IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`By: __________________________
`Thomas W. Kenny, Ph.D.
`
` October 7, 2021
`Date: _________________________
`
`APPLE 1100
`
`1
`
`

`

`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
`
`

`

` 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
`
`

`

`I.
`QUALIFICATIONS AND BACKGROUND INFORMATION
`1. My education and experience are described more fully in the attached
`
`curriculum vitae (APPENDIX A). For ease of reference, I have highlighted certain
`
`information below.
`
`2. My academic and professional background is in Physics, Mechanical
`
`Engineering, Sensing, and Robotics, with a research specialization focused on
`
`micro-fabricated physical sensors, and I have been working in those fields since
`
`the completion of my Ph.D. more than 30 years ago. The details of my background
`
`and education and a listing of all publications I have authored in the past 35 years
`
`are provided in my curriculum vitae. Below I provide a short summary of my
`
`education and experience, which I believe to be most pertinent to the opinions that
`
`I express here.
`
`3.
`
`I received a B.S. in Physics from University of Minnesota, Minneapolis in
`
`1983, and a Ph.D. in Physics from University of California at Berkeley in 1989. I
`
`was educated as a Physicist specializing in sensors and measurement. My Physics
`
`Ph.D. thesis involved measurements of the heat capacity of monolayers of atoms
`
`on surfaces, and relied on precision measurements of temperature and power using
`
`time-varying electrical signals, and also on the design and construction of
`
`miniature sensor components and associated electrical circuits for conditioning and
`
`conversion to digital format.
`
`4
`
`

`

`4.
`
`After completion of my Ph.D. in Physics at U.C. Berkeley in 1989, I joined
`
`the Jet Propulsion Laboratory (JPL) in Pasadena, CA, as a staff scientist, and began
`
`working on miniature sensors and instruments for small spacecraft. This work
`
`involved the use of silicon microfabrication technologies for miniaturization of the
`
`sensors, and served as my introduction to the field of micro-electromechanical
`
`systems (MEMS), or the study of very small mechanical sensors powered by
`
`electricity and used for detection of physical and chemical signals.
`
`5. While at JPL, we developed accelerometers, gyroscopes, uncooled infrared
`
`sensors, magnetometers, seismometers, force and displacement sensors, soil
`
`chemistry sensors, miniature structures for trapping interstellar dust, and many
`
`other miniature devices. Some of these projects led to devices that were launched
`
`with spacecraft headed for Mars and for other interplanetary missions. Much of
`
`this work involved the use of physical sensors for detection of small forces and
`
`displacements using micromechanical sensors.
`
`6.
`
`I am presently the Richard Weiland Professor at the Department of
`
`Mechanical Engineering at Stanford University, where I have taught for the past 27
`
`years. I am also on leave from my position as Senior Associate Dean of
`
`Engineering for Student Affairs at Stanford. I am currently on partial leave from
`
`this position to serve as CEO of Applaud Medical, a startup company that I co-
`
`founded which is focused on developing new treatments for Kidney Stones.
`
`5
`
`

`

`7.
`
`For 27 years, I have taught courses on Sensors and Mechatronics at Stanford
`
`University. The “Introduction to Sensors” course is a broad overview of all sensing
`
`technologies, from thermometers, to inertial sensors, ultrasound devices, flow
`
`sensors, optical and IR sensors, chemical sensors, pressure sensors, and many
`
`others, and has included sensors based on changes in capacitance, resistance,
`
`piezoelectricity. This course specifically included different mechanisms for sensing
`
`heart rate, blood pressure, blood chemistry, cardiovascular blood flow and pressure
`
`drops, intraocular pressure and other physiological measurements, as well as
`
`activity monitoring (step counting, stair-counting, etc.) I first taught this course at
`
`Stanford in the Spring of 1994, and I offered this course at least annually until
`
`2016, when my duties as Senior Associate Dean made this impractical.
`
`8.
`
`The “Introduction to Mechatronics” course is a review of the mechanical,
`
`electrical and computing technologies necessary to build systems with these
`
`contents, which include everything from cars and robots to cellphones and other
`
`consumer electronics devices. In this class, we routinely use IR, LEDs, and
`
`photosensors as a way of detecting proximity to objects in the space around
`
`miniature robots. We also use inertial sensors to detect movement, and a number of
`
`sensors, such as encoders to measure changes in position and trajectory.
`
`Accelerometers and gyroscopes are used in this course for helping with navigation
`
`of autonomous robots in the class project. I was one of the instructors for the first
`
`6
`
`

`

`offering of this course in 1995, and this course has been offered at least once each
`
`year ever since (except in 2021, when the pandemic made this impractical), with
`
`plans already underway for the Winter 2022 offering.
`
`9.
`
`I am co-author of a textbook titled “Introduction to Mechatronic Design,”
`
`which broadly covers the topic of integration of mechanical, electronic and
`
`computer systems design into “smart products.” This textbook includes chapters
`
`on Microprocessors, Programming Languages, Software Design, Electronics,
`
`Sensors, Signal Conditioning, and Motors, as well as topics such as Project
`
`Management, Troubleshooting, and Synthesis.
`
`10. My research group has focused on the area of microsensors and
`
`microfabrication—a domain in which we design and build micromechanical
`
`sensors using silicon microfabrication technologies. The various applications for
`
`these technologies are numerous. Much of this work has focused on the design,
`
`fabrication and characterization of inertial sensors, such as accelerometers and
`
`gyroscopes.
`
`11.
`
`I have advised 74 Ph.D. students that have completed Ph.D. degrees and
`
`many more M.S. and B.S. students in Engineering during my time at Stanford.
`
`12.
`
`I have published over 250 technical papers in refereed journals and
`
`conferences in the field of sensors, MEMS, and measurements. I have further
`
`presented numerous conference abstracts, posters, and talks in my field. I am a
`
`7
`
`

`

`named inventor on more than 50 patents in my areas of work. Through my
`
`research and teaching in the area of Sensors and Measurement, I was directly
`
`involved in or well-aware of developments in the micromechanical sensing
`
`community, such as the research and development efforts on miniature inertial
`
`sensors for automotive safety systems, such as the accelerometers developed for
`
`crash detection and gyroscopes developed for skid detection and control. At the
`
`time of the filing date of U.S. Patent No. 6,059,576, the emergence of miniature
`
`inertial sensors was widely appreciated.
`
`13.
`
`I have previously served as an expert on a patent infringement case
`
`involving the design and use of miniature inertial sensors for detection of
`
`movement and free-fall. That case involved the design and operations of
`
`micromechanical sensors, and particularly the use of inertial sensors for detection
`
`of states of movement and rest. I have also served as an expert in a patent
`
`infringement case involving the use of sensors on athletic shoes for determining
`
`athletic performance. I served as an expert in a patent infringement case involving
`
`optical proximity sensors in smartphones. More recently, I have served as an
`
`expert witness in a case involving use of physiological sensors to diagnose a user’s
`
`condition and possible interest in products or services. My CV, Appendix A,
`
`includes a full listing of all cases in which I have testified at deposition or trial in
`
`the preceding four years.
`
`8
`
`

`

`14.
`
`I have been retained on behalf of Apple Inc. to offer technical opinions
`
`relating to U.S. Patent No. 6,059,576 (“the ’576 Patent”) and prior art references
`
`relating to its subject matter. I have reviewed the ’576 Patent (APPLE-1001),
`
`relevant excerpts of the prosecution history of the ’576 Patent (APPLE-1002), ex
`
`parte reexamination certificate of the ’576 Patent (APPLE-1006), and relevant
`
`excerpts of the prosecution history of the ex parte reexamination of the ’576 Patent
`
`(APPLE-1007). I have also reviewed the following references:
`
`
`
`Prior Art Reference
`
`U.S. Patent No. 5,778,882 (“Raymond” or APPLE-1009)
`
`U.S. Patent No. 5,573,013 (“Conlan” or APPLE-1010)
`
`U.S. Patent No. 5,803,740 (“Gesink” or APPLE-1014)
`
`U.S. Patent No. 4,962,469 (“Ono” or APPLE-1101)
`
`U.S. Patent No. 5,899,963 (“Hutchings” or APPLE-1102)
`
`U.S. Patent No. 5,941,837 (“Amano” or APPLE-1103)
`
`U.S. Patent No. 6,059,692 (“Hickman” or APPLE-1104)
`
`U.S. Patent No. 5,857,939 (“Kaufman” or APPLE-1105)
`
`U.S. Patent No. 5,808,903 (“Schiltz” or APPLE-1106)
`
`U.S. Patent No. 5,976,083 (“Richardson” or APPLE-1107)
`
`U.S. Patent No. 5,553,007 (“Brisson” or APPLE-1108)
`
`9
`
`

`

`U.S. Patent No. 5,916,181 (“Socci” or APPLE-1109)
`
`U.S. Patent No. 5,593,431 (“Sheldon” or APPLE-1110)
`
`U.S. Patent No. 5,511,045 (“Sasaki” or APPLE-1111)
`
`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
`
`as further noted in my opinions below.
`
`16. Counsel (Fish & Richardson) has informed me that I should consider these
`
`materials through the lens of one of ordinary skill in the art related to the ’576
`
`Patent at the time of the earliest possible priority date of the ’576 Patent, and I have
`
`done so during my review of these materials. The ’576 Patent was filed on
`
`November 21, 1997 (“the ’576 Patent Filing Date”). I have therefore used this
`
`date in my analysis below.
`
`17.
`
`I have no financial interest in the outcome of this proceeding. I am being
`
`compensated for my work as an expert on an hourly basis. My compensation is
`
`not dependent on the outcome of these proceedings or the content of my opinions.
`
`18.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of
`
`10
`
`

`

`mechanical engineering, computer science, biomedical engineering, and electrical
`
`engineering; my experience in teaching those subjects; and my experience in
`
`working with others involved in those fields. In addition, I have analyzed various
`
`publications and materials, in addition to other materials I cite in my declaration.
`
`19. My opinions, as explained below, are based on my education, experience,
`
`and expertise in the fields relating to the ’576 Patent. Unless otherwise stated, my
`
`testimony below refers to the knowledge of one of ordinary skill in the art as of the
`
`’576 Patent Filing Date, or before. Any figures that appear within this document
`
`have been prepared with the assistance of Counsel and reflect my understanding of
`
`the ’576 Patent and the prior art discussed below.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`20. This declaration explains the conclusions that I have formed based on my
`
`analysis. To summarize those conclusions, based upon my knowledge and
`
`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
`
`

`

` 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
`
`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
`
`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
`
`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.
`
`12
`
`

`

`21.
`
`In support of these conclusions, I provide an overview of the references and
`
`more detailed comments regarding the obviousness of claims 1-5, 8-11, 20, 25, 30-
`
`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,
`
`the invention of the ’576 Patent (POSITA) would have been someone with a
`
`working knowledge of activity monitoring technologies. The person would have
`
`had a Bachelor of Science degree in an academic discipline emphasizing the design
`
`of electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to activity monitoring technologies.
`
`Alternatively, the person could have also had a Master of Science degree in a
`
`relevant academic discipline with less than a year of related work experience in the
`
`same discipline.
`
`23. Based on my experiences, I have a good understanding of the capabilities of
`
`a POSITA. Indeed, I have taught, mentored, participated in organizations, and
`
`worked closely with many such persons over the course of my career. Based on
`
`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
`
`

`

`am familiar with what a POSITA would have known and found predictable in the
`
`art. From teaching and supervising my post-graduate students, I also have an
`
`understanding of the knowledge that a person with this academic experience
`
`possesses. Furthermore, I possess those capabilities myself.
`
`IV. LEGAL STANDARDS
`A. Terminology
`I have been informed by Counsel and understand that the best indicator of
`
`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
`
`be given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). I have been informed by
`
`Counsel that I should use ’576 Patent Filing Date as the point in time for claim
`
`interpretation purposes with respect to this declaration.
`
`B.
`Legal Standards
`I have been informed by Counsel and understand that documents and
`
`25.
`
`materials that qualify as prior art can render a patent claim unpatentable as being
`
`anticipated or obvious.
`
`14
`
`

`

`26.
`
`I am informed by Counsel and understand that all prior art references are to
`
`be looked at from the viewpoint of a person of ordinary skill in the art at the time
`
`of the invention, and that this viewpoint prevents one from using his or her own
`
`insight or hindsight in deciding whether a claim is anticipated or rendered obvious.
`
`
`Anticipation
`I understand that patents or printed publications that qualify as prior art can
`
`27.
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`28.
`
`I understand that, once the claims of a patent have been properly construed,
`
`the second step in determining anticipation of a patent claim requires a comparison
`
`of the properly construed claim language to the prior art on a limitation-by-
`
`limitation basis.
`
`29.
`
`I understand that a prior art reference “anticipates” an asserted claim, and
`
`thus renders the claim invalid, if all limitations of the claim are disclosed in that
`
`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
`
`30.
`
`differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a POSITA.
`
`15
`
`

`

`31.
`
`I have been informed by Counsel and understand that a claim is unpatentable
`
`for obviousness and that obviousness may be based upon a combination of prior art
`
`references. I am informed by Counsel and understand that the combination of
`
`familiar elements according to known methods is likely to be obvious when it does
`
`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
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art.
`
`32.
`
`I am informed by Counsel and understand that when a patented invention is
`
`a combination of known elements, a court determines whether there was an
`
`apparent reason to combine the known elements in the fashion claimed by the
`
`patent at issue by considering the teachings of prior art references, the effects of
`
`demands known to people working in the field or present in the marketplace, and
`
`the background knowledge possessed by a person having ordinary skill in the art.
`
`33.
`
`I am informed by Counsel and understand that a patent claim composed of
`
`several limitations is not proved obvious merely by demonstrating that each of its
`
`limitations was independently known in the prior art. I am informed by Counsel
`
`and understand that identifying a reason those elements would be combined can be
`
`important because inventions in many instances rely upon building blocks long
`
`since uncovered, and claimed discoveries almost of necessity will be combinations
`
`16
`
`

`

`of what, in some sense, is already known. I am informed by Counsel and
`
`understand that it is improper to use hindsight in an obviousness analysis, and that
`
`a patent’s claims should not be used as a “roadmap.”
`
`34.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art, (2) the differences between the prior art and the claims, (3) the level of
`
`ordinary skill in the art, and (4) any so called “secondary considerations” of non-
`
`obviousness, which include: (i) “long felt need” for the claimed invention, (ii)
`
`commercial success attributable to the claimed invention, (iii) unexpected results
`
`of the claimed invention, and (iv) “copying” of the claimed invention by others.
`
`35.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a single reference or a combination of multiple prior art
`
`references. I understand that the prior art references themselves may provide a
`
`suggestion, motivation, or reason to combine, but that the nexus linking two or
`
`more prior art references is sometimes simple common sense. I have been
`
`informed by Counsel and understand that obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`17
`
`

`

`36.
`
`I have been informed by Counsel and understand that if a technique has been
`
`used to improve one device, and a person of ordinary skill at the time of invention
`
`would have recognized that it would improve similar devices in the same way,
`
`using the technique is obvious unless its actual application is beyond his or her
`
`skill.
`
`37.
`
`I have been informed by Counsel and understand that practical and common
`
`sense considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I have been
`
`informed by Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the teachings of multiple
`
`prior art references. I have been informed by Counsel and understand that
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill would have employed at the time of invention.
`
`38.
`
`I have been informed by Counsel and understand that a proper obviousness
`
`analysis focuses on what was known or obvious to a person of ordinary skill at the
`
`time of invention, not just the patentee. Accordingly, I understand that any need or
`
`problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.
`
`39.
`
`I have been informed by Counsel and understand that a claim can be obvious
`
`in light of a single reference, without the need to combine references, if the
`
`18
`
`

`

`elements of the claim that are not found explicitly or inherently in the reference
`
`can be supplied by the common sense of one of skill in the art.
`
`40.
`
`I have been informed by Counsel and understand that there must be a
`
`relationship between any such secondary considerations and the invention, and that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`41.
`
`In sum, my understanding is that prior art teachings are properly combined
`
`where one of ordinary skill having the understanding and knowledge reflected in
`
`the prior art and motivated by the general problem facing the inventor, would have
`
`been led to make the combination of elements recited in the claims. Under this
`
`analysis, the prior art references themselves, or any need or problem known in the
`
`field of endeavor at the time of the invention, can provide a reason for combining
`
`the elements of multiple prior art references in the claimed manner.
`
`42.
`
`I have been informed by Counsel and understand that in an inter partes
`
`review (IPR), “the petitioner shall have the burden of proving a proposition of
`
`unpatentability,” including a proposition of obviousness, “by a preponderance of
`
`the evidence.” 35 U.S.C. § 316(e).
`
`19
`
`

`

`V. THE ’576 PATENT
`A. Overview of the ’576 Patent
`43. The ’576 Patent is directed to an “electronic device, system and method to
`
`monitor and train an individual on proper motion during physical movement.”
`
`APPLE-1001, Abstract. The ’576 Patent recognizes that “a variety of sensing,
`
`monitoring, and notification devices” have been previously created “[i]n order to
`
`study and better understand safe human movement.” Id., 1:18-21. Such known
`
`devices could “quantitatively determine a range of motion of a human joint in
`
`angular degrees” and “provide a warning to the wearer through an audible alarm or
`
`flashing light . . . when a predetermined angle of flexion or extension has been
`
`exceeded.” Id., 1:30-41. Accordingly, the ’576 Patent acknowledges that it was
`
`previously well-known to determine whether human motion exceeds a threshold
`
`and, if so, provide a notification.
`
`44. The ’576 Patent’s specification describes a “self-contained movement
`
`measuring device 12” with a “movement sensor 13.” APPLE-1001, 3:32-50. The
`
`movement sensor 13 is illustrated as being both together with the other
`
`components of the device (FIGS. 2A, 2B) and also as being “separate from the
`
`remaining components 15 of the device 12” (FIG. 2C). Id. FIGS. 2B and 2C are
`
`annotated below based on the description in the specification.
`
`20
`
`

`

`APPLE-1001 (’576 Patent), FIGS. 2B, 2C1
`
`
`
`45. According to the specification, the movement sensor “detects movement and
`
`measures associated data such as angle, speed, and distance” and, in particular,
`
`measures “angular velocity of physical movement for subsequent interpretation.”
`
`APPLE-1001, 4:38-45, 2:40-41. In various embodiments, the movement sensor
`
`may be an “accelerometer which is capable of detecting angles of movement in
`
`multiple planes” or “multiple accelerometers each capable of measuring angles of
`
`movement in only one plane.” Id., 4:38-48.
`
`
`1 I have annotated the figures throughout my declaration in color.
`
`21
`
`

`

`46. The ’576 Patent further explains that the “movement sensor 30 is
`
`electronically connected to a microprocessor 32 which receives the signals
`
`generated by the movement sensor 30 for analysis and subsequent processing.”
`
`APPLE-1001, 4:52-55. Once the microprocessor has received and analyzed the
`
`movement data, the microprocessor responds based on “user-programmable
`
`configuration information” such as “an event threshold.” Id., 4:40-65, 5:67-6:9.
`
`For example, the device may respond by using indicators (visual, audible, or
`
`vibration-based) that are “activated to notify the wearer when a predetermined
`
`angle of motion has been exceeded.” Id., 4:4-25.
`
`47. According to the ’576 Patent, data collected by the movement measurement
`
`device may be downloaded to a computer. APPLE-1001, 8:31-34. And, “[o]nce
`
`the data from the device 12 has been downloaded to the computer 16, software
`
`running on the computer 16 is used to interpret the data and produce a number of
`
`reports and histories.” Id., 8:40-43.
`
`48. As I show in the following sections, all of the above concepts were well-
`
`known before the ’576 Patent.
`
`B.
`Prosecution History of the ’576 Patent
`49. The ’576 Patent issued from U.S. App. No. 08/976,228. During prosecution,
`
`the three independent claims were each amended to describe the measuring device
`
`as a “portable, self-contained” device capable of