`
`Theodore L. Brann
`In re Patent of:
`6,059,576 Attorney Docket No.: 50095-0041IP1
`U.S. Patent No.:
`May 9, 2000
`Issue Date:
`Appl. Serial No.: 08/976,228
`Filing Date:
`November 21, 1997
`Title:
`TRAINING AND SAFETY DEVICE, SYSTEM AND
`METHOD TO AID IN PROPOER MOVEMENT DURING
`PHYSICAL ACTIVITY
`
`DECLARATION OF DR. KENNY
`
`I declare that all statements made herein on my own knowledge are true and
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`that all statements made on information and belief are believed to be true, and
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`further, that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
`
`By: __________________________
`Thomas W. Kenny, Ph.D.
`
` October 7, 2021
`Date: _________________________
`
`APPLE 1100
`
`1
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`
`
`TABLE OF CONTENTS
`
`
`I. QUALIFICATIONS AND BACKGROUND INFORMATION ...................... 4
`II. OVERVIEW OF CONCLUSIONS FORMED ............................................... 11
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 13
`IV. LEGAL STANDARDS ................................................................................... 14
`A. Terminology ................................................................................................ 14
`B. Legal Standards ........................................................................................... 14
` Anticipation ............................................................................................ 15
` Obviousness ........................................................................................... 15
`V. THE ’576 PATENT ......................................................................................... 20
`A. Overview of the ’576 Patent ....................................................................... 20
`B. Prosecution History of the ’576 Patent ....................................................... 22
`C. Claim Construction ..................................................................................... 24
` “a movement sensor” (claim 1 and claims depending therefrom)......... 24
`VI. MANNER IN WHICH THE PRIOR ART REFERENCES RENDER THE
`’576 CLAIMS UNPATENTABLE ......................................................................... 25
`A. GROUND 1—Claims 1, 3-5, 8, 10, 20, 25, 30, 39, 41, 42, and 61-65 are
`Obvious based on Ono in view of Hutchings ............................................. 25
` Overview of Ono .................................................................................... 25
` Overview of Hutchings .......................................................................... 30
` Ono-Hutchings Combination ................................................................. 34
` Analysis of Claims 1, 3-5, 8, 10, 30, 39, 41, 42, and 61-65 .................. 38
` Analysis of Claims 20 and 25 ..............................................................102
`B. GROUND 2—Claims 1, 3-5, 8-11, 20, 25, 30, 36, 39-42, and 61-65 are
`Obvious based on Ono in view of Hutchings and Amano ........................107
` Overview of Amano .............................................................................107
` Ono-Hutchings-Amano Combination ..................................................109
` Analysis of the Claims .........................................................................112
`C. GROUND 3A—Claims 1-5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45-47, 49,
`and 61-65 are Obvious based on Ono in view of Hutchings and Conlan .117
` Overview of Conlan .............................................................................117
`
`2
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`
`
` Ono-Hutchings-Conlan Combination ..................................................120
` Analysis of the Claims .........................................................................126
`D. GROUND 3B—Claims 48, 50, and 51 are Obvious based on Ono in view
`of Hutchings, Conlan, and Hickman .........................................................134
` Overview of Hickman ..........................................................................134
` Ono-Hutchings-Conlan-Hickman Combination ..................................135
` Analysis of the Claims .........................................................................137
`E. GROUND 4—Claims 1, 3-5, 8, 10, 20, 25, 30, 39, 41, 42, 61-65, 144, and
`147 are Obvious based on Ono in view of Hutchings and Kaufman ........139
` Overview of Kaufman ..........................................................................139
` Ono-Hutchings-Kaufman Combination ...............................................141
` Analysis of the Claims .........................................................................144
`F. GROUND 5A—Claims 1-5, 8-11, 20, 25, 30-32, 36, 39-42, 45-47, 49, 61-
`65, 144, and 147 are Obvious based on Ono in view of Hutchings, Amano,
`Conlan, and Kaufman ...............................................................................150
`G. GROUND 5B—Claims 48, 50, and 51 are Obvious based on Ono in view
`of Hutchings, Amano, Conlan, Kaufman, and Hickman ..........................155
`H. GROUND 6A—Claims 1-5, 8-11, 20, 25, 30, 31, 36, 39-42, 45-47, 49, and
`61-65 are Obvious based on Ono in view of Hutchings, Amano, and
`Conlan .......................................................................................................155
`I. GROUND 6B—Claims 48, 50, and 51 are Obvious based on Ono in view
`of Hutchings, Amano, Conlan, and Hickman ...........................................155
`J. GROUND 7—Claims 1, 3-5, 8-11, 20, 25, 30, 36, 39-42, 61-65, 144, and
`147 are Obvious based on Ono in view of Hutchings, Amano, and
`Kaufman ....................................................................................................155
`K. GROUND 8A—Claims 1-5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45-47, 49,
`61-65, 144, and 147 are Obvious based on Ono in view of Hutchings,
`Conlan, and Kaufman ...............................................................................155
`L. GROUND 8B—Claims 48, 50, and 51 are Obvious based on Ono in view
`of Hutchings, Conlan, Kaufman, and Hickman ........................................155
`VII. CONCLUSION ..............................................................................................155
`
`
`3
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`
`
`I.
`QUALIFICATIONS AND BACKGROUND INFORMATION
`1. My education and experience are described more fully in the attached
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`curriculum vitae (APPENDIX A). For ease of reference, I have highlighted certain
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`information below.
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`2. My academic and professional background is in Physics, Mechanical
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`Engineering, Sensing, and Robotics, with a research specialization focused on
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`micro-fabricated physical sensors, and I have been working in those fields since
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`the completion of my Ph.D. more than 30 years ago. The details of my background
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`and education and a listing of all publications I have authored in the past 35 years
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`are provided in my curriculum vitae. Below I provide a short summary of my
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`education and experience, which I believe to be most pertinent to the opinions that
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`I express here.
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`3.
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`I received a B.S. in Physics from University of Minnesota, Minneapolis in
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`1983, and a Ph.D. in Physics from University of California at Berkeley in 1989. I
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`was educated as a Physicist specializing in sensors and measurement. My Physics
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`Ph.D. thesis involved measurements of the heat capacity of monolayers of atoms
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`on surfaces, and relied on precision measurements of temperature and power using
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`time-varying electrical signals, and also on the design and construction of
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`miniature sensor components and associated electrical circuits for conditioning and
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`conversion to digital format.
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`4
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`
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`4.
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`After completion of my Ph.D. in Physics at U.C. Berkeley in 1989, I joined
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`the Jet Propulsion Laboratory (JPL) in Pasadena, CA, as a staff scientist, and began
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`working on miniature sensors and instruments for small spacecraft. This work
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`involved the use of silicon microfabrication technologies for miniaturization of the
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`sensors, and served as my introduction to the field of micro-electromechanical
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`systems (MEMS), or the study of very small mechanical sensors powered by
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`electricity and used for detection of physical and chemical signals.
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`5. While at JPL, we developed accelerometers, gyroscopes, uncooled infrared
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`sensors, magnetometers, seismometers, force and displacement sensors, soil
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`chemistry sensors, miniature structures for trapping interstellar dust, and many
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`other miniature devices. Some of these projects led to devices that were launched
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`with spacecraft headed for Mars and for other interplanetary missions. Much of
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`this work involved the use of physical sensors for detection of small forces and
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`displacements using micromechanical sensors.
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`6.
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`I am presently the Richard Weiland Professor at the Department of
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`Mechanical Engineering at Stanford University, where I have taught for the past 27
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`years. I am also on leave from my position as Senior Associate Dean of
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`Engineering for Student Affairs at Stanford. I am currently on partial leave from
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`this position to serve as CEO of Applaud Medical, a startup company that I co-
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`founded which is focused on developing new treatments for Kidney Stones.
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`5
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`
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`7.
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`For 27 years, I have taught courses on Sensors and Mechatronics at Stanford
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`University. The “Introduction to Sensors” course is a broad overview of all sensing
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`technologies, from thermometers, to inertial sensors, ultrasound devices, flow
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`sensors, optical and IR sensors, chemical sensors, pressure sensors, and many
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`others, and has included sensors based on changes in capacitance, resistance,
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`piezoelectricity. This course specifically included different mechanisms for sensing
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`heart rate, blood pressure, blood chemistry, cardiovascular blood flow and pressure
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`drops, intraocular pressure and other physiological measurements, as well as
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`activity monitoring (step counting, stair-counting, etc.) I first taught this course at
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`Stanford in the Spring of 1994, and I offered this course at least annually until
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`2016, when my duties as Senior Associate Dean made this impractical.
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`8.
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`The “Introduction to Mechatronics” course is a review of the mechanical,
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`electrical and computing technologies necessary to build systems with these
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`contents, which include everything from cars and robots to cellphones and other
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`consumer electronics devices. In this class, we routinely use IR, LEDs, and
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`photosensors as a way of detecting proximity to objects in the space around
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`miniature robots. We also use inertial sensors to detect movement, and a number of
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`sensors, such as encoders to measure changes in position and trajectory.
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`Accelerometers and gyroscopes are used in this course for helping with navigation
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`of autonomous robots in the class project. I was one of the instructors for the first
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`6
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`
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`offering of this course in 1995, and this course has been offered at least once each
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`year ever since (except in 2021, when the pandemic made this impractical), with
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`plans already underway for the Winter 2022 offering.
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`9.
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`I am co-author of a textbook titled “Introduction to Mechatronic Design,”
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`which broadly covers the topic of integration of mechanical, electronic and
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`computer systems design into “smart products.” This textbook includes chapters
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`on Microprocessors, Programming Languages, Software Design, Electronics,
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`Sensors, Signal Conditioning, and Motors, as well as topics such as Project
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`Management, Troubleshooting, and Synthesis.
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`10. My research group has focused on the area of microsensors and
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`microfabrication—a domain in which we design and build micromechanical
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`sensors using silicon microfabrication technologies. The various applications for
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`these technologies are numerous. Much of this work has focused on the design,
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`fabrication and characterization of inertial sensors, such as accelerometers and
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`gyroscopes.
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`11.
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`I have advised 74 Ph.D. students that have completed Ph.D. degrees and
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`many more M.S. and B.S. students in Engineering during my time at Stanford.
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`12.
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`I have published over 250 technical papers in refereed journals and
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`conferences in the field of sensors, MEMS, and measurements. I have further
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`presented numerous conference abstracts, posters, and talks in my field. I am a
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`7
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`
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`named inventor on more than 50 patents in my areas of work. Through my
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`research and teaching in the area of Sensors and Measurement, I was directly
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`involved in or well-aware of developments in the micromechanical sensing
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`community, such as the research and development efforts on miniature inertial
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`sensors for automotive safety systems, such as the accelerometers developed for
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`crash detection and gyroscopes developed for skid detection and control. At the
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`time of the filing date of U.S. Patent No. 6,059,576, the emergence of miniature
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`inertial sensors was widely appreciated.
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`13.
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`I have previously served as an expert on a patent infringement case
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`involving the design and use of miniature inertial sensors for detection of
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`movement and free-fall. That case involved the design and operations of
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`micromechanical sensors, and particularly the use of inertial sensors for detection
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`of states of movement and rest. I have also served as an expert in a patent
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`infringement case involving the use of sensors on athletic shoes for determining
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`athletic performance. I served as an expert in a patent infringement case involving
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`optical proximity sensors in smartphones. More recently, I have served as an
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`expert witness in a case involving use of physiological sensors to diagnose a user’s
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`condition and possible interest in products or services. My CV, Appendix A,
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`includes a full listing of all cases in which I have testified at deposition or trial in
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`the preceding four years.
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`8
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`14.
`
`I have been retained on behalf of Apple Inc. to offer technical opinions
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`relating to U.S. Patent No. 6,059,576 (“the ’576 Patent”) and prior art references
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`relating to its subject matter. I have reviewed the ’576 Patent (APPLE-1001),
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`relevant excerpts of the prosecution history of the ’576 Patent (APPLE-1002), ex
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`parte reexamination certificate of the ’576 Patent (APPLE-1006), and relevant
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`excerpts of the prosecution history of the ex parte reexamination of the ’576 Patent
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`(APPLE-1007). I have also reviewed the following references:
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`
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`Prior Art Reference
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`U.S. Patent No. 5,778,882 (“Raymond” or APPLE-1009)
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`U.S. Patent No. 5,573,013 (“Conlan” or APPLE-1010)
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`U.S. Patent No. 5,803,740 (“Gesink” or APPLE-1014)
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`U.S. Patent No. 4,962,469 (“Ono” or APPLE-1101)
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`U.S. Patent No. 5,899,963 (“Hutchings” or APPLE-1102)
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`U.S. Patent No. 5,941,837 (“Amano” or APPLE-1103)
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`U.S. Patent No. 6,059,692 (“Hickman” or APPLE-1104)
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`U.S. Patent No. 5,857,939 (“Kaufman” or APPLE-1105)
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`U.S. Patent No. 5,808,903 (“Schiltz” or APPLE-1106)
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`U.S. Patent No. 5,976,083 (“Richardson” or APPLE-1107)
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`U.S. Patent No. 5,553,007 (“Brisson” or APPLE-1108)
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`9
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`
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`U.S. Patent No. 5,916,181 (“Socci” or APPLE-1109)
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`U.S. Patent No. 5,593,431 (“Sheldon” or APPLE-1110)
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`U.S. Patent No. 5,511,045 (“Sasaki” or APPLE-1111)
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`U.S. Patent No. 4,387,437 (“Lowrey” or APPLE-1112)
`
`Warwick, “Trends and Limits in the ‘Talk Time’ of Personal
`Communicators,” Proceedings of the IEEE, Vol. 83, No. 4 (April
`1995) (“Warwick” or APPLE-1113)
`
`
`15.
`
`I have also reviewed various supporting references and other documentation
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`as further noted in my opinions below.
`
`16. Counsel (Fish & Richardson) has informed me that I should consider these
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`materials through the lens of one of ordinary skill in the art related to the ’576
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`Patent at the time of the earliest possible priority date of the ’576 Patent, and I have
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`done so during my review of these materials. The ’576 Patent was filed on
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`November 21, 1997 (“the ’576 Patent Filing Date”). I have therefore used this
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`date in my analysis below.
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`17.
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`I have no financial interest in the outcome of this proceeding. I am being
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`compensated for my work as an expert on an hourly basis. My compensation is
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`not dependent on the outcome of these proceedings or the content of my opinions.
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`18.
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`In writing this declaration, I have considered the following: my own
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`knowledge and experience, including my work experience in the fields of
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`10
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`
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`mechanical engineering, computer science, biomedical engineering, and electrical
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`engineering; my experience in teaching those subjects; and my experience in
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`working with others involved in those fields. In addition, I have analyzed various
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`publications and materials, in addition to other materials I cite in my declaration.
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`19. My opinions, as explained below, are based on my education, experience,
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`and expertise in the fields relating to the ’576 Patent. Unless otherwise stated, my
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`testimony below refers to the knowledge of one of ordinary skill in the art as of the
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`’576 Patent Filing Date, or before. Any figures that appear within this document
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`have been prepared with the assistance of Counsel and reflect my understanding of
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`the ’576 Patent and the prior art discussed below.
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`II. OVERVIEW OF CONCLUSIONS FORMED
`20. This declaration explains the conclusions that I have formed based on my
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`analysis. To summarize those conclusions, based upon my knowledge and
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`experience and my review of the prior art references listed above, I believe that:
`
` Claims 1, 3-5, 8, 10, 20, 25, 30, 39, 41, 42, and 61-65 are Obvious
`
`based on Ono in view of Hutchings.
`
` Claims 1, 3-5, 8-11, 20, 25, 30, 36, 39-42, and 61-65 are Obvious
`
`based on Ono in view of Hutchings and Amano.
`
` Claims 1-5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45-47, 49, and 61-65 are
`
`Obvious based on Ono in view of Hutchings and Conlan.
`
`11
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`
`
` Claims 48, 50, and 51 are Obvious based on Ono in view of
`
`Hutchings, Conlan, and Hickman.
`
` Claims 1, 3-5, 8, 10, 20, 25, 30, 39, 41, 42, 61-65, 144, and 147 are
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`Obvious based on Ono in view of Hutchings and Kaufman.
`
` Claims 1-5, 8-11, 20, 25, 30-32, 36, 39-42, 45-47, 49, 61-65, 144, and
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`147 are Obvious based on Ono in view of Hutchings, Amano, Conlan,
`
`and Kaufman.
`
` Claims 48, 50, and 51 are Obvious based on Ono in view of
`
`Hutchings, Amano, Conlan, Kaufman, and Hickman.
`
` Claims 1-5, 8-11, 20, 25, 30, 31, 36, 39-42, 45-47, 49, and 61-65 are
`
`Obvious based on Ono in view of Hutchings, Amano, and Conlan.
`
` Claims 48, 50, and 51 are Obvious based on Ono in view of
`
`Hutchings, Amano, Conlan, and Hickman.
`
` Claims 1, 3-5, 8-11, 20, 25, 30, 36, 39-42, 61-65, 144, and 147 are
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`Obvious based on Ono in view of Hutchings, Amano, and Kaufman.
`
` Claims 1-5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45-47, 49, 61-65, 144,
`
`and 147 are Obvious based on Ono in view of Hutchings, Conlan, and
`
`Kaufman.
`
` Claims 48, 50, and 51 are Obvious based on Ono in view of
`
`Hutchings, Conlan, Kaufman, and Hickman.
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`12
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`
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`21.
`
`In support of these conclusions, I provide an overview of the references and
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`more detailed comments regarding the obviousness of claims 1-5, 8-11, 20, 25, 30-
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`32, 36, 39-42, 45-51, 61-65, 144, and 147 (“the Challenged Claims”) of the ’576
`
`Patent below.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`22.
`In my opinion, one of ordinary skill in the art relating to, and at the time of,
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`the invention of the ’576 Patent (POSITA) would have been someone with a
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`working knowledge of activity monitoring technologies. The person would have
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`had a Bachelor of Science degree in an academic discipline emphasizing the design
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`of electrical, computer, or software technologies, in combination with training or at
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`least one to two years of related work experience with capture and processing of
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`data or information, including but not limited to activity monitoring technologies.
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`Alternatively, the person could have also had a Master of Science degree in a
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`relevant academic discipline with less than a year of related work experience in the
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`same discipline.
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`23. Based on my experiences, I have a good understanding of the capabilities of
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`a POSITA. Indeed, I have taught, mentored, participated in organizations, and
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`worked closely with many such persons over the course of my career. Based on
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`my knowledge, skill, and experience, I have an understanding of the capabilities of
`
`a POSITA. For example, from my industry consulting or conference interactions, I
`
`13
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`
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`am familiar with what a POSITA would have known and found predictable in the
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`art. From teaching and supervising my post-graduate students, I also have an
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`understanding of the knowledge that a person with this academic experience
`
`possesses. Furthermore, I possess those capabilities myself.
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`IV. LEGAL STANDARDS
`A. Terminology
`I have been informed by Counsel and understand that the best indicator of
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`24.
`
`claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should
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`be given their plain meaning unless that meaning is inconsistent with the patent
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`specification or the patent’s history of examination before the Patent Office.
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`Counsel has also informed me, and I understand that, the words of the claims
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`should be interpreted as they would have been interpreted by one of ordinary skill
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`at the time of the invention was made (not today). I have been informed by
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`Counsel that I should use ’576 Patent Filing Date as the point in time for claim
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`interpretation purposes with respect to this declaration.
`
`B.
`Legal Standards
`I have been informed by Counsel and understand that documents and
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`25.
`
`materials that qualify as prior art can render a patent claim unpatentable as being
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`anticipated or obvious.
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`14
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`26.
`
`I am informed by Counsel and understand that all prior art references are to
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`be looked at from the viewpoint of a person of ordinary skill in the art at the time
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`of the invention, and that this viewpoint prevents one from using his or her own
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`insight or hindsight in deciding whether a claim is anticipated or rendered obvious.
`
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`Anticipation
`I understand that patents or printed publications that qualify as prior art can
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`27.
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`be used to invalidate a patent claim as anticipated or as obvious.
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`28.
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`I understand that, once the claims of a patent have been properly construed,
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`the second step in determining anticipation of a patent claim requires a comparison
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`of the properly construed claim language to the prior art on a limitation-by-
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`limitation basis.
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`29.
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`I understand that a prior art reference “anticipates” an asserted claim, and
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`thus renders the claim invalid, if all limitations of the claim are disclosed in that
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`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
` Obviousness
`I understand that even if a patent is not anticipated, it is still invalid if the
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`30.
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`differences between the claimed subject matter and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a POSITA.
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`15
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`31.
`
`I have been informed by Counsel and understand that a claim is unpatentable
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`for obviousness and that obviousness may be based upon a combination of prior art
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`references. I am informed by Counsel and understand that the combination of
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`familiar elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results. However, I am informed by Counsel and
`
`understand that a patent claim composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently, known in
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`the prior art.
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`32.
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`I am informed by Counsel and understand that when a patented invention is
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`a combination of known elements, a court determines whether there was an
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`apparent reason to combine the known elements in the fashion claimed by the
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`patent at issue by considering the teachings of prior art references, the effects of
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`demands known to people working in the field or present in the marketplace, and
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`the background knowledge possessed by a person having ordinary skill in the art.
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`33.
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`I am informed by Counsel and understand that a patent claim composed of
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`several limitations is not proved obvious merely by demonstrating that each of its
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`limitations was independently known in the prior art. I am informed by Counsel
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`and understand that identifying a reason those elements would be combined can be
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`important because inventions in many instances rely upon building blocks long
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`since uncovered, and claimed discoveries almost of necessity will be combinations
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`16
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`
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`of what, in some sense, is already known. I am informed by Counsel and
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`understand that it is improper to use hindsight in an obviousness analysis, and that
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`a patent’s claims should not be used as a “roadmap.”
`
`34.
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`I am informed by Counsel and understand that an obviousness inquiry
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`requires consideration of the following factors: (1) the scope and content of the
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`prior art, (2) the differences between the prior art and the claims, (3) the level of
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`ordinary skill in the art, and (4) any so called “secondary considerations” of non-
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`obviousness, which include: (i) “long felt need” for the claimed invention, (ii)
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`commercial success attributable to the claimed invention, (iii) unexpected results
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`of the claimed invention, and (iv) “copying” of the claimed invention by others.
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`35.
`
`I have been informed by Counsel and understand that an obviousness
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`evaluation can be based on a single reference or a combination of multiple prior art
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`references. I understand that the prior art references themselves may provide a
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`suggestion, motivation, or reason to combine, but that the nexus linking two or
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`more prior art references is sometimes simple common sense. I have been
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`informed by Counsel and understand that obviousness analysis recognizes that
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`market demand, rather than scientific literature, often drives innovation, and that a
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`motivation to combine references may be supplied by the direction of the
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`marketplace.
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`17
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`36.
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`I have been informed by Counsel and understand that if a technique has been
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`used to improve one device, and a person of ordinary skill at the time of invention
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`would have recognized that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is beyond his or her
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`skill.
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`37.
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`I have been informed by Counsel and understand that practical and common
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`sense considerations should guide a proper obviousness analysis, because familiar
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`items may have obvious uses beyond their primary purposes. I have been
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`informed by Counsel and understand that a person of ordinary skill looking to
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`overcome a problem will often be able to fit together the teachings of multiple
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`prior art references. I have been informed by Counsel and understand that
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`obviousness analysis therefore takes into account the inferences and creative steps
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`that a person of ordinary skill would have employed at the time of invention.
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`38.
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`I have been informed by Counsel and understand that a proper obviousness
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`analysis focuses on what was known or obvious to a person of ordinary skill at the
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`time of invention, not just the patentee. Accordingly, I understand that any need or
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`problem known in the field of endeavor at the time of invention and addressed by
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`the patent can provide a reason for combining the elements in the manner claimed.
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`39.
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`I have been informed by Counsel and understand that a claim can be obvious
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`in light of a single reference, without the need to combine references, if the
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`18
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`elements of the claim that are not found explicitly or inherently in the reference
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`can be supplied by the common sense of one of skill in the art.
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`40.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`41.
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`In sum, my understanding is that prior art teachings are properly combined
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`where one of ordinary skill having the understanding and knowledge reflected in
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`the prior art and motivated by the general problem facing the inventor, would have
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`been led to make the combination of elements recited in the claims. Under this
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`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of multiple prior art references in the claimed manner.
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`42.
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`I have been informed by Counsel and understand that in an inter partes
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`review (IPR), “the petitioner shall have the burden of proving a proposition of
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`unpatentability,” including a proposition of obviousness, “by a preponderance of
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`the evidence.” 35 U.S.C. § 316(e).
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`19
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`V. THE ’576 PATENT
`A. Overview of the ’576 Patent
`43. The ’576 Patent is directed to an “electronic device, system and method to
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`monitor and train an individual on proper motion during physical movement.”
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`APPLE-1001, Abstract. The ’576 Patent recognizes that “a variety of sensing,
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`monitoring, and notification devices” have been previously created “[i]n order to
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`study and better understand safe human movement.” Id., 1:18-21. Such known
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`devices could “quantitatively determine a range of motion of a human joint in
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`angular degrees” and “provide a warning to the wearer through an audible alarm or
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`flashing light . . . when a predetermined angle of flexion or extension has been
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`exceeded.” Id., 1:30-41. Accordingly, the ’576 Patent acknowledges that it was
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`previously well-known to determine whether human motion exceeds a threshold
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`and, if so, provide a notification.
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`44. The ’576 Patent’s specification describes a “self-contained movement
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`measuring device 12” with a “movement sensor 13.” APPLE-1001, 3:32-50. The
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`movement sensor 13 is illustrated as being both together with the other
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`components of the device (FIGS. 2A, 2B) and also as being “separate from the
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`remaining components 15 of the device 12” (FIG. 2C). Id. FIGS. 2B and 2C are
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`annotated below based on the description in the specification.
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`20
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`APPLE-1001 (’576 Patent), FIGS. 2B, 2C1
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`45. According to the specification, the movement sensor “detects movement and
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`measures associated data such as angle, speed, and distance” and, in particular,
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`measures “angular velocity of physical movement for subsequent interpretation.”
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`APPLE-1001, 4:38-45, 2:40-41. In various embodiments, the movement sensor
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`may be an “accelerometer which is capable of detecting angles of movement in
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`multiple planes” or “multiple accelerometers each capable of measuring angles of
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`movement in only one plane.” Id., 4:38-48.
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`1 I have annotated the figures throughout my declaration in color.
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`21
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`46. The ’576 Patent further explains that the “movement sensor 30 is
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`electronically connected to a microprocessor 32 which receives the signals
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`generated by the movement sensor 30 for analysis and subsequent processing.”
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`APPLE-1001, 4:52-55. Once the microprocessor has received and analyzed the
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`movement data, the microprocessor responds based on “user-programmable
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`configuration information” such as “an event threshold.” Id., 4:40-65, 5:67-6:9.
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`For example, the device may respond by using indicators (visual, audible, or
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`vibration-based) that are “activated to notify the wearer when a predetermined
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`angle of motion has been exceeded.” Id., 4:4-25.
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`47. According to the ’576 Patent, data collected by the movement measurement
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`device may be downloaded to a computer. APPLE-1001, 8:31-34. And, “[o]nce
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`the data from the device 12 has been downloaded to the computer 16, software
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`running on the computer 16 is used to interpret the data and produce a number of
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`reports and histories.” Id., 8:40-43.
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`48. As I show in the following sections, all of the above concepts were well-
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`known before the ’576 Patent.
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`B.
`Prosecution History of the ’576 Patent
`49. The ’576 Patent issued from U.S. App. No. 08/976,228. During prosecution,
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`the three independent claims were each amended to describe the measuring device
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`as a “portable, self-contained” device capable of