UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`
`U.S. Patent No. 8,812,993
`
`DECLARATION OF CRAIG ROSENBERG, Ph.D.
`
`Samsung et al. v. Neonode
`IPR2021-00145 (US 8,812,993)
`Neonode Ex. 2013, Page 1
`
`

`

`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`QUALIFICATIONS ........................................................................................ 1
`
`III. TESTIFYING EXPERIENCE ......................................................................... 8
`
`IV.
`
`INFORMATION CONSIDERED .................................................................10
`
`V.
`
`RELEVANT LEGAL STANDARDS ...........................................................10
`
`A.
`
`B.
`
`C.
`
`Claim Interpretation ............................................................................10
`
`Perspective of one of Ordinary Skill in the Art ..................................11
`
`Anticipation .........................................................................................11
`
`D. Obviousness .........................................................................................12
`
`E.
`
`Summary of my Opinions ...................................................................14
`
`VI. THE ‘993 PATENT .......................................................................................15
`
`A.
`
`B.
`
`Priority Date. .......................................................................................15
`
`Level of Skill Ordinary in the Art. ......................................................15
`
`VII. CLAIM CONSTRUCTION ..........................................................................16
`
`A.
`
`B.
`
`C.
`
`“An Electronic Device” (Claim 1, Preamble) .....................................16
`
`“Tap-Activatable” (Claim 1, Limitation 1[b]) ....................................19
`
`“System Function(s)” (Claim 1, Limitation 1[b]) ...............................21
`
`VIII. EXPLANATION OF PATENTABILITY ....................................................23
`
`A. Ground 1A: Claims 1-3, 7 and 8 ........................................................24
`
`1.
`
`Claim 1 ......................................................................................24
`
`i
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`a.
`
`b.
`
`c.
`
`Hisatomi Does Not disclose Tap-Activatable
`Icons or a Tap-Present State (Limitation 1[b]) ...............24
`
`A POSA Would Not have been Motivated to
`Incorporate the aca Variant of Ren’s
`Direct Off Strategy into Hisatomi
`(Limitation 1[b]) .............................................................37
`
`Hisatomi does Not Disclose Icons for a
`Plurality of System Functions (Limitation 1[b]) ............50
`
`2.
`
`3.
`
`Claim 3 ......................................................................................53
`
`Claims 2, 7-8 .............................................................................57
`
`B.
`
`Ground 1B: Claim 4 ...........................................................................57
`
`1.
`
`2.
`
`Allard-656 is Not in the Same Field of Endeavor
`as the ‘993 Patent, and is Not Reasonably Pertinent
`to the Problem the Inventor Sought to Solve ............................57
`
`A POSA Would Not have been Motivated to
`Combine Allard-656 with Hisatomi .........................................62
`
`C.
`
`D.
`
`E.
`
`Ground 1C: Claim 5 ...........................................................................65
`
`Ground 1D: Claim 6 ...........................................................................67
`
`Ground 2A: Claims 1-3, 7 and 8 ........................................................69
`
`1.
`
`Claim 1 ......................................................................................69
`
`a.
`
`b.
`
`c.
`
`Hansen Does Not Disclose an “Electronic
`Device” as Recited in the Preamble
`(Limitation 1[pre]) ..........................................................69
`
`Hansen does Not Disclose Icons for a Plurality
`of System Functions (Limitation 1[b]) ...........................72
`
`Hansen Does Not Disclose a Tap-Absent
`State (Limitation 1[c]] ....................................................73
`
`ii
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`d.
`
`A POSA Would Not have been Motivated to
`Incorporate an “Otherwise Activatable
`Graphic” Into Hansen’s Display (Limitation
`1[c]) .................................................................................75
`
`2.
`
`3.
`
`Claim 3 ......................................................................................78
`
`Claims 2, 7-8 .............................................................................80
`
`Ground 2B: Claim 4 ...........................................................................80
`
`Ground 2C: Claim 5 ...........................................................................82
`
`Ground 2D: Claim 6 ...........................................................................83
`
`F.
`
`G.
`
`H.
`
`iii
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
`
`I, Craig Rosenberg, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Neonode Smartphone LLC (“Respondent”) as
`
`an independent expert consultant in this inter partes review (“IPR”) proceeding
`
`before the United States Patent and Trademark Office (“PTO”).
`
`2.
`
`I have been asked by Respondent’s counsel (“Counsel”) to consider
`
`whether certain references render Claims 1-8 of U.S. Patent No. 8,812,993 (“the
`
`‘993 Patent” (EX1001)) unpatentable under 35 U.S.C. § 103, for the reasons set
`
`forth in the Petition for Inter Partes Review of United States Patent No. 8,095,879
`
`Pursuant to 35 U.S.C. §§311-319, 37 C.F.R. §4 (“Petition”) and the accompanying
`
`Declaration of Dr. Benjamin B. Bederson (“Bederson Declaration”). My opinions
`
`and the bases for my opinions are set forth below.
`
`3.
`
`I am being compensated at my ordinary and customary consulting rate
`
`for my work, which is $450 per hour. My compensation is in no way contingent on
`
`the nature of my findings, the presentation of my findings in testimony, or the
`
`outcome of this or any other proceeding. I have no financial interest in this
`
`proceeding.
`
`II. QUALIFICATIONS
`
`4.
`
`All of my opinions stated in this declaration are based on my own
`
`personal knowledge and professional judgment. In forming my opinions, I have
`
`1
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`relied on my knowledge and experience in human factors, user interface design,
`
`user interaction design, human-computer interaction, and software engineering.
`
`5.
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein. My qualifications to testify
`
`about the ‘993 Patent and the relevant technology are set forth in my curriculum
`
`vitae (“CV”), which I have included as EX2002. In addition, a brief summary of
`
`my qualifications is included below,
`
`6.
`
`I hold a Bachelor of Science in Industrial Engineering, a Master of
`
`Science in Human Factors, and a Ph.D. in Human Factors from the University of
`
`Washington School of Engineering. For 30 years, I have worked in the areas of
`
`human factors, user interface design, software development, software architecture,
`
`systems engineering, and modeling and simulation across a wide variety of
`
`application areas, including aerospace, communications, entertainment, and
`
`healthcare.
`
`7.
`
`I graduated from the University of Washington in 1988 with a B.S. in
`
`Industrial Engineering. After graduation, I continued my studies at the University
`
`of Washington. In 1990, I obtained an M.S. in Human Factors. In 1994, I
`
`graduated with a Ph.D. in Human Factors. In the course of my doctoral studies, I
`
`worked as an Associate Assistant Human Factors Professor at the University of
`
`Washington Industrial Engineering Department. My duties included teaching,
`
`
`
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`writing research proposals, designing and conducting funded human factors
`
`experiments for the National Science Foundation, as well as hiring and supervising
`
`students. While studying at the University of Washington, I also worked as a
`
`human factors researcher and designed and performed advanced human factors
`
`experiments relating to virtual environments and interface design, stereoscopic
`
`displays, and advanced visualization research, which was funded by the National
`
`Science Foundation. My duties included user interface design, systems design,
`
`software development, graphics programming, experimental design, as well as
`
`hardware and software interfacing.
`
`8.
`
`I have published twenty-one research papers in professional journals
`
`and proceedings in the areas of user interface design, computer graphics, and the
`
`design of spatial, stereographic, and auditory displays. I also authored a book
`
`chapter on augmented reality displays in the book “Virtual Environments and
`
`Advanced Interface Design” (Oxford University Press, 1995). In addition, I created
`
`one of the first virtual spatial musical instruments called the MIDIBIRD that
`
`utilized the MIDI protocol, two six-dimensional spatial trackers, a music
`
`synthesizer, and a computer graphics workstation to create an advanced and novel
`
`musical instrument.
`
`9.
`
`For the past 21 years, I have served as a consultant for Global
`
`Technica, Sunny Day Software, Stanley Associates, Techrizon, CDI Corporation,
`
`
`
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`IPR2021-00145
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`and the Barr Group. In this capacity, I have provided advanced engineering
`
`services for many companies.
`
`10.
`
`I consulted for the Boeing Company for over 16 years as a senior
`
`human factors engineer, user interface designer, and software architect for a wide
`
`range of advanced commercial and military programs. Many of the projects that I
`
`have been involved with include advanced software development, user interface
`
`design, agent-based software, and modeling and simulations in the areas of missile
`
`defense, homeland security, battle command management, computer aided design,
`
`networking and communications, air traffic control, location-based services, and
`
`Unmanned Aerial Vehicle (“UAV”) command and control. Additionally, I was the
`
`lead system architect developing advanced air traffic controller workstations and
`
`air traffic control analysis applications, toolsets, and trade study simulations for
`
`Boeing Air Traffic Management.
`
`11.
`
`I was also the architect of the Boeing Human Agent Model. The
`
`Boeing Human Agent Model is an advanced model for the simulation of human
`
`sensory, cognitive, and motor performance as applied to the roles of air traffic
`
`controllers, pilots, and UAV operators. In another project, I was the lead human
`
`factors engineer and user interface designer for Boeing’s main vector and raster
`
`computer aided drafting and editing system that produces the maintenance
`
`manuals, shop floor illustrations, and service bulletins for aircraft produced by the
`
`
`
`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`Boeing Commercial Aircraft Company. Additional responsibilities in my time as a
`
`consultant include system engineering, requirements analysis, functional
`
`specification, use case development, user stories, application prototyping,
`
`modeling and simulation, object-oriented software architecture, graphical user
`
`interface analysis and design, as well as UML, C++, C#, and Java software
`
`development.
`
`12.
`
`In 1995 and 1996, I was hired as the lead human factors engineer and
`
`user interface designer for the first two-way pager produced by AT&T. Prior to
`
`this technology, people could receive pages but had no way to respond utilizing
`
`their pager. This new technology allowed users to use a small handheld device to
`
`receive and send canned or custom text messages, access and update an address
`
`book, and access and update a personal calendar. This high-profile project involved
`
`designing the entire feature set, user interface/user interaction design and
`
`specification, as well as all graphical design and graphical design standards.
`
`13. From 1999–2001, I was the lead human factors engineer and user
`
`interface designer for a company called Eyematic Interfaces that was responsible
`
`for all user interface design and development activities associated with real-time
`
`mobile handheld 3D facial tracking, animation, avatar creation and editing
`
`software for a product for Mattel. My work involved user interface design, human
`
`factors analysis, requirements gathering and analysis, and functional specifications.
`
`
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`14.
`
`In 2001, I was the lead user interface designer for a company called
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`Ahaza that was building IPv6 routers. I designed the user interfaces for the
`
`configuration and control of these advanced network hardware devices. My
`
`responsibilities included requirements analysis, functional specification, user
`
`interface design, user experience design, and human factors analysis.
`
`15.
`
`In 2006-07, I was the lead user interface designer for a company
`
`called ObjectSpeed that developed a portable handheld telephone for use in homes
`
`and businesses that had many of the same capabilities that we take for granted in
`
`mobile cellular phones. This portable multifunction device supported voice, email,
`
`chat, video conferencing, internet radio, streaming media, Microsoft Outlook
`
`integration, photo taking and sharing, etc. The ObjectSpeed device was
`
`specifically designed and developed as a portable handheld device.
`
`16.
`
`I am the founder, inventor, user interface designer, and software
`
`architect of WhereWuz. WhereWuz is a company that produces advanced mobile
`
`software running on GPS-enabled smartphones and handheld devices. WhereWuz
`
`allows users to record exactly where they have been and query this data in unique
`
`ways for subsequent retrieval based on time or location. WhereWuz was
`
`specifically designed and developed to run on small handheld devices.
`
`17.
`
`I am the co-founder of a medical technology company called
`
`Healium. Healium developed advanced wearable and handheld user interface
`
`
`
`EX2013
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`technology to allow physicians to more effectively interact with electronic medical
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`records.
`
`18.
`
`I am the co-founder of a medical technology company called
`
`StratoScientific. StratoScientific is developing an innovative case for a smartphone
`
`that turns a standard handheld smartphone into a full featured digital stethoscope
`
`that incorporates visualization and machine learning that can be utilized for
`
`telemedicine and automated diagnosis.
`
`19.
`
`In 2012-13, I designed and developed a large software project for
`
`Disney World called xVR that allowed the operational employees of Disney World
`
`to utilize a handheld device to view the current and historical status of all of the
`
`guests of Disney World within multiple attractions as well as within one of their
`
`restaurants. The application could run in a real-time/live mode where it would
`
`display data collected from sensors that showed the location and status of all guests
`
`within the attraction; the application could also be run in a fast-time/simulated
`
`mode. The application was developed on a laptop computer and was specifically
`
`designed to run on a variety of devices, including laptops, PCs, smartphones, and
`
`tablets.
`
`20.
`
`I have received several awards for my engineering work relating to
`
`interface design, computer graphics, and the design of spatial, stereographic, and
`
`auditory displays, including a $10,000 scholarship from the I/ITSEC for advancing
`
`
`
`EX2013
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`the field of interactive computer graphics for flight simulation and a Link
`
`Foundation award for furthering the field of flight simulation and virtual interface
`
`design. I have also created graphics for several popular book covers as well as
`
`animations for a movie produced by MIRAMAR.
`
`III. TESTIFYING EXPERIENCE
`
` Foursquare Labs v. Silver State Intellectual Technologies, IPR2014-
`00159
`
` Silver State Intellectual Technologies v. Garmin, District of Nevada,
`2:11-cv-01578-PMP-PAL
`
` Select Retrieval v. Overstock, District of Delaware, 1:11-cv-00812-RGA
`
` Location Labs v. LocatioNet, IPR2014-00199
`
` Intellectual Ventures v. Google, IPR2014-00787
`
` FTC v. Amazon, 2:14-cv-01038-JCC (Eastern District of Texas)
`
` Valmont v. Lindsay, IPR2015-01039
`
` Ford Class Action, 13-cv-3072-EMC (N.D. California.)
`
` BeUbiq v. Curtis Consulting Group, 1-14-cv-270691 (S.D.N.Y.)
`
` Edulog v. DML, DV-06-1072 (Montana Fourth Judicial Court, Missoula)
`
` GEMSA v. Alibaba, 6:16-cv-00098 (M.D. Florida)
`
` Level One Technologies v. Penske Truck Leasing, 4:14-cv-1305-RWS
`(E.D. Missouri)
`
` Title Source v. HouseCanary, 016-CI-06300 (Texas Dist. (state court),
`Bexar Co.)
`
` Sony v. Arris, Pace, 337-TA-1049 (International Trade Commission
`case)
`
`
`
`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
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` Tatsoft v. InduSoft, D-1-GN-14-001853 (Texas state court case)
`
` Courthouse News Service v. Yamasaki, 8:17-cv-00126 AG (KESx) (C.D.
`Cal.)
`
` Princeton Digital Image Corp. v. Konami, 12-1461-LPS-CJB (D. Del)
`
` FCA US LLC Monostable Electronic Gearshift Litigation, 16-md-02744
`(E.D. Michigan)
`
` Barbaro Technologies, LLC. v. Niantic, Inc., 3:18-cv-02955-RS (N.D.
`California)
`
` Blackberry Limited. v. Facebook, Inc., 2:18-cv-01844 (C.D. California)
`
` Blackberry Limited. v. Snap, Inc., 2:18-cv-02693 (C.D. California)
`
` Saracen LLC v. Marginal Unit, Inc., 4:18-cv-3714 (S.D. Texas)
`
` Fidelity Information Services, LLC v. Groove Digital, Inc., IPR2019-
`00050
`
` U.S. Oil & Refining Co., v. City of Tacoma, 18-2-07232-3 (Superior
`Court of Washington)
`
` X One v. Uber, 5:16-CV-06050-LHK (N.D. California, San Jose Div.)
`
` Kipu Systems, LLC v. ZenCharts, LLC, 1:17-cv-24733-KMW-EGT (S.D.
`Florida)
`
` Maxell, LTD., v. Apple Inc., 5:19-cv-0036-RWS (E.D. Texas)
`
` Aatrix Software, Inc. v. Green Shades Software, Inc., 3:15-cv-00164-J-
`lOMCR (M.D. Florida)
`
` Universal Electronics Inc. v. Roku, Inc., 337-TA-1200 (I.T.C)
`
` Opal Labs, Inc., v. Sprinklr, Inc., 3:18-cv-01192-HZ (Dist. of Oregon,
`Portland Div.)
`
` ExactLogix, Inc. d/b/a AccuLynx.com, v. JobProgress, LLC., 3:18-cv-
`50213 (Northern Dist. of Illinois, Western Div.)
`
`
`
`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`IV.
`
`INFORMATION CONSIDERED
`
`21.
`
`In preparing this declaration, I have considered the materials
`
`discussed in this declaration, including, for example, the ‘993 Patent, the
`
`references cited by the ‘993 Patent, the prosecution histories of the ‘993 Patent and
`
`applications derived therefrom (including the references cited therein), various
`
`background articles and materials referenced in this declaration, the Petition for
`
`Inter Partes Review, the Declaration of Benjamin B. Bederson, Ph.D., and the
`
`exhibits identified in this declaration. And my opinions are further based on my
`
`education, training, experience, and knowledge in the relevant field.
`
`22.
`
`In addition, I have considered the exhibits filed concurrently with my
`
`declaration in support of Patent Owner’s Preliminary Response, as well as the
`
`exhibits filed concurrently with this declaration in support of Patent Owner’s
`
`Response.
`
`V. RELEVANT LEGAL STANDARDS
`
`23.
`
`I am not an attorney and offer no legal opinions. For the purposes of
`
`this Declaration, I have been informed about certain aspects of the law that are
`
`relevant to my analysis, as summarized below.
`
`A. Claim Interpretation
`
`24.
`
`I have been informed and understand that in an IPR proceeding,
`
`claims are to be interpreted according to the Phillips claim construction
`
`
`
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`Declaration of Craig Rosenberg, Ph.D.
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`methodology, which, generally speaking, requires that claims be given their
`
`ordinary and customary meaning to a person of ordinary skill in the art at the time
`
`of the invention, by considering the claims, the specification and the prosecution
`
`history, as well as evidence extrinsic to the patent. Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005). I have been informed and understand that claim
`
`construction is a matter of law and that the final claim constructions for this
`
`proceeding will be determined by the Patent Trial and Appeal Board (“PTAB”).
`
`B.
`
`Perspective of one of Ordinary Skill in the Art
`
`25.
`
`I have been informed and understand that a patent is to be understood
`
`from the perspective of a hypothetical “person of ordinary skill in the art”
`
`(“POSA”). Such an individual is considered to possess normal skills and
`
`knowledge in a particular technical field (as opposed to being a genius). I
`
`understand that in considering what the claims of a patent require, what was known
`
`prior to that patent (prior art), what a prior art reference discloses, and whether an
`
`invention is obvious or not, one must use the perspective of such a POSA.
`
`C. Anticipation
`
`26.
`
`I have been informed and understand that a patent claim is anticipated
`
`under 35 U.S.C. § 102, and is therefore invalid, if all of the elements of the claim
`
`are disclosed by a single prior art reference I understand that a claim is
`
`anticipated if each and every element as set forth in the claim is found, either
`
`
`
`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`expressly or inherently, in a single prior art reference. For example, I understand
`
`that a claim limitation is inherently disclosed if it is not explicitly present in the
`
`written description of the prior art, but would necessarily be embodied or met by
`
`an apparatus or method as taught by the prior art. Moreover, I understand that
`
`anticipation does not require that the prior art use the same terminology recited
`
`within the patent claims.
`
`D.
`
`Obviousness
`
`27.
`
`I have been informed and understand that a patent claim is obvious
`
`under 35 U.S.C. § 103, and is therefore invalid, if the claimed subject matter, as a
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`whole, would have been obvious to a POSA as of the date of the invention claimed
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`in the patent based on one or more prior art references and/or the knowledge of a
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`POSA.
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`28.
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`I understand that an obviousness analysis must consider (1) the scope
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`and content of the prior art, (2) the differences between the claims and the prior art,
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`(3) the level of ordinary skill in the pertinent art, and (4) secondary considerations,
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`if any, of non-obviousness (such as unexpected results, commercial success, long
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`felt but unmet need, failure of others, copying by others, and skepticism of experts.
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`29.
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`I understand that a prior art reference may be combined with other
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`references to disclose each element of the invention under 35 U.S.C. § 103. I
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`understand that a reference may also be combined with the knowledge of a POSA,
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`
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`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`and that this knowledge may be used to combine multiple references. I further
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`understand that a POSA is presumed to know the relevant prior art. I understand
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`that the obviousness analysis may take into account the inferences and creative
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`steps that a POSA would employ.
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`30.
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`In determining whether a prior art reference would have been
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`combined with other prior art or other information known to a POSA, I understand
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`that the following principles may be considered:
`
`a.
`
`b.
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`c.
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`d.
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`e.
`
`f.
`
`g.
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`h.
`
`i.
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`whether the references to be combined involve non-analogous art;
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`whether the references to be combined are in different fields of
`endeavor than the alleged invention in the Patent;
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`whether the references to be combined are reasonably pertinent to the
`problems to which the inventions of the Patent are directed;
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`whether a POSA would have been motivated to combine the specified
`references, and would have had a reasonable expectation of success in
`doing so;
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`whether a reference “teaches away” from a particular combination or
`solution;
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`whether the combination requires modifications that render the prior
`art unsatisfactory for its intended use;
`
`whether the combination requires modifications that change the
`principle of operation of the reference;
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`whether the combination is of familiar elements according to known
`methods that yields predictable results;
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`whether a combination involves the substitution of one known
`element for another that yields predictable results;
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`
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`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`j.
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`k.
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`whether the combination involves the use of a known technique to
`improve similar items or methods in the same way that yields
`predictable results;
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`whether the combination involves the application of a known
`technique to a prior art reference that is ready for improvement, to
`yield predictable results;
`
`l.
`
`whether the combination is “obvious to try;”
`
`m. whether the combination involves the known work in one field of
`endeavor prompting variations of it for use in either the same field or
`a different one based on design incentives or other market forces,
`where the variations are predictable to a POSA;
`
`n.
`
`o.
`
`p.
`
`whether there is some teaching, suggestion, or motivation in the prior
`art that would have led one of ordinary skill in the art to modify the
`prior art reference or to combine prior art reference teachings to arrive
`at the claimed invention;
`
`whether the combination is reasonably expected to be a success; and
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`whether the combination possesses the requisite degree of
`predictability at the time the invention was made.
`
`31.
`
`I understand that in determining whether a combination of prior art
`
`references renders a claim obvious, it is helpful to consider whether there is some
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`teaching, suggestion, or motivation to combine the references and a reasonable
`
`expectation of success in doing so. I understand, however, that a teaching,
`
`suggestion, or motivation to combine is not required.
`
`E.
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`Summary of my Opinions
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`32.
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`I have been asked to consider whether the claims of the ‘993 Patent
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`identified in the Petition are unpatentable for the reasons asserted in the Petition
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`
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`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`and in Dr. Bederson’s declaration. As explained below in detail in this declaration,
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`it is my opinion that none of the claims of the ‘993 Patent identified in the Petition
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`and in Dr. Bederson’s declaration are unpatentable for the reasons asserted therein.
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`VI. THE ‘993 PATENT
`
`A. Priority Date.
`
`33.
`
`I assume that the priority date for the invention claimed in the ‘993
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`Patent is December 10, 2002. Accordingly, when I reference the knowledge of a
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`POSA, or how a POSA would understand various disclosures, I do so as of
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`December 10, 2002. If the priority date of the ‘993 Patent were to be determined
`
`to be an earlier date in 2002, or in 2000 or 2001, my opinions expressed herein
`
`would not change.
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`B. Level of Skill Ordinary in the Art.
`
`34. Dr. Bederson contends that “A POSA for the ’993 Patent during the
`
`relevant time period would have had at least a bachelor’s degree in computer
`
`science, computer engineering, or the equivalent education and at least two years
`
`of experience in user-interface design and development. Additional years of
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`experience could substitute for formal education, and vice versa.” For the purpose
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`of this declaration, I will apply the same definition of the level of skill of a POSA.
`
`35. Based on my experience, education, and training, I met the definition
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`of a POSA in December 2002, the time of filing of the application that issued as
`
`
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`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`the ’993 Patent, and I meet this definition today. I also had greater knowledge and
`
`experience than a POSA. I worked with POSAs in 2002, and I am able to render
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`opinions from the perspective of a POSA based on my knowledge and experience.
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`My opinions concerning the ’993 Patent claims and the prior art are from the
`
`perspective of a POSA, as set forth above.
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`VII. CLAIM CONSTRUCTION
`
`36.
`
`I interpret the claims of the ’993 Patent according to the Phillips claim
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`construction methodology. Phillips, 415 F.3d 1303. I have reviewed the
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`specification and file history of the ’993 Patent from the point of view of a POSA,
`
`which informs my understanding of the scope of the claims.
`
`A.
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`“An Electronic Device” (Claim 1, Preamble)
`
`37. A POSA reading claim 1 in light of the specification, and applying the
`
`knowledge of a POSA, would conclude that “an electronic device” as that term is
`
`used in the preamble of claim 1 means “a mobile handheld computer.”
`
`38. There are several reasons for this. I start with the language of claim 1.
`
`The preamble recites: “A non-transitory computer readable medium storing
`
`instructions, which, when executed by a processor of an electronic device having a
`
`touch-sensitive display screen, cause the processor to enable a user interface of the
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`device, . . . .” EX1001, 6:50-53. A POSA would understand from this language
`
`that the device of the claim must include a processor and a touch-sensitive display
`
`
`
`EX2013
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`Declaration of Craig Rosenberg, Ph.D.
`IPR2021-00145
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`screen, and that the processor of the device must execute the instructions stored on
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`the computer readable medium to enable a user interface presented on the touch-
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`sensitive display. A POSA would understand that the “electronic device” includes
`
`a housing or hard enclosure, within which at least the processor and touch-sensitive
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`display screen are disposed, because that is how devices with the recited structure
`
`and configuration were typically constructed in 2002. Such a structure would be
`
`understood by a POSA in 2002 to identify a mobile handheld computer, as there
`
`were few if any computer units with such structure known in the art in 2002 that
`
`were not handhelds.
`
`39. Next, I review the specification, and find that it confirms my
`
`conclusion as to how a POSA would understand the claim language. First, the
`
`specification repeatedly refers to the invention of the ‘993 Patent as relating to a
`
`handheld computer unit. For example, the Technical Field of “[t]he present
`
`invention relates to a user interface for a mobile handheld computer unit” and to
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`“an enclosure for a handheld computer unit….” EX1001, 1:14-15, 22-23. Th