of Engineering and Quality
`
`Assurance, Worldwide for the Remington Products Company, L.L.C., in
`
`Bridgeport, CT from 1997 until 2002. Remington Products Company is a major
`
`manufacturer of personal care products, including electric shavers, beard trimmers
`
`and hair dryers. My responsibilities included directing the activities of Design and
`
`Product Engineering, Quality Assurance, and Manufacturing departments in the
`
`U.S., U.K., and Asia. I was responsible for the design and development of
`
`international consumer products, and for focusing new product engineering toward
`
`continuously improving customer satisfaction through improved product design,
`
`performance, and quality.
`
`
`
`- 3 -
`
`Quest Ex. 1007
`
`

`

`
`
`10. Prior to my employment at Remington Products, I served as the Manager of
`
`the Engineering Laboratories at the Stanley Bostitch Company, now a division of
`
`Stanley/Black & Decker. Stanley Bostitch is a leading manufacturer of pneumatic
`
`nailers and staplers, and a variety of hand tools such as hammer tackers and
`
`staplers. I was employed by Stanley Bostitch from 1985 until 1997, serving first as
`
`a Technician, then Test Engineer, then Product Design/Development Engineer and
`
`was promoted to Manager of the Engineering Laboratories in 1995. My work as a
`
`Technician and then Test Engineer allowed me to acquire experience in conducting
`
`and developing test methodologies for all products. My work as a Product
`
`Design/Development Engineer involved designing and developing products from
`
`conception through manufacture and quality control. As the Manager of the
`
`Engineering Laboratories, I managed the largest of the Engineering Laboratories in
`
`Stanley Works and supervised 18 employees. This position required that I
`
`coordinate testing and allocate resources to meet stringent scheduling requirements
`
`of the Product Development, Manufacturing, and Marketing departments.
`
`11.
`
`I am an inventor on seven patents, including those related to hand tools,
`
`pneumatic nailers, surgical devices, a water purification system, and a flexible
`
`electrical power strip. I have reviewed many patents as I worked with patent
`
`attorneys to file the patent applications discussed above. I have given deposition
`
`testimony eight times and I have testified in court four times, both related to
`
`
`
`- 4 -
`
`Quest Ex. 1007
`
`

`

`
`
`product liability litigation where I testified as a technical expert. I have also given
`
`deposition testimony in a case involving a Petition for IPR of a patent related to
`
`hole saws, a case involving patent infringement related to spring loaded desk top
`
`staplers, a case involving patent infringement related to air mattresses with
`
`embedded air pumps, a case involving patent infringement related to gas spring
`
`nailers, a case involving a Petition for IPR of a patent related to phone grips, and a
`
`case involving patent infringement of a toy car and tube track product where again
`
`I served as a technical expert. I also testified in court at a hearing before the ITC in
`
`a case involving patent infringement related to gas spring nailers.
`
`12. Appendix A is a copy of my résumé, which further expands on my
`
`qualifications and expertise and includes articles I have published in the past ten
`
`years.
`
`B.
`Basis of My Opinion and Materials Considered
`13. The opinion set forth in this Declaration is based on my entire background
`
`including my education and professional experience as well as my knowledge and
`
`research activities. In rendering this opinion, I reviewed the ‘107 patent, its file
`
`history, the ‘934 application, the ‘900 application, the ‘237 provisional, the prior
`
`art, and other background documents. Appendix B provides a full list of the
`
`documents that I considered in making this opinion.
`
`
`
`- 5 -
`
`Quest Ex. 1007
`
`

`

`
`
`C. Legal Standards for Patentability
`
`14.
`
`I understand that a patent claim is unpatentable as anticipated if each and
`
`every element of a claim, as properly construed, is found either explicitly or
`
`inherently in a single prior art reference. Under the principles of inherency, if the
`
`prior art necessarily functions in accordance with, or includes the claimed
`
`limitations, it anticipates. I am informed that this standard is set forth in 35 U.S.C.
`
`§ 102.
`
`15.
`
`I have been informed that a claim is unpatentable under 35 U.S.C. §
`
`102(a)(1) if the claimed invention was patented, described in a printed publication,
`
`or in public use, on sale, or otherwise available to the public before the effective
`
`filing date of the claimed invention. I have also been informed that a claim is
`
`unpatentable under 35 U.S.C. § 102(a)(2) if the claimed invention was described in
`
`a patent or published application by another inventor that was effectively filed
`
`before the effective filing date of the claimed invention.
`
`16.
`
`I further have been informed that under the exceptions set forth in 35 U.S.C.
`
`§ 102(b), a disclosure made one year or less before the effective filing date of a
`
`claimed invention shall not be prior art to the claimed invention if the disclosure
`
`was made by the inventor or joint inventor or by another who obtained the subject
`
`matter disclosed directly or indirectly from the inventor or a joint inventor.
`
`
`
`- 6 -
`
`Quest Ex. 1007
`
`

`

`
`
`17. Additionally, I have been informed that under 35 U.S.C. § 119(e), an
`
`application for a patent can claim the benefit of an earlier filed provisional
`
`application. I have been informed that, for a publication to be afforded an effective
`
`date of its provisional filing date, a claimed invention of the publication must be
`
`disclosed in the provisional application, and the subject matter relied on as prior art
`
`in the publication must have been described in the provisional application.
`
`18.
`
`I also have been informed that under 35 U.S.C. § 120, an application for a
`
`patent can claim priority to an earlier filed non-provisional patent application if the
`
`later filed application is filed before the patenting or abandonment of the earlier
`
`filed application.
`
`19.
`
`I also understand that a patent claim is unpatentable if the differences
`
`between the patented subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person of ordinary skill in the art. I am informed that this standard is set forth in
`
`35 U.S.C. § 103.
`
`20. When considering the issues of obviousness, I am to do the following: (i)
`
`determine the scope and content of the prior art; (ii) ascertain the differences
`
`between the prior art and the claims at issue; (iii) resolve the level of ordinary skill
`
`in the pertinent art; and (iv) consider objective evidence of non-obviousness. I
`
`appreciate that secondary considerations must be assessed as part of the overall
`
`
`
`- 7 -
`
`Quest Ex. 1007
`
`

`

`
`
`obviousness analysis (i.e., as opposed to analyzing the prior art, reaching a
`
`tentative conclusion, and then assessing whether objective indicia alter that
`
`conclusion).
`
`21. Put another way, my understanding is that not all innovations are patentable.
`
`Even if a claimed product or method is not explicitly described in its entirety in a
`
`single prior art reference, the patent claim will still be found unpatentable if the
`
`claim would have been obvious to a person of ordinary skill in the art at the time
`
`the invention was made.
`
`22.
`
`In determining whether the subject matter as a whole would have been
`
`considered obvious at the time that the invention was made, from the perspective
`
`of a person of ordinary skill in the art, I have been informed of several principles
`
`regarding the combination of elements of the prior art:
`
`a.
`
`First, a combination of familiar elements according to known methods
`
`is likely to be obvious when it yields predictable results.
`
`b.
`
`Second, if a person of ordinary skill in the art can implement a
`
`“predictable variation” in a prior art device, and would see the benefit from
`
`doing so, such a variation would be obvious. In particular, when there is
`
`pressure to solve a problem and there are a finite number of identifiable,
`
`predictable solutions, it would be reasonable for a person of ordinary skill to
`
`pursue those options that fall within his or her technical grasp. If such a
`
`
`
`- 8 -
`
`Quest Ex. 1007
`
`

`

`
`
`process leads to the claimed invention, then the latter is not patentable and
`
`is, instead, more the result of ordinary skill and common sense.
`
`c.
`
`Third, matters relating to ornamentation only, which have no
`
`mechanical function, cannot be relied upon to patentably distinguish a
`
`claimed invention from the prior art. Rather, aesthetic design changes are
`
`considered routine expedients that require only ordinary skill in the art.
`
`d.
`
`Fourth, a simple substitution of one known element for another is
`
`likely obvious when the substitution yields predictable results.
`
`23. The “teaching, suggestion, or motivation” test is a useful guide in
`
`establishing a rationale for combining elements of the prior art. This test poses the
`
`question as to whether there is an explicit teaching, suggestion, or motivation in the
`
`prior art to combine prior art elements in a way that realizes the claimed invention.
`
`Though useful to the obviousness inquiry, I understand that this test should not be
`
`treated as a rigid rule. It is not necessary to seek out precise teachings; it is
`
`permissible to consider the inferences and creative steps that a person of ordinary
`
`skill in the art (who is considered to have an ordinary level of creativity and is not
`
`an “automaton”) would employ.
`
`24.
`
`I understand that other factors may be considered in establishing a rationale
`
`for combining elements of the prior art. These factors include: (1) whether the
`
`claimed invention was merely the predictable result of using prior art elements
`
`
`
`- 9 -
`
`Quest Ex. 1007
`
`

`

`
`
`according to their known function(s); (2) whether the claimed invention provides
`
`an obvious solution to a known problem in the relevant field; (3) whether it would
`
`have been obvious to try the combinations of elements, such as when there is a
`
`design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions; and (4) whether the claimed invention resulted
`
`more from design incentives or other market forces. I further understand that for
`
`an invention to be rendered obvious, the prior art must provide a reasonable
`
`expectation of success.
`
`II. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`25. To determine the relevant field, I reviewed the ‘107 patent and its file
`
`history.
`
`26. To determine the scope of the prior art, I understand the prior art must be
`
`earlier than the invention date of the ‘107 patent. The ‘107 patent issued from the
`
`‘410 application, which was filed on November 3, 2017, as a continuation of the
`
`‘934 application. The ‘934 application was filed on August 17, 2017, as a
`
`continuation of the ‘900 application. The ‘900 application was filed on June 7,
`
`2017, and claimed the benefit of the ‘237 provisional, which was filed on August
`
`17, 2016.
`
`
`
`- 10 -
`
`Quest Ex. 1007
`
`

`

`
`
`27. Based on this history, the ‘107 patent has at least a claim to the August 17,
`
`2016, filing date of the ‘237 provisional as its earliest priority date.
`
`28. Without confirming or acknowledging a priority date to which the ‘107
`
`patent is entitled, the following opinion relies on prior art that is prior art to the
`
`August 17, 2016, filing date of the ‘237 provisional application. Thus, when I
`
`refer to the time of the ‘107 patent, I am referring to August 17, 2016.
`
`29. Based on my review of this material, I believe that the relevant field for the
`
`purposes of the ‘107 patent is, in general, mechanical engineering and mechanical
`
`product design.
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`IN THE RELEVANT TIMEFRAME
`
`30.
`
`I have been informed that “a person of ordinary skill in the relevant field” is
`
`a hypothetical person to whom an expert in the relevant field could assign a routine
`
`task with reasonable confidence that the task would be successfully carried out. I
`
`have been informed that the level of skill in the art is evidenced by prior art
`
`references. The prior art discussed herein demonstrates that a person of ordinary
`
`skill in the field, at the time of the ‘107 patent, would have either (1) five years or
`
`more of experience in mechanical product design, or (2) a bachelor’s degree in
`
`Mechanical Engineering and one year or more of experience in mechanical product
`
`design.
`
`
`
`- 11 -
`
`Quest Ex. 1007
`
`

`

`
`
`31. My background education and professional experience provide me with a
`
`strong understanding of the abilities and knowledge of a person of ordinary skill in
`
`the art for the relevant field of the ‘107 patent. Not only do I have such abilities
`
`and knowledge, but I have also taught, worked with, and overseen the work of
`
`others with such abilities and knowledge in my capacities as a professor, a
`
`consultant, and a professional engineer.
`
`IV. STATE OF THE ART FOR THE ‘107 PATENT
`32. Portable media players date back to at least the 1940s, in the form of
`
`portable radios. Accessories for portable media players, in the form of cases,
`
`mounting devices, stands, speakers, headphones, and other accessories soon
`
`followed. Over the decades, other portable media players entered the market,
`
`including handheld cassette players, handheld CD players, MP3 players, mobile
`
`phones, and smartphones. As portable media players evolved, accessories for
`
`portable media players similarly evolved. Accessories such as cases, mounting
`
`devices and stands were re-designed to accommodate the new media players
`
`entering the market. Additionally, new accessories were introduced to
`
`accommodate the new functions and address the new limitations of the new media
`
`players.
`
`33.
`
`In 2010, Michael Karmatz (“Mr. Karmatz”) recognized some of the
`
`limitations of the designs of smartphones and other handheld devices. He
`- 12 -
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`introduced numerous accessories to address these limitations in the Karmatz
`
`Provisional entitled “Holding Method or Apparatus for a Hand Held Device (ie.
`
`[sic] PDA, Smart Phone, Cell Phone, Tablet)” (Ex. 1009) and his non-provisional
`
`patent application entitled “Apparatus for Gripping Handheld Devices” that issued
`
`as the Karmatz Patent (Ex. 1010). Mr. Karmatz recognized that “large touch-
`
`screen displays … are becoming more commonly used” in smartphones and other
`
`handheld devices (Ex. 1010, col. 1, lines 25–27; see also Ex. 1009, p. 4), but that
`
`these large touch-screens “may create difficulty for users to securely grip these
`
`devices with a single hand, which results in users frequently dropping and
`
`damaging their devices” (Ex. 1010, col. 1, lines 36–39; see also Ex. 1009, p. 4).
`
`Mr. Karmatz further noted that with the larger touch screens, “a range of motion of
`
`the user’s thumb is limited with respect to a front surface of the device.” (Ex.
`
`1010, col. 1, lines 44–46; see also Ex. 1009, p. 4.) Mr. Karmatz illustrated this
`
`problem in Figure 1(a) of the Karmatz Patent (reproduced below). (See also, Ex.
`
`1009, pp. 8–9, Figures.)
`
`
`
`- 13 -
`
`Quest Ex. 1007
`
`

`

`
`
`Karmatz Patent, Figure 1(a)
`34. Mr. Karmatz went on to explain that “to reach other areas of the front
`
`
`
`surface of the handheld device 10 with the user’s thumb, a user must either
`
`reposition the device with a similar grip, in which top or bottom fingers may no
`
`longer grip the device, or a user must use a relaxed grip, in which a user’s fingers
`
`do not extend around both the back and side of the device.” (Ex. 1010, col. 1, lines
`
`53–58; see also Ex. 1009, p. 4.) Mr. Karmatz thus recognized that “a user may not
`
`easily operate a handheld device 10 with one hand, while securely gripping the
`
`device with the user’s fingers.” (Ex. 1010, col. 1, lines 62–65.) In light of this
`
`problem, Mr. Karmatz recognized that “there is a need for an apparatus for
`
`securely holding devices such as bar-shaped devices, with a single hand while
`
`allowing greater range of movement of a user’s fingers while holding the device.”
`
`(Ex. 1010, col. 1, line 66 to col. 2, line 2; see also Ex. 1009, p. 4.)
`
`
`
`- 14 -
`
`Quest Ex. 1007
`
`

`

`
`
`35.
`
`In the Karmatz Provisional, Mr. Karmatz describes one embodiment having
`
`a stem connected to a top piece and a base. (Ex. 1009, p. 6; see Figure reproduced
`
`below, with annotations in red.) The stem may be a “spring (conical) to allow for
`
`deep compression.” (Id.)
`
`Karmatz Provisional, p. 6 (Annotated)
`
`
`
`36.
`
`In 2012, David Barnett (one of the named inventors on the ‘107 patent) and
`
`Lawrence Carlson were named as inventors on a patent application entitled
`
`“Extending Socket for Portable Media Player,” that issued as U.S. Patent No.
`
`8,560,031 (“the ‘031 patent,” Ex. 1006). The ‘031 patent is directed to an
`
`extending “socket” attached to a portable media player or portable media player
`
`case. (Ex. 1006, Abstract.) The socket is formed of an accordion with a button
`
`attached to its distal end. (Id.) It is configured to manage a headset, attach to a
`
`belt, form a stand leg, and form a grip for securely holding the portable media
`
`player with one hand. (Id.) I understand the ‘107 patent incorporates the ‘031
`
`patent by reference. (Ex. 1001, col. 1, lines 29–33.)
`
`
`
`- 15 -
`
`Quest Ex. 1007
`
`

`

`
`
`37.
`
`In one embodiment of the ‘031 patent, shown in Figure 1B (reproduced
`
`below, with annotations in red), a pair of “sockets” 24 are attached to a case body 4
`
`of a portable media player case 100.
`
`‘031 Patent, Figure 1B (Annotated)
`
`
`
`38.
`
`In 2013, David Barnett also filed an international patent application with co-
`
`inventor Altan Nahum that was entitled “Docking Connector Platform For Mobile
`
`Electronic Devices” and that published as the Barnett PCT (Ex. 1008). The
`
`Barnett PCT is generally directed to docking platforms formed in the back surface
`
`of mobile electronic devices. (Ex. 1008, Abstract.)
`
`39.
`
`In one embodiment of the Barnett PCT, shown in Figure 6D (reproduced
`
`below, with annotations in red), “one very useful type of extendable docking
`
`accessory assembly 8 [is] formed of docking accessory body 9 attached to docking
`
`accessory accordion 10. Expandable docking accessory assembly 8 can
`- 16 -
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`temporarily extend outward from the back of device 1 by expanding accessory
`
`accordion 10.” (Id., p. 12, lines 29–32.) The Barnett PCT also notes that
`
`“[a]ccessory assembly 8 is very similar to the sockets (comprising in general an
`
`accordion and an end cap) as taught in U.S Pat. App. 13/403,729,” which later
`
`issued as the ‘031 patent. (Id., p. 12, lines 32–34.)
`
`Barnett PCT, Figure 6D (Annotated)
`40. While Figure 6D shows “generic docking accessories in their expanded
`
`
`
`states” (Id., p. 7, line 26), the Barnett PCT explains that the docking accessories
`
`may be electronic devices such as speakers (id., Fig. 10A (reproduced below), p. 8,
`
`line 27) or electrophysiology sensors (id., Fig. 13A (reproduced below), p. 9, lines
`
`1–3).
`
`
`
`- 17 -
`
`Quest Ex. 1007
`
`

`

`
`
`Barnett PCT, Figure 10A
`
`
`
`
`
`
`Barnett PCT, Figure 13A
`
`
`
`41.
`
`In each embodiment, “[a]n accordion flex circuit 16 is disposed within
`
`accordion 10, and provides electrical connection between device 1 (via contacts 19,
`
`shown in Figure 2B, and 18, shown in Figure 9A, as described above) and
`
`accessory body 9, via connector 21.” (Id., p. 13, lines 26–28.) These connections
`
`are shown in Figures 9B and 9C (reproduced below, with annotations in red).
`
`Barnett PCT, Figure 9B (Annotated)
`
`
`
`
`
`- 18 -
`
`Quest Ex. 1007
`
`

`

`
`
`Barnett PCT, Figure 9C (Annotated)
`42. Expandable speakers were not unique to the Barnett PCT at the time it was
`
`
`
`filed. For example, Chen ‘376, which was published in 2010, discloses an
`
`expandable speaker in Figures 2 and 3 (reproduced below).
`
`Chen ‘376, Figure 2
`
`
`
`Chen ‘376, Figure 3
`43. Chen ‘236, which was also published in 2010, likewise discloses an
`
`
`
`
`
`expandable speaker in Figures 1 and 2 (reproduced below).
`
`
`
`- 19 -
`
`Quest Ex. 1007
`
`

`

`
`
`Chen ‘236, Figure 1
`
`
`
`Chen ‘236, Figure 2
`44. Dai, which was published in 2011, also discloses an expandable speaker in
`
`
`
`Figures 3 and 4 (reproduced below).
`
`Dai, Figure 3
`
`
`V. OVERVIEW OF THE ‘107 PATENT
`45. The ‘107 patent, entitled “Expandable Sockets For Use With Portable Media
`
`Dai, Figure 4
`
`
`
`
`
`
`
`
`
`Players,” is generally directed to an “expandable socket” for attachment to a
`- 20 -
`
`
`
`Quest Ex. 1007
`
`

`

`
`
`portable media player or portable media player case. (Ex. 1001, Abstract.) The
`
`expandable socket generally includes “a platform, a skin coupled to the platform, a
`
`button coupled to the skin opposite the platform, and a biasing element.” (Id.) The
`
`biasing element biases the skin into the expanded configuration. (Id.)
`
`46. The specification of the ‘107 patent states that “[t]he present invention
`
`relates generally to expandable sockets and more particularly to expandable
`
`sockets, which may also be referred to as collapsible sockets, that can be attached
`
`to portable media players (e.g., smart phones, MP3 players) or portable media
`
`player cases and used as grips, stands, or for other purposes.” (Ex. 1001, col. 1,
`
`lines 20–26.)
`
`47.
`
`In describing a first embodiment, shown in Figures 1A (reproduced below,
`
`with annotations in red), 1B, and 1C, the specification states that “[t]he expandable
`
`socket 100 in this example includes a button 104, a base 106, e.g., a platform, and
`
`a collapsible or expandable mechanism 102 coupled to and extending between the
`
`button 104 and the base 106.” (Ex. 1001, col. 2, lines 39–43.) The specification
`
`further states that “[w]hile removed from FIGS. 1A and 1B for clarity, the
`
`expandable socket 100 also includes a deformable cover.” (Id., col. 2, lines 43–
`
`45.) Figure 1A includes a dashed line that appears to represent the deformable
`
`cover. The specification further notes that “[i]n other examples, the expandable
`
`
`
`- 21 -
`
`Quest Ex. 1007
`
`

`

`
`
`socket 100 can include additional, different, and/or fewer components.” (Id., col.
`
`2, lines 48–50.)
`
`‘107 Patent, Figure 1A (Annotated)
`
`
`
`48.
`
`In this first embodiment, the biasing element “takes the form of two, thin
`
`strip springs 112.” (Id., col. 3, line 19.) The specification states that “the strips
`
`112 are preferably formed such that they are bistable, i.e., they each have two
`
`stable states in which they